Paper No. 8
`Trials@uspto.gov
`571-272-7822 Entered: June 17, 2016
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HP, INC.,
`Petitioner,
`
`v.
`
`MEMJET TECHNOLOGY, LTD.,
`Patent Owner.
`
`
`
`Case IPR2016-00537
`Patent 7,156,492 B2
`
`
`
`
`Before JAMESON LEE and JOHN F. HORVATH,
`Administrative Patent Judges.
`
`HORVATH, Administrative Patent Judge.
`
`
`DECISION
`Conduct of the Proceedings
`37 C.F.R. § 42.51
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: June 17, 2016
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HP, INC.,
`Petitioner,
`
`v.
`
`MEMJET TECHNOLOGY, LTD.,
`Patent Owner.
`
`
`
`Case IPR2016-00537
`Patent 7,156,492 B2
`
`
`
`
`Before JAMESON LEE and JOHN F. HORVATH,
`Administrative Patent Judges.
`
`HORVATH, Administrative Patent Judge.
`
`
`DECISION
`Conduct of the Proceedings
`37 C.F.R. § 42.51
`
`
`
`
`
`
`IPR2016-00537
`Patent No. 7,156,492 B2
`
`
` INTRODUCTION
`
`Patent Owner filed a Preliminary Response on May 9, 2016.
`Petitioner contacted the Board on June 13, 2016, requesting authorization to
`file a Reply addressing Patent Owner’s argument that, pursuant to 35 U.S.C.
`§ 103(c), the Silverbrook ’142 patent (US 6,428,142 ) cannot be used to
`challenge the validity of the ’492 patent (US 7,156,492).
`The Board conducted a conference call with the parties on June 15,
`2016. The participants were Dion Bregman and Lindsey Shin for Petitioner,
`James Glass and John McKee for Patent Owner, and Judges Horvath and
`Lee.
`
`For the reasons discussed infra, we grant Petitioner’s request.
`
`
`
`DISCUSSION
`
`The ’492 Patent claims priority, through a chain of continuation
`applications, to Australian provisional application AU-PR3996. In its
`Preliminary Response, Patent Owner argues AU-PR3996 was owned by
`Silverbrook Research Pty, Ltd. because it was filed on behalf of that entity.
`See Paper 7, 19–20; Ex. 2003.
`Petitioner argues Patent Owner’s evidence is insufficient to prove
`ownership of AU-PR3996 under Australian patent law, and we should grant
`Petitioner’s request to file a reply because the Board would benefit from
`briefing on §§ 15 and 29 of the Australian patent laws pertaining to the
`application for and ownership of patents. Petitioner therefore requests the
`Board grant it the right to file a 5 page reply, including a short declaration
`from Australian counsel.
`
`
`
`2
`
`
`
`IPR2016-00537
`Patent No. 7,156,492 B2
`
`
`Patent Owner opposes Petitioner’s request, arguing the Board should
`deny the request because Patent Owner’s evidence is prima facie proof that
`Silverbrook Research Pty, Ltd. owned AU-PR3996 under § 195 of the
`Australian patent laws. Patent Owner requests, should the Board grant
`Petitioner’s request to file a reply, that Patent Owner be granted the right to
`file a sur-reply with additional evidence. Petitioner does not oppose Patent
`Owner’s request to file a sur-reply with additional evidence in the form of a
`rebuttal declaration.
`The evidence cited by Patent Owner to prove ownership of AU-
`PR3996 is a printout of that application’s details from the electronic Register
`of the Australian Patent Office. See Ex. 2003. Whether that printout proves
`ownership of AU-PR3996 may be a question of Australian law. Cf. Int’l
`Nutrition Co. v. Horphag Research Ltd., 257 F.3d 1324, 1329–30 (Fed. Cir.
`2001)(approving district court’s application of French law to determine
`ownership of a US patent pursuant to a contractual agreement including a
`provision to apply French law); see also Akazawa v. Link New Tech. Int’l,
`Inc., 520 F.3d 1354, 1357–1358 (Fed. Cir. 2008) (remanding case to district
`court to apply Japanese intestacy law to determine succession of a US patent
`owned by a deceased Japanese citizen).
`“In determining an issue of foreign law, the Board may consider any
`relevant material or source, including testimony, whether or not submitted
`by a party or admissible under the Federal Rules of Evidence.” 37 C.F.R.
`§ 42.62(d). Because we agree with Petitioner that the Board would benefit
`from briefing by the parties on ownership of AU-PR3996 under Australian
`law, we grant Petitioner’s request to file a reply, and Patent Owner’s request
`to file a sur-reply on that issue only. However, because the parties could not
`
`
`
`3
`
`
`
`IPR2016-00537
`Patent No. 7,156,492 B2
`
`reach agreement on waiver of any right to cross-examining the other party’s
`declarant, Petitioner’s reply and Patent Owner’s sur-reply may not introduce
`testimonial evidence.
`
`
`ORDER
`
`It is ORDERED that Petitioner may file a Reply to Patent Owner’s
`Preliminary Response on the issue of ownership of AU-PR3996, not to
`exceed five (5) pages in length, and due on or before June 24, 2016; and
`FURTHER ORDERED that Petitioner’s Reply shall not contain
`testimonial evidence; and
`FURTHER ORDERED that Patent Owner may file a Sur-Reply to
`Petitioner’s Reply on the issue of ownership of AU-PR3996, not to exceed
`five (5) pages in length, and due on or before July 1, 2016; and
`FURTHER ORDERED that Patent Owner’s Sur-Reply shall not
`contain testimonial evidence.
`
`
`
`4
`
`
`
`
`
`
`
`IPR2016-00537
`Patent No. 7,156,492 B2
`
`
`For PETITIONER:
`Dion M. Bregman
`Andrew J. Gray IV
`Bradford A. Cangro
`Jacob A. Snodgrass
`Archis V. Ozarkar
`dbregman@morganlewis.com
`andrew.gray@morganlewis.com
`bcangro@morganlewis.com
`jsnodgrass@morganlewis.com
`nozarkar@morganlewis.com
`
`
`
`For PATENT OWNER:
`James M. Glass
`Marc Kaplan
`John McKee
`jimglass@quinnemanuel.com
`marckaplan@quinnemanuel.com
`johnmckee@quinnemanuel.com
`
`
`
`
`
`5
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