Trials@uspto.gov
`571-272-7822
`
`Paper 23
`Entered: January 17, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`IMAGE PROCESSING TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Cases IPR2017-00353 (Patent 8,983,134 B2)
` IPR2017-01218 (Patent 8,983,134 B2)1
`____________
`
`
`Before JONI Y. CHANG, MICHAEL R. ZECHER, SHEILA F. McSHANE,
`and JESSICA C. KAISER, Administrative Patent Judges.2
`
`KAISER, Administrative Patent Judge.
`
`ORDER
`Conduct of Proceedings
`37 C.F.R. § 42.5(a)
`
`
`
`
`
`
`1 The parties are not authorized to use this style heading.
`2 In IPR2017-00353, the panel consists of Judges Chang, Zecher, and Kaiser.
`In IPR2017-01218, the panel consists of Judges Chang and McShane, along
`with Judge Miriam L. Quinn.
`
`
`571-272-7822
`
`Paper 23
`Entered: January 17, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`IMAGE PROCESSING TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Cases IPR2017-00353 (Patent 8,983,134 B2)
` IPR2017-01218 (Patent 8,983,134 B2)1
`____________
`
`
`Before JONI Y. CHANG, MICHAEL R. ZECHER, SHEILA F. McSHANE,
`and JESSICA C. KAISER, Administrative Patent Judges.2
`
`KAISER, Administrative Patent Judge.
`
`ORDER
`Conduct of Proceedings
`37 C.F.R. § 42.5(a)
`
`
`
`
`
`
`1 The parties are not authorized to use this style heading.
`2 In IPR2017-00353, the panel consists of Judges Chang, Zecher, and Kaiser.
`In IPR2017-01218, the panel consists of Judges Chang and McShane, along
`with Judge Miriam L. Quinn.
`
`
`
`IPR2017-00353 (Patent 8,983,134 B2)
`IPR2017-01218 (Patent 8,983,134 B2)
`
`A conference call in these cases took place on January 12, 2018. The
`parties were represented by their respective counsel. The purpose of the call
`was to discuss Patent Owner’s request for leave to file a motion to
`consolidate these cases under 35 U.S.C. § 315(d).
`During the call, Patent Owner contended that overlapping issues in
`these cases counseled in favor of consolidation. Petitioner opposed. Upon
`consideration of the parties’ arguments and the totality of the circumstances,
`we are not persuaded that a consolidation at this late stage would be
`efficient, or would facilitate just, speedy, and inexpensive resolution of these
`proceedings. 37 C.F.R. § 42.1(b). Consequently, Patent Owner’s request is
`denied.
`The Petitions in these cases were filed four months apart. See IPR
`2017-00353, Paper 2 (filed Nov. 30, 2016) (“353 Pet.”); IPR2017-01218,
`Paper 2 (filed Mar. 31, 2017) (“1218 Pet.”). The Petitions challenged
`different claims of the same patent and relied on different, although
`overlapping, asserted prior art. 353 Pet. 3 (challenging claims 1 and 2 based
`on combinations of references called Gilbert, Hashima, and Ueno); 1218 Pet.
`(challenging claims 3–6 based on combinations of references called
`Gerhardt, Bassman, Gilbert, and Hashima). Petitioner explained that its
`Petitions were staggered because Patent Owner amended its infringement
`contentions in co-pending district court case to add new claims. 1218 Pet. 5.
`In IPR2017-00353, we instituted review of claims 1 and 2 on two
`grounds: (1) obviousness over Gilbert and Hashima; and (2) obviousness
`over Ueno and Gilbert. IPR2017-00353, Paper 12, 29 (entered May 25,
`2017). In IPR2017-01218, we instituted review of claim 3 on two grounds:
`(1) obviousness over Gerhardt and Bassman; and (2) obviousness over
`
`
`
`2
`
`
`
`IPR2017-00353 (Patent 8,983,134 B2)
`IPR2017-01218 (Patent 8,983,134 B2)
`
`Gilbert, Gerhardt, and Hashima. IPR2017-01218, Paper 11, 29 (entered
`October 3, 2017). These institution decisions were mailed just over four
`months apart, and have proceeded on separate schedules.
`On January 9, 2018, over nine months after the Petition in IPR2017-
`01218 was filed and over three months after trial in that inter partes review
`was instituted, Patent Owner first raised the issue of consolidation of that
`case with IPR2017-00353. Patent Owner did not provide a reasonable
`explanation as to why it could not have requested a consolidation earlier.
`Significantly, all of the substantive briefings for the instituted grounds in
`IPR2017-00353 are completed, as both the Patent Owner’s Response and
`Petitioner’s Reply have been filed; and this case is presently set for an oral
`hearing on February 21, 2018 (in less than six weeks).
`During the conference call, Patent Owner proposed compressing the
`schedule in IPR2017-01218, so that both cases could be set for an oral
`hearing in April. As Petitioner noted, Petitioner would likely be prejudiced
`by the proposed compressed schedule, which would shorten Petitioner’s
`time for preparing a Reply in IPR2017-01218, while Patent Owner already
`had a full opportunity to conduct its discovery and to file its Responses in
`both cases. We agree with Petitioner that, under the circumstances of these
`cases, consolidation is not appropriate.
`In addition, the statutory deadline for a final written decision in
`IPR2017-00353 is May 25, 2018. Patent Owner’s proposed schedule also
`would impose undue burden on the panel, as it would have less than two
`months from the oral hearing date to render that decision. During the
`conference call, Patent Owner suggested that the circumstances of these
`cases provide good cause for extending the statutory deadline for IPR2017-
`
`
`
`3
`
`
`
`IPR2017-00353 (Patent 8,983,134 B2)
`IPR2017-01218 (Patent 8,983,134 B2)
`
`00353 under 35 U.S.C. § 316(a). We disagree because these cases can be
`resolved within the statutory deadlines without consolidation. In other
`words, at this stage, consolidation would not enhance, and would in fact
`detract from, the efficiency of the proceedings. In addition, not all cases
`with overlapping issues should be consolidated. Although these cases
`involve the same patent and some of the same references, they involve
`different claims and different instituted grounds.
`For the foregoing reasons, it is
`ORDERED that Patent Owner’s request for authorization to file a
`motion for consolidation is denied;
`FURTHER ORDERED that other than contemplated in the
`Scheduling Orders for these cases, no motions are authorized to be filed at
`this time; and
`FURTHER ORDERED that each case will proceed on its current
`schedule.
`
`
`
`4
`
`
`
`IPR2017-00353 (Patent 8,983,134 B2)
`IPR2017-01218 (Patent 8,983,134 B2)
`
`
`PETITIONER:
`John Kappos
`Nick Whilt
`Brian Cook
`O’MELVENY & MYERS LLP
`iptsamsungomm@omm.com
`
`PATENT OWNER:
`Chris Coulson
`Michael Zachary
`Mark Chapman
`Rose Cordero Prey
`ANDREWS KURTH KENYON LLP
`chriscoulson@andrewkurthkenyon.com
`michaelzachary@andrewkurthkenyon.com
`markchapman@andrewkurthkenyon.com
`roseprey@andrewkurthkenyon.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`5
`
`
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