Paper 20
`Trials@uspto.gov
`Entered: September 20, 2017
`Tel: 571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GENERAL ELECTRIC COMPANY,
`Petitioner,
`
`v.
`
`UNITED TECHNOLOGIES CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-01289
`Patent 7,060,360 B2
`____________
`
`
`
`Before GRACE KARAFFA OBERMANN, CHRISTOPHER M. KAISER,
`and MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Patent Owner’s Request for Supplemental Briefing
`37 C.F.R. § 42.20(d)
`
`
`
`
`
`Trials@uspto.gov
`Entered: September 20, 2017
`Tel: 571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GENERAL ELECTRIC COMPANY,
`Petitioner,
`
`v.
`
`UNITED TECHNOLOGIES CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-01289
`Patent 7,060,360 B2
`____________
`
`
`
`Before GRACE KARAFFA OBERMANN, CHRISTOPHER M. KAISER,
`and MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Patent Owner’s Request for Supplemental Briefing
`37 C.F.R. § 42.20(d)
`
`
`
`
`
`
`IPR2016-01289
`Patent 7,060,360 B2
`
`
`A final hearing was conducted in this proceeding on September 18,
`2017. During the presentation of arguments, Petitioner directed the Board to
`two appellate opinions, which issued after the filing of Petitioner’s Reply.
`See Paper 16 (Reply, filed June 27, 2017). Specifically, Petitioner directed
`the panel’s attention to these precedential opinions of our reviewing court:
`(1) Idemitsu Kosan Co. v. SFC Co., Civ. No. 2016-2721, 2017 WL
`4078964 (Fed. Cir. Sept. 15, 2017) (hereinafter “Idemitsu”) (precedential);
`and
`
`(2) Southwire Co. v. Cerro Wire LLC, Civ. No. 2016-2287, 2017 WL
`3927195 (Fed. Cir. Sept. 8, 2017) (hereinafter “Southwire”) (precedential).
`At the conclusion of the final hearing, Patent Owner requested leave
`to file a supplemental brief, limited to addressing Petitioner’s arguments
`pertaining to those two opinions. Petitioner responded that, although it
`believes no additional briefing is required, any grant of supplemental
`briefing should provide Petitioner an equal opportunity to present a paper
`addressing both opinions.
`Several factors persuade us that additional briefing is warranted under
`the particular circumstances presented in this case.
`First, issues of timing favor granting the request. The Idemitsu and
`Southwire opinions both issued after merits briefing was concluded in this
`proceeding; in fact, the Southwire opinion issued 10 days, and the Idemitsu
`opinion issued 3 days, prior to the final hearing. Accordingly, we find that
`Petitioner was justified in directing our attention to those opinions for the
`first time during the final hearing. Given that the opinions were raised for
`the first time at the final hearing, moreover, Patent Owner’s request for
`additional briefing was timely made.
`
`2
`
`
`
`IPR2016-01289
`Patent 7,060,360 B2
`
`
`Second, the scope of the request is reasonable. Patent Owner requests
`briefing that is limited to addressing Petitioner’s newly-raised arguments
`pertaining to the Idemitsu and Southwire opinions. The interests of fairness
`favor providing Patent Owner an opportunity to respond to Petitioner’s
`newly-raised arguments.
`Third, additional briefing is warranted, given the relevance of the
`information at issue. The Idemitsu and Southwire opinions were designated
`by our reviewing court as precedential. Petitioner, during the final hearing,
`argued that those opinions may bear on issues that are disputed in this case.
`Further, our review of the opinions persuades us that additional briefing,
`narrowly tailored to the impact of those opinions on issues in dispute in this
`proceeding, may promote the just resolution of this case.
`Fourth, granting Patent Owner’s request for additional briefing will
`not disturb the timeline or significantly increase the costs associated with
`this proceeding. In that regard, moreover, Petitioner raised no concerns at
`the final hearing sufficient to persuade us that granting Patent Owner’s
`request for limited additional briefing will significantly burden Petitioner.
`Based on the totality of circumstances presented in this case, we
`determine that granting Patent Owner’s request for additional briefing will
`serve the interests of justice. Accordingly, pursuant to our authority to
`“order briefing on any issue involved in the trial” (37 C.F.R. § 42.20(d)), we
`authorize additional briefing subject to the conditions set forth below.
`
`
`It is:
`ORDERED that Patent Owner’s request for additional briefing is
`granted;
`
`3
`
`
`
`IPR2016-01289
`Patent 7,060,360 B2
`
`
`FURTHER ORDERED that Petitioner shall file a supplemental brief,
`limited to addressing Petitioner’s arguments pertaining to how the Idemitsu
`and Southwire cases bear on the disputed issues in the instant proceeding, by
`September 26, 2017;
`FURTHER ORDERED that Petitioner’s supplemental brief shall be
`limited to five (5) pages;
`FURTHER ORDERED that Patent Owner shall file a supplemental
`brief, limited to responding to arguments raised in Petitioner’s supplemental
`brief, by October 3, 2017;
`FURTHER ORDERED that Patent Owner’s supplemental brief shall
`be limited to five (5) pages;
`FURTHER ORDERED that neither party shall file new evidence in
`the record of this proceeding in support of any supplemental brief; and
`FURTHER ORDERED that no other briefing is authorized at this
`
`time.
`
`
`
`
`
`4
`
`
`
`IPR2016-01289
`Patent 7,060,360 B2
`
`PETITIONER:
`Anish Desai
`Megan Wantland
`Brian Ferguson
`Weil, Gotshal & Manges LLP
`GE.WGM.Service@weil.com
`megan.wantland@weil.com
`brian.ferguson@weil.com
`
`PATENT OWNER:
`W. Karl Renner
`Timothy Riffe
`Lauren Degnan
`Fish & Richardson P.C.
`axf-ptab@fr.com
`riffe@fr.com
`degnan@fr.com
`
`5
`
`
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