`571-272-7822
`
` Date: June 13, 2013
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INNOLUX CORPORATION
`Petitioner
`
`v.
`
`SEMICONDUCTOR ENERGY
`LABORATORY CO., LTD.
`Patent OWNER
`____________
`
`Cases IPR2013-00028 (Patent 6,404,480 B2) (SCM)
`IPR2013-00038 (Patent 7,956,978 B2)1
`____________
`
`Before SALLY C. MEDLEY, KARL D. EASTHOM, and KEVIN F. TURNER
`Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
` 37 C.F.R. § 42.5
`
`
`
`
`1 This order addresses a similar issue in the two cases. Therefore, we exercise
`discretion to issue one order to be filed in each case. The parties, however, are not
`authorized to use this style of heading in subsequent papers.
`
`
`
`Cases IPR2013-00028 and 00038
`Patents 6,404,480 B2 and 7,956,978 B2
`
`
`
`On June 11, 2013, the following individuals participated in a conference
`
`
`
`call:
`
`(1) Mr. Scott McKeown and Mr. Gregory Cordrey, counsel for Innolux;
`(2) Mr. Sean Flood, Mr. Stanley Schlitter, and Mr. Douglas Peterson,
`counsel for SEL; and
`(3) Sally Medley, Karl Easthom, and Kevin Turner, Administrative Patent
`Judges. 2
`The purpose of the conference call was for Patent Owner to confer with the
`Board prior to filing a motion to amend.3
`
`
`Motion to Amend
`SEL intends to file a motion to amend in both IPR2013-00028 and IPR2013-
`00038. During the call, counsel for SEL sought guidance for SEL’s motions to
`amend. The parties were directed to the Patent Trial Practice Guide for guidance.
`See Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48766-48767 (Aug.
`14, 2012). More specifically, in any motion to amend SEL files, the motion must
`explain in detail how the proposed substitute claims obviates the grounds of
`unpatentability authorized in this trial and clearly identify where corresponding
`written description support in the specification can be found for each claim added.
`If the motion to amend includes a proposed substitution of claims beyond a one-
`for-one substitution, the motion must explain why more than a one-for-one
`substitution of claims is necessary. 37 C.F.R. § 42.121. For further guidance
`regarding these requirements, the parties were directed to two recent Board
`
`
`2 A court reporter was also present.
`3 37 C.F.R. § 42.121(a) provides that a patent owner may file one motion to amend,
`but only after conferring with the Board.
`2
`
`
`
`
`
`
`Cases IPR2013-00028 and 00038
`Patents 6,404,480 B2 and 7,956,978 B2
`
`
`decisions: (1) IPR2012-00005, Paper 27 (June 3, 2013) and (2) IPR2012-00027,
`Paper 26 (June 11, 2013).
`Counsel for SEL represented that SEL will not include in its motion to
`amend a request for a proposed substitution of claims beyond a one-for-one
`substitution. The Board encouraged counsel for SEL to consider that SEL need not
`substitute a claim for each claim involved in each case. A single claim in each
`case may suffice. Counsel for SEL inquired as to whether any substitute
`dependent claims should be written in independent form. The Board expressed
`that it would not be necessary to do so. For further guidance on substitute
`dependent claims, SEL is directed to IPR2012-00027, Paper 26 at 9-10.
`Counsel for SEL requested a five page extension of the fifteen page limit for
`its motion to amend with respect to case IPR2013-00028. The request was denied
`as premature. SEL has not had opportunity to consider the two Board decisions to
`which it is directed in formulating its motion to amend. Moreover, counsel for
`SEL did not represent he had a complete draft that was currently over the allowed
`page limits. The parties are encouraged to stay within the confines of the
`regulations for these proceedings. Nonetheless, the Board indicated that SEL is
`not foreclosed from later requesting authorization for a page limit extension. If
`SEL chooses to do so, it should be prepared to show that such an extension is
`warranted.
`
`
`Order
`
`It is
`ORDERED that SEL’s request for a five page extension for its motion to
`amend is DENIED.
`
`
`3
`
`
`
`
`
`
`
`
`Cases IPR2013-00028 and 00038
`Patents 6,404,480 B2 and 7,956,978 B2
`
`
`
`For PETITIONER:
`Scott McKeown
`cpdocketMcKeown@oblon.com
`
`Gregory S. Cordrey
`gcordrey@jmbm.com
`
`
`
`For PATENT OWNER:
`
`Eric Robinson
`erobinson@riplo.com
`
`Sean Flood
`sflood@riplo.com
`
`Stanley Schlitter
`sschlitt@steptoe.com
`
`Douglas Peterson
`dpeterson@steptoe.com
`
`
`
`
`4
`
`
`
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