`571-272-7822
`
`
` Paper No. 8
`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
`
`
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`
`
`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
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`
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`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
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`
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`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
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`
`
`
`
`
`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