Trials@uspto.gov
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 32 (IPR2014-00041)
`Paper 31 (IPR2014-00043)
`Paper 31 (IPR2014-00051)
`Paper 28 (IPR2014-00054)
`Paper 24 (IPR2014-00055)
`Entered: May 23, 2014
`
`
`
`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.
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 32 (IPR2014-00041)
`Paper 31 (IPR2014-00043)
`Paper 31 (IPR2014-00051)
`Paper 28 (IPR2014-00054)
`Paper 24 (IPR2014-00055)
`Entered: May 23, 2014
`
`
`
`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)
`IPR2014-00043 (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)
`
`
`A conference call in IPR2014-00041, IPR2014-00043, IPR2014-
`00051, IPR2014-00054 and IPR2014-00055 was held on May 21, 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: (1) a discovery dispute between the parties; (2) Steuben Foods’
`motions to amend; and (3) GEA’s motions to seal and entry of a protective
`order. A court reporter was present on the call, and Petitioner indicated that
`it would file a copy of the hearing transcript as an exhibit.2
`Discovery Dispute
`In our decision denying Steuben Foods’ rehearing request asking us to
`reconsider our decision denying additional discovery relating to the
`identification of real parties-in-interest (“RPI”) in the petitions, we ordered
`the parties to try to reach agreement about appropriate and narrowly focused
`additional discovery. Paper 29, 4.3 The parties represented that GEA
`continues to assert that Steuben Foods has waived the right to seek
`additional discovery relating to the identification of real parties-in-interest,
`and Steuben Food disagrees. Steuben Foods also asserted that it did not
`
`
`2 This order summarizes the statements made during the conference call. A
`more detailed record may be found in the transcript.
`
` 3
`
` While the analysis herein applies to each of these trials, we refer to the
`papers and exhibits filed in IPR2014-00041 for convenience.
`
`
`
`
`
`2
`
`
`
`
`
`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)
`
`raise the section 312(a) issue before we instituted trials because it was not in
`possession of evidence of which it is currently aware.
`GEA maintains that Steuben Foods waived its right to raise any
`challenges pursuant to 35 U.S.C. § 312(a) (“Requirements of Petition”) by
`failing to raise the issue in a preliminary patent owner response, or before
`we instituted inter partes reviews in these cases. GEA argued that the issue
`of whether all RPIs have been properly identified in a petition is a “petition
`completeness” issue that must be raised before institution, and is not a
`“standing” issue that may be raised at any time during the trial. GEA, thus,
`argued that because Steuben Foods allegedly waived its right to raise a
`section 312(a) issue, the additional discovery sought by Steuben Foods is not
`relevant, and therefore, cannot be in the “interest of justice.” See Garmin
`Int’l, Inc. v. Cuozzo Speed Techs, IPR2012-00001, Paper 20 at 2-3
`(identifying factors to be considered in determining whether additional
`discovery is warranted).
`We declined to decide whether a section 312(a) issue is a “petition
`completeness” or “standing” issue because the discovery sought by Steuben
`Foods may be relevant under either circumstance. We noted that GEA’s
`objections to providing the discovery sought by Steuben Foods speak to the
`use of the discovery. We noted that even if a failure to properly identify a
`RPI in the petition is not a standing issue, the discovery sought by Steuben
`Foods may still be relevant to, for example, possibly sanctioning GEA for
`failing to properly identify the RPI in its petitions. We asked Steuben Foods
`whether it would be interested in renewing its request for authorization to
`
`
`3
`
`
`
`
`
`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)
`
`file another motion for additional discovery and Steuben Foods responded in
`the affirmative. We informed Steuben Foods that any discovery requests
`proposed by GEA should be narrowly focused given the issues we have
`discussed. We further indicated that GEA’s proposed requests do not have
`to be limited to discovery relating to GEA’s sister company Procomac, but
`also may include discovery relating to GEA’s parent company. We note,
`however, that in our rehearing decision we determined that “some level of
`additional discovery might be justified if Patent Owner presented an
`adequate foundation for discovery that was sufficiently narrowly tailored to
`GEA’s statement in the District Court proceeding and to Procomac’s
`“control and/or funding.” Paper 29, 3-4. Thus, while we give Steuben
`Foods some leeway in drafting its proposed discovery requests, the evidence
`that persuaded us that additional discovery may be warranted is GEA’s
`statement in the District Court litigation that the instant review proceedings
`would simplify the District Court litigation by statutorily limiting GEA’s
`(collectively, GEA and Procomac) invalidity defenses. Id. at 2.
`We stated that prior to deciding whether to authorize the filing by
`Steuben Foods of a motion for additional discovery, we would like to see the
`discovery requests. Steuben Foods agreed to provide the proposed discovery
`requests to us by this Friday, May 23, 2014. Steuben Foods should file the
`proposed discovery requests in a paper captioned “Proposed Discovery
`Requests for Additional Discovery.” See IPR2013-00586, Unified Patents,
`Inc. v. Clouding IP, LLC (Papers 12, 15). We note that a successful motion
`
`
`
`
`
`4
`
`
`
`
`
`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)
`
`for additional discovery will need to show how all the Garmin factors are
`satisfied. See Garmin Int’l, IPR2012-00001, Paper 20 at 2-3.
`
`Protective Order and Motions to Seal
`
`The parties requested that we enter the default Protective Order in the
`record of all five cases noted above. See Office Patent Trial Practice Guide,
`Appendix B, 77 Fed. Reg. 48769-71 (Aug. 14, 2012). We authorized entry
`of the Board’s default Protective Order in all five cases identified in the
`caption of this Order. See, e.g., IPR2014-00041, Ex. 1043. GEA sought
`authorization to file a Motion to Seal portions of the deposition transcript of
`Mr. Spinak in IPR2014-00041 and IPR 00051, IPR2014-00054, and
`IPR2014-00055, which we granted. We further authorized Steuben Foods to
`file the transcript of the teleconference with a Motion to Seal portions of the
`transcript.
`
`Motion to Amend
`
`Steuben Foods sought guidance on filing motions to amend in
`IPR2014-00041 and IPR2014-00054. We stated that Steuben Foods’
`requirement that it confer with the panel before filing such motions to amend
`had been satisfied by the instant teleconference. See 37 C.F.R. § 42.121(a).
`We further stated that Steuben Foods should make assertions as to any prior
`art and discuss any patentability issues of which it is aware in its motions to
`amend.
`We further direct Steuben Foods to the discussion in Idle Free
`Systems, Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 26, which sets forth
`
`
`
`
`
`5
`
`
`
`
`
`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)
`
`in detail the requirements of a motion to amend.4 In particular, in the
`absence of special circumstances, a challenged claim can be replaced by
`only one claim. 37 C.F.R. § 42.121(a)(3). Furthermore, a motion to amend
`should, for each proposed substitute claim, specifically identify the
`challenged claim it is intended to replace. Given the burden on a patent
`owner to demonstrate patentability of any substitute claim, the Board
`encourages Steuben Foods, if feasible, to begin its analysis by proposing
`amendments to the independent claims. See Idle Free at 9-10 (discussing
`amending dependent claims).
`
`
`
`4 Further guidance on motions to amend may be found in Unified Patents,
`Inc. v. Clouding IP, LLC, IPR2013-00586 (Paper 16); International Flavors
`& Fragrances Inc. v. The United States of America, as Represented by the
`Secretary of Agriculture, IPR2013-000124 (Papers 10, 12) (granting in part
`Patent Owner’s Motion to Amend).
`
`
`
`
`6
`
`
`
`
`
`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)
`
`
`In consideration of the foregoing, it is hereby:
`ORDERED that the Board’s default Protective Order (IPR2014-
`00041, Ex. 1043) is entered in all five cases identified in the caption of this
`Order;
`FURTHER ORDERED that Steuben Foods shall file the transcript of
`the May 21, 2014, teleconference as an exhibit in all five cases identified in
`the caption of this Order and move to file certain portions of the transcript
`under seal;
`FURTHER ORDERED that GEA is authorized to file a Motion to
`Seal portions of the deposition transcript of Mr. Spinak in IPR2014-00041
`and IPR 00051, IPR2014-00054, and IPR2014-00055;
`FURTHER ORDERED that by Friday, May 23, 2014, Steuben Foods
`shall file a set of “proposed” discovery requests in all five cases identified in
`the caption of this Order, and label the submission as “Steuben Foods’ First
`Proposed Discovery Requests”; and
`FURTHER ORDERED that Steuben Foods has satisfied the
`requirement pursuant to 37 C.F.R. § 42.121(a) to confer with the panel prior
`to filing motions to amend in IPR2014-00041 and IPR2014-00054.
`
`
`
`
`
`
`7
`
`
`
`
`
`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)
`
`PETITIONER:
`William P. Atkins
`Benjamin Kiersz
`PILLSBURY WINTHROP SHAW PITTMAN LLP
`william.atkins@pillsburylaw.com
`benjamin.kiersz@pillsburylaw.com
`
`
`PATENT OWNER:
`Greg H. Gardella
`Kevin B. Laurence
`OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, L.L.P.
`CPDocketGardella@oblon.com
`CPDocketLaurence@oblon.com
`
`
`
`
`
`
`
`
`8
`
`
`
`
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