`571–272–7822
`
`
`
`
`Paper 10
`Entered: February 1, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SONY CORPORATION,
`Petitioner,
`
`v.
`
`ONE-E-WAY, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01638
`Patent 9,282,396 B2
`_______________
`
`
`
`Before DAVID C. MCKONE, ROBERT J. WEINSCHENK, and
`JOHN F. HORVATH, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`
`IPR2016-01638
`Patent 9,282,396 B2
`
`
`INTRODUCTION
`I.
`Sony Corporation (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`requesting an inter partes review of claims 1–17 of U.S. Patent No.
`9,282,396 B2 (Ex. 1001, “the ’396 patent”). One-E-Way, Inc. (“Patent
`Owner”) filed a Preliminary Response (Paper 8, “Prelim. Resp.”) to the
`Petition. One of the issues presented in the Petition and the Preliminary
`Response is whether an amendment to an application that adds a statement
`incorporating by reference an earlier application to which priority was
`claimed constitutes improperly adding new matter to the application.
`Pet. 17; Prelim. Resp. 4–14. In addressing this issue, Petitioner cites to the
`Manual of Patent Examining Procedure (“MPEP”) (Pet. 17), and Patent
`Owner cites to several decisions by the United States Court of Appeals for
`the Federal Circuit (Prelim. Resp. 6–11).
`The panel has determined that, in this particular case, it is appropriate
`to authorize Petitioner to file a limited reply to the Preliminary Response.
`Specifically, Petitioner is authorized to file a 7-page reply by February 8,
`2017. The scope of the reply is limited to responding to Patent Owner’s
`argument that certain decisions by the Federal Circuit indicate that the
`prohibition against introducing new matter in a patent application after the
`filing date does not apply in the limited circumstance in which the
`application incorporates material from an earlier application in a chain of co-
`pending applications.
`
`II. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner may file a 7-page reply according to the
`instructions above by February 8, 2017;
`
`2
`
`
`
`IPR2016-01638
`Patent 9,282,396 B2
`
`
`FURTHER ORDERED that no additional evidence may be submitted
`with the reply; and
`FURTHER ORDERED that no additional briefing is authorized at this
`
`time.
`
`
`
`PETITIONER:
`
`John Flock
`Paul T. Qualey
`ANDREWS KURTH KENYON LLP
`johnflock@andrewskurthkenyon.com
`paulqualey@andrewskurthkenyon.com
`
`
`
`PATENT OWNER:
`
`Megan E. Lyman
`LYMAN PATENT SERVICES
`melyman@lymanpatents.com
`
`Jim Passe
`PASSE INTELLECTUAL PROPERTY, LLC
`
`3
`
`
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