`571-272-7822
`
`
`Paper 47
`Entered: June 15, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY CORPORATION,
`Petitioner,
`
`v.
`
`RAYTHEON COMPANY,
`Patent Owner.
`____________
`
`Case IPR2015-01201
`Patent 5,591,678
`____________
`
`
`
`Before JENNIFER MEYER CHAGNON and JEFFREY W. ABRAHAM,
`Administrative Patent Judges.
`
`CHAGNON, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`
`IPR2015-01201
`Patent 5,591,678
`
`
`On June 14, 2016, a conference call was held involving counsel for
`
`the respective parties and Judges Chagnon and Abraham. The purpose of
`
`the call was to discuss Petitioner’s request for an increase in the word count
`
`for its Reply. Additional related issues also were discussed, as summarized
`
`below.
`
`Word Count Limit for Reply
`
`During the call, Petitioner’s counsel noted that a significant portion of
`
`Patent Owner’s Response is dedicated to arguments regarding prior
`
`invention, which is not a subject Petitioner would have been able to address
`
`in its Petition. Petitioner’s counsel argued, thus, due to the volume of
`
`exhibits and declarations presented by Patent Owner with respect to its prior
`
`invention case, Petitioner needs more than the 5,600 words set forth in
`
`37 C.F.R. § 42.24(c)(1) for its Reply, requesting 9,000 words instead.
`
`Patent Owner’s counsel indicated that, while Patent Owner would be
`
`amenable to a reasonable accommodation, Patent Owner did not agree with
`
`an increase to 9,000 words. Patent Owner’s counsel argued that the material
`
`presented in the Response is not out of the ordinary, and that such a large
`
`increase in the word count was not necessary. Based on the facts and
`
`circumstances of this proceeding, we authorized an increase of the word
`
`count for Petitioner’s Reply to a total of 7,000 words.
`
`Other Guidance to the Parties
`
`We also discussed additional points of clarification raised by
`
`Petitioner, in view of our ruling regarding the word count for the Reply.
`
`First, Petitioner requested clarification regarding whether it was necessary to
`
`discuss in its Reply arguments made only in declarations submitted with
`
`Patent Owner’s Response. During the call, we indicated that this was not a
`
`2
`
`
`
`IPR2015-01201
`Patent 5,591,678
`
`question that we could answer in the abstract. While we will not comment
`
`on specific portions of Patent Owner’s response evidence at this time, we
`
`remind the parties of 37 C.F.R. § 42.6(a)(3) which states that “[a]rguments
`
`must not be incorporated by reference from one document into another
`
`document.” See also Petroleum Geo-Services v. WesternGeco LLC,
`
`Case IPR2014-00688, slip op. at 42 (PTAB Dec. 15, 2015) (Paper 101)
`
`(limiting review to “evidence actually discussed in Patent Owner’s
`
`Response,” noting “[w]e will not play archeologist with the record to
`
`discover evidentiary support for bare attorney argument made in such a
`
`response,” and also declining to consider “information presented in an
`
`Exhibit, but not discussed sufficiently in Patent Owner’s Response”).
`
`Petitioner’s counsel also requested guidance on how it could, if
`
`needed, note in the record arguments that it would have made in its Reply
`
`but for the word count limitation. For example, Petitioner’s counsel
`
`suggested it could file an additional paper, similar to a proffer in a district
`
`court proceeding, which would note any such arguments for the record.
`
`Petitioner’s counsel also suggested it could use footnotes in the Reply to
`
`note such arguments. We advised the parties we would take this under
`
`consideration and provide guidance in our order summarizing the call.
`
`We have taken Petitioner’s request under consideration, and do not
`
`authorize any additional filings at this time. This does not limit the filing of
`
`papers provided for in the rules or already authorized in any other order in
`
`this proceeding. We note, however, Petitioner is not prevented from making
`
`any particular arguments in its Reply, but merely is limited to the amount
`
`of words in which it must present its arguments. Petitioner may use the
`
`3
`
`
`
`IPR2015-01201
`Patent 5,591,678
`
`7,000 words provided for its Reply to present its arguments in any manner it
`
`sees fit.
`
`It is:
`
`ORDERED that the word count for Petitioner’s Reply is set to
`
`7,000 words; and
`
`FURTHER ORDERED that no additional filings are authorized at this
`
`time. This does not limit the filing of papers provided for in the rules or
`
`already authorized in any other order in this proceeding.
`
`
`
`4
`
`
`
`5
`
`IPR2015-01201
`Patent 5,591,678
`
`PETITIONER:
`
`Matthew A. Smith
`Zhuanjia Gu
`TURNER BOYD LLP
`smith@turnerboyd.com
`gu@turnerboyd.com
`
`Robert Hails
`rhails@bakerlaw.com
`
`PATENT OWNER:
`
`Thomas J. Filarski
`John L. Abramic
`Brian Fahrenbach
`Stanley A. Schlitter
`Daniel S. Stringfield
`STEPTOE & JOHNSON, LLP
`tfilarski@steptoe.com
`jabramic@steptoe.com
`678IPR@steptoe.com
`sschlitter@steptoe.com
`dstringfield@steptoe.com
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