Summarizing Initial Conference Call on Proposed Motions by the Parties IPR2014-000180


Takeaway: Some actions by the parties can only be carried out via the filing of a motion, whereas others do not require any motion. Some motions require prior authorization by the Board; others do not.

In its Order, the Board summarized an initial conference call that it had held with the parties to discuss any proposed motions that the parties may have intended to file.  Each of the parties had filed a list of proposed motions prior to the call.

Patent Owner indicated that it intended to file a contingent motion to amend.  In response, the Board required Patent Owner to arrange for a conference call to discuss the proposed motion to amend no later than two weeks before the deadline to file a motion amend.

Petitioner indicated that it might file a motion to exclude at some point.  The Board advised Petitioner that a motion to exclude may be filed without prior authorization by the Board.

Petitioner also indicated that it might file motions for observations.  In reply, the Board reminded Petitioner of the due date and requirements for the form and content of any motion for observations.

Petitioner further indicated that it might file a motion to request oral argument.  The Board reminded Petitioner of the due date for requesting oral argument, and that a motion was not necessary for this purpose.

Patent Owner requested authorization from the Board to file a motion for additional discovery on the issue of alleged real parties-in-interest.  The Board advised during the initial conference call that this request by Patent Owner was denied without prejudice.  According to the Board, that the same counsel represents Petitioner and other defendants in on-going district court cases is not by itself indicative of “control” of the instant IPR proceeding by such defendants.

Petitioner requested authorization to file a motion to clarify the guidelines for objecting in a deposition.  Rather than granting authorization to file this motion, the Board instead directed the parties to the PTAB Trial Practice Guide, Appendix D, Testimony Guidelines, 77 Fed. Reg. at 48772, for guidance on proper objections.

International Business Machines Corporation v. Intellectual Ventures II LLC, IPR2014-00180
Paper 15: Order
Dated: May 16, 2014
Patent: 7,634,666

Before: David C. McKone, James A. Tartal, and Miriam L. Quinn
Written by: Quinn