Trials@uspto.gov Paper 47
`571-272-7822
` Date Entered: September 17, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ALLSTEEL INC.,
`Petitioner,
`v.
`DIRTT ENVIRONMENTAL SOLUTIONS LTD.,
`Patent Owner.
`____________
`
`Case IPR2015-01691
`Patent 8,024,901 B2
`____________
`
`Before SALLY C. MEDLEY, SCOTT A. DANIELS, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`On September 13, 2018, a conference call was held involving counsel
`for the respective parties and Judges Medley, Daniels, and Harlow. The
`purpose of the conference call was to discuss whether the parties seek
`further briefing and oral hearing for newly instituted claims 8, 11, 13, and
`21–23. Paper 46.
`During the conference call, Petitioner proposed filing limited briefing
`and a limited Dr. Beaman declaration regarding claims 8, 11, 13, and 21–23,
`
`
`
`
`571-272-7822
` Date Entered: September 17, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ALLSTEEL INC.,
`Petitioner,
`v.
`DIRTT ENVIRONMENTAL SOLUTIONS LTD.,
`Patent Owner.
`____________
`
`Case IPR2015-01691
`Patent 8,024,901 B2
`____________
`
`Before SALLY C. MEDLEY, SCOTT A. DANIELS, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`On September 13, 2018, a conference call was held involving counsel
`for the respective parties and Judges Medley, Daniels, and Harlow. The
`purpose of the conference call was to discuss whether the parties seek
`further briefing and oral hearing for newly instituted claims 8, 11, 13, and
`21–23. Paper 46.
`During the conference call, Petitioner proposed filing limited briefing
`and a limited Dr. Beaman declaration regarding claims 8, 11, 13, and 21–23,
`
`
`
`
`
`
`
`IPR2015-01691
`Patent 8,024,901 B2
`
`
`directing attention to the Office Patent Trial Practice Guide, August 2018
`Update, 83 Fed. Reg. 39989 (Aug. 2018) (providing link to Trial Practice
`Guide Update: https://go.usa.gov/xU7GP (“Trial Practice Guide Update”)).
`Patent Owner argued that no further briefing was necessary, but if Petitioner
`is provided an opportunity to file further briefing, Patent Owner would like
`to respond.
`The Trial Practice Guide Update states that, in response to issues
`arising from the Supreme Court’s decision in SAS Institute Inc. v. Iancu, 138
`S. Ct. 1348, 1354 (2018), “the Board will permit the petitioner, in its reply
`brief, to address issues discussed in the institution decision. . . . Petitioner
`may not submit new evidence or argument in reply that it could have
`presented earlier, e.g. to make out a prima facie case of unpatentability. But
`a petitioner may submit directly responsive rebuttal evidence in support of
`its reply.” Trial Practice Guide Update, 14. Petitioner argues that the above
`guidance applies to the situation here, where we recently modified the
`Institution Decision to include review of claims 8, 11, 13, and 21–23.
`Upon consideration of the record, we authorize Petitioner to file a
`supplemental brief for the limited purpose of addressing the issues discussed
`in the Institution Decision regarding claims 8, 11, 13, and 21–23. Paper 10
`(“Dec.”).1 In support of the supplemental brief, Petitioner may submit a
`declaration for the purpose of presenting “rebuttal evidence” to the findings
`and determinations we made in the Institution Decision regarding claims 8,
`
`
`1 We note, that the Patent Owner Response does not address the newly
`instituted claims. Paper 24. To the extent there are overlapping issues
`between the newly instituted claims and the previously instituted claims, the
`parties already have had a full and fair opportunity to address such
`overlapping issues.
`
`2
`
`
`
`
`
`
`IPR2015-01691
`Patent 8,024,901 B2
`
`
`11, 13, and 21–23. Consistent with the Trial Practice Guide Update,
`Petitioner may not submit new evidence, issues, or argument that it could
`have presented earlier, e.g. to make out a prima facie case of unpatentability.
`Trial Practice Guide Update, 14. The Trial Practice Guide Update provides
`the following:
`Examples of new issues are new theories or arguments
`necessary to make out petitioner’s case-in-chief for the
`unpatentability of an original or proposed substitute claim, such
`as a newly raised rationale to combine the prior art references
`that was not expressed in the petition. It is also improper to
`present in reply new evidence (including new expert testimony)
`that could have been presented in a prior filing, for example
`newly cited prior art references intended to “gap-fill” by teaching
`a claim element that was not present in the prior art presented
`with the petition.
`
`Id. (internal citations omitted).
`With these principles in mind, it would not be appropriate for
`Petitioner to fill in the gaps of the Petition by showing, for the very first
`time, how the prior art of record describes a claim element that was not
`accounted for previously. Rather, Petitioner’s supplemental brief is limited
`to identifying matters that Petitioner believes we misapprehended or
`overlooked in the Petition, or how we otherwise erred in the Institution
`Decision for claims 8, 11, 13, and 21–23.
`Petitioner’s supplemental brief is limited to 12 pages. Any additional
`declaration made on behalf of Dr. Beaman is limited to 15 pages. The brief
`and declaration are due no later than October 19, 2018. Patent Owner may
`file a response to Petitioner’s supplemental brief, limited to 12 pages, no
`later than November 28, 2018. To the extent necessary, Patent Owner may
`cross examine Dr. Beaman and may submit the transcript of any such
`3
`
`
`
`
`
`
`IPR2015-01691
`Patent 8,024,901 B2
`
`
`deposition in support of its response. Patent Owner may not, however,
`submit any new evidence in support of the response. Lastly, Petitioner is
`permitted to file a reply to Patent Owner’s response limited to five pages,
`but may not include any new evidence in support of the reply.2 The parties
`also are authorized to file a request for oral argument explaining why it is
`necessary to hold an oral hearing and whether the requesting party is
`amenable to a telephonic hearing.
`The parties are not authorized to file any other papers or evidence
`without prior Board authorization.
`It is:
`ORDERED that Petitioner is authorized to file a supplemental brief in
`compliance with this order no later than October 19, 2018, limited to 12
`pages;
`FURTHER ORDERED that Patent Owner is authorized to file a
`responsive brief to Petitioner’s supplemental brief in compliance with this
`order no later than November 28, 2018, limited to 12 pages;
`FURTHER ORDERED that Petitioner is authorized to file a reply to
`Patent Owner’s responsive brief in compliance with this order no later than
`December 12, 2018, limited to 5 pages; and
`FURTHER ORDERED that the parties are authorized to file a request
`for oral argument in compliance with this order no later than December 19,
`2018; and
`
`
`2 Although the panel does not foresee the need for additional evidence in
`connection with either Patent Owner’s response or Petitioner’s reply, to the
`extent that either party believes that responsive evidence is necessary, it may
`contact the panel to request authorization to submit such evidence.
`4
`
`
`
`
`
`
`IPR2015-01691
`Patent 8,024,901 B2
`
`
`
`FURTHER ORDERED that the parties are not authorized to file any
`other papers or evidence without prior Board authorization.
`
`
`
`
`PETITIONER:
`
`Victor P. Jonas
`Trevor Carter
`Nicholas M. Anderson
`Timothy Sullivan
`FAEGRE BAKER DANIELS
`victor.jonasPTAB@FaegreBD.com
`trevor.carter@ FaegreBD.com
`nick.anderson@ FaegreBD.com
`timothy.sullivan@Faegrebd.com
`
`PATENT OWNER:
`
`Chad E. Nydegger
`Michael J. Frodsham
`David R. Todd
`Robert L. Florence
`WORKMAN NYDEGGER
`cnydegger@wnlaw.com
`mfrodsham@wnlaw.com
`dtodd@wnlaw.com
`rflorence@wnlaw.com
`
`5
`
`
`
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