`571-272-7822
`
`Paper 41
`Entered: October 23, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`R.J. REYNOLDS VAPOR COMPANY,
`Petitioner,
`
`v.
`
`FONTEM HOLDINGS 1 B.V.,
`Patent Owner.
`____________
`
`Case IPR2016-01692
`Patent 9,326,548 B2
`____________
`
`
`
`Before JO-ANNE M. KOKOSKI, KRISTINA M. KALAN, and
`KIMBERLY MCGRAW, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5, 37 C.F.R. § 42.123(b)
`
`
`
`IPR2016-01692
`Patent 9,326,548 B2
`
`
`On October 19, 2017, the Board received an email from Petitioner’s
`counsel requesting authorization to submit supplemental information.
`Petitioner indicated that Patent Owner opposes Petitioner’s request. A
`teleconference to consider the request was held on October 20, 2017, among
`Judges Kokoski, Kalan, and McGraw, and counsel for the parties. A court
`reporter was on the line, and a copy of the transcript will be filed as an
`exhibit in this proceeding in due course.1
`Our rules allow a party to submit supplemental information more than
`one month after the institution of trial where (1) the supplemental
`information could not reasonably have been obtained earlier and (2)
`consideration of the supplemental information would be in the interests-of-
`justice. 37 C.F.R. § 42.123(b).
`Petitioner stated during the call that it seeks to submit a copy of Patent
`Owner’s proposed preliminary claim construction of the term “run-through
`hole” in a related district court proceeding involving the same patent and the
`same parties. Petitioner represented that it received this document on
`October 13, 2017, and that Patent Owner’s proposed claim construction
`therein contradicts the position Patent Owner takes in the present
`proceeding. Petitioner argued that consideration of this document would be
`in the interests of justice, given the recent nature of Patent Owner’s proposed
`claim construction and the allegedly contrary positions taken by Patent
`Owner in the district court proceeding and before the Board.
`Patent Owner responded that its position in the October 13, 2017
`preliminary claim construction document is not inconsistent with its position
`
`
`1 This order summarizes the statements made during the conference call. A
`more detailed record may be found in the transcript.
`
`2
`
`
`
`
`IPR2016-01692
`Patent 9,326,548 B2
`
`in this proceeding. Patent Owner also emphasized that its proposed claim
`constructions in the district court proceeding are preliminary, noting that, in
`the district court, opening briefs regarding claim construction are due in
`December, and responsive briefs are due in January. If the Board were to
`allow Petitioner to submit the October 13, 2017 document, Patent Owner
`argued, Patent Owner should be allowed to submit Petitioner’s preliminary
`claim construction documents filed in the same district court proceeding.
`Petitioner did not object to this proposal.
`After consideration of the arguments of counsel for the parties, we
`determine that the proposed information could not reasonably have been
`obtained earlier, given the timeline of the claim construction portion of the
`district court proceeding. We also determine that consideration of the
`supplemental information would be in the interests-of-justice, because the
`parties’ claim construction positions in the district court proceeding
`allegedly are either inconsistent with or illuminate their positions in this
`proceeding, and we are persuaded that the documents discussed during the
`conference call may be relevant to our analysis of the parties’ claim
`construction and arguments related thereto in this proceeding.
`Petitioner is authorized to submit, as supplemental information under
`37 C.F.R. § 42.123(b), Patent Owner’s preliminary claim construction
`document, dated October 13, 2017, as identified during the conference call;
`Patent Owner is authorized to submit Petitioner’s preliminary claim
`construction documents, dated September 18, 2017 and September 25, 2017,
`as identified during the conference call. No cover sheet, argument, or any
`other filing is authorized at this time. The parties may, if desired, present
`
`
`
`
`3
`
`
`
`IPR2016-01692
`Patent 9,326,548 B2
`
`arguments directed to these submissions at the upcoming Oral Hearing on
`October 26, 2017.
`
`Accordingly, it is
`ORDERED that the parties may file the three documents identified in
`this Order in the manner set forth in this Order, along with an updated
`Exhibit List for each party; and
`FURTHER ORDERED that no cover sheet, argument, or other filing
`is authorized at this time.
`
`
`
`
`
`
`
`
`
`4
`
`
`
`IPR2016-01692
`Patent 9,326,548 B2
`
`
`FOR PETITIONER:
`
`Ralph J. Gabric
`rgabric@brinksgilson.com
`
`Robert Mallin
`rmallin@brinksgilson.com
`
`Yuezhong Feng
`yfeng@brinksgilson.com
`
`
`FOR PATENT OWNER:
`
`Michael J. Wise
`mwise@perkinscoie.com
`
`Joseph P. Hamilton
`jhamilton@perkinscoie.com
`
`Tyler R. Bowen
`tbowen@perkinscoie.com
`
`
`
`
`
`
`
`
`
`
`
`5
`
`
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