Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 16
` Entered: August 2, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TOYOTA MOTOR CORPORATION,
`Petitioner
`
`v.
`
`BLITZSAFE TEXAS, LLC,
`Patent Owner
`____________
`
`Case IPR2016-00418
`Patent 8,155,342 B2
`____________
`
`
`
`Before JAMESON LEE, THOMAS L. GIANNETTI, and HUNG H. BUI,
`Administrative Patent Judges.
`
`BUI, Administrative Patent Judge.
`
`Conduct of Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 16
` Entered: August 2, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TOYOTA MOTOR CORPORATION,
`Petitioner
`
`v.
`
`BLITZSAFE TEXAS, LLC,
`Patent Owner
`____________
`
`Case IPR2016-00418
`Patent 8,155,342 B2
`____________
`
`
`
`Before JAMESON LEE, THOMAS L. GIANNETTI, and HUNG H. BUI,
`Administrative Patent Judges.
`
`BUI, Administrative Patent Judge.
`
`Conduct of Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`IPR2016-00418
`Patent 8,155,342 B2
`
`On July 29, 2016, the Board held an initial conference call with the
`
`parties at approximately 2:00 P.M., Eastern Time. The participants were
`respective counsel for the parties and Judges Lee, Giannetti, and Bui. The
`principal purpose of the conference call was to discuss the parties’ list of
`proposed motions and the status of the proceedings, including settlement
`discussions and related lawsuits.
`
`The parties indicated that (1) the parties have not engaged in any
`settlement discussion, and (2) trial has been scheduled in the Eastern District
`of Texas on February 6, 2016. Patent Owner proposed a list of motions and
`requested authorization for the following motions:
`(1) Motion for Modification of Scheduling Order;
`(2) Motion for Additional Discovery;
`(3) Motion to Amend Claims under 37 C.F.R. § 42.121; and
`(4) Motion to Substitute Lead and/or Backup Counsel within
`
`the same law firm.
`
` (1) Proposed Motion for Modification of Scheduling Order
`Patent Owner proposed different dates for DUE DATES 1–4 in the
`Scheduling Order dated July 8, 2016 (Paper 14). Petitioner agreed with
`Patent Owner’s proposal. We advised that the parties do not need our
`authorization to stipulate to different DUE DATES 1–5 as long as those
`dates do not go beyond DUE DATE 6, and that a Joint Stipulated Motion to
`Revise the Schedule must be promptly filed prior to the first DUE DATE
`changed. The parties agreed to file a Joint Stipulated Motion to Revise the
`Schedule in connection with DUE DATES 1–4 in due course.
`
` 2
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`
`IPR2016-00418
`Patent 8,155,342 B2
`
`
`Oral hearing is currently scheduled for February 9, 2017. Paper 14.
`Patent Owner indicated that the timing of the oral argument (DUE DATE 7)
`will overlap with the parties’ currently scheduled trial in the Eastern District
`of Texas on February 6, 2016. However, Patent Owner has not proposed
`any alternative date for oral argument. We explained that (1) Board’s
`proceedings in these IPRs are independent from trial proceedings in the
`Eastern District of Texas; (2) unlike the district court, the Board is obligated
`to complete its Final Decision within one year from the date of the decision
`instituting the trial; and (3) because of our compressed schedule and because
`Patent Owner has not proposed an alternative date, DUE DATES 6 and 7
`remain unchanged. Patent Owner may renew its request for an alternative
`date within 30 days of this communication. After that time, we will not
`consider a request to change in the oral hearing date due to a conflict with
`district court trial.
`
`(2) Proposed Motion for Additional Discovery
`
`Patent Owner indicated that because the parties failed to agree to the
`mandatory initial disclosures set forth in the Office Patent Trial Practice
`Guide, Patent Owner would move to seek discovery of such information. In
`particular, Patent Owner would move for additional discovery relating to
`secondary considerations of non-obviousness, including commercial
`success.
`
`Discovery before the Board is limited to (1) routine discovery and (2)
`additional discovery. Under 37 C.F.R. § 42.51(b)(1), routine discovery
`
` 3
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`
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`
`
`IPR2016-00418
`Patent 8,155,342 B2
`
`includes: (i) production of any exhibit cited in a paper or testimony; (ii) the
`cross-examination of the other sides declarants; and (iii) relevant
`information that is inconsistent with a position advanced during the
`proceeding. Board authorization is not required to conduct routine
`discovery, although the Board will set the times for conducting this
`discovery in its Scheduling Order.
`
`Under 37 C.F.R. § 42.51(b)(2), the parties may agree to additional
`discovery amongst themselves. However, “[w]here the parties fail to agree,
`a party may move for additional discovery” (37 C.F.R. § 42.51(b)(2)) and
`must show that such additional discovery is “necessary in the interest of
`justice” (35 U.S.C. § 316(a)(5)(B)). Patent Owner, as the movant, bears the
`burden of demonstrating that it is entitled to the additional discovery sought.
`37 C.F.R. § 42.20(c). Thus, to meet its burden, Patent Owner must explain
`with specificity the discovery requested and why the discovery is necessary
`in the interest of justice.
`
`Factors used for determining whether additional discovery in an IPR
`proceeding is necessary in the interest of justice are explained in Garmin
`Int’l, Inc. v. Cuozzo Speed Techs. LLC, Case IPR2012-00001, slip op. at 6–7
`(PTAB Mar. 5, 2013) (Paper 26) (precedential). These Garmin factors
`include: (1) more than a possibility and mere allegation that something
`useful will be discovered; (2) requests that do not seek other party’s
`litigation positions and the underlying basis for those positions; (3) ability to
`generate equivalent information by other means; (4) easily understandable
`instructions; and (5) requests that are not overly burdensome to answer. Id.
`
` 4
`
`
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`
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`
`
`IPR2016-00418
`Patent 8,155,342 B2
`
`During the conference call, Patent Owner explained, however, that
`
`evidence of secondary considerations is already available in related district
`court litigations. Based on that representation, we advised Patent Owner that
`such a motion for additional discovery may not be necessary in this
`proceeding. Evidence of secondary considerations, as discussed, may be
`relied on by Patent Owner when filing its response. If appropriate,
`Petitioner may object and challenge the admissibility of such evidence in the
`context of a Motion to Exclude under 37 C.F.R. § 42.64, but would need to
`do so under the Federal Rules of Evidence. However, a Motion to Exclude
`should not be used to raise anything other than admissibility issues under the
`Federal Rules of Evidence. If an issue arises with regard to whether a reply
`contains arguments or evidence in excess of the proper scope of a reply, the
`parties should arrange a conference call with the Board. Patent Owner has
`agreed to withdraw its request for filing a motion for additional discovery.
`
`(3) Proposed Motion to Amend Claims
`
`Patent Owner also proposed filing a Motion to Amend Claims. Under
`37 C.F.R. § 42.121, Patent Owner may cancel claims and propose a
`reasonable number of substitute claims. There is a rebuttable presumption
`that only one proposed substitute claim will generally be needed to replace
`each challenged claim. 37 C.F.R. § 42.121(a)(3). The Board rules were
`amended on May 19, 2015, to change the page limits for certain papers
`associated with a motion to amend. See Amendments to the Rules of
`Practice for Trials Before the Patent Trial and Appeal Board, 80 Fed. Reg.
`
` 5
`
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`
`IPR2016-00418
`Patent 8,155,342 B2
`
`28,561, 28,565 (May 19, 2015). Board’s guidance regarding the mechanics
`and substance of motions to amend is explained in Idle Free Systems, Inc. v.
`Bergstrom, Inc., IPR2012-00027 (PTAB June 11, 2013) (Paper 26), as well
`as MasterImage 3D, Inc. v. RealD Inc., IPR2015-00040 (PTAB July 15,
`2015) (Paper 42).
`
`We instructed Patent Owner that if it were to file a Motion to Amend
`Claims, the required “to confer” call under 37 C.F.R. § 42.121 must be held
`at least two weeks prior to the due date of any Motion to Amend Claims.
`With respect to any feature the Patent Owner proposes to add by way of a
`substitute claim, Patent Owner should be aware of the duty of candor
`requirement under 37 C.F.R. § 42.11. The initial focus should be on the
`individual features proposed to be added, and that secondary references
`making up deficiencies of a primary reference are pertinent. We direct
`attention of the parties to MasterImage 3D, Inc., IPR2015-00040, slip op. at
`3 (PTAB July 15, 2015) (Paper 42) (precedential), which states:
`Thus, when considering its duty of candor and good faith
`under 37 C.F.R. § 42.11 in connection with a proposed
`amendment, Patent Owner should place initial emphasis on each
`added limitation. Information about the added limitation can still
`be material even if it does not include all of the rest of the claim
`limitations. See VMWare, Inc. v. Clouding Corp., Case
`IPR2014-01292, slip op. at 2 (PTAB Apr. 7, 2015) (Paper 23)
`(“With respect to the duty of candor under 37 C.F.R. § 42.11,
`counsel for Patent Owner acknowledged a duty for Patent Owner
`to disclose not just the closest primary reference, but also closest
`secondary reference(s) the teachings of which sufficiently
`complement that of the closest primary reference to be
`material.”).
`
` 6
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`IPR2016-00418
`Patent 8,155,342 B2
`
`
`(4) Proposed Motion to Substitute Lead and/or Backup Counsel
`
`Patent Owner proposed filing a Motion to Substitute Lead and/or
`Backup Counsel within the same law firm. Under 37 C.F.R. § 42.8(b)(3),
`Patent Owner as a real party-in-interest can file a revised mandatory notice
`at any time to identify new “lead and back-up counsel” within the same law
`firm, as long as new counsel is registered to practice before the PTO under
`37 C.F.R. § 11.5. However, “[c]ounsel may not be withdraw from a
`proceeding before the Board unless the Board authorizes such withdrawal”
`under 37 C.F.R. § 42.10(e). Counsel requesting authorization to file a
`motion to withdraw must comply with all provisions of 37 C.F.R. § 11.116
`concerning withdrawal and protection of the client’s interests.
`
`Separately, we note that there is a distinction between supplemental
`evidence and supplemental information. Supplemental evidence and
`supplemental information are governed by difference rules. See 37 C.F.R.
`§ 42.64(b)(2); 37 C.F.R. § 42.123. In particular, supplemental evidence is
`evidence served in response to an evidentiary objection and filed in response
`to a Motion to Exclude under 37 C.F.R. § 42.64(b)(1), (2), and is offered
`solely to support admissibility of the originally filed evidence and to defeat a
`Motion to Exclude that evidence, and not to support any argument on the
`merits (i.e., regarding the patentability or unpatentability of a claim). In
`contrast, supplemental information is evidence a party intends to support an
`argument on the merits. Such evidence may only be filed if a motion under
`37 C.F.R. § 42.123 is both authorized and granted. See Handi Quilter, Inc.
`
` 7
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`
`IPR2016-00418
`Patent 8,155,342 B2
`
`and Tacony Corp. v. Bernina International AG, Case IPR2013-00364, slip
`op. at 2–3 (PTAB Jun. 12, 2014) (Paper 30). Under our practice, there is
`only one round of objections to evidence and subsequent service of
`supplemental evidence in response to those objections. No objections
`should be made to supplemental evidence to trigger another round of
`supplemental evidence.
`
`
`ORDER
`
`It is:
`
`ORDERED that Due Dates 6 and 7 as set in the Scheduling Order
`
`(Paper 14) remain unchanged;
`
`ORDERED that a motion to exclude shall be used only to address
`admissibility issues under the Federal Rules of Evidence; and
`FURTHER ORDERED that any conference call to discuss a motion to
`amend claims by the Patent Owner shall take place at least two weeks prior
`to the due date of such a motion.
`
`
`
` 8
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`
`
`
`
`
`
`IPR2016-00418
`Patent 8,155,342 B2
`
`PETITIONER:
`William H. Mandir
`John F. Rabena
`Brian K. Shelton
`SUGHRUE MION PLLC
`wmandir@sughrue.com
`jrabena@sughrue.com
`bshelton@sughrue.com
`
`PATENT OWNER:
`Peter Lambrianakos
`BROWN RUDNICK LLP
`plambrianakos@brownrudnick.com
`
` 9
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