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Trials@uspto.gov
`571-272-7822
`
`Paper 16
`Entered: July 1, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`MICRON TECHNOLOGY, INC., and SK HYNIX, INC.,
`Petitioner,
`
`v.
`
`ELM 3DS INNOVATIONS, LLC,
`Patent Owner.
`____________
`
`Cases1
`IPR2016-00386 (Patent 8,653,672) IPR2016-00387 (Patent 8,841,778)
`IPR2016-00388 (Patent 7,193,239) IPR2016-00389 (Patent 8,035,233)
` IPR2016-00390 (Patent 8,629,542) IPR2016-00391 (Patent 8,796,862)
` IPR2016-00393 (Patent 7,193,239) IPR2016-00394 (Patent 8,410,617)
`IPR2016-00395 (Patent 7,504,732)
`____________
`
`
`
`
`
`
`
`
`
`
`Before GLENN J. PERRY, BARBARA A. BENOIT, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`
`BENOIT, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`1 This Order addresses issues that are substantially similar in the
`proceedings. We exercise our discretion to issue one order to be filed in
`each proceeding.
`
`

`
`IPR2016-00386 (Patent 8,653,672)
`IPR2016-00388 (Patent 7,193,239)
`IPR2016-00390 (Patent 8,629,542)
`IPR2016-00393 (Patent 7,193,239)
`IPR2016-00395 (Patent 7,504,732)
`
`
`IPR2016-00387 (Patent 8,841,778)
`IPR2016-00389 (Patent 8,035,233)
`IPR2016-00391 (Patent 8,796,862)
`IPR2016-00394 (Patent 8,410,617)
`
`
`
`Samsung Electronics Co., Ltd.; Micron Technology, Inc.; and SK
`
`Hynix Inc. (collectively “Petitioner”) filed Petitions requesting inter partes
`
`review of claims in various patents owned by Elm 3DS Innovations, LLC
`
`(“Patent Owner”). See, e.g., IPR2016-00386, Paper 1 (“Pet.”).2 In its
`
`Petitions, Petitioner raised the possibility that the challenged patents may
`
`expire during the inter partes review. Pet. 9, n.6 (“The ’672 patent may
`
`expire during this proceeding.”). Petitioner contends that expired claims
`
`should be construed according to Phillips v. AWH Corp., 415 F.3d 1303
`
`(Fed. Cir. 2005) as used in district court proceedings. Id. (“After expiration,
`
`Petitioner believes the claims should be construed according to Phillips v.
`
`AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005).”). Patent Owner filed a
`
`Preliminary Response to each Petition but did not address this issue. See
`
`generally Paper 10.
`
`The claim construction standard to be applied during these inter
`
`partes reviews depends upon whether the patent is or will be expired during
`
`inter partes review. The Board gives a claim in an unexpired patent its
`
`broadest reasonable construction, in light of the specification of the patent in
`
`which it appears. 37 C.F.R. § 42.100(b) (Aug. 14, 2012); see Cuozzo Speed
`
`Techs., LLC v. Lee, No. 15-446, 2016 WL 3369425, at *12 (U.S. June 20,
`
`2016) (concluding the broadest reasonable construction “regulation
`
`represents a reasonable exercise of the rulemaking authority that Congress
`
`delegated to the Patent Office”).
`
`
`
`2 Unless otherwise indicated, paper numbers refer to IPR2016-00386.
`
`2
`
`

`
`IPR2016-00386 (Patent 8,653,672)
`IPR2016-00388 (Patent 7,193,239)
`IPR2016-00390 (Patent 8,629,542)
`IPR2016-00393 (Patent 7,193,239)
`IPR2016-00395 (Patent 7,504,732)
`
`
`IPR2016-00387 (Patent 8,841,778)
`IPR2016-00389 (Patent 8,035,233)
`IPR2016-00391 (Patent 8,796,862)
`IPR2016-00394 (Patent 8,410,617)
`
`
`
`For claims of an expired patent, the Board’s claim construction
`
`analysis is similar to that of a district court. See In re Rambus, 694 F.3d 42,
`
`46 (Fed. Cir. 2012). In this context, claim terms “are generally given their
`
`ordinary and customary meaning” as understood by a person of ordinary
`
`skill in the art in question at the time of the invention. Phillips, at 1312–13
`
`(Fed. Cir. 2005) (en banc). “In determining the meaning of the disputed
`
`claim limitation, we look principally to the intrinsic evidence of record,
`
`examining the claim language itself, the written description, and the
`
`prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic
`
`Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips,
`
`415 F.3d at 1312–17).
`
`In addition, a recent rule change, which does not apply to these
`
`proceedings, specifies:
`
`A claim in an unexpired patent that will not expire before a final
`written decision is issued shall be given its broadest reasonable
`construction in light of the specification of the patent in which it
`appears. A party may request a district court-type claim
`construction approach to be applied if a party certifies that the
`involved patent will expire within 18 months from the entry of
`the Notice of Filing Date Accorded to Petition. The request,
`accompanied by a party's certification, must be made in the form
`of a motion under §42.20, within 30 days from the filing of the
`petition.
`
`37 C.F.R. § 42.100(b) (Apr. 1, 2016).
`
`Thus, to give both parties an opportunity to be heard under the proper
`
`claim construction standard on construction of relevant claim terms, Patent
`
`Owner is to file in each proceeding, within ten business days from the entry
`
`3
`
`

`
`IPR2016-00386 (Patent 8,653,672)
`IPR2016-00388 (Patent 7,193,239)
`IPR2016-00390 (Patent 8,629,542)
`IPR2016-00393 (Patent 7,193,239)
`IPR2016-00395 (Patent 7,504,732)
`
`of this Order, a Notice of Patent Expiration certifying whether each of the
`
`IPR2016-00387 (Patent 8,841,778)
`IPR2016-00389 (Patent 8,035,233)
`IPR2016-00391 (Patent 8,796,862)
`IPR2016-00394 (Patent 8,410,617)
`
`
`
`challenged patents will or will not expire before the deadline for issuing
`
`final written decisions in each case—no more than one year from the date of
`
`institution of each respective inter partes review. 37 C.F.R. § 42.100(c).
`
`Patent Owner should include in its Notice a short explanation along with
`
`citations to evidence supporting its certification. Patent Owner’s Notice for
`
`each proceeding should be no more than two pages.
`
`If Patent Owner certifies that the challenged patents will expire before
`
`the deadline for issuing final written decisions in each proceeding, Patent
`
`Owner’s Notice should be accompanied by a motion of no more than five
`
`pages under 37 C.F.R. §42.20 indicating whether a broadest reasonable
`
`construction or a district court-type claim construction approach under
`
`Phillips should be applied. Petitioner is authorized to file an opposition of
`
`no more than five pages to any motion filed by Patent Owner within seven
`
`business days. Patent Owner may file a reply of no more than three pages to
`
`any opposition filed by Petitioner within three business days.
`
`Patent Owner’s Motion or Reply filed related to the Notice (but not
`
`the Notice itself) may address all of the above listed cases in one common
`
`document that identifies any relevant substantive or procedural differences
`
`between the proceedings, as long as the common document is filed in each
`
`proceeding and uses a caption identifying each proceeding in which the
`
`common document is filed.
`
`Similarly, Petitioner’s opposition, if any, may address all of the above
`
`listed cases in one common document that identifies any relevant substantive
`
`4
`
`

`
`IPR2016-00386 (Patent 8,653,672)
`IPR2016-00388 (Patent 7,193,239)
`IPR2016-00390 (Patent 8,629,542)
`IPR2016-00393 (Patent 7,193,239)
`IPR2016-00395 (Patent 7,504,732)
`
`or procedural differences between the proceedings, as long as the common
`
`IPR2016-00387 (Patent 8,841,778)
`IPR2016-00389 (Patent 8,035,233)
`IPR2016-00391 (Patent 8,796,862)
`IPR2016-00394 (Patent 8,410,617)
`
`
`
`document is filed in each proceeding and uses a caption identifying each
`
`proceeding in which the common document is filed.
`
`
`
`PETITIONER:
`Jason Engel
`K&L Gates LLP
`jason.engel.PTAB@klgates.com
`
`Naveen Modi
`Paul Hastings LLP
`PH-Samsung-ELM-IPR@paulhastings.com
`
`John Kappos
`O’Melveny & Myers LLP,
`jkappos@omm.com
`
`
`
`PATENT OWNER:
`Cyrus A. Morton
`Kelsey Thorkelson
`ROBINS KAPLAN LLP
`camorton@rkmc.com
`kthorkelson@robinskaplan.com
`
`James Carmichael
`CARMICHAEL IP, PLLC
`jim@carmichaelip.com
`
`
`
`
`
`5

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