`
`571-272-7822
` Date Entered: July 6, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`VALVE CORPORATION,
`Petitioner,
`
`v.
`
`IRONBURG INVENTIONS LTD.,
`Patent Owner.
`____________
`
`Cases
`IPR2016-00948 (Patent 8,641,525 B2)
`IPR2016-00949 (Patent 9,089,770 B2)
`
`
`
`
`
`
`
`
`
`Before PHILLIP J. KAUFFMAN and MITCHELL G. WEATHERLY,
`Administrative Patent Judges.
`
`
`KAUFFMAN, Administrative Patent Judge.
`
`
`
`
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`IPR2016-00948 (Patent 8,641,525 B2)
`IPR2016-00949 (Patent 9,089,770 B2)
`
`This order discusses issues common to each case.1
`
`Additional Briefing
`The panel held a conference call with the parties on June 2, 2017, to
`discuss objections to demonstrative exhibits. See Paper 36, 5:12–19.
`During this call, Patent Owner expressed a desire to enter the institution
`decisions from IPR2017-00136 and IPR2017-00137 as supplemental
`information.2 Id. During further discussion at the oral hearing, Patent
`Owner conceded that the reason for seeking entry of the institution decisions
`was to address claim construction of the preamble in the cases at hand. Id. at
`13:1–7. We asked Patent Owner how many pages were needed to address
`the claim construction issue, and Patent Owner replied that two pages would
`be sufficient.3 Id. at 14:14–16.
`Petitioner contends that additional briefing regarding claim
`construction is unnecessary. Id. at 15–22.
`As pointed out during oral argument, Patent Owner had ample
`opportunity to address claim construction (e.g., the Preliminary Response
`and the Response). Despite this, we authorize each side two pages to
`address whether the preamble of claims 1 and 20 is limiting. Given that
`Patent Owner’s request for authorization to file supplemental information
`was driven by a desire to address the interpretation of the preambles of the
`
`
`1 We reference the papers of IPR2016-00948, but IPR2016-00949 contains
`similar papers.
`2 IPR2017-00136 and IPR2017-00137 were instituted on additional petitions
`directed to the patents at issue in the current proceedings.
`3 The cover page, signature block, and certificate of service do not count
`against the page limits for the post-hearing papers permitted by this Order.
`
`2
`
`
`
`IPR2016-00948 (Patent 8,641,525 B2)
`IPR2016-00949 (Patent 9,089,770 B2)
`
`independent challenged claims (1 and 20) and that we are granting such
`additional briefing, we deny Patent Owner’s request for authorization to file
`a motion for supplemental information as moot.
`
`
`Scope of Petitioner’s Reply
`Patent Owner’s objections to Petitioner’s demonstrative exhibits
`include an assertion that slides 2, 3, 8, 11, and 12 include improper argument
`in that the arguments were either beyond the scope of a reply under
`37 C.F.R. § 42.23(b) or should have been included in the Petition.4 See
`Paper 34. From oral argument, it appears that Patent Owner did not
`understand how to properly make such an assertion. Id. at 30:14–32:11.
`We authorize Patent Owner to file, in each proceeding, a two-page5
`submission, specifically identifying what issue(s) in the Reply allegedly
`exceeds the proper scope of a reply or should have been in the Petition. We
`authorize Petitioner to file a two-page response to Patent Owner’s
`submission.
`
`
`
`4 Regarding arguments that should have been included in the Petition, see
`generally Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir.
`2015) (applying a similar standard in inter partes review as in prosecution:
`“this court has determined whether the Board relied on a ‘new ground of
`rejection’ by asking ‘whether applicants have had fair opportunity to react to
`the thrust of the rejection.’”)).
`5 Patent Owner asserted that two pages was sufficient. See Paper 36, 31:5–
`32:11.
`
`3
`
`
`
`IPR2016-00948 (Patent 8,641,525 B2)
`IPR2016-00949 (Patent 9,089,770 B2)
`
`ORDER
`In view of the foregoing, it is hereby:
`ORDERED that Patent Owner’s request for authorization to file a
`motion for supplemental information is denied as moot; and
`FURTHER ORDERED that Patent Owner may file, each no later than
`four business days from entry of this order, a two-page paper on claim
`construction and a two-page paper regarding the scope of Petitioner’s Reply,
`as outlined above; and
`FURTHER ORDERED that Petitioner may file a response to each
`paper, as outlined above, no later than four business from entry of entry of
`each of Patent Owner’s papers.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`4
`
`
`
`IPR2016-00948 (Patent 8,641,525 B2)
`IPR2016-00949 (Patent 9,089,770 B2)
`
`
`
`PETITIONER:
`Joshua Harrison
`josh@bhiplaw.com
`
`Reynaldo Barcelo
`rey@bhiplaw.com
`
`
`PATENT OWNER:
`Ehab Samuel
`esamuel-PTAB@manatt.com
`esamuel@manatt.com
`
`Danielle Mihalkanin
`DMihalkanin@manatt.com
`
`Yasser El-Gamal
`YEIGamal@manatt.com
`
`
`
`
`
`5
`
`
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