Trials@uspto.gov Paper 25
`571-272-7822
`
`Date: April 26, 2013
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`CHI MEI INNOLUX CORPORATION
`Petitioner
`
`v.
`
`SEMICONDUCTOR ENERGY
`LABORATORY CO., LTD.
`Patent OWNER
`____________
`
`Case IPR2013-00028 (SCM)
`Patent 6,404,480 B2
`____________
`
`
`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
`
`On April 24, 2013, the following individuals participated in the initial
`
`
`571-272-7822
`
`Date: April 26, 2013
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`CHI MEI INNOLUX CORPORATION
`Petitioner
`
`v.
`
`SEMICONDUCTOR ENERGY
`LABORATORY CO., LTD.
`Patent OWNER
`____________
`
`Case IPR2013-00028 (SCM)
`Patent 6,404,480 B2
`____________
`
`
`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
`
`On April 24, 2013, the following individuals participated in the initial
`
`
`
`Case IPR2013-00028
`Patent 6,404,480 B2
`
`conference call:1
`
`
`
`
`
`(1) Mr. Scott McKeown and Mr. Gregory Cordrey, counsel for CMI;
`
`(2) Mr. Eric Robinson, 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.
`
`Motions List
`
`In preparation for the initial call, SEL filed a motions list. Paper 24. CMI
`
`does not seek authorization to file any motions, but SEL does. The parties were
`
`reminded that the purpose of the motions list is to provide the Board and an
`
`opposing party adequate notice to prepare for the initial call and the proceeding.
`
`See, e.g., 37 C.F.R. § 42.21(a) and Office Patent Trial Practice Guide, 77 Fed.
`
`Reg. 48756, 48765 (Aug. 14, 2012). In particular, the list should contain a short,
`
`concise statement generally relaying enough information for the Board and
`
`opposing counsel to understand the proposed motion. As explained during the call,
`
`SEL’s motions list with respect to its proposed motion for discovery regarding the
`
`real party-in-interest issue (see, e.g., Paper 24, No. 3) does not provide adequate
`
`notice. Instead of dismissing the motions list, the Board determined to proceed
`
`with the motions list information and any other information provided during the
`
`conference call to determine whether to authorize a motion for discovery regarding
`
`the real party-in-interest issue.
`
`
`
`
`
`
`1 The initial conference call is held to discuss the Scheduling Order and any
`motions that the parties anticipate filing during the trial. Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48756, 48765 (Aug. 14, 2012).
`
`2
`
`
`
`
`Case IPR2013-00028
`Patent 6,404,480 B2
`
`
`
`Motion to Amend
`
`
`
`During the call, counsel for SEL represented that at this time, SEL does not
`
`intend to file a motion to amend. As discussed, if SEL determines that it will file a
`
`motion to amend, SEL must arrange a conference call soon thereafter with the
`
`Board and opposing counsel to discuss the proposed motion to amend.
`
`
`
`Motion for Additional Discovery
`
`The parties were reminded that they may agree to additional discovery
`
`between themselves and only if they disagree is it necessary to seek Board
`
`authorization to file a motion for additional discovery. 37 CFR § 42.51(b)(2). The
`
`parties could not agree to the additional discovery listed per SEL’s motions list
`
`(Nos. 2 and 3), and therefore SEL requests authorization to file a motion for
`
`additional discovery.
`
`During the call, the Board explained that a party moving for additional
`
`discovery “must show that such additional discovery is in the interests of justice.”
`
`See 35 U.S.C. § 316(a)(5) and 37 C.F.R. § 42.51(b)(2). Based on the facts
`
`presented during the initial conference call, the Board authorized SEL to file a
`
`single motion for discovery of (1) the information described in the second, third,
`
`and fourth bullets of No. 2 (pages 2-3) of SEL’s motions list,2 and (2) the
`
`information described per No. 3 (pages 3-4) of SEL’s motions list.3 CMI is
`
`authorized to file an opposition.
`
`
`2 Counsel for SEL did not, during the call, present a sufficient basis for including
`the information provided per bullet 1 since the theory was based on speculation,
`e.g., on what CMI may argue in a reply to SEL’s patent owner response to the
`petition.
`
` 3
`
` As discussed and agreed upon, SEL is authorized to request obtaining such
`information from CMI and not from any of the listed co-defendants.
`
`3
`
`
`
`
`Case IPR2013-00028
`Patent 6,404,480 B2
`
`
`
`
`The Board advised counsel for SEL that the factors set forth in the “Decision
`
`- On Motion For Additional Discovery” entered in IPR2012-00001 (Paper 26 at 6-
`
`7) are important factors in determining whether a discovery request meets the
`
`statutory and regulatory necessary “in the interest of justice” standard.
`
`Accordingly, SEL’s motion should explain with specificity the discovery requested
`
`and why such discovery is necessary “in the interest of justice” using those factors.
`
`In that regard, SEL should not expect the Board to attempt to sort through a list of
`
`items to ascertain which items may meet the necessary in the interest of justice
`
`standard. SEL bears the burden to demonstrate that the additional discovery (e.g.,
`
`each requested item) should be granted. See 37 C.F.R. § 42.20(c).
`
`
`
`Schedule
`
`Counsel for the respective parties indicated that they have no issues with the
`
`Scheduling Order (Paper 15) entered on March 21, 2013.
`
`
`
`Settlement
`
`The parties represented that they have no report regarding settlement.
`
`
`
`Miscellaneous
`
`
`
`Counsel for CMI indicated that CMI has undergone a name change. Despite
`
`counsel’s representation that the company is the same and that the real party-in-
`
`interest has not changed (that only the name of the real party-in-interest has
`
`changed), the company name change should be identified to make clear who is the
`
`4
`
`
`
`
`Case IPR2013-00028
`Patent 6,404,480 B2
`
`
`petitioner in this proceeding. See 37 C.F.R. § 42.8(a)(3).4 Accordingly, CMI must
`
`
`
`provide an update.
`
`
`
`It is
`
`Order
`
`ORDERED that SEL is authorized to file a motion for additional discovery
`
`under 37 C.F.R. § 42.51(b)(2) by May 2, 2013, limited to 15 pages as specified in
`
`this order;
`
`FURTHER ORDERED that CMI is authorized to file an opposition by May
`
`9, 2013, limited to 15 pages;
`
`FURTHER ORDERED that CMI shall provide an update of its company
`
`name change in compliance with 37 C.F.R. § 42.8(a)(3) by April 30, 2013; and
`
`FURTHER ORDERED that no other motions are authorized at this time.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`4 In the event that the name change occurred more than twenty-one (21) days ago,
`the 37 C.F.R. § 42.8(a)(3) twenty-one (21) day requirement is waived for the sole
`purpose of allowing CMI to update its notice information. 37 C.F.R. § 42.5(b).
`
`5
`
`
`
`
`
`
`
`
`Case IPR2013-00028
`Patent 6,404,480 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
`
`
`
`
`6
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
