`571-272-7822
`
`
`
`Paper 32
`
`Entered: February 19, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EMERSON ELECTRIC CO,
`Petitioner,
`
`v.
`
`SIPCO, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01973
`Patent 8,013,732 B2
`____________
`
`
`Before LYNNE E. PETTIGREW, STACEY G. WHITE, and
`CHRISTA P. ZADO, Administrative Patent Judges.
`
`WHITE, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`IPR2015-01973
`Patent 8,013,732 B2
`
`
`Background
`Emerson Electric Co. (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
`seeking to institute an inter partes review of claims 13, 14, 16–21, and 23–
`35 of U.S. Patent No. 8,013,732 B2 (Ex. 1001, “the ’732 patent”). We
`instituted trial on all challenged claims. Paper 8, 25. We entered a Final
`Written Decision concluding that Petitioner has not demonstrated by a
`preponderance of the evidence the unpatentability of claims 13, 14, 16–21,
`and 23–35 of the ’732 patent. Id. at 13.
`Petitioner appealed. Paper 26. The Federal Circuit vacated our Final
`Written Decision and remanded the proceeding “to address the seemingly
`opposite findings from IPR2016-00984.” Emerson Elec. Co. v. SIPCO,
`LLC, 745 F. App'x 369, 374 (Fed. Cir. 2018). In IPR2016-00984, we issued
`a final written decision regarding a related patent and came to a different
`conclusion regarding the issue of motivation to combine. Emerson Elec. Co.
`v. SIPCO, LLC, No. IPR2016-00984, 2017 WL 4862106 (PTAB. Oct. 25,
`2017). On November 29, 2018, the Board and representatives of the parties
`held a conference call to discuss what briefing, if any, is needed to address
`the Federal Circuit’s remand. Ex. 1014 (“Tr.”).
`Discussion
`The Board’s Standard Operating Procedure 9 provides guidance
`regarding the procedure for handling cases remanded from the Federal
`Circuit. See PTAB SOP 9 (“Procedure for Decisions Remanded from the
`Federal Circuit for Further Proceedings”). Under SOP 9, “the panel shall
`consider procedures proposed by the parties,” but “ultimately will decide the
`procedures to be followed on remand.” Id. at 5 (App’x 2). SOP 9 further
`provides that “[t]he panel will consider the scope of the remand, as
`
`
`
`2
`
`
`
`IPR2015-01973
`Patent 8,013,732 B2
`
`determined from the reasoning and instructions provided by the Federal
`Circuit, as well as ‘the effect . . . on the economy, the integrity of the patent
`system, the efficient administration of the Office, and the ability of the
`Office to timely complete proceedings.’” Id. at 6 (App’x 2) (quoting
`35 U.S.C. §§ 316(b), 326(b)). As to additional briefing, SOP 9 states that
`“the panel will take into account whether the parties already have had an
`adequate opportunity to address the issues raised by the remand.” Id. If
`additional briefing is allowed it “will normally be limited to the specific
`issues raised by the remand.” Id. (citing Microsoft Corp. v. Proxyconn, Inc.,
`Case No. IPR2012-00026 (Paper 77) (PTAB Sept. 1, 2015); Dell Inc., v.
`Acceleron, LLC, Case No. IPR2013-00440 (Paper 46) (PTAB May 26,
`2016).
`
`Additional Briefing
`During the November 29, 2018 call, Petitioner requested leave to
`submit a five page brief, which would be followed by a five page response
`brief from the Patent Owner and a two page reply brief from the Petitioner.
`Tr. 6:5–8. Patent Owner contended that no additional briefing was
`necessary because all issues have been fully briefed. Upon review of the
`Federal Circuit’s Decision, we agree with Patent Owner. The Federal
`Circuit remanded this Decision because it determined that we “did not
`adequately explain and support [our] conclusion that Kahn would not have
`motivated one of ordinary skill in the art to combine the teachings of Kahn
`and the Admitted Prior Art for flexibility and rapid deployment.” Emerson,
`745 F. App'x at 372. Thus, it is our task to review the existing record and
`issue a new decision with the required analysis. We determine that no
`
`
`
`3
`
`
`
`IPR2015-01973
`Patent 8,013,732 B2
`
`additional briefing is necessary to fulfill that mandate from our reviewing
`court.
`
`In consideration of the foregoing, it is hereby
`ORDERED that no other papers are authorized and no new evidence
`shall be introduced.
`
`
`
`
`PETITIONER:
`
`Steven Pepe
`James L. Davis, Jr.
`ROPES & GRAY LLP
`steven.pepe@ropesgray.com
`james.l.davis@ropesgray.com
`
`PATENT OWNER:
`
`Gregory J. Gonsalves
`gonsalves@gonsalveslawfirm.com
`
`
`
`4
`
`
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