Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 4
`Entered: June 11, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MACRONIX INTERNATIONAL CO., LTD., MACRONIX ASIA
`LIMITED, MACRONIX (HONG KONG) CO., LTD., and
`MACRONIX AMERICA, INC.,
`Petitioner,
`
`v.
`
`SPANSION LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00103 (Patent 6,369,416 B1)
`Case IPR2014-00104 (Patent 6,459,625 B1)
`Case IPR2014-00105 (Patent 6,731,536 B1)
`Case IPR2014-00108 (Patent 7,151,027 B1)
`Case IPR2014-00898 (Patent 7,151,027 B1)1
`
`
`
`
`
`Before HOWARD B. BLANKENSHIP, DEBRA K. STEPHENS,
`KRISTEN L. DROESCH, JUSTIN T. ARBES, and
`RICHARD E. RICE, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`1 This Order addresses issues pertaining to all five cases. We exercise our
`discretion to issue one Order to be filed in each case. The parties are not
`authorized to use this style heading for any subsequent papers.
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 4
`Entered: June 11, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MACRONIX INTERNATIONAL CO., LTD., MACRONIX ASIA
`LIMITED, MACRONIX (HONG KONG) CO., LTD., and
`MACRONIX AMERICA, INC.,
`Petitioner,
`
`v.
`
`SPANSION LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00103 (Patent 6,369,416 B1)
`Case IPR2014-00104 (Patent 6,459,625 B1)
`Case IPR2014-00105 (Patent 6,731,536 B1)
`Case IPR2014-00108 (Patent 7,151,027 B1)
`Case IPR2014-00898 (Patent 7,151,027 B1)1
`
`
`
`
`
`Before HOWARD B. BLANKENSHIP, DEBRA K. STEPHENS,
`KRISTEN L. DROESCH, JUSTIN T. ARBES, and
`RICHARD E. RICE, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`1 This Order addresses issues pertaining to all five cases. We exercise our
`discretion to issue one Order to be filed in each case. The parties are not
`authorized to use this style heading for any subsequent papers.
`
`
`
`Cases IPR2014-00103, IPR2014-00104, IPR2014-00105,
`IPR2014-00108, and IPR2014-00898
`
`
`An initial conference call in Cases IPR2014-00103, IPR2014-00104,
`
`IPR2014-00105, and IPR2014-00108 was held on June 5, 2014, among
`
`respective counsel for Petitioner and Patent Owner, and Judges Blankenship,
`
`Stephens, Droesch, Arbes, and Rice. The purpose of the call was to discuss
`
`any proposed changes to the Scheduling Order in each proceeding and any
`
`motions the parties intend to file. Prior to the call, the parties filed lists of
`
`proposed motions. See IPR2014-00103, Paper 11; IPR2014-00104, Papers
`
`12, 13; IPR2014-00105, Papers 16, 17; IPR2014-00108, Paper 18. A
`
`subsequent conference call was held on June 9, 2014, regarding Cases
`
`IPR2014-00108 and IPR2014-00898. The following issues were discussed
`
`during the calls.
`
`
`
`Schedule
`
`The parties indicated that they had no issues with DUE DATES 1-6 in
`
`the Scheduling Order in each proceeding. Patent Owner requested that
`
`DUE DATE 7 be modified for at least some of the four instituted
`
`proceedings to allow the parties sufficient time to prepare in between
`
`hearings. We instructed the parties to confer with each other and provide, in
`
`a single email to Trials@uspto.gov, several other dates when both parties
`
`would be available for oral argument during the weeks of January 12 and 19,
`
`2015. Patent Owner’s request will be subject to Board availability. The
`
`parties also are reminded that they may stipulate to different dates for DUE
`
`DATES 1 through 3 in the Scheduling Orders (provided the dates are no
`
`later than DUE DATE 4) and, if they do so, the parties shall file promptly a
`
`notice of the stipulation.
`
`
`
`
`
`2
`
`
`
`Cases IPR2014-00103, IPR2014-00104, IPR2014-00105,
`IPR2014-00108, and IPR2014-00898
`
`
`Motion for Additional Discovery
`
`Patent Owner stated that it intends to seek additional discovery
`
`regarding secondary considerations of nonobviousness, such as copying, in
`
`Case IPR2014-00105. Patent Owner indicated that it had mentioned the
`
`issue to Petitioner, but had not yet conferred about the matter in detail. We
`
`advised the parties that they should continue their discussions and, if the
`
`parties are unable to reach an agreement, Patent Owner may request another
`
`conference call to seek authorization to file a motion for additional discovery
`
`under 37 C.F.R. § 42.51(b)(2). To make the parties’ discussions more
`
`productive, Patent Owner should identify for Petitioner, as specifically as
`
`possible, exactly what materials Patent Owner is requesting.
`
`The parties also are directed to Garmin Int’l, Inc. v. Cuozzo Speed
`
`Techs. LLC, IPR2012-00001, Paper 26 (Mar. 5, 2013), for guidance
`
`regarding motions for additional discovery. In particular, the mere
`
`possibility of finding something useful and a mere allegation that something
`
`useful will be found are insufficient. Further, requests for discovery will not
`
`be granted if they are unduly broad and burdensome.
`
`
`
`Motion to Submit Supplemental Information
`
`Petitioner requested authorization to file, in Cases IPR2014-00104
`
`and IPR2014-00105, a motion to submit certain documents as supplemental
`
`information pursuant to 37 C.F.R. § 42.123(a). Petitioner stated that after
`
`filing its petitions in the instant proceedings, Patent Owner’s technical
`
`expert, Sanjay Banerjee, Ph.D, and the named inventor of the challenged
`
`patent in IPR2014-00105 were deposed in the U.S. International Trade
`
`Commission investigation involving the two challenged patents, Certain
`
`
`
`3
`
`
`
`Cases IPR2014-00103, IPR2014-00104, IPR2014-00105,
`IPR2014-00108, and IPR2014-00898
`
`Flash Memory Chips and Products Containing Same, Inv. No. 337-TA-893.
`
`Petitioner argued that certain excerpts of the deposition transcripts, expert
`
`reports, and exhibits are relevant to the instant proceedings because they
`
`discuss the challenged patents and prior art. Patent Owner responded that
`
`Petitioner had not yet identified the specific portions of the documents it
`
`would like to submit as supplemental information. Patent Owner also
`
`expressed its concern that any new information that is submitted be
`
`complete, rather than merely excerpts. As discussed during the call,
`
`Petitioner should identify for Patent Owner the specific portions of the
`
`documents and, if the parties are unable to reach an agreement, Petitioner
`
`may request another conference call to seek authorization to file a motion to
`
`submit supplemental information.
`
`
`
`Motion to Amend
`
`Patent Owner stated that it had not yet determined whether it intends
`
`to file a motion to amend in any of the four instituted proceedings. If Patent
`
`Owner decides to file a motion to amend, Patent Owner must request a
`
`conference call and confer with the Board before doing so. See 37 C.F.R.
`
`§ 42.121(a). The parties are referred to Idle Free Systems, Inc. v. Bergstrom,
`
`Inc., IPR2012-00027, Paper 26 (June 11, 2013), and Toyota Motor Corp.
`
`v. American Vehicular Sciences LLC, IPR2013-00419, Paper 32 (Mar. 7,
`
`2014), for guidance regarding the requirements for motions to amend.
`
`
`
`4
`
`
`
`
`
`Cases IPR2014-00103, IPR2014-00104, IPR2014-00105,
`IPR2014-00108, and IPR2014-00898
`
`
`Joinder
`
`On May 8, 2014, we instituted an inter partes review of claims 1-6
`
`and 8-13 of U.S. Patent No. 7,151,027 B1 (“the ’027 patent”) in
`
`Case IPR2014-00108, and denied institution as to claims 7 and 14. On June
`
`4, 2014, Petitioner filed a new petition in Case IPR2014-00898 challenging
`
`claims 7 and 14, along with a motion for joinder with Case IPR2014-00108.
`
`Patent Owner stated during the call on June 9, 2014 that it intends to
`
`oppose the motion for joinder. As discussed during the call, Patent Owner
`
`will be permitted to file an opposition to the motion for joinder by June 23,
`
`2014. Petitioner, in its motion, did not provide a proposed revised trial
`
`schedule for the joined proceeding if its motion is granted. Petitioner shall
`
`file a notice with its proposed dates by June 13, 2014. The notice may not
`
`contain any argument. In its opposition, Patent Owner should address
`
`Petitioner’s proposed revised trial schedule and state, if joinder is granted,
`
`what schedule Patent Owner would propose.
`
`We also addressed the time period for any preliminary response in
`
`Case IPR2014-00898. As explained during the call, given that the petition
`
`in Case IPR2014-00898 challenges only two claims based on one ground of
`
`unpatentability, an expedited schedule is appropriate. The due date for
`
`Patent Owner to file a preliminary response in Case IPR2014-00898, should
`
`it choose to do so, will be set to July 16, 2014.
`
`
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that Patent Owner is not authorized to file a motion for
`
`additional discovery, and Petitioner is not authorized to file a motion to
`
`submit supplemental information, at this time;
`
`
`
`5
`
`
`
`Cases IPR2014-00103, IPR2014-00104, IPR2014-00105,
`IPR2014-00108, and IPR2014-00898
`
`
`FURTHER ORDERED that Petitioner shall file in Case
`
`IPR2014-00898 a notice setting forth its proposed revised trial schedule if
`
`the motion for joinder is granted by June 13, 2014, limited to one page and
`
`not containing any argument;
`
`FURTHER ORDERED that Patent Owner is authorized to file in Case
`
`IPR2014-00898 an opposition to Petitioner’s motion for joinder by June 23,
`
`2014, limited to ten pages;
`
`FURTHER ORDERED that no reply is authorized; and
`
`FURTHER ORDERED that Patent Owner may file a preliminary
`
`response in Case IPR2014-00898 by July 16, 2014.
`
`
`
`6
`
`
`
`Cases IPR2014-00103, IPR2014-00104, IPR2014-00105,
`IPR2014-00108, and IPR2014-00898
`
`PETITIONER:
`
`Michael M. Murray
`Andrew R. Sommer
`Bryan N. DeMatteo
`Vivian S. Kuo
`WINSTON & STRAWN
`mmurray@winston.com
`asommer@winston.com
`bdematteo@winston.com
`vkuo@winston.com
`
`
`
`PATENT OWNER:
`
`J. Steven Baughman
`Gabrielle E. Higgins
`ROPES & GRAY LLP
`steven.baughman@ropesgray.com
`gabrielle.higgins@ropesgray.com
`
`
`
`
`
`
`7
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