Paper 24
`Date: July 18, 2013
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`Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________
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`
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`INNOLUX CORPORATION
`Petitioner
`
`v.
`
`SEMICONDUCTOR ENERGY LABORATORY CO., LTD.
`Patent Owner
`____________
`
`Cases IPR2013-00066 (Patent 7,876,413 B2) (SCM)
`IPR2013-00068 (Patent 8,068,204 B2)1
`____________
`
`
`Before SALLY C. MEDLEY, KARL D. EASTHOM, and KEVIN F. TURNER
`Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
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`
`
`
`
`ORDER
`Conduct of the Proceeding
` 37 C.F.R. § 42.5
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`On July 15, 2013, the following individuals participated in a conference call:
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`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.
`
`

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`Cased IPR2013-00066 and 00068
`Patents 7,876,413 B2 and 8,068,204 B2
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`
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`(1) Mr. Scott McKeown, Mr. Gregory Cordrey, and Mr. Stanley Gibson,
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`
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`counsel for Innolux;
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`(2) Mr. Mark Murphy, Mr. Edward Manzo, and Mr. Stanley Schlitter,
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`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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`The purpose of the conference call was for Patent Owner to confer with the
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`Board prior to filing a motion to amend.2
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`
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`Motion to Amend
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`SEL intends to file a motion to amend in both IPR2013-00066 and IPR2013-
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`00068. During the call, counsel for SEL sought guidance for SEL’s motions to
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`amend. The parties were directed to the Patent Trial Practice Guide for guidance.
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`See Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48766-48767 (Aug.
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`14, 2012). More specifically, in any motion to amend SEL files, the motion must
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`explain in detail how the proposed substitute claims obviates the grounds of
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`unpatentability authorized in this trial and clearly identify where corresponding
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`written description support in the specification can be found for each claim added.
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`If the motion to amend includes a proposed substitution of claims beyond a one-
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`for-one substitution, the motion must explain why more than a one-for-one
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`substitution of claims is necessary. 37 C.F.R. § 42.121. For further guidance
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`regarding these requirements, the parties were directed to two Board decisions: (1)
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`IPR2012-00005, Paper 27 (June 3, 2013) and (2) IPR2012-00027, Paper 26 (June
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`11, 2013).
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`2 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.
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`2
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`

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`Cased IPR2013-00066 and 00068
`Patents 7,876,413 B2 and 8,068,204 B2
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`
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`SEL requests authorization for four (4) additional pages for its IPR2013-
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`
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`00066 motion to amend and ten (10) additional pages for its IPR2013-00068
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`motion to amend. SEL alternatively requests authorization to, in its motion to
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`amend, list its claims using single spacing in a claim chart, or that it be authorized
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`to incorporate by reference arguments from its patent owner response into the
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`motion to amend. Upon consideration, the requests are denied.
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`An inter partes review is a streamlined and focused proceeding, unlike ex
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`parte prosecution or patent reexamination. A final determination must be made
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`generally no later than a year after institution of the inter partes review. 35 U.S.C.
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`§ 316(a)(11). As a result, and pursuant to 35 U.S.C. § 316(b), rules for inter partes
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`review proceedings were promulgated to take into account the “regulation on the
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`economy, the integrity of the patent system, the efficient administration of the
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`Office, and the ability of the Office to timely complete proceedings.” The
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`promulgated rules provide that they are to “be construed to secure the just, speedy,
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`and inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1(b).
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`SEL requests authorization to, in its motion to amend, list its claims using
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`single spacing in a claim chart. 3 Eventually a certificate will be issued and
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`published for each patent in each case. 35 U.S.C. § 318(b). The certificate may
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`include any new claim determined to be patentable. The publisher of such
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`certificates expects a particular format for a new claim, which includes all of the
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`formatting requirements of 37 C.F.R. § 42.6(a). SEL’s proposal to deviate from
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`those requirements is impractical because it would either require the Office to
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`assemble the new claims in proper format or to instruct the patent owner to present
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`3 37 C.F.R. § 42.121(b) requires that a motion to amend claims must include a
`claim listing. The claim listing is part of the motion, whereby all of the formatting
`requirements, such as double spacing, must be used. 37 C.F.R. § 42.6(a).
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`3
`
`
`

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`Cased IPR2013-00066 and 00068
`Patents 7,876,413 B2 and 8,068,204 B2
`
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`the claims in the proper format long after a case has been decided. In either case,
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`there would be associated costs, inefficiencies, and possible delays in publishing
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`the certificate.
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`SEL alternatively seeks authorization to, in its motion to amend, incorporate
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`by reference arguments made in SEL’s Patent Owner Response. 4 As explained
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`during the conference call, it is not clear why SEL would want to do so. The
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`Patent Owner Response should be directed to the claims involved in the
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`proceeding. A motion to amend is contingent upon the Board determining that
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`some or all of the involved claims are unpatentable. In the context of a motion to
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`amend, the patent owner should focus on the feature or features added to each
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`substitute claim. As explained on page 7 of the decision in IPR2012-00027, Paper
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`26 (June 11, 2013):
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`A patent owner should identify specifically the feature or features
`added to each substitute claim, as compared to the challenged claim it
`replaces, and come forward with technical facts and reasoning about
`those feature(s), including construction of new claim terms, sufficient
`to persuade the Board that the proposed substitute claim is patentable
`over the prior art of record, and over prior art not of record but known
`to the patent owner.
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`Thus, in the context of showing that a substitute claim is patentable over
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`prior art, it would not appear to be beneficial to make the same arguments made in
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`a patent owner response which focuses on different claims. A motion to amend is
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`contingent upon the Board determining that the arguments made in a patent owner
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`response are not persuasive. Therefore, it is not clear why a patent owner would
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`want to include those same exact arguments in its motion to amend. In any event,
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`the Board would not want arguments from one document incorporated by reference
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`4 37 C.F.R. § 42.6(a)(3) requires that arguments must not be incorporated by
`reference from one document into another document.
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`4
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`
`

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`Cased IPR2013-00066 and 00068
`Patents 7,876,413 B2 and 8,068,204 B2
`
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`into another. A party doing so would run the risk of either the Board or an
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`opposing party overlooking an argument or point made.
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`Lastly, SEL alternatively requests authorization for more pages for its
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`motions to amend. Counsel for SEL explained that a draft of SEL’s motion to
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`amend for each case revealed that the majority of the required fifteen page motion
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`is comprised of the claim listing. As explained during the conference call, SEL
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`need not present a substitute claim for each involved claim. A single claim per
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`motion to amend may be sufficient. During the discussion, for example, it became
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`apparent that the additional feature that SEL intends to add to its original claims is
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`the same for each proposed substitute claim. There were no representations made
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`that the various claims SEL seeks to add are patentably distinct from one another.
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`Rather, they would all have the identical patentable feature and presumably all
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`would be to the same patentable invention. Thus, there is no apparent reason, and
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`none was provided, why one claim, or even just a few claims, with the single
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`patentable addition would not suffice. To the extent that SEL perceives the limit
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`for motions to amend to be unfair, SEL is not without remedy. SEL may possibly
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`pursue such additional claims by filing a request for ex parte reexamination or by
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`filing a reissue application.
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`For the reasons provided above, each of SEL’s requests would impede the
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`goal to secure the just, speedy, and inexpensive resolution of IPR2013-00066 and
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`IPR2013-00068. Accordingly, SEL’s requests are denied.
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`5
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`

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`Cased IPR2013-00066 and 00068
`Patents 7,876,413 B2 and 8,068,204 B2
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`For PETITIONER:
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`
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`Scott A. McKeown
`OBLON, SPIVAK, McCLELLAND, MAIER & NEUSTADT, L.L.P.
`cpdocketmckeown@oblon.com
`
`Gregory S. Cordey
`JEFFER, MANGELS, BUTLER & MITCHELL LLP
`gcordey@jmbm.com
`
`For PATENT OWNER:
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`Mark J. Murphy
`Edward D. Manzo
`HUSCH BLACKWELL
`Mark.murphy@huschblackwell.com
`Edward.manzo@huschblackwell.com
`
`Stanly A. Schlitter
`Douglas R. Peterson
`STEPTOE & JOHNSON
`Sschlitt&Steptoe.com
`dpeterson@steptoe.com
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`
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`6