`Tel: 571-272-7822
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`
`
`
` Paper 41
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`
` Entered: April 7, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SONY CORPORATION
`Petitioner
`
`v.
`
` YISSUM RESEARCH DEVELOPMENT COMPANY OF THE
`HEBREW UNIVERSITY OF JERUSALEM
`Patent Owner
`_______________
`
`Case IPR2013-00219
`Patent 7,447,284 B21
`_______________
`
`
`
`Before SALLY C. MEDLEY, KARL D. EASTHOM, and
`JAMES B. ARPIN, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`
`
`
` ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`1 IPR2013-00327 has been joined with this proceeding.
`
`
`
`Case IPR2013-00219
`Patent 7,447,284 B2
`
`
`On March 31, 2014, counsel for the respective parties and Judges Medley,
`Easthom, and Arpin participated in a conference call. The purpose of the
`conference call was to address Patent Owner’s request for an early ruling on Patent
`Owner’s objections to evidence. See Paper 39 (Patent Owner’s Objections).
`According to Patent Owner, Petitioner filed a second declaration of Dr.
`Darrell (Ex. 1044) as part of its Reply to Patent Owner’s Response (Paper 37,
`“Reply”), which improperly exceeds the scope of the reply permitted under 37
`C.F.R. § 42.23(b). Patent Owner contends that paragraphs 23–26 of that
`declaration, which discuss the prior art reference to Asahi (Ex. 1010), improperly
`add new evidence under 37 C.F.R. § 42.23(b), because neither the Petition (Paper
`3) nor Dr. Darrell’s first declaration (Ex. 1013), discuss Asahi in the particular
`context discussed in the second declaration. During the conference, Petitioner
`argued that those paragraphs constitute a proper reply to Patent Owner’s Response
`(Paper 35), because the declarant addresses relevant arguments about Asahi raised
`for the first time by Patent Owner in that paper.
`A ruling on the evidentiary objection at this stage is premature. As
`explained during the call, whether a reply contains arguments or evidence that is
`outside the scope of a proper reply under 37 C.F.R. § 42.23(b), is left to the
`ultimate determination of the Board. Specifically, we will determine whether a
`reply and evidence are outside the scope of a proper reply and evidence when we
`review all of the parties’ submissions and prepare the final written decision. If
`there are improper arguments or evidence, or both, presented with a reply, we may
`exclude the reply and related evidence.
`Patent Owner also requested a similar early ruling on its objection to
`“Wikipedia” evidence (Ex. 1042) attached to Petitioner’s Reply. Patent Owner
`objects to that evidence for reasons similar to those discussed above, and also
`
`
`
`2
`
`
`
`Case IPR2013-00219
`Patent 7,447,284 B2
`
`because that evidence allegedly violates FRE (Federal Rules of Evidence) 901
`(authentication). As discussed during the conference, Patent Owner may attach a
`relevant objection, based on FRE 901, which Patent Owner served on Petitioner,
`and submit a motion to exclude that evidence pursuant to the Scheduling Order.
`See 37 CFR § 42.64 (b), (c); Paper 17 (Scheduling Order). We will address the
`objections and motions to exclude in any final written decision.
`During the conference, we cautioned the parties that objections to evidence
`should be served, instead of filed, and discussed the possibility of expunging all of
`the objections currently of record. See 37 C.F.R. § 42.64. Although we decline to
`expunge the objections at this time, we admonish the parties to follow the
`requirements of our rules regarding future objections.
`It is
`ORDERED that Patent Owner’s request for an early ruling on its objections
`to evidence, prior to a final written decision, is denied for the reasons set forth
`above.
`
`3
`
`
`
`
`
`
`
`Case IPR2013-00219
`Patent 7,447,284 B2
`
`For Petitioner:
`
`Walter Hanley
`Michelle Carniaux
`Kenyon & Kenyon, LLP
`Petitioner-humaneyes@kenyon.com
`whanley@kenyon.com
`mccarniaux@kenyon.com
`
`For Patent Owner:
`
`David L. McCombs
`David O’Dell
`Haynes and Boone, LLP
`David.mccombs.ipr@haynesboone.com
`David.odell.ipr@haynesboone.com
`
`Robert Gerrity
`William Nelson
`Tensegrity Law Group, LLP
`Robert.gerrity@tensegritylawgroup.com
`William.nelson@tensegritylawgroup.com
`
`
`
`
`4
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