Trials@uspto.gov
`571-272-7822
`
`Paper 37
`Entered: December 19, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`VALVE CORPORATION,
`Petitioner,
`
`v.
`
`IRONBURG INVENTIONS LTD.,
`Patent Owner.
`____________
`
`Cases1
`IPR2017-00136 (Patent 8,641,525 B2)
`IPR2017-00137 (Patent 9,089,770 B2)
`
`
`
`
`
`
`
`
`
`Before PHILLIP J. KAUFFMAN, MEREDITH C. PETRAVICK, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`
`KAUFFMAN, Administrative Patent Judge.
`
`
`
`
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 We use this caption to indicate that this Decision applies to, and is entered
`in, each case. The parties are not authorized to use this type of caption.
`
`
`571-272-7822
`
`Paper 37
`Entered: December 19, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`VALVE CORPORATION,
`Petitioner,
`
`v.
`
`IRONBURG INVENTIONS LTD.,
`Patent Owner.
`____________
`
`Cases1
`IPR2017-00136 (Patent 8,641,525 B2)
`IPR2017-00137 (Patent 9,089,770 B2)
`
`
`
`
`
`
`
`
`
`Before PHILLIP J. KAUFFMAN, MEREDITH C. PETRAVICK, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`
`KAUFFMAN, Administrative Patent Judge.
`
`
`
`
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 We use this caption to indicate that this Decision applies to, and is entered
`in, each case. The parties are not authorized to use this type of caption.
`
`
`
`Case IPR2017-00136 (Patent 8,641,525 B2)
`Case IPR2017-00137 (Patent 9,089,770 B2)
`
`
`On December 15, 2017, at Patent Owner’s request, the Board held a
`call with the parties. Patent Owner requests authorization to file a three page
`list of those arguments in Petitioner’s Reply that Patent Owner alleges
`exceed the proper scope of a rely. Specifically, Patent Owner alleges that
`trial was instituted based on a ground of unpatentability of anticipation by
`Wörn (with no reliance on inherency) and Petitioner’s Reply includes
`arguments related to obviousness and inherency.
`We deny this request for the following two reasons.
`
`
`Need
`
`The proffered information is not needed because the Board will check
`to ensure there has not been an improper change in a ground of
`unpatentability. See 37 C.F.R. § 42.23(b); see also Office Patent Trial
`Practice Guide, 77 Fed. Reg. at 48,767 (Aug. 14, 2012).
`
`Timeliness
`Patent Owner requested a conference call on this issue more than
`three months after Petitioner filed the Reply (Paper 20).2 We asked why
`Patent Owner did not request the call closer in time to when Petitioner filed
`the Reply. Patent Owner provided three reasons.
`First, Patent Owner stated that in the related cases (IPR2016-00948
`and IPR2016-00949) the scope of reply was addressed at the hearing,
`
`
`2 Unless otherwise indicated, we refer to the papers and exhibits of
`IPR2017-00136. IPR2017-00137 contains similar papers. Petitioner filed
`the Reply on August 27, 2017, and Patent Owner requested a conference call
`on December 13, 2017.
`
`2
`
`
`
`Case IPR2017-00136 (Patent 8,641,525 B2)
`Case IPR2017-00137 (Patent 9,089,770 B2)
`
`implying that the hearing was an appropriate time for raising such an issue.
`We disagree with that characterization. At that hearing the following
`discussion took place.
`MR. SAMUEL: So how do we object to the fact that they are
`improper as new arguments that are to be considered?
`JUDGE KAUFFMAN: As I think I mentioned in the phone call,
`there are a couple ways that the Board has dealt with that. One
`way is people ask for a conference call, and then they authorize
`either a motion to strike or they authorize what I call a list
`motion, which is a list of those things you believe to be beyond
`the scope of a proper reply or should have been in the petition.
`And, typically, that's authorized that the other side will then have
`a chance to comment on that. There has not been a request for
`that --
`JUDGE PETRAVICK: Well --
`JUDGE KAUFFMAN: What I'm saying is the objections to the
`demonstratives are the wrong place for that objection.
`Paper 36, 24:3–18.
`
`This discussion illustrates that Patent Owner was told both in a
`conference call and at oral hearing that the hearing is not the right time or
`place to contest the scope of a petitioner’s reply, and that a proper course of
`action would be to ask for a conference call to request authorization to file a
`motion to strike or a list. Consequently, this reason does not justify Patent
`Owner’s delay in seeking relief.
`Second, Patent Owner implied that part of the delay was due to our
`Scheduling Order (Paper 13). In particular, Patent Owner stated that: (1) the
`paper cited in the Schedule Order (Paper 41 of IPR2014-00148) does not
`exist, (2) the citation did not include a pinpoint cite, and (3) the guidance
`relates to a motion to exclude rather than the scope of a reply.
`
`3
`
`
`
`Case IPR2017-00136 (Patent 8,641,525 B2)
`Case IPR2017-00137 (Patent 9,089,770 B2)
`
`
`We acknowledge that IPR2014-00148 does not include a Paper 41.
`When Patent Owner detected this error, a prudent course of action would
`have been to contact the Board for guidance. Our incorrect citation does not
`relieve Patent Owner of the duty to seek relief promptly after the need for
`relief is identified. 37 C.F.R. § 42.25(b).
`Although the information in the Scheduling Order is in a paragraph
`titled, “Motion to Exclude,” the information applies to the scope of a reply.
`That paragraph states:
`If an issue arises with regard to a paper being out of proper scope
`under 37 C.F.R. § 42.23(a), the parties shall contact the Board in
`a timely manner to raise the matter. See, e.g., IPR2014-00148,
`Paper 41.
`Paper 13, 5.
`
`Consequently, our Scheduling Order is not the cause of Patent
`Owner’s inaction; rather, our Scheduling Order directs Patent Owner to
`contact the Board in a timely manner.
`Third, Patent Owner stated they were focused on the Motion to
`Terminate. Often an inter partes review will require a party to focus on
`multiple aspects of the trial. We are not persuaded that the workload
`involved here was unusual or otherwise excuses Patent Owner’s inaction.
`Our rules require Patent Owner to seek relief promptly after the need
`for that relief is identified. 37 CFR § 42.25(b). Beyond this, Patent Owner
`was told in our Scheduling Order, in a conference call, and at oral hearing in
`a related proceeding that the appropriate action is to promptly seek relief by
`requesting a conference call.
`In these circumstances, Patent Owner’s request some three months
`after Petitioner filed the Reply is not prompt.
`
`4
`
`
`
`Case IPR2017-00136 (Patent 8,641,525 B2)
`Case IPR2017-00137 (Patent 9,089,770 B2)
`
`
`Accordingly, it is
`ORDERED that Patent Owner’s request to file a list of arguments that
`exceed the scope of a proper reply relied is denied.
`
`
`
`
`
`
`
`
`
`
`
`5
`
`
`
`Case IPR2017-00136 (Patent 8,641,525 B2)
`Case IPR2017-00137 (Patent 9,089,770 B2)
`
`PETITIONER:
`
`Joshua Harrison
`Reynaldo Barcelo
`BARCELÓ, HARRISON & WALKER, LLP
`josh@bhiplaw.com
`rey@bhiplaw.com
`
`
`PATENT OWNER:
`
`Ehab Samuel
`Yasser El-Gamal
`MANATT, PHELPS & PHILLIPS, LLP
`esamuel-ptab@manatt.com
`yelgamal@manatt.com
`
`6
`
`
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