Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` Paper 23
`
`
` Entered: June 5, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CARL ZEISS SMT GMBH
`Petitioner
`
`v.
`
`NIKON CORPORATION
`Patent Owner
`
`
`Case IPR2013-00362
`Patent 7,348,575 B2
`
`
`
`Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` Paper 23
`
`
` Entered: June 5, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CARL ZEISS SMT GMBH
`Petitioner
`
`v.
`
`NIKON CORPORATION
`Patent Owner
`
`
`Case IPR2013-00362
`Patent 7,348,575 B2
`
`
`
`Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`Case IPR2013-00362
`Patent 7,348,575 B2
`
`
`A conference call was held on June 3, 2014, involving respective
`
`counsel for Petitioner and Patent Owner, and Judges Medley, Blankenship,
`
`and Clements. The purpose of the call was for Patent Owner to seek
`
`authorization to file a motion to strike the Petitioner’s Reply (Paper 22,
`
`“Reply”) and the declaration of Mr. Richard Juergens (Exhibit 1036).1
`
`Other issues were discussed as well, and are addressed herein.
`
`Proper procedure for requesting a conference call
`
`
`
`The parties were reminded of the proper procedure for requesting a
`
`conference call and the appropriate content of any email filed with the Board
`
`regarding a conference call. In particular, an email requesting a conference
`
`call should copy the other party to the proceeding, indicate generally the
`
`relief being requested or the subject matter of the conference call, state
`
`whether the opposing party opposes the request, and include times when all
`
`parties are available. See Technical Issue 3 on the Board’s website
`
`(http://www.uspto.gov/ip/boards/bpai/prps.jsp).
`
`Motion to Strike
`
`According to Patent Owner, Petitioner filed a second declaration of
`
`Mr. Richard Juergens in support of Petitioner’s Reply to Patent Owner’s
`
`Response, and the declaration, and the reply which relies on the declaration,
`
`improperly exceed the scope of what is permitted under 37 C.F.R.
`
`§ 42.23(b). Specifically, Patent Owner argued that Petitioner relied, for the
`
`
`
`1 Although the request for the conference call requests striking all supporting
`exhibits filed with the Petitioner’s reply, we understand that Patent Owner
`seeks authorization only to strike Exhibit 1036.
`2
`
`
`
`Case IPR2013-00362
`Patent 7,348,575 B2
`
`first time, upon results of testing performed by Mr. Juergens that should
`
`have been presented in connection with Petitioner’s Petition. Petitioner
`
`argued that the evidence and arguments presented in its Reply were
`
`necessitated by the arguments made in the Patent Owner’s Response.
`
`Upon consideration of the arguments made, the Board has determined
`
`that a ruling 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 determination of the Board.
`
`Specifically, the Board will determine whether a reply and evidence are
`
`outside the scope of a proper reply and evidence when the Board reviews all
`
`of the parties’ briefs and evidence and prepares the final written decision. If
`
`there are improper arguments and evidence presented with a reply, the Board
`
`may exclude the reply and related evidence. Accordingly, Patent Owner’s
`
`request to file a motion to strike is denied.
`
`In addition to the above, the Board explained that a motion to exclude
`
`would not be the proper forum for raising the same arguments presented
`
`during the call for excluding either the Reply or Exhibit 1036. The parties
`
`may raise issues related to admissibility of evidence (e.g., authenticity or
`
`hearsay) in a motion to exclude. See 37 C.F.R. §§ 42.64 and 42.62. In
`
`contrast, issues related to credibility, the weight of the evidence, or the
`
`sufficiency of evidence should not be raised in the form of a motion to
`
`exclude.
`
`
`
`3
`
`
`
`Case IPR2013-00362
`Patent 7,348,575 B2
`
`
`Motion for observation
`
`As discussed, Patent Owner is permitted to cross-examine reply
`
`declarants, and if necessary, Patent Owner may file a motion for observation
`
`regarding cross-examination of a reply witness by DUE DATE 4. Per the
`
`Scheduling Order (Paper 11), a motion for observation on cross-examination
`
`is a mechanism to draw the Board’s attention to relevant cross-examination
`
`testimony of a reply witness. The observation must be a concise statement
`
`of the relevance of precisely identified testimony to a precisely identified
`
`argument or portion of an exhibit (including another part of the same
`
`testimony). An observation is not an opportunity to raise new issues, to re-
`
`argue issues, or to pursue objections. Each observation should be in the
`
`following form:
`
`In exhibit ___, on page ___, lines ___, the witness testified ___.
`That testimony is relevant to the ____ [stated or argued] on
`page ___, lines ___ of ___. The testimony is relevant because
`___.
`
`
`Each observation should not exceed one short paragraph. The Board
`
`may decline consideration or entry of argumentative observations. A motion
`
`for observation is limited to 15 pages and is due by DUE DATE 4.
`
`Petitioner may file a response by DUE DATE 5, limited to 15 pages.
`
`
`
`
`
`
`
`
`
`
`
`4
`
`
`
`Case IPR2013-00362
`Patent 7,348,575 B2
`
`
`It is
`
`ORDERED that Patent Owner’s request to file a motion to strike is
`
`denied;
`
`FURTHER ORDERED that Patent Owner is authorized to file a
`
`motion for observation on cross-examination by DUE DATE 4 consistent
`
`with this order; and
`
`FURTHER ORDERED that Petitioner is authorized to file a response
`
`to any motion for observation by DUE DATE 5 consistent with this order.
`
`
`
`
`
`
`
`
`
`For PETITIONER:
`
`
`Marc M. Wefers, Esq.
`Chris C. Bowley, Esq.
`Fish & Richardson, P.C.
`wefers@fr.com
`bowley@fr.com
`
`
`
`For PATENT OWNER:
`
`John S. Kern, Esq.
`Robert C. Mattson, Esq.
`Oblon Spivak
`CPdocketKern@oblon.com
`CPdocketMattson@oblon.com
`
`
`5
`
`
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
