Trials@uspto.gov
`571-272-7822
`
`
` Paper No. 18
`Date Entered: April 23, 2014
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WINTEK CORPORATION,
`Petitioner.
`
`v.
`
`TPK TOUCH SOLUTIONS,
`Patent Owner.
`____________
`
`Case IPR2013-00567
`Case IPR2013-00568
`Case IPR2014-005411
`Patent 8,217,902
`____________
`
`Before JOSIAH C. COCKS, RICHARD E. RICE, and ADAM V. FLOYD
`Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 This Order addresses matters pertaining to all three identified cases. Therefore,
`we exercise our discretion to issue one Order to be filed in each case. Other than
`the motions and oppositions authorized in this Order, the parties are not authorized
`to use this style heading for any subsequent papers.
`
`
`571-272-7822
`
`
` Paper No. 18
`Date Entered: April 23, 2014
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WINTEK CORPORATION,
`Petitioner.
`
`v.
`
`TPK TOUCH SOLUTIONS,
`Patent Owner.
`____________
`
`Case IPR2013-00567
`Case IPR2013-00568
`Case IPR2014-005411
`Patent 8,217,902
`____________
`
`Before JOSIAH C. COCKS, RICHARD E. RICE, and ADAM V. FLOYD
`Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 This Order addresses matters pertaining to all three identified cases. Therefore,
`we exercise our discretion to issue one Order to be filed in each case. Other than
`the motions and oppositions authorized in this Order, the parties are not authorized
`to use this style heading for any subsequent papers.
`
`
`
`Cases IPR2013-00567; IPR2013-00568; IPR2014-00541
`Patent 8,217,902
`
`
`1. Introduction
`On April 14, 2014, a conference call (“first conference call”) in connection
`with related cases IPR2013-00567, IPR 2013-00568, and IPR2014-00541, all of
`which involve U.S. Patent No. 8, 217,902 (the “’902 patent”), was conducted
`between respective counsel for the parties and Judges Cocks, Rice, and Floyd.
`Petitioner, Wintek Corporation (“Wintek”), was represented by Joseph Palys and
`Naveen Modi. Patent Owner, TPK Touch Solutions (“TPK”), was represented by
`Joseph Richetti and David Bilsker. The call was requested by Wintek to discuss
`the following issues:
`1. TPK’s request for discovery relating to prior testimony of Wintek’s
`expert in U.S.I.T.C. Inv. No. 337-TA-750; and
`2. Wintek’s motion for joinder filed in IPR2014-00541 and proposed
`modifications to the schedule of that matter, and the schedules of
`IPR2013-00567 and IPR2013-00568, to align the schedule of the
`proceedings.
`Counsel for Wintek informed the Board that it had arranged for a court
`reporter to be present on the call. The Board stated that, when available, a
`transcript of the call should be filed as an exhibit in each inter partes review
`proceeding.
`On April 21, 2014, a second conference call (“second conference call”) was
`conducted in connection with the involved inter partes review proceedings to
`further discuss the above-noted issue #2. A court reporter was on-line for the
`second call, and counsel for Wintek was asked to provide a transcript of the call as
`an exhibit in each proceeding.
`
`
`
`2
`
`
`
`Cases IPR2013-00567; IPR2013-00568; IPR2014-00541
`Patent 8,217,902
`
`
`2. Discussion
`
`a. Issue 1
`During the first conference call, counsel for Wintek indicated that TPK had
`
`requested from Wintek production of an expert report submitted by Wintek’s
`declarant, Dr. Vivek Subramanian, in connection with a separate United States
`International Trade Commission (“ITC”) proceeding involving the ’902 patent.
`
`Counsel for TPK stated that TPK believed that the report contained
`testimony from Dr. Subramanian that is inconsistent with testimony in the involved
`inter partes review proceedings concerning the ’902 patent. TPK informed the
`Board that it drew that inference from a reference to the testimony in the decision
`of the ITC, and TPK believed that other portions of the report possibly may contain
`additional inconsistencies. TPK queried the Board as to the possibility of a Board-
`issued subpoena to pursue production of the report by a third-party or Board
`authorization for TPK to seek such a subpoena through District Court.
`
`Counsel for Wintek represented to the Board that Wintek does not believe
`that the pertinent export report from Dr. Subramanian contains statements that are
`inconsistent with those made by Dr. Subramanian in the involved inter partes
`review proceedings. Counsel for Wintek also stated that neither it nor
`Dr. Subramanian retained copies of the report. Wintek explained that the report
`had been the subject of a protective order in the ITC proceeding and that on
`conclusion of that proceeding all copies of the report had been destroyed in
`accordance with the protective order.
`
`The panel informed the parties that the Board does not have subpoena
`power. When queried, counsel for TPK agreed that when deposing
`Dr. Subramanian in the involved inter partes review proceedings, it can question
`Dr. Subramanian concerning statements made by him that appear or are referenced
`3
`
`
`
`
`
`Cases IPR2013-00567; IPR2013-00568; IPR2014-00541
`Patent 8,217,902
`
`in the written decision of the ITC in the noted proceeding. TPK also
`acknowledged that it did not know if other testimony of Dr. Subramanian in the
`expert report was inconsistent with testimony presented in the involved inter partes
`review proceedings.
`
`At this time, TPK is not authorized to seek production from Wintek or a
`third-party of Dr. Subramanian’s expert report in U.S.I.T.C. Inv. No. 337-TA-750.
`TPK, however, is authorized to file a motion seeking authorization to compel
`production of that report pursuant to 37 C.F.R. § 42.52. As a part of the motion,
`TPK should explain its basis for believing that the expert report contains
`statements from Dr. Subramanian that are inconsistent with statements made by
`Dr. Subramanian as part of these inter partes review proceedings. TPK also
`should include with the motion any underlying documentation that supports its
`belief. TPK may file the motion by no later than 5 pm Eastern Time on April 30,
`2014. The motion shall not exceed 10 pages.
`
`Should TPK file the above-noted motion, Wintek is authorized to file an
`opposition by no later than 5 pm Eastern Time on May 7, 2014. As a part of any
`opposition, Wintek should explain the circumstances surrounding the destruction
`of the pertinent expert report including where, to the best of its knowledge, any
`copies of the report (paper or electronic) are located and the dates and reasons for
`destruction of any and all copies of the report. The opposition shall not exceed 10
`pages.
`
`b. Issue 2
`Wintek filed a motion for joinder that accompanied the filing of the petition
`
`for inter partes review in IPR2014-00541. In the motion for joinder, Wintek
`“moves to join grounds 1 and 2 of this proceeding with IPR2013-00567 and
`grounds 3 and 4 of this proceeding with IPR2013-00568, or in the alternative,
`4
`
`
`
`
`
`Cases IPR2013-00567; IPR2013-00568; IPR2014-00541
`Patent 8,217,902
`
`joinder is requested of all four grounds of this proceeding with either IPR2013-
`00567 or IPR2013-00568.” IPR2014-00541, Paper 3, 1.
`
`The Board has not yet decided whether or not to institute trial in connection
`with IPR2014-00541 and has not decided the motion for joinder in that case.
`Nevertheless, during the conference call, counsel for Wintek requested that the
`“scheduling” of the IPR2014-00541 proceeding be “modified” so as to align with
`the scheduling of the IPR2013-00567 and IPR2013-00568 proceedings. More
`specifically, Wintek requested that the Board expedite the IPR2014-00541
`proceeding so as to impose a two-week time period for TPK to file its preliminary
`patent owner response in that proceeding. As support for the request, Wintek
`directed the Board to a separate inter partes review proceeding, Ariosa Diagnostics
`v. Isis Innovation Limited, IPR2013-00250 (“Ariosa”).
`
`During the first call, the panel informed Wintek that its request in connection
`with scheduling of the proceeding in IPR2014-00541 seemed premature. That the
`Board has not yet determined whether to institute trial in IPR2014-00541 means
`that there is no “scheduling” to modify. During the first conference call, counsel
`for TPK also expressed that it was not agreeable to a shortened period of two
`weeks to file a preliminary patent owner response in the IPR2014-00541
`proceeding.
`
`
`During the second conference call, the Board sought clarification of TPK’s
`view as to the possibility of expediting the preliminary patent owner response. In
`response, counsel for TPK explained that it was willing to expedite the filing of its
`preliminary patent owner response and expressed a willingness to work with
`counsel for Wintek to develop a schedule in connection with the Scheduling
`Orders in IPR2013-00567 and IPR2013-00568 and to consider the possibility of a
`
`
`
`5
`
`
`
`Cases IPR2013-00567; IPR2013-00568; IPR2014-00541
`Patent 8,217,902
`
`schedule that is agreeable to both parties should: (1) trial be instituted in IPR2014-
`00541, and (2) the motion for joinder in IPR2014-00541 be granted.
`
`The Board advised the parties that as set forth in the Scheduling Orders for
`IPR2013-00567 and IPR2013-00568, the parties may stipulate to changes in DUE
`DATES 1-3 without prior authorization from the Board and simply inform the
`Board of the stipulation via notice. The Board asked the parties to schedule a
`conference call with the Board in the event that they are unable to reach agreement
`as to changes to the Scheduling Orders. Although the Board indicated that the
`parties should also schedule a conference call if they reach agreement, no such
`conference call is necessary if the agreement involves simply stipulation of DUE
`DATES 1-3.
`
`
`
`Accordingly, it is
`
`3. Order
`
`ORDERED that TPK is not authorized at this time to seek production from
`
`Wintek or a third-party of Dr. Subramanian’s expert report in U.S.I.T.C. Inv. No.
`337-TA-750;
`
`FURTHER ORDERED that TPK is authorized to file a motion for
`authorization to compel production of that report pursuant to 37 C.F.R. § 42.52.
`The motion may be filed no later than 5 pm Eastern Time on April 30, 2014 and
`shall not exceed 10 pages;
`
`FURTHER ORDERED that Wintek is authorized to file an opposition to any
`such motion. The opposition may be filed no later than 5 pm Eastern Time on May
`7, 2014 and shall not exceed 10 pages;
`
`FURTHER ORDERED that the parties should work together to arrive at
`modifications of the Scheduling Orders in IPR2013-00567 and IPR2013-00568 to
`
`
`
`6
`
`
`
`Cases IPR2013-00567; IPR2013-00568; IPR2014-00541
`Patent 8,217,902
`
`take into account the possibility of: (1) institution of trial in IPR2014-00541, and
`(2) granting of the motion for joinder in IPR2014-00541;
`
`FURTHER ORDERED that the parties jointly should request a conference
`call with the Board in the event that they cannot reach agreement in connection
`with modifications of the Scheduling Orders; and
`
`FURTHER ORDERED that the parties do not need to schedule a conference
`call with the Board if they are able to reach agreement in connection with changes
`to the Scheduling Order that involve simply stipulation of DUE DATES 1-3.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`7
`
`
`
`Cases IPR2013-00567; IPR2013-00568; IPR2014-00541
`Patent 8,217,902
`
`
`
`
`
`PETITIONER:
`
`Joseph E. Palys
`Naveen Modi
`FINNEGAN, HENDERSON, FARABOW
`GARRETT & DUNNER, L.L.P.
`joseph.palys@finnegan.com
`naveen.modi@finnegan.com
`
`PATENT OWNER:
`
`Joseph J. Richetti
`BRYAN CAVE LLP
`joe.richetti@bryancave.com
`
`David Bilsker
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`davidbilsker@quinnemanuel.com
`
`
`
`
`
`
`
`
`8
`
`
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
