Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 42
`Entered: July 14, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`
`
`H&S MANUFACTURING COMPANY, INC.,
`Petitioner,
`
`v.
`
`OXBO INTERNATIONAL CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-00950
`Patent 8,166,739 B2
`____________
`
`
`Before PHILLIP J. KAUFFMAN and JAMES A. TARTAL,
`Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. §§ 42.5(a), 42.20(d)
`
`
`
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 42
`Entered: July 14, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`
`
`H&S MANUFACTURING COMPANY, INC.,
`Petitioner,
`
`v.
`
`OXBO INTERNATIONAL CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-00950
`Patent 8,166,739 B2
`____________
`
`
`Before PHILLIP J. KAUFFMAN and JAMES A. TARTAL,
`Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. §§ 42.5(a), 42.20(d)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-00950
`Patent 8,166,739 B2
`
`
`A conference call was held on May 31, 2017, between respective
`
`counsel for Petitioner, H&S Manufacturing Company, Inc., Patent Owner,
`
`Oxbo International Corporation, and Judges Kauffman and Tartal. Patent
`
`Owner sought authorization to file: (1) an opinion and order related to the
`
`challenged patent issued by the District Court of the Western District of
`
`Wisconsin on May 23, 2017, in Oxbo Int’l Corp. v. H&S Mfg. Co., Inc.,
`
`3:15-cv-00292-jdp, as an exhibit; and (2) a surreply to Petitioner’s Reply to
`
`address new evidence provided by Petitioner. Petitioner opposed Patent
`
`Owner’s requests. Subsequent to the conference the parties also filed
`
`additional documents as exhibits without prior authorization, which we
`
`discuss further below.
`
`With regard to the District Court order, Patent Owner contended that
`
`the order addresses the patent challenged in this proceeding, is a public
`
`document, and should be available to the Board as supplemental legal
`
`authority. Petitioner contended that the order is not binding authority on the
`
`Board, is premised on a different record than what has been developed in
`
`this proceeding, and applies different legal standards, but Petitioner also
`
`acknowledged that the order may be informative. In light of the recent
`
`issuance of the order, it could not have been brought to our attention earlier
`
`and, as a public decision of a district court, it is informative at least as to
`
`issues before the district court that are related to the patent at issue in this
`
`proceeding. Accordingly, Patent Owner was authorized to file a copy of the
`
`order as an exhibit. Subsequent to the conference call, Patent Owner
`
`submitted the District Court order on June 16, 2017, as Exhibit 2020.
`
`Paper 30.
`
`2
`
`
`
`IPR2016-00950
`Patent 8,166,739 B2
`
`
`With regard to Patent Owner’s request to file a surreply, Patent Owner
`
`contended that Petitioner’s Reply includes new evidence, including Exhibit
`
`1025, an Operator’s Manual for Petitioner’s mergers, which Petitioner relies
`
`upon concerning arguments pertaining to copying and secondary
`
`considerations of nonobviousness. See Reply (Paper 28), 17. Petitioner
`
`argued that Patent Owner was obligated to address the issue of secondary
`
`considerations in its Response, and should not be permitted to remedy
`
`deficiencies through a surreply or to use a surreply as a backdoor to
`
`introduce new arguments based on the order issued in the district court,
`
`addressed above.
`
`We have considered both parties’ arguments, and, based on the
`
`circumstances of this case, we are persuaded it is appropriate to allow Patent
`
`Owner to file a short surreply to Petitioner’s Reply. See 37 C.F.R.
`
`§§ 42.5(a), 42.20(d); see also Belden Inc. v. Berk-Tek, LLC, 805 F.3d 1064,
`
`1081 (Fed. Cir. 2015) (noting that, in inter partes review proceedings, when
`
`new evidence is submitted by a petitioner in its reply, a patent owner may
`
`request permission to submit a surreply responding to the new evidence).
`
`Our decision to authorize a surreply is influenced by the fact that Petitioner’s
`
`Reply is accompanied by new evidence related to secondary considerations
`
`of nonobviousness that Patent Owner could not reasonably have been
`
`expected to directly address in its Response. The surreply shall be limited to
`
`three (3) pages and shall be filed no later than July 21, 2017. The surreply
`
`shall be directed only to new evidence introduced by Petitioner pertaining to
`
`secondary considerations of nonobviousness. Although Patent Owner is not
`
`precluded from citing any decision in support of its arguments, including the
`
`3
`
`
`
`IPR2016-00950
`Patent 8,166,739 B2
`
`district court order addressed above, Patent Owner may not present new
`
`arguments that are not responsive as a surreply to Petitioner’s Reply. Patent
`
`Owner may not introduce new evidence or testimony with its surreply.
`
`Petitioner is not authorized to file a responsive paper.
`
`Subsequent to the conference call the parties appear to have filed
`
`additional documents not discussed during the conference call as exhibits
`
`without seeking leave from the Board in advance. On June 23, 2017, Patent
`
`Owner filed Exhibit 2021. On July 12, 2017, Petitioner filed Exhibit 1027
`
`and Exhibit 1028 as purported supplemental authority. Paper 39. Because
`
`neither party sought leave to file Exhibits 1027, 1028, and 2021 as
`
`supplemental authority in advance, these exhibits shall be expunged. If
`
`either party seeks to file additional supplemental authority, prior to
`
`requesting a call with the Board, that party shall discuss its request with
`
`opposing counsel and identify times when counsel for both parties are
`
`available for a teleconference with the Board. Counsel should further
`
`consider whether it is necessary to file documents as additional supplemental
`
`authority, or whether, instead, the information may be addressed sufficiently
`
`during oral argument.
`
`For the foregoing reasons, it is hereby:
`
`ORDERED that Patent Owner is authorized to file as an exhibit the
`
`opinion and order related to the challenged patent issued by the District
`
`Court of the Western District of Wisconsin on May 23, 2017, in Oxbo Int’l
`
`Corp. v. H&S Mfg. Co., Inc., 3:15-cv-00292-jdp;
`
`FURTHER ORDERED that Patent Owner is authorized to file a
`
`surreply limited to three (3) pages and responsive only to arguments in
`
`4
`
`
`
`IPR2016-00950
`Patent 8,166,739 B2
`
`Petitioner’s Reply addressing new evidence concerning secondary
`
`considerations of nonobviousness, to be filed no later than July 21, 2017;
`
`and
`
`FURTHER ORDERED that no other document is authorized to be
`
`filed as an exhibit as supplemental authority, and that Exhibits 1027, 1028,
`
`and 2021 shall be expunged.
`
`
`
`
`
`
`5
`
`
`
`IPR2016-00950
`Patent 8,166,739 B2
`
`PETITIONER
`
`Brad D. Pedersen
`Eric H. Chadwick
`Michael P. Gates
`PATTERSON THUENTE PEDERSEN, P.A.
`pedersen@ptslaw.com
`chadwick@ptslaw.com
`gates@ptslaw.com
`
`
`
`PATENT OWNERS
`
`Andrew J. Lagatta
`Gregory A. Sebald
`MERCHANT & GOULD P.C.
`alagatta@merchantgould.com
`gsebald@merchantgould.com
`
`
`
`6
`
`
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