Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 26
`Entered: October 10, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KINGSTON TECHNOLOGY COMPANY, INC.,
`Petitioner,
`
`v.
`
`POLARIS INNOVATIONS LTD.,
`Patent Owner.
`____________
`
`Cases
`IPR2016-01621 (Patent 6,438,057 B1)
`IPR2016-01622 (Patent 6,850,414 B2)
`IPR2016-01623 (Patent 7,315,454 B2)1
`____________
`
`
`Before SALLY C. MEDLEY, JEAN R. HOMERE, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`1 This Order addresses issues identical in all three cases. We, therefore,
`exercise our discretion to issue one Order to be filed in each case. The
`parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`571-272-7822
`
`
`Paper No. 26
`Entered: October 10, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KINGSTON TECHNOLOGY COMPANY, INC.,
`Petitioner,
`
`v.
`
`POLARIS INNOVATIONS LTD.,
`Patent Owner.
`____________
`
`Cases
`IPR2016-01621 (Patent 6,438,057 B1)
`IPR2016-01622 (Patent 6,850,414 B2)
`IPR2016-01623 (Patent 7,315,454 B2)1
`____________
`
`
`Before SALLY C. MEDLEY, JEAN R. HOMERE, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`1 This Order addresses issues identical in all three cases. We, therefore,
`exercise our discretion to issue one Order to be filed in each case. The
`parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`
`IPR2016-01621 (Patent 6,438,057 B1)
`IPR2016-01622 (Patent 6,850,414 B2)
`IPR2016-01623 (Patent 7,315,454 B2)
`
`
`On September 27, 2017, counsel for Kingston Technology Company
`Inc. (“Petitioner”) requested a conference call to seek the panel’s
`authorization to file, in IPR2016-01622 (“the 1622 IPR”), a Motion to Strike
`or, alternatively, a Response to the Reply to Petitioner’s Opposition to
`Motion to Amend (1622 IPR, Paper 23, “MTA Reply”) filed by Polaris
`Innovations Ltd. (“Patent Owner”).
`On October 3, 2017, counsel for Patent Owner requested a conference
`call to discuss authorization to file, in IPR016-01621 (“the 1621 IPR”), the
`1622 IPR, and IPR2016-01623 (“the 1623 IPR”) additional briefing
`regarding the constitutionality of inter partes review in light of the grant of
`certiorari in Oil States Energy Servs. v. Greene’s Energy Group, LLC, No.
`16-712 (U.S. June 12, 2017) (“Oil States”). Ex. 3001.
`On October 4, 2017, the Court of Appeals for the Federal Circuit
`issued its decision in Aqua Products, Inc. v. Matal, No. 2015-1177, 2017
`WL 4399000 (Fed. Cir. Oct. 4, 2017) (“Aqua Products”).
`On October 5, 2017, a teleconference was held between counsel for
`Petitioner, counsel for Patent Owner, and Judges Medley, Homere, and
`Clements. For the reasons discussed below, we authorize Petitioner to file,
`in the 1622 IPR, a Response to Patent Owner’s MTA Reply, and we deny
`Patent Owner’s request for authorization for additional briefing regarding
`constitutionality.
`
`I.
`ANALYSIS
`A. 1622 IPR: Response to Patent Owner’s MTA Reply
`Petitioner explained that, when it requested the call, it believed the
`portions of Patent Owner’s MTA Reply addressing patentability were
`
`2
`
`
`
`IPR2016-01621 (Patent 6,438,057 B1)
`IPR2016-01622 (Patent 6,850,414 B2)
`IPR2016-01623 (Patent 7,315,454 B2)
`
`improper because patentability was not addressed at all in Patent Owner’s
`Motion to Amend (Paper 18, “Motion to Amend”). Petitioner explained,
`however, that the basis for its request for a response changed in light of
`Aqua Products. Petitioner interprets Aqua Products as placing the burden to
`show unpatentability of proposed substitute claims on Petitioner, instead of
`Patent Owner bearing the burden to show patentability of those claims.
`Because Petitioner now bears the burden on unpatentability, Petitioner
`contends it deserves the last word on that issue in the form of a response.
`Patent Owner opposes a response by Petitioner. According to Patent
`Owner, it is not clear from Aqua Products that Patent Owner has no burden,
`and normally, Patent Owner has the last word on a motion to amend.
`Moreover, according to Patent Owner, the arguments in its Reply are not
`improper because they consist primarily of arguments that Petitioner’s
`Opposition (Paper 20, “Opposition”) itself contains improper new argument.
`Patent Owner also contends that Petitioner has had enough briefing because
`its twenty-five page Opposition, accompanied by new evidence and expert
`testimony, significantly exceeds Patent Owner’s five page Motion to
`Amend, filed without any accompanying evidence, and its twelve page MTA
`Reply. Finally, Patent Owner directs our attention to Amerigen Pharms. Ltd.
`v. Shire LLC, Case IPR2015-02009, in which, according to Patent Owner, a
`panel of the Board granted a Motion to Amend similar to the one filed in the
`1622 IPR. Amerigen Pharms. Ltd. v. Shire LLC, Case IPR2015-02009,
`Paper 38 (PTAB Mar. 31, 2017) (“Amerigen”).
`In Aqua Products, the Federal Circuit held that, “[35 U.S.C.] § 316(e)
`unambiguously requires the petitioner to prove all propositions of
`
`3
`
`
`
`IPR2016-01621 (Patent 6,438,057 B1)
`IPR2016-01622 (Patent 6,850,414 B2)
`IPR2016-01623 (Patent 7,315,454 B2)
`
`unpatentability, including for amended claims.” Aqua Products, 2017 WL
`4399000, at *1; see also id. at *7 (“We believe Congress explicitly placed
`the burden of persuasion to prove propositions of unpatentability on the
`petitioner for all claims, including amended claims.”), *10 (“Section 316(e)
`reaches every proposition of unpatentability at issue in the proceeding.”),
`*28 (“[T]he PTO has not adopted a rule placing the burden of persuasion
`with respect to the patentability of amended claims on the patent owner that
`is entitled to deference; and . . . in the absence of anything that might be
`entitled deference, the PTO may not place that burden on the patentee.”).
`Accordingly, we agree with Petitioner that it now bears the burden of
`establishing the unpatentability of the proposed substitute claim.2
`Patent Owner argued on the call that a petitioner may not introduce
`new prior art in its opposition to a motion to amend, but the Federal Circuit
`states explicitly in Aqua Products that
`[w]hen a petitioner does contest an amended claim, the Board is
`free to reopen the record to allow admission of any additional
`relevant prior art proffered by a petitioner or to order additional
`briefing on any issue involved in the trial. See 37 C.F.R.
`§ 42.20(d); see also id. § 42.123. The Board may then consider
`all art of record in the IPR, including any newly added art, when
`rendering its decisions on patentability.
`Id. at *17.
`
`
`2 That is not to say, however, that a patent owner has no burden with respect
`to a motion to amend. See, e.g., id. at *9 (“[P]atent owner must satisfy the
`Board that the statutory criteria in § 316(d)(1)(a)–(b) and § 316(d)(3) are
`met and that any reasonable procedural obligations imposed by the Director
`are satisfied . . . .”).
`
`4
`
`
`
`IPR2016-01621 (Patent 6,438,057 B1)
`IPR2016-01622 (Patent 6,850,414 B2)
`IPR2016-01623 (Patent 7,315,454 B2)
`
`
`Based on the facts of this case, we are persuaded that additional
`briefing is warranted in the form of a response by Petitioner limited solely to
`the issue of the unpatentability of proposed substitute claim 9 based on prior
`art. Accordingly, we authorize Petitioner to file a response addressing only
`that issue. Petitioner requested twelve pages because that is the length of
`Patent Owner’s MTA Reply, but Patent Owner used only a portion of those
`pages to address patentability. Accordingly, we limit Petitioner’s response
`to eight pages.
`To accommodate this additional briefing, we adjust Due Dates 4–6 as
`ordered below.
`
`
`B. Additional Briefing re: Oil States
`Patent Owner expressed its willingness to file, in the 1621 IPR, 1622
`IPR, and 1623 IPR, additional briefing regarding Oil States if the panel
`wished to receive any. Petitioner also expressed its willingness to file
`additional briefing. We conveyed to the parties that we do not wish to
`receive the additional briefing. Nevertheless, we upload Patent Owner’s
`request as Exhibit 3001, so that the record reflects that Patent Owner raised
`the issue with the panel.
`
`
`II. ORDER
`
`Accordingly, it is
`ORDERED that Petitioner is authorized to file a Response, no more
`than eight pages, addressing only the issue of unpatentability based on prior
`art, no later than October 13, 2017;
`
`5
`
`
`
`IPR2016-01621 (Patent 6,438,057 B1)
`IPR2016-01622 (Patent 6,850,414 B2)
`IPR2016-01623 (Patent 7,315,454 B2)
`
`
`FURTHER ORDERED that Due Date 4 is set to October 20, 2017,
`Due Date 5 is set to October 27, 2017, and Due Date 6 is set to November 3,
`2017; and
`FURTHER ORDERED that Patent Owner’s request for authorization
`to file additional briefing regarding constitutionality is denied.
`
`
`
`
`
`6
`
`
`
`IPR2016-01621 (Patent 6,438,057 B1)
`IPR2016-01622 (Patent 6,850,414 B2)
`IPR2016-01623 (Patent 7,315,454 B2)
`
`For PETITIONER:
`
`David Hoffman
`FISH & RICHARDSON P.C.
`IPR37307-0007IP1@fr.com
`hoffman@fr.com
`
`Martha Hopkins
`LAW OFFICES OF S.J. CHRISTINE YANG
`IPR@sjclawpc.com
`mhopkins@sjclawpc.com
`
`
`For PATENT OWNER:
`
`Kenneth Weatherwax
`Nathan Lowenstein
`LOWENSTEIN & WEATHERWAX LLP
`weatherwax@lowensteinweatherwax.com
`lowenstein@lowensteinweatherwax.com
`
`7
`
`
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