`571-272-7822
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` Paper 31
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` Entered: September 22, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`PNY TECHNOLOGIES, INC.
`Petitioner
`
`v.
`
`PHISON ELECTRONICS CORP.
`Patent Owner
`____________
`
`Case IPR2013-004721
`Patent 7,518,879
`____________
`
`
`Before KEVIN F. TURNER, STEPHEN C. SIU, and
`RAMA G. ELLURU, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`1 Case IPR2014-00150 has been joined with this proceeding.
`
`
`
`IPR2013-00472
`Patent 7,518,879
`
`A conference call in the above proceeding was held on September 19,
`2014, between respective counsel for Petitioner and Patent Owner, and
`Judges Turner, Siu and Elluru. The purpose of the call was to discuss
`objections raised by Patent Owner. In brief, Patent Owner alleges that
`Petitioner’s Reply raises new arguments and evidence (Exhibit 1007)
`contrary to 37 C.F.R. § 42.23(b), and mischaracterizes the record. Petitioner
`denies those allegations.
`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. 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
`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, for example. For all of these reasons, we will take under
`consideration any alleged violations in due course with respect to
`Petitioner’s Reply and Exhibit 1007, upon considering the record at the end
`of the trial.
`We also explained that Patent Owner may be able to file a motion to
`exclude evidence with respect to Exhibit 1007, if a proper basis for
`exclusion exists. In addition, the Trial Practice Guide makes it clear that a
`motion to exclude must explain why the evidence is not admissible and that
`it is not the proper venue to argue the sufficiency of evidence. See Office
`Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48767 (Aug. 14, 2012).
`
`2
`
`
`
`IPR2013-00472
`Patent 7,518,879
`
`We also indicated that if Patent Owner believed that portions of the
`Reply mischaracterize the record, arguments to that effect can be raised at
`the oral hearing. We further indicated that an order on the oral hearing will
`be forthcoming, irrespective of whether Petitioner files a request for oral
`hearing.
`Patent Owner also requested to be allowed to submit definitions of the
`word “indentation” from other dictionary sources already relied upon in this
`proceeding. Petitioner’s Exhibit 1007 provided the dictionary definition of
`“indentation” from the American Heritage Dictionary of the English
`Language. Patent Owner wishes to submit definitions of the same from
`Collins English Dictionary and Webster New World Dictionary, where those
`sources have already been cited for other terms. Petitioner had no objections
`to such a submission, and we authorize the filing of an exhibit with
`definitions of “indentation,” where any such exhibit submitted should
`provide the cited definitions without exposition or commentary.
`We also remind the parties that a request for a conference call should
`be brief and should not expound on the substantive issues to be discussed in
`the conference call itself.
`
`
`Order
`
`
`
`It is
`ORDERED that Patent Owner is authorized to file an exhibit
`
`containing definitions of “indentation” from other dictionary sources already
`relied upon in this proceeding, without exposition or commentary.
`
`
`
`3
`
`
`
`IPR2013-00472
`Patent 7,518,879
`
`For PETITIONER:
`Mark E. Nikolsky
`Sanjiv M. Chokshi
`McCARTER & ENGLISH LLP
`mnikolsky@mccarter.com
`schokshi@mccarter.com
`
`
`For PATENT OWNER:
`Joshua A. Griswold
`David M. Hoffman
`FISH & RICHARDSON P.C.
`griswold@fr.com
`hoffman@fr.com
`
`
`4
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`
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