`571-272-7822
`
`
`
`
`
` Paper No. 27
`Entered: August 30, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`IMMERSION CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-01381
`Patent 8,773,356 B2
`____________
`
`
`
`MICHAEL R. ZECHER, NEIL T. POWELL, and
`MINN CHUNG, Administrative Patent Judges.
`
`POWELL, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. §§ 42.5(a) and 42.7(a)
`
`
`
`IPR2016-01381
`Patent 8,773,356 B2
`
`I. DISCUSSION
`
`On August 28, 2017, Immersion Corporation (“Patent Owner”), filed a
`
`Motion for Observation regarding the cross-examination testimony of Patrick
`
`Baudisch, Ph.D., the reply witness for Apple Inc. (“Petitioner”). Paper 24. As
`
`expected, Patent Owner filed its Motion for Observation along with a transcription
`
`of the cross-examination testimony of Dr. Baudisch. Ex. 2013. In addition, Patent
`
`Owner filed two other new exhibits with its Motion for Observation. Exs. 2011,
`
`2012.
`
`As we explained in the Scheduling Order, a motion for observation on cross-
`
`examination is a mechanism to draw our attention to relevant cross-examination
`
`testimony of a reply witness because no further substantive paper is permitted after
`
`the reply. Paper 8, 4. The observation must be a concise statement of the
`
`relevance of precisely identified testimony to a precisely identified argument or
`
`portion of an exhibit. Id. at 4-5. An observation, however, is not an opportunity to
`
`raise new issues, e.g., by introducing or filing new evidence that was not presented
`
`and developed previously during the course of trial. See Office Patent Trial
`
`Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). We may decline
`
`consideration or entry of observations in certain circumstances where a party raises
`
`new issues. See id.
`
`Apart from the transcription of the cross-examination testimony of
`
`Dr. Baudisch (Ex. 2013), which provides the necessary context for each of Patent
`
`Owner’s observations, the guidance noted above does not permit Patent Owner to
`
`introduce or file new, additional evidence with its Motion for Observation that has
`
`uncertain evidentiary value, and for which no filing authorization has been
`
`2
`
`
`
`IPR2016-01381
`Patent 8,773,356 B2
`
`provided. Consequently, based on the particular circumstances of this case, we
`
`exercise our authority under 37 C.F.R. § 42.7(a) to expunge Patent Owner’s
`
`Motion for Observation, along with new Exhibits 2011 and 2012. Nonetheless, we
`
`will afford Patent Owner another opportunity to refile the same observations
`
`regarding the cross-examination testimony of Dr. Baudisch; however, Patent
`
`Owner must delete any citation to these new exhibits. No new, additional evidence
`
`is permitted to be introduced or filed with the corrected Motion for Observation,
`
`without prior authorization from the panel.
`
`
`
`Accordingly, it is:
`
`II. ORDER
`
`ORDERED that, pursuant to 37 C.F.R. 42.7(a), Patent Owner’s Motion for
`
`Observation regarding the cross-examination testimony of Dr. Baudisch (Paper 24)
`
`and Exhibits 2011 and 2012 are expunged from the record of this proceeding;
`
`FURTHER ORDERED that Patent Owner is authorized to refile the same
`
`observations regarding the cross-examination testimony of Dr. Baudisch, but must
`
`delete any citation to Exhibits 2011 and 2012;
`
`FURTHER ORDERED that Patent Owner’s corrected Motion for
`
`Observation is due no later than Thursday, August 31, 2017; and
`
`FURTHER ORDERED that Patent Owner shall not file or introduce new,
`additional evidence with its corrected Motion for Observation.
`
`3
`
`
`
`IPR2016-01381
`Patent 8,773,356 B2
`
`For PETITIONER:
`
`James Heintz
`Apple-immersion-IPRs@dlapiper.com
`
`Brian Erickson
`Brian.erickson@dlapiper.com
`
`
`For PATENT OWNER:
`
`Michael Fleming
`mfleming@irell.com
`
`Babak Redjaian
`bredjaian@irell.com
`
`
`
`
`
`
`
`
`4
`
`
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