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