`Tel: 571.272.7822
`
`
`
`Paper 9
`Entered: March 29, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`SAMSUNG ELECTRONICS CO., LTD., and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`
`
`
`
`
`
`
`
`PAPST LICENSING GMBH & CO. KG,
`Patent Owner.
`____________
`
`Cases IPR2016-01733
`Patent 9,189,437 B2
`____________
`
`Before JONI Y. CHANG, JENNIFER S. BISK, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`Case IPR2016-01733
`Patent 9,189,437 B2
`
`
`
`We instituted inter partes review in this proceeding on
`
`February 8, 2017. Paper 7. Patent Owner’s Response is due May 10, 2017.
`
`See Paper 8, 6.
`
`In the meantime, it has come to our attention that the ’437 patent may
`
`expire near the time of the statutory deadline for our final written decision—
`
`February 8, 2018. See, e.g., Case No. IPR2016-01839 (challenging a related
`
`patent), Paper 13, 14. The expiration date may affect the standard of claim
`
`construction the Board applies in post-grant proceedings—for unexpired
`
`patents, we usually apply the broadest reasonable interpretation standard,
`
`but, for expired patents, we apply a standard that is similar to the
`
`construction standard applied by U.S. district courts. See Phillips v. AWH
`
`Corporation, 415 F.3d 1303 (Fed. Cir. 20015) (en banc). 37 C.F.R.
`
`§ 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016)
`
`(upholding the Office regulation requiring the use of the broadest reasonable
`
`interpretation standard in the context of inter partes review); In re Rambus
`
`Inc., 694 F.3d 42, 46 (Fed. Cir. 2012); see also Black & Decker, Inc. v.
`
`Positec USA, Inc., 646 F. App’x. 1019, 1024 (non-precedential) (applying
`
`the Phillips standard to construe the claims of an expired patent in an inter
`
`partes review).
`
`Accordingly, we require the parties in their briefing (i.e., the Patent
`
`Owner Response and the Petitioner’s Reply) to address (1) the claim
`
`construction standard that properly should be applied in this proceeding, and
`
`(2) construction under both standards (i.e., broadest reasonable interpretation
`
`and the standard that is similar to the U.S. district court standard) for each
`
`term that needs to be construed explicitly in the final written decision.
`
`
`
`2
`
`
`
`3
`
`Case IPR2016-01733
`Patent 9,189,437 B2
`
`PETITIONER:
`
`Brian Rupp
`Brain.rupp@dbr.com
`
`Carrie Beyer
`Carrie.beyer@dbr.com
`
`Nikola Colic
`Nick.colic@dbr.com
`
`
`
`PATENT OWNER:
`
`Nicholas T. Peters
`ntpete@fitcheven.com
`
`Paul Henkelmann
`phenkelmann@fitcheven.com
`
`
`
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