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` Paper 10
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`Date: May 1, 2023
`
`Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS INC. and LG ELECTRONICS USA, INC.,
`Petitioner,
`v.
`IMAGE PROCESSING TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`IPR2023-00104
`Patent 6,959,293 B2
`____________
`
`
`
`
`Before MICHAEL R. ZECHER, BARBARA A. BENOIT, and
`IFTIKHAR AHMED, Administrative Patent Judges.
`
`
`BENOIT, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5(a)
`
`
`
`
`
`IPR2023-00104
`Patent 6,959,293 B2
`
`
`On April 28, 2023, Petitioner contacted the Board via e-mail
`(Ex. 3002) requesting authorization to file various documents from the
`parallel district court litigation between Patent Owner and Petitioner.
`Specifically, Petitioner seeks authorization to file (i) a transcript from the
`recent claim construction hearing (“transcript”), (ii) a tentative order from
`the recent claim construction hearing (“tentative construction order”), and
`(iii) an April 20, 2023 Joint Motion to Amend the Docket Control Order and
`the proposed order to that motion (“Joint Motion”). Id. Petitioner also seeks
`to file a two-page paper “stating the relevance of each of those items to
`Patent Owner’s arguments for discretionary denial under 35 U.S.C.
`§§ 314(a) and 325(d).” Id.
`This is Petitioner’s second request for additional briefing in response
`to Patent Owner’s Preliminary Response (Paper 6), filed on February 21,
`2023. With our prior authorization (Paper 7), Petitioner filed a Preliminary
`Reply (Paper 8), limited to addressing Patent Owner’s arguments for
`discretionary denial under 35 U.S.C. §§ 314(a) and 325(d), and Patent
`Owner filed a Preliminary Sur-reply addressing these same issues (Paper 9).
`That round of additional briefing was completed on March 15, 2023.
`Unlike Petitioner’s prior request on March 1, 2023 (Ex. 3001) that we
`granted (Paper 7), Patent Owner this time opposes submission of the
`transcript and tentative construction order as premature. Ex. 3002. We
`further note that Petitioner did not request us to construe any claim terms in
`its Petition. See Paper 1 (“Pet.”) at 20–22. Nor did Patent Owner propose
`
`2
`
`
`
`
`IPR2023-00104
`Patent 6,959,293 B2
`
`any claim constructions in its Preliminary Response. See generally Prelim.
`Resp.
`The statutory deadline for a decision whether to institute inter partes
`review is May 19, 2023. Petitioner indicates that the parties are available at
`various times between May 3rd and May 5th to discuss Petitioner’s request
`that Patent Owner partially opposes. Ex. 3002.
`On balance, particularly considering Petitioner’s position on claim
`construction in this proceeding (or lack thereof, see Pet. 20–22), Petitioner’s
`prior opportunity to respond to Patent Owner’s Preliminary Response
`arguments (see Paper 8), and the timing of Petitioner’s opposed request, we
`determine that no good cause exists to authorize a second round of
`additional briefing at this late stage in the preliminary proceeding.
`Petitioner’s request is DENIED.
`It is so ORDERED.
`
`
`
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`3
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`IPR2023-00104
`Patent 6,959,293 B2
`
`For PETITIONER:
`Benjamin Haber
`Clarence A. Rowland
`William M. Fink
`O’MELVENY & MYERS LLP
`bhaber@omm.com
`crowland@omm.com
`tfink@omm.com
`
`FOR PATENT OWNER:
`Michael E. Shanahan
`ELLENOFF GROSSMAN & SCHOLE LLP
`mshanahan@egsllp.com
`
`William Allen Moon
`WINSTEAD PC
`amoon@winstead.com
`
`4
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`
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