`571-272-7822
`
`
`Paper No. 42
`
` Entered: May 1, 2020
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KINGSTON TECHNOLOGY COMPANY, INC.,
`Petitioner,
`
`v.
`
`SPEX TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01021
`Patent 6,003,135
`____________
`
`
`Before LYNNE E. PETTIGREW, CHARLES J. BOUDREAU, and
`NORMAN H. BEAMER, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`IPR2017-01021
`Patent 6,003,135
`
`
`I.
`
`INTRODUCTION
`
`A conference call was held in the above-referenced proceeding on
`
`April 30, 2020, between counsel for the parties and Judges Pettigrew,
`
`Boudreau, and Beamer. We initiated the conference call to discuss the
`
`procedure on remand following a decision by the U.S. Court of Appeals for
`
`the Federal Circuit in Kingston Technology Co. v. SPEX Technologies, Inc.,
`
`798 F. Appx. 629, (Fed. Cir. 2020) (nonprecedential), in which the Court
`
`vacated and remanded the Board’s finding of no anticipation of claim 57 of
`
`U.S. Patent No. 6,003,135 (“the ’135 patent”) for consideration of
`
`supplemental briefing filed by Petitioner during the trial of this proceeding
`
`before the Board.
`
`II.
`
`PROCEDURAL HISTORY
`
`On October 1, 2018, the Board issued a Final Written Decision (Paper
`
`39), in which the panel1 concluded that Petitioner had established by a
`
`preponderance of the evidence that claim 58 of the ’135 patent is
`
`unpatentable as anticipated by Jones, PCT Application WO 95/16238 (Ex.
`
`1003) but that Petitioner had not established that claims 55–57 of the ’135
`
`patent are unpatentable on any asserted grounds. Paper 39, 58–59.
`
`Petitioner appealed the latter determination to the Federal Circuit.
`
`On February 22, 2020, the Federal Circuit affirmed the Board’s
`
`finding of no anticipation for claims 55 and 56, but vacated and remanded
`
`our finding with respect to claim 57. Kingston, 729 F. Appx. at 632–36. In
`
`particular with regard to claim 57, the Federal Circuit held that we abused
`
`
`1 Due to unavailability, original panel member Administrative Patent Judge
`Daniel N. Fishman has been replaced by Administrative Patent Judge
`Norman H. Beamer. See Paper 41.
`
`
`
`2
`
`
`
`IPR2017-01021
`Patent 6,003,135
`
`our discretion by declining to consider certain arguments made by Petitioner
`
`in supplemental briefing filed during trial (Paper 33) as improperly
`
`presenting a new theory of invalidity for claim 57, and remanded for our
`
`consideration of Petitioner’s supplemental briefing. Id. at 634–36.
`
`III. DISCUSSION
`
`During the conference call, Petitioner expressed that, although it
`
`would be willing to provide additional briefing to address the effect of the
`
`Federal Circuit’s decision if it would be helpful to the Board, Petitioner did
`
`not have any specific request. Patent Owner likewise expressed that it did
`
`not have a request for additional briefing at this time.
`
`In view of the clarity of the Federal Circuit’s remand, specifically for
`
`consideration of Petitioner’s “arguments addressing claim 57 in its
`
`supplemental briefing”; the parties’ representations on the conference call;
`
`and the fact that Patent Owner had the opportunity to file a response to
`
`Petitioner’s supplemental briefing during trial (Paper 34), we expressed that
`
`we do not see a need for additional briefing at this time. We additionally
`
`note that neither party requested to file any additional evidence and that the
`
`parties had the opportunity to address the substance of Petitioner’s
`
`supplemental briefing at the oral hearing held on July 23, 2018. See PTAB
`
`Standard Operating Procedure 9,2 6 (explaining that “[i]n most cases, it will
`
`not be necessary to re-open the evidentiary record to new testimonial or
`
`
`2 “Procedure for Decisions Remanded from the Federal Circuit for Further
`Proceedings,” available at https://www.uspto.gov/sites/default/files/
`documents/sop_9_%20procedure_for_decisions_remanded_from_the_
`federal_circuit.pdf
`
`
`
`3
`
`
`
`IPR2017-01021
`Patent 6,003,135
`
`documentary evidence”), 7 (“In most cases, an additional oral hearing will
`
`not be authorized.”)
`
`Accordingly, we do not authorize the filing of any additional briefing
`
`or evidence or foresee the need for additional oral argument at this time.
`
`In consideration of the foregoing, it is
`
`IV. ORDER
`
`ORDERED that no briefing or new evidence is authorized to be filed
`
`at this time.
`
`
`
`4
`
`
`
`IPR2017-01021
`Patent 6,003,135
`
`For PETITIONER:
`
`David Hoffman
`Oliver Richards
`FISH & RICHARDSON P.C.
`hoffman@fr.com
`richards@fr.com
`
`Martha Hopkins
`LAW OFFICES OF S. J. CHRISTINE YANG
`mhopkins@sjclawpc.com
`
`
`For PATENT OWNER:
`
`Vincent J. Rubino, III
`Alfred R. Fabricant
`Enrique W. Iturralde
`Peter Lambrianakos
`BROWN RUDNICK
`vrubino@brownrudnick.com
`afabricant@brownrudnick.com
`eiturralde@brownrudnick.com
`plambrianakos@brownrudnick.com
`
`
`
`5
`
`
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