`571.272.7822
`
`
` Paper No. 6
`Filed: August 4, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`TOYKYO ELECTRON LIMITED,
`Petitioner,
`
`v.
`
`DANIEL L. FLAMM,
`Patent Owner.
`
`____________
`
`Case IPR2017-01072
`Patent RE40,264 E
`____________
`
`
`
`Before CHRISTOPHER L. CRUMBLEY, JO-ANNE M. KOKOSKI, and
`KIMBERLY McGRAW, Administrative Patent Judges.
`
`McGRAW, Administrative Patent Judge.
`
`
`
`
`ORDER
`Denying Authorization to File
`a Reply to Patent Owner Preliminary Response
`37 C.F.R. §§ 42.5(a), 108(c)
`
`
`
`
`
`
`
`
`
`IPR2017-01072
`Patent RE40,264 E
`
`The Board held a conference call on Wednesday, August 2, 2017, in
`
`response to Petitioner’s e-mail request for authorization to file a reply to
`Patent Owner’s Preliminary Response. Counsel for Petitioner, counsel for
`Patent Owner, and Judges Crumbley, Kokoski, and McGraw participated in
`the call.
`Petitioner requests leave to address Patent Owner’s argument on
`pages 10–11 in its Preliminary Response (Paper 5) that Petitioner has not
`established that Matsumura1 and Okada 22 qualify as prior art. Patent
`Owner contends that Matsumura and Okada 2 are Japanese laid-open
`publications that were not accessible to the public, and therefore, are not
`published and cannot constitute prior art. Paper 5, 10–11. Petitioner asserts
`that it was not foreseeable that Patent Owner would challenge the prior art
`status of Japanese laid-open publications and that allowing Petitioner to
`address the threshold issue as to what constitutes prior art provides good
`cause for granting leave to file a reply to the Patent Owner’s Preliminary
`Response. Patent Owner opposed Petitioner’s request to file a reply.
`Petitioner’s request is denied. A petitioner may seek leave to file a
`reply to a preliminary response, but “must make a showing of good cause.”
`See 37 C.F.R. § 42.108(c) (revised April 1, 2016). We are not persuaded
`that sufficient good cause exists in this case. Petitioner must make a
`threshold showing that the alleged prior art underlying its challenges are
`patents or printed publication. Whether Petitioner has made such a threshold
`
`
`1 JP 03-196206 A (“Matsumura”). Ex. 1005; Ex. 1006 (English translation).
`2 JP 05-243191 A (“Okada 2”). Ex. 1009; Ex. 1010 (English translation).
`
`2
`
`
`
`IPR2017-01072
`Patent RE40,264 E
`
`showing is an issue the Board is capable of evaluating without further
`briefing from Petitioner.
`We also note that substantive arguments raised in the email and/or the
`phone conference regarding whether Matsumura and Okada 2 qualify as
`prior art will not be considered by the Board in reaching its Decision on
`Institution.
`Accordingly, it is:
`ORDERED Petitioner’s request for authorization to file a reply to
`Patent Owner’s Preliminary Response is denied.
`
`
`
`3
`
`
`
`IPR2017-01072
`Patent RE40,264 E
`
`
`
`For PETITIONER:
`Steven P. Weihrouch
`sweihrouch@rfem.com
`
`Soumya P. Panda
`spanda@rfem.com
`
`
`
`For PATENT OWNER:
`
`Christopher Frerking
`chris@ntknet.com
`
`
`
`
`4
`
`
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