Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`Paper No. 13
`Entered: March 18, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`SHENZHEN HUIDING TECHNOLOGY CO., LTD.,
`Petitioner,
`
`v.
`
`SYNAPTICS INCORPORATED,
`Patent Owner.
`_____________
`
`Case IPR2015-01739
`Patent 8,558,811 B2
`_____________
`
`
`
`Before JAMESON LEE, BART A. GERSTENBLITH, and
`CHARLES J. BOUDREAU Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`571.272.7822
`
`
`
`
`
`Paper No. 13
`Entered: March 18, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`SHENZHEN HUIDING TECHNOLOGY CO., LTD.,
`Petitioner,
`
`v.
`
`SYNAPTICS INCORPORATED,
`Patent Owner.
`_____________
`
`Case IPR2015-01739
`Patent 8,558,811 B2
`_____________
`
`
`
`Before JAMESON LEE, BART A. GERSTENBLITH, and
`CHARLES J. BOUDREAU Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`IPR2015-01739
`Patent 8,558,811 B2
`
`
`
`An initial telephone conference call was held on March 16, 2016. The
`
`participants were respective counsel for the parties and Judges Lee,
`
`Gerstenblith, and Boudreau. Counsel for Petitioner indicated that Petitioner
`
`does not presently contemplate the filing of any motion but may file a
`
`motion to exclude, already authorized by the rules, if circumstances would
`
`justify filing of such a motion. Patent Owner filed a proposed motions list
`
`that includes only a motion to exclude and a “motion to strike.”
`
`We explained that the parties do not need prior permission to file a
`
`motion to exclude. We also inquired as to what Patent Owner means by “to
`
`strike,” as opposed to “to exclude.” Counsel for Patent Owner explained
`
`that the term “strike” was used because Patent Owner may seek to exclude
`
`only a portion of a declaration but not its entirety. We indicated, based on
`
`that explanation, that Patent Owner should stay with the “Motion to
`
`Exclude” terminology, to avoid confusion.
`
`
`
`Neither party sought to change any of the due dates set in the
`
`Scheduling Order dated February 16, 2016 (Paper 9).
`
`
`
`We directed the parties not to use the Motion to Exclude for any
`
`purpose other than to raise admissibility issues under the Federal Rules of
`
`Evidence. If an issue arises with regard to a paper being out of proper scope,
`
`e.g., belatedly raising new issues or belatedly submitting new evidence, the
`
`parties shall contact the Board in a timely manner to raise the matter.
`
`We explained to the parties that supplemental evidence is not the
`
`same as supplemental information, and that the rules do not contemplate
`
`more than one cycle of objection to evidence and subsequent supplemental
`
`evidence to cure the objection.
`
`2
`
`
`
`
`
`IPR2015-01739
`Patent 8,558,811 B2
`
`
`
`We instructed Patent Owner that if it decides to file a motion to
`
`amend claims, it must request a conference call with the Board more than
`
`two weeks prior to the due date of such a motion, so that a conference call
`
`may be arranged at least two weeks prior to the due date of such a motion
`
`and so that the parties will have sufficient time to consider any guidance we
`
`may provide. We noted that with respect to any feature the Patent Owner
`
`proposes to add by way of a substitute claim, Patent Owner should be aware
`
`of the duty of candor requirement under 37 C.F.R. § 42.11. We explained
`
`that the initial focus should be on the individual features proposed to be
`
`added, and that secondary references making up deficiencies of a primary
`
`reference are pertinent. We directed attention of the parties to MasterImage
`
`3D, Inc. v. RealD Inc., Case IPR2015-00040, slip op. at 3 (PTAB July 15,
`
`2015) (Paper 42) (Representative), which states:
`
`Thus, when considering its duty of candor and good faith under
`37 C.F.R. § 42.11 in connection with a proposed amendment,
`Patent Owner should place initial emphasis on each added
`limitation. Information about the added limitation can still be
`material even if it does not include all of the rest of the claim
`limitations. See VMWare, Inc. v. Clouding Corp., Case
`IPR2014-01292, slip op. at 2 (PTAB Apr. 7, 2015) (Paper 23)
`(“With respect to the duty of candor under 37 C.F.R. § 42.11,
`counsel for Patent Owner acknowledged a duty for Patent Owner
`to disclose not just the closest primary reference, but also closest
`secondary reference(s) the teachings of which sufficiently
`complement that of the closest primary reference to be
`material.”).
`
`It is
`
`Order
`
`ORDERED that a motion to exclude shall be used only to address
`
`
`
`
`
`admissibility issues under the Federal Rules of Evidence; and
`
`3
`
`
`
`
`
`IPR2015-01739
`Patent 8,558,811 B2
`
`
`FURTHER ORDERED that any conference call to discuss a motion to
`
`amend claims by the Patent Owner shall take place at least two weeks prior
`
`to the due date of such a motion;
`
`FURTHER ORDERED that for any “to confer” call with respect to a
`
`motion to amend claims, Patent Owner shall be prepared to indicate how it
`
`understands the duty of candor under 37 C.F.R. § 42.11 insofar as secondary
`
`or complementary prior art references are concerned; and
`
`FURTHER ORDERED that all due dates set in the Scheduling Order
`
`entered February 16, 2016 (Paper 9) remain unchanged at this time.
`
`
`
`4
`
`
`
`
`
`
`
`IPR2015-01739
`Patent 8,558,811 B2
`
`For PETITIONER:
`
`Bing Ai
`John P. Schnurer
`Hwa C. Lee
`Kevin J. Patariu
`PERKINS COIE LLP
`ai-ptab@perkinscoie.com
`jschnurer@perkinscoie.com
`hlee@perkinscoie.comkpatariu@perkinscoie.com
`
`
`
`For PATENT OWNER:
`
`Robert P. Lord
`Tammy J. Terry
`Peter C. Schechter
`OSHA LIANG LLP
`lord@oshaliang.com
`terry@oshaliang.comschechter@oshaliang.com
`
`
`5
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