`571-272-7822
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` Paper No. 24
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`Date Entered: January 30, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`PRIME FOCUS CREATIVE SERVICES CANADA INC.,
`Petitioner,
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`v.
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`LEGEND3D, INC.,
`Patent Owner.
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`______________________
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`Case IPR2016-01243
`Patent 7,907,793 B1
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`__________________________________
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`
`
`Before LYNNE E. PETTIGREW, CARL M. DEFRANCO, and
`KAMRAN JIVANI, Administrative Patent Judges.
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`
`JIVANI, Administrative Patent Judge.
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`
`
`Conduct of the Proceeding
`37 C.F.R. § 42.5
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`IPR2016-01243
`Patent 7,907,793 B1
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`A. INTRODUCTION
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`On January 17, 2017, an initial conference call was conducted
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`between respective counsel for the parties and Judges Pettigrew and Jivani.
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`Prime Focus Creative Services Canada, Inc. (“Petitioner”) was represented
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`by Mr. Joshua Glucoft. Legend3D, Inc. (“Patent Owner”) was represented
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`by Mr. Joseph Mayo and Ms. Danna Cotman. The general purpose of the
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`call was to resolve the parties’ dispute regarding Due Dates 1 and 2 set forth
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`in the Scheduling Order (Paper 15), and discuss the parties’ requests for
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`authorization to file several motions contemplated by the parties and
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`identified in their Joint List of Proposed Motions (Paper 21) (“Joint List”).
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`B. SCHEDULING ORDER
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`Patent Owner sought an extension of Due Date 1 by three weeks.
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`Petitioner opposed this extension, preferring the schedule remain unchanged,
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`and offered an alternative counter proposal to extend Due Dates 1 and 2 each
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`by 3 weeks. After significant negotiations, the parties agreed to extend Due
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`Date 1 by one and half weeks and Due Date 2 by one week. The parties
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`subsequently filed on January 17, 2017 a joint stipulation extending
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`Due Date 1 from March 16, 2017 to March 27, 2017 and Due Date 2 from
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`June 16, 2017 to June 23, 2017.
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`C. STATUS OF RELATED PROCEEDINGS AND
`SETTLEMENT NEGOTATIONS
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`The parties identify the following related litigation: Prime Focus
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`Creative Services Canada Inc. v. Legend3D, Inc., Central District of
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`California, Case No. 2:15-cv-2340-MWF-PLA, filed on April 21, 2016. Pet.
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`1. During the conference, we directed the parties to submit a brief statement
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`IPR2016-01243
`Patent 7,907,793 B1
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`summarizing the status of this related proceeding as well as the status of any
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`settlement negotiations between them no later than January 31, 2017. On
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`January 19, 2017, the parties filed a Joint Notice (Paper 21) stating the
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`parties do not have any settlement discussions scheduled and that the Central
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`District of California litigation is stayed pending conclusion of the instant
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`inter partes review as well as IPR2016-00806, instituted on claims 1–18 of
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`U.S. Patent No. 8,922,628. Joint Notice 2–3.
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`D. REQUESTS FOR AUTHORIZATION OF MOTIONS
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`1.
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`Generally
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`The parties are reminded that, except as otherwise provided in the
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`Rules, Board authorization is required before filing a motion. 37 C.F.R.
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`§ 42.20(b).1 A party desiring to file a motion should request a conference to
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`obtain authorization to file the motion after first conducting a meet and
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`confer with the opposing party.
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`2.
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`Petitioner’s Proposed Motion to Submit Supplemental Information
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`Petitioner seeks authorization to file a motion to submit “supplemental
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`information,” namely a corrected declaration of David Forsyth, Ph.D. Joint
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`List 2. Petitioner’s proposed motion arises from the following events.
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`In support of its June 21, 2016 Petition, Petitioner contemporaneously
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`filed a declaration made by Dr. Forsyth (Ex. 1009). On September 23, 2016,
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`Patent Owner filed a Preliminary Response (Paper 12). We instituted trial in
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`this matter on December 20, 2016. Paper 14 (“Dec.”). On January 5, 2017,
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`pursuant to 37 C.F.R. § 42.64(b)(1), Patent Owner objected to Dr. Forsyth’s
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`1 Discussion of some motions for which prior authorization is not required
`may be found in the Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`48,762–63 (Aug. 14, 2012).
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`2
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`declaration because it was not made under oath or affirmed under penalty of
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`perjury. Paper 18, 2.
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`During the conference, Patent Owner stated that Petitioner timely
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`served on Patent Owner a corrected declaration of Dr. Forsyth, which
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`constitutes supplemental evidence pursuant to 37 C.F.R. § 42.64(b)(2).
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`Petitioner represented the corrected declaration contains no substantive
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`changes to the original declaration beyond containing a signature affirmed
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`under penalty of perjury. Patent Owner does not dispute this
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`characterization, but nevertheless opposes Petitioner’s proposed motion to
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`submit this corrected declaration because it is not properly characterized as
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`“supplemental information.”
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`We agree with Patent Owner that the corrected declaration of Dr.
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`Forsyth constitutes supplemental evidence under 37 C.F.R. § 42.64(b)(2)
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`and not supplemental information pursuant to 37 C.F.R. § 42.123.
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`Supplemental information is generally information Petitioner intends to use
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`to support an argument on the merits. By contrast, supplemental evidence is
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`served in response to an objection to the admissibility of evidence.
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`Supplemental evidence is normally served on the objecting party, and may
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`be filed only with an opposition to a motion to exclude the objected to
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`evidence. See GoPro, Inc. v. Contour IP Holding LLC, Case IPR2015-
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`01078 (PTAB Apr. 7, 2016) (Paper 40); Handi Quilter, Inc. v. Bernina Int’l
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`AG, Case IPR2013-00364 (PTAB Jun. 12, 2014) (Paper 30).
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`Accordingly, we do not authorize this motion. Given the facts of this
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`specific case, however, we authorize and direct Petitioner to file the
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`corrected declaration of Dr. Forsyth no later than five business days from the
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`date of this Order. This declaration shall be titled “CORRECTED
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`3
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`DECLARATION of David Forsyth, Ph.D.,” bear exhibit number 1009, and
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`not contain substantive changes to the original declaration beyond
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`containing a signature of Dr. Forsyth affirmed under penalty of perjury.
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`3.
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`Petitioner’s Proposed Motion for Sanctions under 37 C.F.R.
`§ 42.12(b)
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`Petitioner seeks authorization to file a motion for sanctions on the
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`basis “that the Patent Owner has made certain misrepresentations to the
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`Board in its Preliminary Response.” Joint List 1. Petitioner stated during
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`the conference that this motion is ripe because Petitioner may be required to
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`prepare and defend its witness Dr. Forsyth during deposition on Patent
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`Owner’s proposed construction of the term “depth parameter,” which
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`Petitioner asserts is inconsistent with Patent Owner’s prior statements.
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`Patent Owner opposes this proposed motion. After each party presented its
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`positions with respect to this proposed motion, we took this matter under
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`advisement.
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`Having considered the parties’ arguments, we are not persuaded this
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`motion is warranted at this time. The sanctions Petitioner seeks would
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`preclude Patent Owner from asserting its priority claim—a matter central to
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`our determination to institute this trial. See Dec. 6–10. Although we are
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`mindful that Petitioner may be required to prepare and defend its witness Dr.
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`Forsyth during deposition on Patent Owner’s proposed construction of the
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`term “depth parameter,” we are not persuaded that this burden outweighs the
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`significant burden to the parties of extensive motions practice on these
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`weighty allegations. In essence, Petitioner’s motion would accelerate this
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`trial to bring about a final decision on patentability without the benefit of the
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`4
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`discovery and procedures set forth under our Rules. We decline to short-
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`circuit this trial in the manner Petitioner proposes.
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`Accordingly, we do not authorize the filing of this motion. If
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`Petitioner believes the alleged misrepresentations are present in Patent
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`Owner’s Response to the Petition, Petitioner may raise these alleged
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`misrepresentations in its Reply in support of the Petition.
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`4.
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`Patent Owner’s Proposed Motion for Sanctions for
`Misrepresentations by Petitioner
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`Patent Owner seeks authorization to file a motion for sanctions “for
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`certain improper conduct amounting to misrepresentations made by
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`Petitioner to the Board in this proceeding.” Joint List 4–5. Patent Owner
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`stated during the conference that this proposed motion is not a cross-motion
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`to Petitioner’s Proposed Motion for Sanctions, but rather a “stand-alone”
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`motion. Patent Owner’s basis for this proposed motion, however, is directly
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`tied to Petitioner’s allegations of misrepresentations. Id. Petitioner opposes
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`this proposed motion, describing it during the conference as a retaliatory
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`tactic and as unripe given that Petitioner’s proposed motion for sanctions has
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`not been authorized. After each party presented its positions with respect to
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`this proposed motion, we took this matter under advisement.
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`Having considered the parties’ arguments, we are not persuaded this
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`motion is warranted. Because we do not authorize Petitioner’s Proposed
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`Motion for Sanctions, we are not persuaded that a colorable basis and need
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`for this proposed motion remain. Accordingly, we do not authorize the
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`filing of this motion.
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`5
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`5.
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`Patent Owner’s Proposed Motion to Submit Supplemental
`Information Pursuant to 37 C.F.R. § 42.123
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`Patent Owner seeks authorization to file a motion to submit four
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`pieces of supplemental information. Joint List 3. Patent Owner stated
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`during the conference that this information is relevant to Petitioner’s
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`allegations of misrepresentations by Patent Owner. Because we do not
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`authorize Petitioner’s Proposed Motion for Sanctions regarding these
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`allegations, we do not authorize this proposed motion. If Patent Owner
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`believes this information is relevant to a claim for which trial has been
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`instituted, Patent Owner may submit this information with its Response to
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`the Petition.
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`6. Patent Owner’s Proposed Motion for Additional Discovery Pursuant
`to 37 C.F.R. § 42.51(b)(2)
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`Patent Owner seeks authorization to file a motion “to depose Richard
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`Baker, an employee of Prime Focus (Sn. Stereo Supervisor), who appears
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`and narrates a portion of” a video available on Patent Owner’s website.
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`Joint List 4. Patent Owner asserts this additional discovery “is warranted
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`because it directly relates to the issues of Saturation and Luminance being
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`used as depth parameters to affect depth, and the Graham secondary
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`consideration of nonobviousness copying factor.” Id. Counsel for Patent
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`Owner stated during the conference that Mr. Baker’s deposition is not
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`sought to authenticate the video itself for evidentiary purposes, but rather is
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`merely “nice to have.”
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`During the conference, Petitioner stated it opposes this proposed
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`motion because, inter alia, Mr. Baker is not a witness tendered by Petitioner,
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`a named inventor of the challenged patent, or a named inventor of any of the
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`asserted prior art patents.
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`6
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`Under the Leahy-Smith America Invents Act, discovery is available
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`for the deposition of witnesses submitting affidavits or declarations and for
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`“what is otherwise necessary in the interest of justice.” 35 U.S.C.
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`§ 316(a)(5); see also 37 C.F.R. § 42.51(b)(2) (“The moving party must show
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`that such additional discovery is in the interests of justice . . . .”). Our
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`precedential decision in Garmin International, Inc. v. Cuozzo Speed
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`Technologies LLC, Case IPR2012-00001 (PTAB Mar. 5, 2013) (Paper 26),
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`sets out the following factors pertinent to seeking authorization for
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`additional discovery under the “necessary in the interest of justice” statutory
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`standard: (i) more than a possibility and mere allegations; (ii) litigation
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`positions and underlying basis; (iii) ability to generate equivalent
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`information by other means; (iv) easily understandable instructions; and (v)
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`requests not overly burdensome to answer. Id. at 6–7.
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`Here, Mr. Baker has not submitted affidavits or declarations;
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`therefore, Patent Owner must show the additional discovery sought is
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`necessary in the interest of justice. See 35 U.S.C. § 316(a)(5). Patent
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`Owner, however, failed to address the Garmin factors in its request for
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`authorization and during the conference. See Joint List 4. Further, Patent
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`Owner has not addressed how Mr. Baker’s testimony could be relevant to
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`the Graham secondary consideration of nonobviousness copying factor. See
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`id. Accordingly, having considered the parties’ arguments, we are not
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`persuaded this motion is warranted at this time.
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`7
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`7.
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`Patent Owner’s Proposed Contingent Motion to Amend Claims
`Pursuant to 37 C.F.R. § 42.121
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`Patent Owner indicates that it may file a contingent motion to amend.
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`Joint List 4. During the conference, we reminded Patent Owner that,
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`pursuant to the Scheduling Order, Patent Owner must confer with the Board
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`at least ten (10) business days prior to DUE DATE 1 before filing any such
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`motion to amend. Scheduling Order 4.
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`ORDER
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`It is, therefore,
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`ORDERED that Petitioner is authorized to file a corrected declaration
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`of Dr. Forsyth no later than five business days from the date of this Order.
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`This declaration shall be titled “CORRECTED DECLARATION of David
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`Forsyth, Ph.D.,” bear exhibit number 1009, and not contain substantive
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`changes to the original declaration beyond containing a signature of Dr.
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`Forsyth affirmed under penalty of perjury.
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`.
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`8
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`9
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`IPR2016-01243
`Patent 7,907,793 B1
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`FOR PETITIONER:
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`Joshua Glucoft
`IRELL & MANELLA LLP
`PrimeFocusIPR@irell.com
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`PATENT OWNER:
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`Joseph Mayo
`Danna Cotman
`ARC IP LAW, PC
`joe@arciplaw.com
`danna@arciplaw.com
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