Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`
`Paper 9
`Entered: April 12, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`VALENCELL, INC.,
`Patent Owner.
`_______________
`
`Case IPR2017-00315 Patent 8,929,965 B2
`Case IPR2017-00319 Patent 8,923,941 B2
`Case IPR2017-00321 Patent 8,923,941 B21
`_______________
`
`
`
`Before BRIAN J. McNAMARA, JAMES B. ARPIN, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`1 This Order applies to each of the listed cases. We exercise our discretion
`to issue one Order to be docketed in each case. The parties are not
`authorized to use a multiple case caption.
`
`
`Tel: 571-272-7822
`
`
`
`
`
`
`Paper 9
`Entered: April 12, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`VALENCELL, INC.,
`Patent Owner.
`_______________
`
`Case IPR2017-00315 Patent 8,929,965 B2
`Case IPR2017-00319 Patent 8,923,941 B2
`Case IPR2017-00321 Patent 8,923,941 B21
`_______________
`
`
`
`Before BRIAN J. McNAMARA, JAMES B. ARPIN, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`1 This Order applies to each of the listed cases. We exercise our discretion
`to issue one Order to be docketed in each case. The parties are not
`authorized to use a multiple case caption.
`
`
`
`Case IPR2017-00315 Patent 8,929,965 B2
`Case IPR2017-00319 Patent 8,923,941 B2
`Case IPR2017-00321 Patent 8,923,941 B2
`
`
`DISCUSSION
`On April 3, 2017, Apple Inc. (“Petitioner”) contacted the Board by e-
`mail requesting a conference call to discuss (1) several alleged
`misrepresentations of fact contained in Valencell, Inc.’s (“Patent Owner’s”)
`Preliminary Responses filed in the above-captioned cases and (2) statements
`allegedly inconsistent with other statements appearing in certain of those
`Preliminary Responses. Specifically, Petitioner requested authorization,
`pursuant to 37 C.F.R. § 42.108(c), to file a Reply to Patent Owner’s
`Preliminary Responses. Petitioner stated that it had conferred with Patent
`Owner and that Patent Owner opposed Petitioner’s request.
`On April 5, 2017, the parties and the panel participated in a
`conference call to discuss Petitioner’s request. Petitioner has filed a
`transcript of that conference call in each of the above-captioned cases.
`IPR2017-00315, Ex. 1067; IPR2017-00319, Ex. 1067; IPR2017-00321,
`Ex. 1067. During the conference call, Petitioner explained that “there are
`seven total misstatements. Some of those are inconsistent statements, but
`the others are misrepresentations of fact.” E.g., IPR2017-00315, Ex. 1067,
`24:14–17.2 Further, Petitioner explained that the sole misstatement alleged
`in IPR2017-00315 involved the imprecise identification of images
`associated with the Numega reference (IPR2017-00315, Ex. 1009). See
`IPR2017-00315, Ex. 1067, 25:14–19, 26:13–17. The remaining alleged
`misstatements involve IPR2017-00319 and IPR2017-00321. See IPR2017-
`00315, Ex. 1067, 24:14–25:6.
`
`
`2 Because the transcripts filed in the above-captioned cases are identical, we
`cite only to the transcript (Ex. 1067) filed in IPR2017-00315.
`
`2
`
`
`
`Case IPR2017-00315 Patent 8,929,965 B2
`Case IPR2017-00319 Patent 8,923,941 B2
`Case IPR2017-00321 Patent 8,923,941 B2
`
`
`1. IPR2017-00315
`With respect to IPR2017-00315, Petitioner identifies only a single,
`alleged misstatement, namely, that Patent Owner states incorrectly that
`certain images, which do not appear in the Numega reference, are images
`from that reference. See IPR2017-00315, Ex. 1067, 25:14–19, 26:13–17.
`As we indicated during the conference call, the panel can determine whether
`or not images are part of a reference that has been filed as an exhibit in a
`proceeding. See id. at 26:3–27:1. Therefore, with respect to the sole alleged
`misstatement in IPR2017-00315, we do not authorize any submission.
`2. IPR2017-00319 and IPR2017-00321
`With respect to IPR2017-00319 and IPR2017-00321, there are a total
`of six remaining, allegedly inconsistent statements and alleged
`misrepresentations of fact. See id. at 24:14–17. As we indicated during the
`conference call, Petitioner may bring these to the attention of the panel
`adequately by the submission of a listing of the allegedly inconsistent
`statements and alleged misrepresentations of fact. See id. at 25:7–13; see
`also Activision Blizzard, Inc. v. Acceleration Bay, LLC, Case IPR2015-
`01951, slip op. at 2 (PTAB October 25, 2016) (Paper 60) (authorizing Patent
`Owner to file a list identifying arguments believed to go beyond the scope of
`a proper Reply). In particular, Petitioner may (1) provide a simple listing of
`citations (i.e., page and line numbers) to the alleged misstatements of fact
`from each Preliminary Response and (2) identify allegedly inconsistent
`statements by providing a two column table listing citations (i.e., page and
`line numbers) to the statements from the Preliminary Response in IPR2017-
`00319 in one column and citations to the corresponding, allegedly
`
`3
`
`
`
`Case IPR2017-00315 Patent 8,929,965 B2
`Case IPR2017-00319 Patent 8,923,941 B2
`Case IPR2017-00321 Patent 8,923,941 B2
`
`inconsistent statements from the Preliminary Response in IPR2017-00321 in
`the adjacent column. No argument is to be included in the contents of the
`submission.
`Petitioner also requests that, with respect to the alleged misstatements
`of fact, we authorize Petitioner (1) to provide citations to the existing record
`or (2) to file new exhibits correctly identifying the technology in dispute. Id.
`at 13:3–14:1, 31:15–22. We deny this request. To the extent that Petitioner
`already has submitted exhibits identifying the technology in dispute, no
`further citations are necessary. To the extent that Petitioner seeks to submit
`new exhibits identifying technology not previously argued in its Petition, no
`further exhibits supplementing the arguments or evidence presented in the
`Petition are authorized.
`
`It is:
`
`ORDER
`
`ORDERED that Petitioner is authorized to file on or by April 14,
`2017, submissions listing the alleged inconsistent statements and alleged
`misrepresentations of fact in IPR2017-00319 and IPR2017-00321, in the
`manner described above;
`FURTHER ORDERED that Petitioner is not authorized to file any
`submission containing a listing of the alleged misrepresentation of fact in
`IPR2017-00315;
`FURTHER ORDERED that submission of arguments, explanation,
`additional supporting evidence, citations to evidence of record, and any
`other statements beyond the above-described listings is not authorized; and
`
`4
`
`
`
`Case IPR2017-00315 Patent 8,929,965 B2
`Case IPR2017-00319 Patent 8,923,941 B2
`Case IPR2017-00321 Patent 8,923,941 B2
`
`
`FURTHER ORDERED that the authorized submissions shall not
`exceed two pages and shall be filed in IPR2017-00319 and IPR2017-00321.
`
`For PETITIONER
`
`Michelle K. Holoubek
`Michael D. Specht
`Mark J. Consilvio
`STERNE, KESSLER, GOLDSTEIN & FOX
`holoubek-PTAB@skgf.com
`mspecht-PTAB@skgf.com
`mconsilvio-PTAB@skgf.com
`PTAB@skgf.com
`
`For PATENT OWNER
`
`Justin B. Kimble
`Nicholas C Kliewer
`Jonathan H. Rastegar
`BRAGALONE CONROY PC
`JKimble-IPR@bcpc-law.com
`nkliewer@bcpc-law.com
`jrastegar@bcpc-law.com
`
`5
`
`
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