Trials@uspto.gov
`571-272-7822
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`Paper 21
`Date: July 29, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`ARISTOCRAT TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`IGT,
`Patent Owner,
`____________
`
`Case IPR2016-00252
`Patent 7,303,469
`____________
`
`
`Before JOSIAH C. COCKS, MICHAEL W. KIM, and RICHARD E. RICE,
`Administrative Patent Judges.
`
`KIM, Administrative Patent Judge.
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
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`
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`

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`IPR2016-00252
`Patent 7,303,469
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`
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`On July 28, 2016, a conference call was held between counsel for Patent
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`
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`Owner, counsel for Petitioner, and Judges Kim, Cocks, and Rice. A court reporter
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`was also on the call. The subject matter of the conference call was concerning the
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`Declaration of Mr. Derek James (Ex. 1007), the same subject matter on which a
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`conference call was held previously between the parties and the Board on July 25,
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`2016, which was memorialized in our Order of July 27, 2016 (Paper 17; “Order”).
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`Petitioner requested the call to inform the Board concerning a change in
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`circumstances subsequent to the previous call and Order. In particular, Petitioner
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`brought to the attention of the Board the following in its e-mail requesting the call:
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`As explained during the July 25 conference, despite the multiple
`emails and voice mails left with Mr. James in response to Patent
`Owner’s June 30 request for a deposition, Petitioner had not received a
`response from Mr. James. Today, [July 26, 2016] at 11:15 AM EDT,
`Petitioner received a response from Mr. James stating: “I understand
`you have been trying to reach me. I was in South Florida for the past
`several weeks, dealing with a death in the family and estate issues.”
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`Petitioner also indicated during the call that Mr. James would be made available
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`for cross-examination by Patent Owner. In our previous Order, we indicated
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`expressly that “unless Mr. James is made available for cross-examination,
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`Petitioner is not permitted to rely on the Declaration of Mr. James (Ex. 1007).” At
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`its most basic, because Mr. James is now available for cross-examination, per the
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`express language in our previous Order, Petitioner is now permitted to rely on the
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`Declaration of Mr. James.
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`Of course, the availability of Mr. James for cross-examination only came to
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`light one day before Due Date 1, which is clearly after Patent Owner’s discovery
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`period closed on July 21, 2016, and after Patent Owner filed its Patent Owner
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`Response on July 28, 2016 (“original Patent Owner Response”). Primarily for
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`those reasons, Patent Owner asserts that to allow Petitioner to now be permitted to
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`2
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`IPR2016-00252
`Patent 7,303,469
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`rely on the Declaration of Mr. James, after the expiration of these time periods, is
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`
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`manifestly unfair because it was Petitioner’s burden to make Mr. James available
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`for cross-examination within the requisite time period, unjust because Patent
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`Owner did not actually have time to depose Mr. James prior to Due Date 1, and
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`contrary to the rules, which Patent Owner has scrupulously followed. We agree,
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`and based on their actions, it appears Petitioner does as well.
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`Specifically, Petitioner has offered to accommodate Patent Owner’s
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`concerns by providing additional time to Patent Owner to both cross-examine Mr.
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`James and file substantive papers taking into account Mr. James’s testimony.
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`Specifically, Petitioner requests that Due Date 1 be extended to August 25, 2016,
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`and that Due Date 2 to be extended to November 17, 2016. 37 C.F.R. § 42.5(c)(2)
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`reads that “[a] request for an extension of time must be supported by a showing of
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`good cause.” In support of that showing, Petitioner advances essentially two
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`factors.
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`The first factor is that Petitioner diligently attempted to contact Mr. James
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`via multiple e-mails and voicemails following Patent Owner’s request on June 30th,
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`and that Mr. James’s delay in response to those multiple requests due to a family
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`emergency is an unforeseeable situation for which some accommodation should be
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`provided, especially since Mr. James has indicated that he is now available for
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`cross-examination. We agree that this first factor weighs in favor of Petitioner.
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`The second factor is that given that Patent Owner has indicated that they
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`would not be filing a motion to amend, effectively rendering superfluous Due
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`Date 3, Petitioner has essentially proposed providing the entirety of the now
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`superfluous time period between Due Date 2 and Due Date 3 to Patent Owner, and
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`has even shortened its own time period between Due Date 1 and Due Date 2 by
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`one week. We agree that this second factor also weighs in favor of Petitioner.
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`3
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`IPR2016-00252
`Patent 7,303,469
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`Against these factors, Patent Owner asserts that the Board should consider
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`that Petitioner was not accommodating when Patent Owner previously requested
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`extensions to facilitate settlement negotiations. While we acknowledge that this
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`factor weighs against Petitioner, we are unpersuaded that it outweighs the first two
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`factors in a manner sufficient to take it out of the realm of good cause.
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`Patent Owner asserts further that the Board should also consider that
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`Petitioner’s conduct here could be construed as “sandbagging.” On these facts,
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`however, we are unpersuaded that Petitioner’s conduct was unreasonable, in that
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`we are unclear as to how Mr. James’s family emergency was something that could
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`have been controlled by Petitioner.
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`Of course, Patent Owner has already filed a Patent Owner Response.
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`Petitioner represents that 43 of the 52 pages of the original Patent Owner Response
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`have nothing to do with the Declaration of Mr. James. To that end, Petitioner has
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`offered to either allow Patent Owner to file a completely new Patent Owner
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`Response or allow Patent Owner to file a three-page paper addressing the
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`Declaration only. We are cognizant, however, that permitting Petitioner to rely on
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`the Declaration of Mr. James may alter Patent Owner’s overall strategy concerning
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`the Patent Owner Response. Accordingly, we will allow Patent Owner the option
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`of filing either (1) a completely new Patent Owner Response or (2) a Supplement
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`to the original Patent Owner Response. With either option, Patent Owner may set
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`forth arguments and submit evidence that differ from those in the original Patent
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`Owner Response. Furthermore, if it chooses to file a Supplement to the original
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`Patent Owner Response, Patent Owner is permitted to use 20 pages, reflecting the
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`fact that Patent Owner used 43 pages in the original Patent Owner Response to
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`discuss issues other than whether or not the “Let’s Make a Deal” is prior art,
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`IPR2016-00252
`Patent 7,303,469
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`leaving 17 pages of the approximate 60 page limit, and the three additional pages
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`offered by Petitioner.
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`It is
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`ORDERED that Due Date 1 is moved to August 25, 2016 and Due Date 2 is
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`moved to November 17, 2016;
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`FURTHER ORDERED that Patent Owner is permitted either (1) to file a
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`completely new Patent Owner Response in lieu of the original Patent Owner
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`Response, or (2) to file a 20 page Supplement to the original Patent Owner
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`Response that will be considered in conjunction with the original Patent Owner
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`Response. With either option, Patent Owner is permitted expressly to set forth
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`arguments and submit evidence that differ from those in the original Patent Owner
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`Response; and
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`FURTHER ORDERED that a transcript of the conference call will be filed
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`as an exhibit in this proceeding within 10 business days.
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`5
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`IPR2016-00252
`Patent 7,303,469
`
`
`
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`For PETITIONER:
`
`Andrea Reister
`areister@cov.com
`
`Jay Alexander
`jalexander@cov.com
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`
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`For PATENT OWNER:
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`Holby Abern
`habern@ngelaw.com
`
`Kevin Cukierski
`kcukierski@ngelaw.com
`
`Michelle Holoubek
`Mholoubek-PTAB@skgf.com
`
`Robert Sterne
`rsterne@skgf.com
`
`Adam Masia
`amaisa@ngelaw.com
`
`
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`6