Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 13
`Entered: October 27, 2016
`
`
`
`
`
`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, MEREDITH C. PETRAVICK, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`KAUFFMAN, Administrative Patent Judge.
`
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 13
`Entered: October 27, 2016
`
`
`
`
`
`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, MEREDITH C. PETRAVICK, 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)
`
`At Petitioner’s request, a conference call was held on October 26,
`
`2016. Judges Kauffman, Petravick, and Weatherly were on the call as well
`as counsel for the parties. The call discussed scheduling and evidence.
`
`Scheduling
`
`Petitioner explained that follow-up petitions, along with motions for
`joinder have been filed.
`
`Patent Owner expressed a desire to delay due date 1 because of
`another inter partes review. Petitioner expressed a general willingness to
`agree to delay due date 1 if dues dates 2–7 could be delayed a corresponding
`amount. Rather than engaging in a lengthy discussion with the Board
`considering a large number of options, it is preferable that the parties more
`fully develop tailored requests for relief before calling the Board. See
`IPR2016-00948, Paper 11 ¶ D.1. For example, here, the parties could have
`presented a joint proposed schedule, or absent agreement between the
`parties, each party each could have presented its own preferred schedule.
`
`We authorize the parties to submit a joint motion to alter due dates 1–
`7 with the restriction that due dates 6 and 7 may not be delayed more than
`two weeks beyond their currently scheduled dates.
`
`Evidence
`Patent Owner asked whether its contention in the Preliminary
`Response that the statements of Dr. Donohoe recited in the Petition are
`inadmissible hearsay was a timely objection.1 The relevant portion of the
`
`
`1 That contention can be found at Paper 7, 28.
`
`2
`
`
`
`IPR2016-00948 (Patent 8,641,525 B2)
`IPR2016-00949 (Patent 9,089,770 B2)
`
`applicable rule provides, “[a]ny objection to evidence submitted during a
`preliminary proceeding must be filed within ten business days of the
`institution of trial.” 37 C.F.R. § 42.64(b)(1). Patent Owner contends that
`the rule can be read two ways: (1) objections must be submitted no later than
`ten days from institution of trial, meaning that objections prior to institution
`are permissible, or (2) objections may be served in the window of time from
`institution of trial to ten days after institution. Patent Owner explained that
`it had interpreted Rule 42.64 in the latter manner.
`We are unaware of any Board decision that aligns with Patent
`Owner’s first interpretation; rather, the Board has consistently taken the
`second interpretation, holding that objections prior to institution are
`premature. See, e.g., Commissariat À L’Energie Atomique Et Aux Energies
`Alternatives v. Silicon Genesis Corp., Case IPR2016-00832, slip op. at 22–
`23 (PTAB Sept. 28, 2016) (Paper 12); see also Mitsubishi Plastics, Inc. v.
`Celgard LLC, Case IPR2014-00524 (PTAB Oct. 15, 2014) (Paper 17)
`(expunging objections, in part, because they were filed prior to institution).
`Any doubt regarding the panel’s interpretation of rule 42.64 was
`removed by our Institution Decision in which we explained that
`Patent Owner’s assertion that Dr. Donohoe’s statements are
`inadmissible hearsay is premature. Rule 42.64 provides the
`framework for Patent Owner to object to information proffered
`as evidence and move to exclude objectionable material from
`evidence during the trial. See 37 C.F.R. § 42.64.
`Paper 10, 5.
`Patent Owner requested this call on October 21, 2016, more than ten
`days after entry of our Institution Decision on September 27, 2016.
`Consequently, the time for objection has expired. 37 C.F.R. § 42.64(b)(1).
`Beyond this shortcoming, objections should be filed as a separate paper and
`
`3
`
`
`
`IPR2016-00948 (Patent 8,641,525 B2)
`IPR2016-00949 (Patent 9,089,770 B2)
`
`not with a preliminary response. See 37 C.F.R. § 42.6(a)(3) (prohibiting
`combined documents).
`
` Although Patent Owner has not made an effective objection, the
`contentions in the Preliminary Response put Petitioner on notice that Patent
`Owner contends that Dr. Donohoe’s statements are inadmissible hearsay.
`In light of this, we authorize Patent Owner to submit objections to the
`evidence at issue (Ex. 1007, Decl. Dr. Donohoe). We remind Patent Owner
`of the obligation to identify the ground for the objection with sufficient
`particularity to allow correction in the form of supplemental evidence. 37
`C.F.R. § 42.64(b)(1).
`Accordingly, it is:
`ORDERED that, no later than five working days from entry of this
`order, the parties may submit a joint proposed schedule as outlined above;
`ORDERED that, no later than two working days from entry of this
`order, Patent Owner may file objections as outlined above, and
`FURTHER ORDERED, that Petitioner may elect to respond to Patent
`Owner’s objections as permitted by 37 C.F.R. § 42.64(b)(2).
`
`
`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@manatt.com
`
`
`
`5
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