`Entered: June 1, 2016
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VALEO NORTH AMERICA, INC., VALEO S.A., VALEO GMBH,
`VALEO SCHALTER UND SENSOREN GMBH, and
`CONNAUGHT ELECTRONICS LTD.,
`Petitioner,
`
`v.
`
`MAGNA ELECTRONICS INC.,
`Patent Owner.
`____________
`
`Case IPR2015-014101
`Patent 8,643,724 B2
`____________
`
`
`
`Before JUSTIN T. ARBES, MICHAEL J. FITZPATRICK, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`1 Case IPR2015-01414 has been consolidated with this proceeding.
`
`
`
`IPR2015-01410
`Patent 8,643,724 B2
`
`
`A conference call in the above proceeding was held on May 26, 2016,
`among respective counsel for Petitioner and Patent Owner, and Judges
`Arbes, Fitzpatrick, and Weinschenk.2 The purpose of the call was to discuss
`Petitioner’s Reply (Paper 17) and five exhibits cited in the Reply.
`Petitioner notified the Board by email on May 24, 2016, that it
`inadvertently had not filed Exhibits 1045, 1046, 1054, 1055, and 1060 with
`its Reply on May 23, 2016. Petitioner stated that it previously served the
`exhibits on Patent Owner as supplemental evidence in response to an
`evidentiary objection from Patent Owner, and sought authorization to file the
`exhibits. Patent Owner indicated by email that it did not object to the
`exhibits being filed late, and we authorized Petitioner to file the exhibits.
`See 37 C.F.R. § 42.5(c)(3).
`During the call, Patent Owner explained that it objected to the
`exhibits, and Petitioner’s discussion of the exhibits at pages 11–12 of the
`Reply, as improper new argument. See, e.g., 37 C.F.R. § 42.23(b) (a reply
`“may only respond to arguments raised in the corresponding . . . patent
`owner response”); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`48,763–67 (Aug. 14, 2012) (“The petition lays out the petitioner’s grounds
`for review and supporting evidence, on a claim-by-claim basis, for
`instituting the requested proceeding. . . . While replies can help crystalize
`issues for decision, a reply that . . . belatedly presents evidence will not be
`considered and may be returned. Examples of indications that a new issue
`has been raised in a reply include new evidence necessary to make out a
`prima facie case for the patentability or unpatentability of an original or
`
`
`2 A court reporter was present on the call. Petitioner filed a transcript of the
`call as Exhibit 1071.
`
`
`
`2
`
`
`
`IPR2015-01410
`Patent 8,643,724 B2
`
`proposed substitute claim, and new evidence that could have been presented
`in a prior filing.”). Patent Owner argued that Petitioner should have filed the
`exhibits with its Petition or filed a motion to submit them as supplemental
`information so that Patent Owner would have an opportunity to respond to
`Petitioner’s arguments about the exhibits in Patent Owner’s Response.
`Patent Owner argued that the exhibits and portions of the Reply referencing
`the exhibits should be stricken.
`Petitioner responded that the exhibits and Reply properly are
`responsive to Patent Owner’s argument in its Response that one of the prior
`art references at issue in this proceeding, G. Wang et al., CMOS Video
`Cameras, IEEE TH0367 3/91/0000/0100, 1991 (Ex. 1009, “Wang”), is not a
`prior art printed publication. Petitioner further argued that it submitted
`evidence that Wang is prior art with its Petition, and later uncovered
`additional evidence purportedly showing Wang’s prior art status, such as a
`certified copy from the Library of Congress (Ex. 1060).
`As explained during the call, a motion to strike the exhibits and
`portions of the Reply is not appropriate under the circumstances. A motion
`to strike is not, ordinarily, a proper mechanism for raising the issue of
`whether a reply or reply evidence is beyond the proper scope permitted
`under the rules. Should either party request a hearing in this proceeding
`(by DUE DATE 4 in the Scheduling Order), the parties may address the
`propriety of the exhibits and Petitioner’s Reply during oral argument. If the
`parties choose not to request a hearing, Patent Owner may request another
`conference call and we will determine whether additional briefing or any
`other action may be appropriate at that time.
`
`
`
`3
`
`
`
`IPR2015-01410
`Patent 8,643,724 B2
`
`
`In consideration of the foregoing, it is hereby:
`ORDERED that Patent Owner is not authorized to file a motion to
`strike portions of Petitioner’s Reply and Exhibits 1045, 1046, 1054, 1055,
`and 1060.
`
`
`
`
`4
`
`
`
`IPR2015-01410
`Patent 8,643,724 B2
`
`PETITIONER:
`
`Russell Levine
`Hari Santhanam
`KIRKLAND & ELLIS LLP
`rlevine@kirkland.com
`hsanthanam@kirkland.com
`
`
`
`PATENT OWNER:
`
`David K.S. Cornwell
`Salvador M. Bezos
`STERNE, KESSLER, GOLDSTEIN & FOX PLLC
`davidc-PTAB@skgf.com
`sbezos-PTAB@skgf.com
`
`Timothy A. Flory
`Terence J. Linn
`GARDNER, LINN, BURKHART & FLORY, LLP
`Flory@glbf.com
`linn@glbf.com
`
`
`
`
`
`5
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