`Tel: 571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` Paper 63
` Entered: December 31, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`ABB, INC.
`Petitioner
`
`v.
`
`ROY-G-BIV CORPORATION
`Patent Owner
`_______________
`
`Case IPR2013-00062
`Case IPR2013-00282
`Patent 6,516,236 B1
`
`____________
`
`
`
`
`
` .
`
`
`
`Before THOMAS L. GIANNETTI, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`IPR2013-00062
`IPR2013-00282
`Patent 6,516,236 B1
`
`
`This Order is entered in response to several matters raised by Patent Owner.
`
`1. On December 20, 2013, Patent Owner requested, via email, authorization
`
`
`
`
`
`by the Board to file a surreply to certain arguments set forth in Petitioner’s Reply
`
`to Patent Owner’s Response, Paper 44, filed October 28, 2013. Those arguments
`
`relate to whether two references proffered by Petitioner (Gertz and Morrow)
`
`qualify as prior art, or whether Patent Owner has successfully “antedated” the
`
`references by showing prior conception and diligence. Petitioner, in a separate
`
`email to the Board, opposed the request.
`
`
`
`After due consideration, the request is denied. The Board’s rules make no
`
`provision for surreplies. Moreover, this case does not warrant making an
`
`exception. Both Petitioner and Patent Owner have already had an opportunity to
`
`brief this issue, which was initially raised by Patent Owner. To the extent they
`
`wish to be heard further, the parties may address the issue at the oral hearing on
`
`January 23, 2014.
`
`
`
`2. Attached to Patent Owner’s December 20 email to the Board were two
`
`papers: a motion for leave and a surreply. Those submissions were not authorized.
`
`The parties are cautioned to refrain from submitting further unauthorized motions
`
`and briefs.
`
`
`
`3. On December 19, 2013, Patent Owner filed a motion to exclude certain
`
`evidence. Paper 59. The Scheduling Order in this proceeding (Paper 24) requires
`
`such motions to be filed by Due Date 4, December 12, 2013. We note the Board’s
`
`subsequent Decision (Paper 15) in IPR2013-00282 joining that proceeding with
`
`IPR2013-00062 permits the parties to modify this date, but expressly orders that
`
`“in the event of any changes to the schedule, the parties inform the Board promptly
`
`in the form of a notice of stipulation.” The Board does not have any record of
`
`2
`
`
`
`
`IPR2013-00062
`IPR2013-00282
`Patent 6,516,236 B1
`
`
`receiving such a notice or stipulation, nor has Patent Owner requested an extension
`
`of the due date for motions to exclude. Thus, Patent Owner’s motion is dismissed
`
`as untimely.
`
`
`
`4. On December 20, 2013, Patent Owner filed a motion for observations on
`
`cross-examination. Paper 61. Patent Owner did not seek prior authorization for
`
`this motion, as is required by our rules. 37 C.F.R. § 42.20(b). The motion is,
`
`therefore, dismissed and the paper will be expunged.
`
`
`
`
`
`
`
`
`
`In view of the foregoing, it is
`
`ORDERED that Patent Owner’s request to file a surreply to Paper 44 is
`
`denied;
`
`
`
`FUTHER ORDERED that Patent Owner’s Motion to Exclude Evidence
`
`(Paper 59) is dismissed;
`
`
`
`FURTHER ORDERED that Patent Owner’s Motion for Observations on
`
`Cross Examination (Paper 61) is dismissed and will be expunged.
`
`
`
`3
`
`
`
`
`
`
`4
`
`
`IPR2013-00062
`IPR2013-00282
`Patent 6,516,236 B1
`
`Counsel for Petitioner:
`
`Richard D. McLeod
`KLARQUIST SPARKMAN LLP
`rick.mcleod@klarquist.com
`
`Counsel for Patent Owner:
`
`Richard T. Black
`FOSTER PEPPER PLLC
`blacr@foster.com
`
`Richard S. Meyer
`BOIES, SCHILLER & FLEXNER
`meyer@bsflp.com
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
