Trials@uspto.gov
`571-272-7822
`
`Paper 38
`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 38
`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)
`
`
`Mr. Samuel is lead counsel for Patent Owner for the proceedings at
`hand, as well as in related proceedings IPR2016-00948, IPR2016-00949,
`IPR2017-00858, and IPR2017-01928. See Paper 7.2 During some of these
`proceedings, there have been several events indicating that Mr. Samuel is
`not sufficiently familiar with our rules. The examples that follow are
`summaries, and details can be found in the papers cited.
`
`Untimely Objection to Exhibit 1007
`In IPR2016-00948 and IPR2016-00949, Mr. Samuel objected to
`Exhibit 1007 as hearsay in the Preliminary Response. In our Decision to
`Institute, we explained that a preliminary response is not the appropriate
`paper for making such an objection because objections must be made after
`institution of trial. Paper 10, 5 (entered Sept. 27, 2016). We stated that
`“Rule 42.64 provides the framework for Patent Owner to object to
`information proffered as evidence and move to exclude objectionable
`material from evidence during the trial.” Id. Pursuant to 37 C.F.R. § 42.64,
`“Any objection to evidence submitted during a preliminary proceeding must
`be filed within ten business days of the institution of the trial.” Ten business
`days from the institution of the trial was October 10, 2016.
`Nonetheless, during an October 26, 2016, conference call, Mr. Samuel
`asked again if the Preliminary Response served as a timely objection to
`Exhibit 1007. Paper 13, 2–3. We again explained Rule 42.64 to Mr.
`Samuel, and noted the guidance we provided in the Institution Decision. Id.
`at 3. Mr. Samuel’s request for a conference call to discuss objections to
`
`
`2 We cite the papers and exhibits of IPR2017-00136 as exemplary.
`
`2
`
`
`
`Case IPR2017-00136 (Patent 8,641,525 B2)
`Case IPR2017-00137 (Patent 9,089,770 B2)
`
`Exhibit 1007 came after the time for submitting objections had expired. Id.
`at 3–4.
`Despite the late request, the Board authorized Patent Owner to submit
`objections no later than October 31, 2016. Id. at 4. Mr. Samuel, however,
`submitted an objection to Exhibit 1007 on November 1, 2016, the day after
`the extended deadline. See Paper 44, 5–6. Mr. Samuel knew that the
`objections were late when submitted, but did not seek a further extension of
`time or request that we excuse his late submission pursuant to 37 C.F.R.
`42.5(c)(3). See Paper 36, 44:15–16; see also Paper 15, 1.
`More than seven months later, at the oral hearing for IPR2016-00948
`and IPR2016-00949 on June 2, 2017, Mr. Samuel asked again that we
`consider those objections even though they were not timely submitted. See
`Paper 44, 6. After a lengthy discussion between the Board and Mr. Samuel
`about that request, Mr. Samuel’s co-counsel stated that “some of his [Mr.
`Samuel’s] lack of familiarity with the rules are evident,” and that this lack of
`familiarity is what “resulted in these things.” Paper 36, 41:14–57:3 (quotes
`at 51:17–52:2).
`We did not consider the objections to Exhibit 1007 because they were
`not timely filed. Paper 44, 4–6.
`
`First Witness Availability Issue
`On September 1, 2017, in IPR2017-00137, we held a conference call
`with the parties regarding Mr. Samuel’s contention that he need not make a
`witness available for cross-examination based on 37 C.F.R. § 42.53(b)(1).
`Paper 21, 2. We explained that Mr. Samuel’s reliance upon 37 C.F.R.
`
`3
`
`
`
`Case IPR2017-00136 (Patent 8,641,525 B2)
`Case IPR2017-00137 (Patent 9,089,770 B2)
`
`§ 42.53(b)(1) was misplaced because that rule deals with uncompelled direct
`testimony, not cross examination testimony. Id. at 3.
`
`Second Witness Availability Issue
`On October 17, 2017, in IPR2017-00136 and IPR2017-00137, we
`held a call with the parties regarding cross examination of a witness. Paper
`29, 2. Patent Owner had submitted a declaration from a witness in support
`of a Motion to Terminate. Id. The Board and Petitioner were unaware that
`Motion would include new evidence. Id. at 2–3. Mr. Samuel did not plan
`for the foreseeable consequences that the witness would be subject to cross-
`examination and also that our rules provide that ordinarily, cross
`examination takes place more than a week prior to the filing date for a paper
`that may rely upon that testimony. Id. at 3 (citing 37 C.F.R.
`§ 42.51(b)(1)(ii); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`48,761 (August 14, 2012), 37 C.F.R. § 42.53(d)(2). Mr. Samuel cited three
`cases as analogous to the situation at hand; however, those cases were
`distinguishable. Id. at 4.
`
`Untimely Objection to Scope of Petitioner’s Reply
`On December 15, 2017, in IPR2017-00136, we held a conference call
`with the parties regarding Mr. Samuel’s request to file a list of arguments in
`Petitioner’s Reply that allegedly exceed the proper scope of a reply. See
`Paper 37, 2. Mr. Samuel requested the conference call 82 days after the
`Petitioner’s Reply was filed. “A party should seek relief promptly after the
`need for relief is identified. Delay in seeking relief may justify a denial of
`relief sought.” 37 C.F.R. § 42.25(b); see also Paper 13, 5 (cautioning that
`
`4
`
`
`
`Case IPR2017-00136 (Patent 8,641,525 B2)
`Case IPR2017-00137 (Patent 9,089,770 B2)
`
`“[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.”). Mr. Samuel indicated during the conference call that
`the delay was because he was focused on another matter and not on
`Petitioner’s Reply. We denied this request because, among other reasons,
`the request was not timely. Id.
`
`Conclusion
`Mr. Samuel has demonstrated a pattern of unfamiliarity with our rules,
`including not seeking relief in a timely manner. Mr. Samuel’s unfamiliarity
`has caused unnecessary inefficiency and expense in these proceedings. In
`order to minimize inefficiency and expense going forth, Mr. Samuel shall
`read the Board’s rules and certify in writing that he has read and understands
`them.
`
`Accordingly, it is
`ORDERED that, in each of these proceedings, Mr. Samuel file, as a
`paper, a certification that he has read and understands the Board rules,
`including the rule that a party must seek relief promptly after the need for
`relief is identified. This Certification shall be titled Certification of Reading
`and Understanding Board Rules, and must be filed within five business days
`of the entry of this order.
`
`
`
`
`
`
`
`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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