Trials@uspto.gov
`Tel: 571.272.7822
`
`Paper 16
`Entered: November 6, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LG ELECTRONICS, INC., ZTE (USA) INC.,
`OLYMPUS CORPORATION, and OLYMPUS AMERICA INC.,
`Petitioner,
`
`v.
`
`PAPST LICENSING GMBH & CO. KG,
`Patent Owner.
`____________
`
`Case IPR2017-00415 (Patent 6,895,449 B2)1
`Case IPR2017-00443 (Patent 6,470,399 B1)2
`____________
`
`Before JONI Y. CHANG, JENNIFER S. BISK, JAMES B. ARPIN, and
`MIRIAM L. QUINN, Administrative Patent Judges.3
`
`CHANG, Administrative Patent Judge.
`
`ORDER4
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`1 IPR2017-01617 has been joined with IPR2017-00415.
`
`2 IPR2017-01682 has been joined with IPR2017-00443.
`
`3 The panel for IPR2017-00415 includes Judges Bisk, Quinn, and Chang.
`The panel for IPR2017-00443 includes Judges Chang, Arpin, and Bisk.
`
`4 This Order addresses issues that are identical in both cases.
`
`
`Tel: 571.272.7822
`
`Paper 16
`Entered: November 6, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LG ELECTRONICS, INC., ZTE (USA) INC.,
`OLYMPUS CORPORATION, and OLYMPUS AMERICA INC.,
`Petitioner,
`
`v.
`
`PAPST LICENSING GMBH & CO. KG,
`Patent Owner.
`____________
`
`Case IPR2017-00415 (Patent 6,895,449 B2)1
`Case IPR2017-00443 (Patent 6,470,399 B1)2
`____________
`
`Before JONI Y. CHANG, JENNIFER S. BISK, JAMES B. ARPIN, and
`MIRIAM L. QUINN, Administrative Patent Judges.3
`
`CHANG, Administrative Patent Judge.
`
`ORDER4
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`1 IPR2017-01617 has been joined with IPR2017-00415.
`
`2 IPR2017-01682 has been joined with IPR2017-00443.
`
`3 The panel for IPR2017-00415 includes Judges Bisk, Quinn, and Chang.
`The panel for IPR2017-00443 includes Judges Chang, Arpin, and Bisk.
`
`4 This Order addresses issues that are identical in both cases.
`
`
`
`IPR2017-00415 (Patent 6,895,449 B2)
`IPR2017-00443 (Patent 6,470,399 B1)
`
`
`The instant Petitions for inter partes review (“IPR”) were filed by LG
`
`Electronics, Inc. (“LG”) and ZTE (USA) Inc. (“ZTE”) (Paper 15), and we
`
`instituted a trial in each proceeding (Paper 8). Subsequently, we granted the
`
`Motions for Joinder filed by Olympus Corporation and Olympus America
`
`Inc. (“Olympus”). Paper 15. The Decisions granting the Motions for
`
`Joinder indicate that all Petitioner’s filings must be consolidated, and “no
`
`filing by Petitioner Olympus alone will be considered without prior
`
`authorization by the Board.” Id. at 5.
`
`On November 2, 2017, a conference call was held between
`
`(1) counsel for LG; (2) counsel for ZTE; (3) counsel for Olympus;
`
`(4) counsel for Papst; and (5) Judges Chang, Bisk, Arpin, and Quinn.
`
`Olympus requested the conference call to seek (1) the authorization to file
`
`Petitioner’s Replies and cross-examine Papst’s declarant, Mr. Thomas A.
`
`Gafford; and (2) discovery of Mr. Gafford’s deposition transcript from a
`
`related district court proceeding.
`
`At the outset, we notified the parties that the email sent to the Board
`
`on October 30, 2017, is improper, as it contains substantive arugments, and
`
`hence, it will not be taken into consideration. We also directed the parties
`
`attention to 37 C.F.R. § 42.1(c), which provides that “[e]very party must act
`
`with courtesy and decorum in all proceedings before the Board, including in
`
`interactions with other parties.” We further noted that our rules and
`
`procedures encourage the parties to meet and confer, resolving their disputes
`
`quickly and efficiently without the Board’s involvement. For example, the
`
`Scheduling Order provides flexibility for the parties to stipulate to different
`
`
`5 All citations are to IPR2014-00415 unless otherwise noted.
`
`2
`
`
`
`IPR2017-00415 (Patent 6,895,449 B2)
`IPR2017-00443 (Patent 6,470,399 B1)
`
`due dates as to Due Dates 1−5. Paper 9, 2, 6. Also, 37 C.F.R. § 42.51(b)(2)
`
`provides that “[t]he parties may agree to additional discovery between
`
`themselves.”
`
`During the conference call, we discussed each of the issues raised by
`
`Olympus in turn, giving the parties the opportunity to present their
`
`arguments and explanations to support their positions.
`
`1. Permitting Olympus to File Petitioner’s Replies and
`Participate in Discovery
`
`Olympus indicated that LG and ZTE are in the process of finalizing a
`
`settlement with Papst, and do not intend to file a Reply to Papst’s Patent
`
`Owner Response (Paper 14) or to participate in further discovery, in each of
`
`the instant IPR proceedings. Both LG and ZTE confirmed Olympus’s
`
`statement. Papst indicated that it does not oppose Olympus’s participation,
`
`provided that LG and ZTE will not be filing separate papers or seeking
`
`separate depositions. Upon inquiry, LG and ZTE further confirmed that they
`
`will work together with Olympus to ensure that Petitioner’s filings,
`
`discovery, and oral arguments at the hearing will be consolidated. Based on
`
`the statements presented by the parties, we authorize Olympus to file the
`
`Petitioner’s Reply, participate in discovery, and present oral argument at the
`
`hearing in each IPR proceeding, but no separate filing, deposition, or oral
`
`argument from Petitioner is permitted without prior authorization.
`
`Subsequent to the conference call, LG and ZTE filed an updated
`
`mandatory notice, designating an appropriate lead counsel and back-up
`
`counsel in accordance with 37 C.F.R. § 42.8(b)(3), so that counsel for
`
`Olympus may file the Replies. Paper 16. Olympus should file a power of
`
`attorney, and contact the Board’s administrative staff regarding filing
`
`3
`
`
`
`IPR2017-00415 (Patent 6,895,449 B2)
`IPR2017-00443 (Patent 6,470,399 B1)
`
`privileges for PTAB E2E electronic filing system. Other means of filing are
`
`not authorized and any papers previously submitted via email or other means
`
`of filing will not be entered or considered.
`
`2. Discovery of a Deposition Transcript From a Related
`District Court Proceeding
`
`The parties indicated that Papst retained Mr. Gafford as an expert
`
`witness, in the related district court proceeding and the instant IPR
`
`proceedings. Olympus requested the authorization to seek discovery of
`
`portions of Mr. Gafford’s deposition transcript from the district court
`
`proceeding, concerning the prior art reference, Murata.6 Papst opposed,
`
`explaining that the transcript has been designated confidential, as it contains
`
`third-party source codes. Subsequent to the conference call, Papst notified
`
`the panel and opposing counsel on November 3, 2017, via email, that
`
`“[a]fter discussion with litigation counsel, Patent Owner Papst will produce
`
`the Tom Gafford deposition transcripts dated June 8−9, 2017 with redactions
`
`to all discussion of the DeskLab and Pucci/ION Node systems,” and the
`
`“transcripts will be produced to counsel for Olympus on 11/6/17.” We
`
`appreciate the parties’ efforts in resolving the issues quickly and efficiently.
`
`ORDER
`
`In consideration of the foregoing, it is:
`
`ORDERED that Olympus is authorized to file the Petitioner’s Reply,
`
`participate in discovery, and present oral argument at the hearing in each
`
`instant IPR proceeding, but no separate filing, deposition, or oral argument
`
`from Petitioner is permitted without prior authorization.
`
`
`6 U.S. Patent 5,508,821 (Ex. 1005).
`
`4
`
`
`
`IPR2017-00415 (Patent 6,895,449 B2)
`IPR2017-00443 (Patent 6,470,399 B1)
`
`
`
`For PETITIONER:
`
`Dion Bregman
`Andrew Devkar
`dion.bregman@morganlewis.com
`andrew.devkar@morganlewis.com
`MORGAN, LEWIS & BOCKIUS LLP
`
`Herbert Finn
`Jonathan Giroux
`finnh@gtlaw.com
`girouxj@gtlaw.com
`GREENBERG TRAURIG LLP
`
`Scott Miller
`Darren Franklin
`smiller@sheppardmullin.com
`dfranklin@sheppardmullin.com
`SHEPPARD MULLIN RICHTER & HAMPTON LLP
`
`For PATENT OWNER:
`Gregory s. Donahue
`Minghui Yang
`gdonahue@dpelaw.com
`myang@dpelaw.com
`docketing@dpelaw.com
`DiNOVO PRICE ELLWANGER & HARDY LLP
`
`Anthony Meola
`Jason. A. Murphy
`Victor J. Baranowshi
`Arlen L. Olsen
`ameola@iplawusa.com
`jmurphy@iplawsa.com
`vbaranowski@iplawusa.com
`aolsen@iplawusa.com
`SCHMEISER, OLSEN & WATTS, LLP
`
`5
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
