Paper 22 (IPR2014-00041)
`Paper 23 (IPR2014-00043)
`Paper 21 (IPR2014-00051)
`Paper 18 (IPR2014-00054)
`Paper 14 (IPR2014-00055)
`Entered: April 15, 2014
`
`
`
`Trials@uspto.gov
`
`571-272-7822
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GEA PROCESS ENGINEERING, INC.
`Petitioner
`
`v.
`
`STEUBEN FOODS, INC.
`Patent Owner
`____________
`
`Cases1
`IPR2014-00041 (Patent 6,945,013 B2)
`IPR2014-00043 (Patent 6,475,435 B1)
`IPR2014-00051 (Patent 6,209,591 B1)
`IPR2014-00054 (Patent 6,481,468 B1)
`IPR2014-00055 (Patent 6,536,188 B1)
`
`
`Before RAMA G. ELLURU, BEVERLY M. BUNTING, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`ELLURU, Administrative Patent Judge.
`
`ORDER
`
`
`1 This order addresses issues raised in all five cases. We exercise our
`discretion to issue one order to be filed in each case. The parties, however,
`are not authorized to use this style heading in subsequent papers.
`
`
`Paper 23 (IPR2014-00043)
`Paper 21 (IPR2014-00051)
`Paper 18 (IPR2014-00054)
`Paper 14 (IPR2014-00055)
`Entered: April 15, 2014
`
`
`
`Trials@uspto.gov
`
`571-272-7822
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GEA PROCESS ENGINEERING, INC.
`Petitioner
`
`v.
`
`STEUBEN FOODS, INC.
`Patent Owner
`____________
`
`Cases1
`IPR2014-00041 (Patent 6,945,013 B2)
`IPR2014-00043 (Patent 6,475,435 B1)
`IPR2014-00051 (Patent 6,209,591 B1)
`IPR2014-00054 (Patent 6,481,468 B1)
`IPR2014-00055 (Patent 6,536,188 B1)
`
`
`Before RAMA G. ELLURU, BEVERLY M. BUNTING, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`ELLURU, Administrative Patent Judge.
`
`ORDER
`
`
`1 This order addresses issues raised in all five cases. We exercise our
`discretion to issue one order to be filed in each case. The parties, however,
`are not authorized to use this style heading in subsequent papers.
`
`
`
`IPR2014-00041 (Patent 6,945,013 B2)
`IPR2014-00051 (Patent 6,209,591 B1)
`IPR2014-00043 (Patent 6,475,435 B1)
`IPR2014-00054 (Patent 6,481,468 B1)
`IPR2014-00055 (Patent 6,536,188 B1)
`
`
`A conference call in IPR2014-00041, IPR2014-00051, IPR2014-
`
`00054 and IPR2014-00055 was held on April 8, 2014, among respective
`
`counsel for Petitioner, GEA Process Engineering, Inc. (“GEA”), and Patent
`
`Owner, Steuben Foods, Inc. (“Steuben Foods”), and Judges Elluru,
`
`DeFranco, and Bunting. The purpose of the call was to discuss a joint
`
`proposal concerning: (1) Steuben Foods’ proposed motion to disqualify
`
`Petitioner’s witness, Joseph Dunn, Ph.D. (“Dr. Dunn”), who submitted a
`
`declaration in support of the petitions in the above identified cases; and (2)
`
`an impasse between the parties concerning the production of documents
`
`allegedly in the possession of Dr. Dunn, reflecting communications between
`
`Dr. Dunn and Steuben Foods that allegedly took place prior to GEA filing
`
`the instant petitions.
`
`A conference call in 2014-00043 was held on April 14, 2014, among
`
`respective counsel for GEA and Steuben Foods, and Judges Elluru,
`
`DeFranco, and Bunting. The purpose of the call was to discuss GEA’s
`
`request for authorization to file a renewed motion for a stay or consolidation
`
`of the parallel reexamination of U.S. Patent No. 6,475,435 (“the ’435
`
`patent”), the patent at issue at issue in the 2014-00043 case. See Reexam.
`
`Control No. 90/012,135.
`
`IPR2014-00043
`
`
`
`In support of its request to file a motion to stay or consolidate the
`
`parallel reexamination of the ’435 patent, GEA asserted that the final office
`
`action issued in the reexamination on March 28, 2014, adopted a claim
`
`construction that is inconsistent with a claim construction adopted by us in
`
`2
`
`
`
`
`
`
`
`
`
`IPR2014-00041 (Patent 6,945,013 B2)
`IPR2014-00051 (Patent 6,209,591 B1)
`IPR2014-00043 (Patent 6,475,435 B1)
`IPR2014-00054 (Patent 6,481,468 B1)
`IPR2014-00055 (Patent 6,536,188 B1)
`
`our decision instituting review of the ’435 patent (“Dec.”), issued on March
`
`10, 2014. GEA further asserted that, based on the claim construction that is
`
`inconsistent with ours, the Examiner confirmed certain original claims and
`
`allowed new claims. Specifically, GEA alleged that while we construed the
`
`limitation “maintaining” specified “sterilant concentration levels” as a
`
`functional limitation of intended use (Dec. 12-13), the Examiner construed
`
`the limitation as a structural limitation. Steuben Foods argued that there was
`
`no inconsistency between claim constructions because we also stated that
`
`maintaining different sterilant concentration levels in different zones of a
`
`sterilizing system was a known, result effective parameter (Dec. 14).
`
`Steuben Foods also noted that even assuming the existence of inconsistent
`
`claim constructions, the only overlap in the asserted prior art references in
`
`the two proceedings is Scholle.
`
`
`
`Because we are persuaded that there exists the potential for conflicting
`
`decisions in the reexamination and in the present inter partes review based
`
`on inconsistent claim constructions, we grant GEA authority to file a motion
`
`for stay or consolidation of the parallel reexamination. We further authorize
`
`Steuben Foods to file an opposition.
`
`
`
`IPR2014-00041, IPR2014-00051, IPR2014-00054 and IPR2014-00055
`
`The April 8 call focused on the impasse regarding the production of
`
`documents as that production influences a possible motion to disqualify.
`
`Steuben Foods alleged that Dr. Dunn possesses a draft declaration prepared
`
`by Steuben Foods in a reexamination proceeding relating to patent(s) in
`
`3
`
`
`
`
`
`
`
`
`
`IPR2014-00041 (Patent 6,945,013 B2)
`IPR2014-00051 (Patent 6,209,591 B1)
`IPR2014-00043 (Patent 6,475,435 B1)
`IPR2014-00054 (Patent 6,481,468 B1)
`IPR2014-00055 (Patent 6,536,188 B1)
`
`these inter partes review cases. Steuben Foods alleged it forwarded the draft
`
`declaration to Dr. Dunn, while under the impression that Steuben Foods and
`
`Dr. Dunn had a relationship (i.e., Steuben Foods believed it had retained Dr.
`
`Dunn) pursuant to an oral agreement. Steuben Foods alleged that it has a
`
`copy of the cover letter forwarding the draft declaration, but not the
`
`declaration itself. Steuben Foods further alleged that its counsel conducted a
`
`conference call with Dr. Dunn after sending the declaration to Dr. Dunn.
`
`GEA alleged, based on its current communications with Dr. Dunn,
`
`that: (1) Steuben Foods’ counsel forwarded a draft declaration to Dr. Dunn,
`
`asking him to sign it; (2) Dr. Dunn never signed the declaration or any other
`
`document provided by Steuben Foods; and (3) Dr. Dunn never agreed to be
`
`retained by Steuben Foods. GEA further alleged that it does not know
`
`whether the declaration contains privileged/work-product information
`
`because it has not seen it.
`
`Steuben Foods further alleged that, after forwarding the draft
`
`declaration, Steuben Foods’ counsel sent a Nondisclosure Agreement to Dr.
`
`Dunn, which indicated, in a preamble, an understanding that Steuben Foods
`
`was under an agreement with Dr. Dunn as its declarant in the reexamination
`
`proceeding. GEA alleged that Dr. Dunn did not sign the Nondisclosure
`
`Agreement after he declined to be a declarant for Steuben Foods. GEA
`
`further alleged that Dr. Dunn never billed Steuben Foods for any work.
`
`Steuben Foods seeks the draft declaration from Dr. Dunn. GEA stated
`
`that it was not willing to request the document from Dr. Dunn, and produce
`
`it through GEA’s counsel, because Steuben Foods potentially could move to
`
`4
`
`
`
`
`
`
`
`
`
`IPR2014-00041 (Patent 6,945,013 B2)
`IPR2014-00051 (Patent 6,209,591 B1)
`IPR2014-00043 (Patent 6,475,435 B1)
`IPR2014-00054 (Patent 6,481,468 B1)
`IPR2014-00055 (Patent 6,536,188 B1)
`
`disqualify GEA’s counsel from representing GEA in this proceeding based
`
`on its possible review of allegedly privileged/work-product information in
`
`the draft declaration. Thus, Steuben Foods requested the Board to either
`
`order GEA to instruct Dr. Dunn to produce the document to Steuben Foods
`
`or authorize Steuben Foods to move pursuant to 37 C.F.R. § 41.52 to compel
`
`production of the draft declaration via a district court subpoena to Dr. Dunn.
`
`On the April 14 call with the parties, we further questioned the parties
`
`about this discovery issue. Steuben Foods asserted that it sought the draft
`
`declaration as well as any other potential documents from Dr. Dunn.
`
`Steuben Foods further asserted that the discovery would reflect the
`
`relationship and the substance of conversations between Dr. Dunn and
`
`Steuben Foods regarding legal positions. GEA reiterated its position that
`
`there was no relationship and no signed agreement between Dr. Dunn and
`
`Steuben Foods.
`
`
`
`Steuben Foods’ Request for Authorization to Move to Compel Document(s)
`
`We decline, at this time, to order GEA to instruct Dr. Dunn to produce
`
`the draft declaration through GEA’s counsel. Steuben Foods did not
`
`sufficiently demonstrate that GEA can instruct Dr. Dunn to produce the
`
`declaration at issue. Even if GEA could instruct Dr. Dunn to do so, Steuben
`
`Foods has not explained why the mode of delivery should be through GEA’s
`
`counsel if, as alleged by Steuben Foods, the declaration contains
`
`privileged/work-product information. We are persuaded, however, to
`
`authorize Steuben Foods to file a motion with the Board seeking
`
`5
`
`
`
`
`
`
`
`
`
`IPR2014-00041 (Patent 6,945,013 B2)
`IPR2014-00051 (Patent 6,209,591 B1)
`IPR2014-00043 (Patent 6,475,435 B1)
`IPR2014-00054 (Patent 6,481,468 B1)
`IPR2014-00055 (Patent 6,536,188 B1)
`
`authorization to compel production of the document(s) pursuant to 37 C.F.R.
`
`§ 41.52.
`
`The Office does not have authority to issue a subpoena for the
`
`production of documents. Production of documents is compelled through a
`
`subpoena from a United States District Court. See 35 U.S.C. § 24. Section
`
`42.52 of our Rules provides procedures for compelling the production of
`
`documents. 37 C.F.R. § 41.52. Section 42.52(a) requires the party seeking
`
`to compel production of documents to first obtain authorization from the
`
`Board; otherwise, the compelled evidence will not be admitted in the
`
`proceeding. The motion for authorization must describe the general
`
`relevance of each document and the general nature of the document. Id. at
`
`§ 42.52(a)(2). In addition, Steuben Foods’ motion shall be accompanied by
`
`a declaration from Steuben Foods’ counsel attesting to the facts
`
`substantiating what agreement Steuben Foods asserts existed between
`
`Steuben Foods and Dr. Dunn when the declaration was allegedly sent to Dr.
`
`Dunn.
`
`GEA is authorized to file an opposition to Steuben Foods’ motion.
`
`
`
`Guidance Regarding Whether to File Second Declaration as Supplemental
`Information
`
`
`
`GEA sought guidance on whether GEA should file a declaration by
`
`Mr. Spinak as “supplemental information” pursuant to 37 C.F.R. § 42.123.
`
`GEA asserted that in response to Steuben Foods’ objection to Dr. Dunn’s
`
`declaration, GEA “served” a substitute declaration by Mr. Spinak to Steuben
`
`6
`
`
`
`
`
`
`
`
`
`IPR2014-00041 (Patent 6,945,013 B2)
`IPR2014-00051 (Patent 6,209,591 B1)
`IPR2014-00043 (Patent 6,475,435 B1)
`IPR2014-00054 (Patent 6,481,468 B1)
`IPR2014-00055 (Patent 6,536,188 B1)
`
`Foods pursuant to 37 C.F.R. § 42.64. GEA further asserted that Steuben
`
`Foods responded that Mr. Spinak’s declaration should be “filed” as
`
`supplemental information pursuant to Rule 42.123. Steuben Foods asserted
`
`that the substitute declaration should be filed so that the record is clear as to
`
`which declarant GEA is relying upon. Steuben Foods asserted that Mr.
`
`Spinak’s declaration is “identical” to that of Dr. Dunn. GEA stated that it is
`
`willing to file Mr. Spinak’s declaration as “supplemental information”
`
`pursuant to Rule 123, but noted that Rule 123(a)(1) requires parties to seek
`
`authorization to file a motion to submit supplemental information within one
`
`month of the date the trial is instituted. Steuben Foods asserted that it did
`
`not object to GEA making the request more than one month after institution.
`
`See Rule 123(b) (late submission of supplemental information).
`
`
`
`At our request, the parties agreed to meet and confer regarding GEA’s
`
`two declarants. If Steuben Foods agreed that Mr. Spinak’s declaration could
`
`properly substitute Dr. Dunn’s declaration, it would obviate the issues
`
`related to Dr. Dunn, namely Steuben Foods’ motion to compel document(s)
`
`pursuant to Rule 42.52 and a possible motion to disqualify Dr. Dunn. The
`
`parties agreed to inform us of the result of the meet and confer and that the
`
`current schedule for the two motions addressed in this Order would stay in
`
`7
`
`
`
`place.
`
`
`
`
`
`
`
`IPR2014-00041 (Patent 6,945,013 B2)
`IPR2014-00051 (Patent 6,209,591 B1)
`IPR2014-00043 (Patent 6,475,435 B1)
`IPR2014-00054 (Patent 6,481,468 B1)
`IPR2014-00055 (Patent 6,536,188 B1)
`
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that GEA is authorized to file a motion to stay or
`
`consolidate the parallel reexamination of the ’435 patent no later than
`
`Friday, April 18, 2014, consisting of no more than 5 pages;
`
`FURTHER ORDERED that Steuben Foods is authorized to file an
`
`opposition to GEA’s motion for stay or consolidation no later than Friday,
`
`April 25, 2014, consisting of no more than 5 pages;
`
`FURTHER ORDERED that Steuben Foods is authorized to file a
`
`motion to compel the production of document(s) by Dr. Dunn pursuant to 37
`
`C.F.R. § 42.52 no later than Friday, April 18, 2014, consisting of no more
`
`than 5 pages;
`
`FURTHER ORDERED that GEA is authorized to file an opposition
`
`to Steuben Foods’ motion to compel the production of document(s) by Dr.
`
`Dunn no later than Friday, April 25, 2014, consisting of no more than 5
`
`pages; and
`
`FURTHER ORDERED that GEA and Steuben Foods meet and confer
`
`regarding the substitution of Mr. Spinak’s declaration for Dr. Dunn’s
`
`declaration and any related issues.
`
`8
`
`
`
`
`
`
`
`
`
`
`
`IPR2014-00041 (Patent 6,945,013 B2)
`IPR2014-00051 (Patent 6,209,591 B1)
`IPR2014-00043 (Patent 6,475,435 B1)
`IPR2014-00054 (Patent 6,481,468 B1)
`IPR2014-00055 (Patent 6,536,188 B1)
`
`PETITIONER:
`
`William P. Atkins
`Benjamin Kiersz
`PILLSBURY WINTHROP SHAW PITTMAN LLP
`1650 Tysons Boulevard,
`McLean, VA 22102
`william.atkins@pillsburylaw.com
`benjamin.kiersz@pillsburylaw.com
`
`
`
`PATENT OWNER:
`
`Greg H. Gardella
`Kevin B. Laurence
`OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, L.L.P.
`1940 Duke Street
`Alexandria, VA 22314
`CPDocketGardella@oblon.com
`CPDocketLaurence@oblon.com
`
`9
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