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` 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
`
`____________
`
`
`
`
`
` .
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`
`
`Before THOMAS L. GIANNETTI, Administrative Patent Judge.
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`
`
`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.
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`1. On December 20, 2013, Patent Owner requested, via email, authorization
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`
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`
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`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
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`relate to whether two references proffered by Petitioner (Gertz and Morrow)
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`qualify as prior art, or whether Patent Owner has successfully “antedated” the
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`references by showing prior conception and diligence. Petitioner, in a separate
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`email to the Board, opposed the request.
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`
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`After due consideration, the request is denied. The Board’s rules make no
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`provision for surreplies. Moreover, this case does not warrant making an
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`exception. Both Petitioner and Patent Owner have already had an opportunity to
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`brief this issue, which was initially raised by Patent Owner. To the extent they
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`wish to be heard further, the parties may address the issue at the oral hearing on
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`January 23, 2014.
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`
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`2. Attached to Patent Owner’s December 20 email to the Board were two
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`papers: a motion for leave and a surreply. Those submissions were not authorized.
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`The parties are cautioned to refrain from submitting further unauthorized motions
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`and briefs.
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`
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`3. On December 19, 2013, Patent Owner filed a motion to exclude certain
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`evidence. Paper 59. The Scheduling Order in this proceeding (Paper 24) requires
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`such motions to be filed by Due Date 4, December 12, 2013. We note the Board’s
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`subsequent Decision (Paper 15) in IPR2013-00282 joining that proceeding with
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`IPR2013-00062 permits the parties to modify this date, but expressly orders that
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`“in the event of any changes to the schedule, the parties inform the Board promptly
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`in the form of a notice of stipulation.” The Board does not have any record of
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`2
`
`
`
`
`IPR2013-00062
`IPR2013-00282
`Patent 6,516,236 B1
`
`
`receiving such a notice or stipulation, nor has Patent Owner requested an extension
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`of the due date for motions to exclude. Thus, Patent Owner’s motion is dismissed
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`as untimely.
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`
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`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
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`this motion, as is required by our rules. 37 C.F.R. § 42.20(b). The motion is,
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`therefore, dismissed and the paper will be expunged.
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`
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`In view of the foregoing, it is
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`ORDERED that Patent Owner’s request to file a surreply to Paper 44 is
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`denied;
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`
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`FUTHER ORDERED that Patent Owner’s Motion to Exclude Evidence
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`(Paper 59) is dismissed;
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`
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`FURTHER ORDERED that Patent Owner’s Motion for Observations on
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`Cross Examination (Paper 61) is dismissed and will be expunged.
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`
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`3
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`4
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`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