Trials@uspto.gov Paper No. 10 Paper No. 31
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`571-272-7822
`Date Entered: October 8, 2013
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KYOCERA CORPORATION
`MOTOROLA MOBILITY LLC
`Petitioners
`
`v.
`
`SOFTVIEW LLC
`Patent Owner,
`____________
`
`Case IPR2013-00007
`Case IPR2013-00256
`Patent 7,461,353
`____________
`
`
`
`
`Before, BRYAN F. MOORE, BRIAN J. McNAMARA and
`STACEY G. WHITE, Administrative Patent Judges.
`
`McNAMARA, Administrative Patent Judge.
`
`
`ORDER DENYING PATENT OWNER’S REQUESTS TO FILE MOTION TO
`STRIKE AND SURREPLY, AUTHORIZING CERTAIN DEPOSITIONS AND
`SUPPLEMENTATION OF THE RECORD, AND REQUIRING ADDITIONAL
`CLAIM CONSTRUCTION BRIEFING
`
`Conduct of the Proceeding
`37C.F.R. § 42.5.
`
`
`
`571-272-7822
`Date Entered: October 8, 2013
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KYOCERA CORPORATION
`MOTOROLA MOBILITY LLC
`Petitioners
`
`v.
`
`SOFTVIEW LLC
`Patent Owner,
`____________
`
`Case IPR2013-00007
`Case IPR2013-00256
`Patent 7,461,353
`____________
`
`
`
`
`Before, BRYAN F. MOORE, BRIAN J. McNAMARA and
`STACEY G. WHITE, Administrative Patent Judges.
`
`McNAMARA, Administrative Patent Judge.
`
`
`ORDER DENYING PATENT OWNER’S REQUESTS TO FILE MOTION TO
`STRIKE AND SURREPLY, AUTHORIZING CERTAIN DEPOSITIONS AND
`SUPPLEMENTATION OF THE RECORD, AND REQUIRING ADDITIONAL
`CLAIM CONSTRUCTION BRIEFING
`
`Conduct of the Proceeding
`37C.F.R. § 42.5.
`
`
`
`Case IPR2013-00007
`Patent 7,461,353
`
`
`Following a Decision To Institute entered on March 29, 2013, Paper No. 11,
`
`IPR2013-00256 was joined with this proceeding. In compliance with a stipulated
`
`revised schedule, Softview LLC (Patent Owner) filed a Patent Owner Response on
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`July 19, 2013. Paper No. 25. Kyocera Corporation and Motorola Mobility
`
`(Petitioners) filed a Consolidated Reply To Patent Owner’s Response
`
`(Consolidated Reply) on September 23, 2013. Paper No. 28. On September 30,
`
`2013 Patent Owner filed a Notice of Objections To Evidence. Paper No. 29.
`
`On October 3, 2013, the Board conducted a telephone conference to discuss
`
`the following issues: (1) Patent Owner’s request for authorization to file a Motion
`
`To Strike Petitioners’ Consolidated Reply and the corresponding Declaration of
`
`Dr. Jack Grimes; (2) Patent Owner’s request for authorization to file a surreply to
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`Petitioners’ Response to Patent Owner’s Response; (3) Patent Owner’s request to
`
`file supplemental information; and (4) Patent Owner’s request to take the
`
`depositions of Dr. Jack Grimes and Dr. Richard Lutz, whose Declarations
`
`Petitioners filed with their Consolidated Reply to Patent Owner’s Response.
`
`Patent Owner’s Requests To File Motion To Strike and a Surreply
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`We deny Patent Owner’s requests to file a Motion To Strike Petitioners’
`
`Consolidated Reply and to file a surreply. A Motion To Strike or a Patent Owner’s
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`surreply is unlikely to provide the Board useful, additional information. Patent
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`Owner’s 16 page Notice of Objections To Evidence, Paper No. 29, already
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`extensively addresses Patent Owner’s concerns about Petitioners’ Consolidated
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`Reply to the Patent Owner Response. Patent Owner contends that the evidence
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`cited in Petitioner’s Consolidated Reply raises new claim construction issues that
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`should have been raised in the Petition For Inter Partes Review (Petition), raises
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`new and unauthorized challenges to the patentability of the claims, and belatedly
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`2
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`Case IPR2013-00007
`Patent 7,461,353
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`introduces new prior art and new evidence that should have been presented in the
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`Petition. See, Patent Owner’s Notice of Objections To Evidence, 2-4, 5-8, 9-10.
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`After due consideration of the Patent Owner Response, the Board will
`
`decide whether Petitioner’s Consolidated Reply improperly raises new issues or
`
`introduces new evidence. Petitioners’ Consolidated Reply should be drawn only to
`
`issues raised in the Patent Owner Response. 37 C.F.R. § 42.23, Office Patent Trial
`
`Practice Guide, 77 Fed. Reg. 48756, 48767 (Aug. 14, 2012). The Board will not
`
`attempt to sort proper from improper potions of a reply. Id. A reply that raises a
`
`new issue or introduces new evidence will not be considered and may be returned.
`
`Id. Thus, a Motion To Strike by the Patent Owner is not necessary.
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`A surreply by the Patent Owner is also not necessary. The rules do not
`
`provide for a surreply should the Board decide that Petitioners’ Consolidated Reply
`
`does not raise new issues or introduce new evidence. If the Board determines
`
`Petitioner’s Consolidated Reply is not responsive to the Patent Owner Response
`
`and raises new issues or introduces new evidence, the Board will not consider the
`
`Consolidated Reply. In that case, there will be no need for a surreply because the
`
`Consolidated Reply will not be considered. In either circumstance a surreply to
`
`Petitioners’ Consolidated Reply is not appropriate.
`
`Patent Owner’s Request For Depositions
`
`Patent Owner deposed Petitioner’s expert, Dr. Jack Grimes, on June 25,
`
`2013. Petitioner’s Consolidated Reply, filed on September 23, 2013, included
`
`additional testimonial evidence in the form of the declarations of Dr. Grimes and
`
`Dr. Richard Lutz. Petitioner represents that these declarations are in rebuttal to the
`
`testimony of Dr. Glenn Reinman filed on July 19, 2013 with the Patent Owner
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`Response. Ex. 2003. During the October 3, 2013 call with the Board, Petitioner
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`3
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`Case IPR2013-00007
`Patent 7,461,353
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`stated it would produce Drs. Grimes and Lutz for deposition. The Board leaves it
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`to the parties to work out the details of the depositions.
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`Patent Owner’s Request To Supplement
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`For purposes of the Petition, Petitioner stated that it would not be
`
`unreasonable for the Board to adopt the constructions proffered by Patent Owner in
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`the pending litigation and the Board adopted those constructions. Decision To
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`Institute, Paper No. 12, pp. 20-22. Patent Owner now requests authorization to
`
`submit supplemental information, namely, the district court’s claim construction
`
`order and related memorandum, as well as the parties’ agreed claim constructions.
`
`In the teleconference on October 3, 2013, Petitioner stated that is does not object to
`
`this submission and asked that the district court’s order staying litigation also be
`
`included. The Patent Owner had no objection to this addition. Therefore, we grant
`
`Patent Owner’s request to submit this documentation. We remind the parties that
`
`in construing claims in an inter pates review, the Board focuses on challenges to
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`patentability and applies the broadest reasonable interpretation to the claims. See,
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012).
`
`See also, SAP America v. Versata Development Group, Inc., IPR2012-00001, Final
`
`Written Decision, Paper No. 70, pp. 7-19. In patent litigation, district courts do not
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`apply the broadest reasonable interpretation standard and the parties may agree to
`
`the construction of certain terms for reasons unrelated to the broadest reasonable
`
`interpretation. Thus, the district court’s claim construction and the parties’ agreed
`
`constructions may provide the Board useful insight and information, these
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`constructions are not determinative of the broadest reasonable construction for
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`purposes of an inter partes review.
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`4
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`Case IPR2013-00007
`Patent 7,461,353
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`New Claim Construction Issue
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`Based on matters discussed during October 3, 2013 conference call and
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`issues raised in the Patent Owner Response and Petitioners’ Consolidated Reply,
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`the Board understands that a new claim construction issue has arisen in this case.
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`Petitioners asserted that Patent Owner’s arguments regarding “preserving the
`
`original layout, functionality and design” imply a significant departure from the
`
`position taken prosecution and thus, the term should be construed as Petitioners
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`argued in their Consolidated Reply. Patent Owner responded that it did not
`
`attempt to construe the “preserving” limitation in the Patent Owner Response and
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`that the limitation should be accorded its ordinary meaning.
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`In order to clarify the parties’ positions on this issue, the Board is ordering
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`the parties to submit claim construction briefs of not more than 5 pages by October
`
`18, 2013. 37 CFR § 42.20(d). The Petitioners shall submit a single consolidated
`
`brief. The claim construction briefs shall address only how the term “preserving
`
`the original layout, functionality and design” should be construed in accordance
`
`with the broadest reasonable construction standard applicable to inter partes
`
`review. The Board will not consider a brief which raises any other issue.
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`
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`In consideration of the above, it is:
`
`ORDERED that Patent Owner’s request to file a Motion To Strike
`
`Petitioner’s Reply To Patent Owner’s Response is DENIED;
`
`FURTHER ORDERED that Patent Owner’s request to file a surreply to
`
`Petitioners’ Consolidated Reply To Patent Owner’s Response is DENIED;
`
`FURTHER ORDERED that Patent Owner’s request to depose Dr. Jack
`
`Grimes and Dr. Richard Lutz is GRANTED;
`
`
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`5
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`Case IPR2013-00007
`Patent 7,461,353
`
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`FURTHER ORDERED that by October 11, 2013, Patent Owner shall
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`supplement the record with the District Court’s claim construction order and
`
`accompanying memorandum, the parties’ agreed constructions in the district court
`
`litigation, and the district court’s Order Staying Litigation;
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`FURTHER ORDERED that by October 18, 2013, Patent Owner and the
`
`Petitioners shall each submit a brief of not more than 5 pages addressing only how
`
`the term “preserving the original layout, functionality, and design” should be
`
`construed using the broadest reasonable construction applicable in an inter partes
`
`review. Petitioners shall file a consolidated brief.
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`6
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`Case IPR2013-00007
`Patent 7,461,353
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`PETITIONER KYOCERA: (via electronic transmission)
`
`
`Richard P. Bauer (richard.bauer@kattenlaw.com)
`Michael Tomsa (michael.tomsa@kattenlaw.com)
`Eric C. Cohen (eric.cohen@kattenlaw.com)
`
`
`PETITIONER MOTOROLA MOBILITY LLC
`John C. Alemanni (jalemanni@kilpatricktownsend.com)
`Candice C. Decaire (CDecaire@kilpatricktownsend.com)
`David A. Reed (DaReed@kilpatricktownsend.com)
`
`PATENT OWNER: (via electronic transmission)
`Ben Yorks (byorks@irell.com)
`Babak Redjaian (bredjaian@irell.com)
`
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`7
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