`571-272-7822
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`Date: April 26, 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`CHI MEI INNOLUX CORPORATION
`Petitioner
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`v.
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`SEMICONDUCTOR ENERGY
`LABORATORY CO., LTD.
`Patent OWNER
`____________
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`Case IPR2013-00038 (SCM)
`Patent 7,956,978 B2
`____________
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`Before SALLY C. MEDLEY, KARL D. EASTHOM, and KEVIN F. TURNER
`Administrative Patent Judges.
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`MEDLEY, Administrative Patent Judge.
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`ORDER
`Conduct of the Proceeding
` 37 C.F.R. § 42.5
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`On April 24, 2013, the following individuals participated in the initial
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`Case IPR2013-00038
`Patent 7,956,978 B2
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`conference call:1
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`(1) Mr. Scott McKeown and Mr. Gregory Cordrey, counsel for CMI;
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`(2) Mr. Eric Robinson, Mr. Sean Flood, Mr. Stanley Schlitter, and
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`Mr. Douglas Peterson, counsel for SEL; and
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`(3) Sally Medley, Karl Easthom, and Kevin Turner, Administrative Patent
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`Judges.
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`Motions List
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`In preparation for the initial call, SEL filed a motions list. Paper 17. CMI
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`does not seek authorization to file any motions, but SEL does. The parties were
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`reminded that the purpose of the motions list is to provide the Board and an
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`opposing party adequate notice to prepare for the initial call and the proceeding.
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`See, e.g., 37 C.F.R. § 42.21(a) and Office Patent Trial Practice Guide, 77 Fed.
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`Reg. 48756, 48765 (Aug. 14, 2012). In particular, the list should contain a short,
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`concise statement generally relaying enough information for the Board and
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`opposing counsel to understand the proposed motion. As explained during the call,
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`SEL’s motions list with respect to its proposed motion for discovery regarding the
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`real party-in-interest issue (see, e.g., Paper 17, No. 2) does not provide adequate
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`notice. Instead of dismissing the motions list, the Board determined to proceed
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`with the motions list information and any other information provided during the
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`conference call to determine whether to authorize a motion for discovery regarding
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`the real party–in-interest issue.
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`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).
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`2
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`Patent 7,956,978 B2
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`Motion to Amend
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`During the call, counsel for SEL represented that at this time, SEL does not
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`intend to file a motion to amend. As discussed, if SEL determines that it will file a
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`motion to amend, SEL must arrange a conference call soon thereafter with the
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`Board and opposing counsel to discuss the proposed motion to amend.
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`Motion for Additional Discovery
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`The parties were reminded that they may agree to additional discovery
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`between themselves and only if they disagree is it necessary to seek Board
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`authorization to file a motion for additional discovery. 37 CFR § 42.51(b)(2). The
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`parties could not agree to the additional discovery listed per SEL’s motions list
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`(No. 2), and therefore SEL requests authorization to file a motion for additional
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`discovery.
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`During the call, the Board explained that a party moving for additional
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`discovery “must show that such additional discovery is in the interests of justice.”
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`See 35 U.S.C. § 316(a)(5) and 37 C.F.R. § 42.51(b)(2). Based on the facts
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`presented during the initial conference call, the Board authorized SEL to file a
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`single motion for discovery of the information described per No. 2 (pages 2-3) of
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`SEL’s motions list.2 CMI is authorized to file an opposition.
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`The Board advised counsel for SEL that the factors set forth in the “Decision
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`- On Motion For Additional Discovery” entered in IPR2012-00001 (Paper 26 at 6-
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`7) are important factors in determining whether a discovery request meets the
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`statutory and regulatory necessary “in the interest of justice” standard.
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`Accordingly, SEL’s motion should explain with specificity the discovery requested
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`2 As discussed and agreed upon, SEL is authorized to request obtaining such
`information from CMI and not from any of the listed co-defendants.
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`3
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`and why such discovery is necessary “in the interest of justice” using those factors.
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`In that regard, SEL should not expect the Board to attempt to sort through a list of
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`items to ascertain which items may meet the necessary in the interest of justice
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`standard. SEL bears the burden to demonstrate that the additional discovery (e.g.,
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`each requested item) should be granted. See 37 C.F.R. § 42.20(c).
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`Schedule
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`Counsel for the respective parties indicated that they have no issues with the
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`Scheduling Order (Paper 10) entered on March 21, 2013.
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`Settlement
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`The parties represented that they have no report regarding settlement.
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`Miscellaneous
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`Counsel for CMI indicated that CMI has undergone a name change. Despite
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`counsel’s representation that the company is the same and that the real party-in-
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`interest has not changed (that only the name of the real party-in-interest has
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`changed), the company name change should be identified to make clear who is the
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`petitioner in this proceeding. See 37 C.F.R. § 42.8(a)(3).3 Accordingly, CMI must
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`provide an update.
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`3 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).
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`4
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`Case IPR2013-00038
`Patent 7,956,978 B2
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`It is
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`Order
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`ORDERED that SEL is authorized to file a motion for additional discovery
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`under 37 C.F.R. § 42.51(b)(2) by May 2, 2013, limited to 15 pages as specified in
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`this order;
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`FURTHER ORDERED that CMI is authorized to file an opposition by May
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`9, 2013, limited to 15 pages;
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`FURTHER ORDERED that CMI shall provide an update of its company
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`name change in compliance with 37 C.F.R. § 42.8(a)(3) by April 30, 2013; and
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`FURTHER ORDERED that no other motions are authorized at this time.
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`5
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`Case IPR2013-00038
`Patent 7,956,978 B2
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`For PETITIONER:
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`Scott McKeown
`cpdocketMcKeown@oblon.com
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`Gregory S. Cordrey
`gcordrey@jmbm.com
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`For PATENT OWNER:
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`Eric Robinson
`erobinson@riplo.com
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`Sean Flood
`sflood@riplo.com
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`Stanley Schlitter
`sschlitt@steptoe.com
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`Douglas Peterson
`dpeterson@steptoe.com
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`6
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