`571.272.7822
`
`
`
`
`
`Paper No. 8
`Entered: March 2, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`NVIDIA CORPORATION,
`Petitioner,
`
`v.
`
`SAMSUNG ELECTRONICS COMPANY, LTD.,
`Patent Owner.
`_______________
`
`Case IPR2016-00134
`Patent 8,252,675 B2
`_______________
`
`
`
`Before JAMESON LEE, PATRICK R. SCANLON, and
`JUSTIN BUSCH, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`IPR2016-00134
`Patent 8,252,675 B2
`
`A telephone conference call was held on March 1, 2016. The
`
`participants were respective counsel for the parties and Judges Lee, Scanlon,
`and Busch. The subject matter for discussion is Petitioner’s request for
`authorization to file a reply to Patent Owner’s Preliminary Response.
`The rules governing an inter partes review do not provide the
`
`Petitioner an opportunity to file a reply to the Patent Owner’s Preliminary
`Response. Nevertheless, where the situation warrants, the Board may
`authorize such a reply. This is not such a case. Counsel for Petitioner
`identified two alleged “misstatements” in the Preliminary Response that
`Petitioner would like to address in a reply:
`1.
`The instant petition impermissibly uses the Patent Owner’s
`preliminary response to the first petition in IPR2015-01318 as a
`roadmap to remedy the errors Petitioner made in its first petition
`and advances the same or substantially the same prior art or
`arguments that Petitioner advanced in IPR2015-01318.
`Prelim. Resp. 1.
`
`2.
`Moreover, contrary to Petitioner’s allegations, Petitioner’s new
`prior art, U.S. Patent No. 8,563,669 to Hsu (“Hsu”), was known
`to petitioner at the time of the filing of the first petition.
`Prelim. Resp. 1–2.
`
`The first statement constitutes mere attorney argument based on the
`fact that Patent Owner’s Preliminary Response in IPR2015-01318 was
`issued prior to filing of the Petition in IPR2016-00134. It is not a factual
`misrepresentation that justifies a reply. Even if it were a factual
`misrepresentation, Petitioner has not explained why a reply is necessary,
`given that the Board can determine whether the representation is supported
`by evidence in the record.
`
`2
`
`
`
`
`
`IPR2016-00134
`Patent 8,252,675 B2
`
`With regard to the second statement, we queried counsel for Petitioner
`
`whether Petitioner disputes that the Hsu reference was provided to Petitioner
`in the related ITC litigation prior to filing of the Petition in this proceeding.
`Counsel for Petitioner replied that that fact is not in dispute and that the Hsu
`reference was indeed provided to Petitioner prior to filing of the Petition in
`this proceeding. Thus, the second statement also does not constitute a
`factual misrepresentation that justifies a reply by the Petitioner.
`
`We understand the general desire of petitioners to file a reply to a
`patent owner’s preliminary response. No sufficient justification, and
`resulting deviation from the general rule, however, has been provided here.
`Order
`
`It is
`
`ORDERED that Petitioner’s request for authorization to file a reply to
`
`Patent Owner’s Preliminary Response is denied.
`
`
`
`For PETITIONER:
`
`Bob Steinberg
`Clement Naples
`Julie Holloway
`bob.steinberg@lw.com
`clement.naples@lw.com
`julie.holloway@lw.com
`
`
`
`For PATENT OWNER:
`
`Naveen Modi
`Joseph Palys
`nVdia-Samsung-IPR@paulhastings.com
`
`3
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