Paper 8
`
`Trials@uspto.gov
`Entered: April 17, 2018
`
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`COLLECTIVE MINDS GAMING CO. LTD.,
`Petitioner,
`v.
`IRONBURG INVENTIONS LTD.,
`Patent Owner.
`
`
`IPR2018-00354 (Patent 8,641,525 B2)
`IPR2018-00355 (Patent 9,352,229 B2)
`IPR2018-00356 (Patent 9,089,770 B2) 1
`
`
`
`
`
`
`
`
`
`
`Before PHILLIP J. KAUFFMAN and MEREDITH C. PETRAVICK,
`Administrative Patent Judges.
`PETRAVICK, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`1 This Order addresses the same or similar issue in the proceedings listed
`above. We issue one Order to be filed in each proceeding. The parties are
`not authorized to use this style of filing.
`
`
`
`
`Trials@uspto.gov
`Entered: April 17, 2018
`
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`COLLECTIVE MINDS GAMING CO. LTD.,
`Petitioner,
`v.
`IRONBURG INVENTIONS LTD.,
`Patent Owner.
`
`
`IPR2018-00354 (Patent 8,641,525 B2)
`IPR2018-00355 (Patent 9,352,229 B2)
`IPR2018-00356 (Patent 9,089,770 B2) 1
`
`
`
`
`
`
`
`
`
`
`Before PHILLIP J. KAUFFMAN and MEREDITH C. PETRAVICK,
`Administrative Patent Judges.
`PETRAVICK, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`1 This Order addresses the same or similar issue in the proceedings listed
`above. We issue one Order to be filed in each proceeding. The parties are
`not authorized to use this style of filing.
`
`
`
`
`IPR2018-00354 (Patent 8,641,525 B2)
`IPR2018-00355 (Patent 9,352,229 B2)
`IPR2018-00356 (Patent 9,089,770 B2)
`
`A conference call was held on April 11, 2018 between counsel for the
`
`parties and Judges Kauffman and Petravick. Petitioner requested the call to
`seek authorization to file replies to the Patent Owner’s Preliminary
`Responses. In particular, Petitioner seeks to file replies to address Patent
`Owner’s arguments concerning 35 U.S.C. § 314(a) and/or the claim
`construction of “inherently resilient and flexible.” Patent Owner opposed
`the request.
`
`For IPR2018-00354 and IPR2018-00356, Petitioner seeks to respond
`to Patent Owner’s arguments concerning § 314(a) and applying the factors
`set forth in General Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha,
`Case IPR2016-01357, (PTAB Sept. 6, 2017) (Paper 19) (precedential-in-
`part). The Petitions were filed after entry and precedential designation of the
`Board’s decision in General Plastic. General Plastic sets forth a non-
`exhaustive list of factors considered by the Board when evaluating whether
`to exercise discretion to deny a petition under § 314(a) when the petition
`challenges a patent that was the subject of one or more earlier petitions.
`The patent at issue in IPR2018-00354 was at issue in earlier proceedings,
`IPR2016-00948 and IPR2017-00136, and the patent at issue in IPR2018-
`00356 is at issue in earlier proceedings, IPR2016-00949 and IPR2017-
`00137.
`
`Petitioner argued that it could not have foreseen that Patent Owner
`would raise § 314(a) because the circumstances here are unlike
`circumstances of other proceedings in which petitions were denied based
`upon an application of the General Plastic factors. Petitioner here was not a
`party to any of IPR2016-00948, IPR2016-00949, IPR2017-00136, and
`
`2
`
`
`
`IPR2018-00354 (Patent 8,641,525 B2)
`IPR2018-00355 (Patent 9,352,229 B2)
`IPR2018-00356 (Patent 9,089,770 B2)
`
`IPR2017-00137, and was not a party to the related district court proceeding
`when the earlier petitions were filed. Petitioner pointed to Pfizer, Inc. v.
`Biogen, Inc., Case IPR2018-00176, (PTAB Apr. 4, 2018) (Paper 11) as an
`example of the Board granting a request to file a reply under similar
`circumstances.
`Patent Owner responded that Petitioner should have foreseen that
`Patent Owner would raise § 314(a) and General Plastic. Patent Owner
`pointed to Instrumentation Lab. Co. v. Hemosonics LLC, Case IPR2018-
`00264, (PTAB Mar. 9, 2018) (Paper 7), as an example of the Board denying
`a request to file a reply after General Plastic.
`
`Based on the information received during the call, we determine that
`Petitioner has shown good cause to file a reply to respond to Patent Owner’s
`arguments concerning § 314(a). See 37 C.F.R. § 42.108(c) (providing that a
`petitioner may seek leave to file a reply to the preliminary response for good
`cause). Like in Pfizer, Petitioner was not a party to the earlier proceedings
`and was not a party to the related district court proceedings when earlier
`petitions were filed. Given these circumstances, we are persuaded that
`Petitioner could not have reasonably foreseen the need to address § 314(a)
`and the General Plastic factors in the Petitions. Further, information
`provided by both parties indicates that a reply would be helpful to the Board,
`for example, in evaluating the timing of certain events cited in Patent
`Owner’s arguments.
`
`We are not persuaded by Patent Owner that the circumstances here are
`sufficiently similar to the circumstances in Instrumentation Lab. Co. such
`that Petitioner’s request should be denied. In Instrumentation Lab. Co., the
`
`3
`
`
`
`IPR2018-00354 (Patent 8,641,525 B2)
`IPR2018-00355 (Patent 9,352,229 B2)
`IPR2018-00356 (Patent 9,089,770 B2)
`
`petitioner was a party to the earlier proceeding and admitted that its choice
`not to address the General Plastic factors in its petition “was a strategic
`decision based on, inter alia, timing issues and space considerations.”
`Instrumentation Lab. Co., Paper 7, 3.
`
`For IPR2018-00354 and IPR2018-00355, Petitioner seeks to respond
`to Patent Owner’s arguments concerning the construction of “inherently
`resilient and flexible.” Patent Owner acknowledged that it was aware of the
`Board’s construction in earlier proceedings, and that the Petitions do not
`include an explicit construction of “inherently resilient and flexible.”
`Petitioner, however, alleges that the Patent Owner’s Preliminary Response
`applies a construction that varies slightly from that of earlier proceedings.
`Petitioner alleges that the Patent Owner’s Preliminary Response applies a
`construction from the Institution Decision of related proceeding, IPR2017-
`01928. IPR2017-01928’s Institution Decision was entered on February 8,
`2018, after the filing of the Petitions here. Petitioner requested authorization
`to address the allegedly inconsistent construction of “inherently resilient and
`flexible.”
`
`Patent Owner responded that Patent Owner should have included its
`arguments in the Petition, given earlier proceedings.
`
`Based on the information received during the call, we determine that
`Petitioner has shown good cause to file a reply to address the allegedly
`inconsistent construction of “inherently resilient and flexible” between the
`Patent Owner’s Preliminary Response and earlier proceedings. See 37
`C.F.R. § 42.108(c). The Institution Decision of related IPR2017-01928 was
`not entered until after the filing of the Petitions here.
`
`4
`
`
`
`IPR2018-00354 (Patent 8,641,525 B2)
`IPR2018-00355 (Patent 9,352,229 B2)
`IPR2018-00356 (Patent 9,089,770 B2)
`
`It is:
`
`ORDERED that, in IPR2018-00354, Petitioner may file a reply to the
`Patent Owner’s Preliminary Response, limited to 2000 words, no later than
`April 24, 2018; the reply is limited to responding to Patent Owner’s
`arguments concerning 35 U.S.C. § 314(a) and the construction of “inherently
`resilient and flexible;”
`FURTHER ORDERED that, in IPR2018-00355, Petitioner may file a
`reply to the Patent Owner’s Preliminary Response, limited to 1000 words, no
`later than April 24, 2018; the reply is limited to addressing Patent Owner’s
`the construction of “inherently resilient and flexible;” and
`FURTHER ORDERED that, in IPR2018-00356, Petitioner may file a
`reply to the Patent Owner’s Preliminary Response, limited to 1000 words, no
`later than April 24, 2018; the reply is limited to addressing Patent Owner’s
`arguments concerning 35 U.S.C. § 314(a).
`PETITIONER:
`
`Eric A. Buresh
`eric.buresh@eriseip.com
`
`Paul R. Hart
`paul.hart@eriseip.com
`ERISE IP, P.A.
`
`PATENT OWNER:
`
`Robert Becker
`RBecker@manatt.com
`
`Ehab M. Samuel
`ESamuel-PTAB@manatt.com
`MANATT, PHELPS & PHILLIPS, LLP
`
`5
`
`
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