Trials@uspto.gov
`571-272-7822
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`
`
` Paper: 8
`
`Entered: December 11, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WAVETAMER GYROS, LLC,
`Petitioner,
`
`
`
`
`
`v.
`
`SEAKEEPER, INC.,
`Patent Owner.
`____________
`Cases IPR2017-01931 and IPR2017-019961
`Patents 8,117,930 B2 and 7,546,782 B2
`____________
`
`Before LORA M. GREEN, MICHAEL W. KIM, and PATRICK R. SCANLON,
`Administrative Patent Judges.
`
`GREEN, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`
`
`1 This order addresses issues that are the same in the identified cases. We exercise
`our discretion to issue one order to be filed in each case. The parties are authorized
`to use this style heading when filing a single paper in the listed proceedings,
`provided that such heading includes a footnote attesting that “the word-for-word
`identical paper is filed in each proceeding identified in the heading.”
`
`

`

`IPR2017-01931 and IPR2017-01996
`Patents 8,117,930 B2 and 7,546,782 B2
`
`
`A conference call was held on Wednesday, December 6, 2017, between
`counsel for Patent Owner, Edward Kelly; counsel for Petitioner, David Bennett;
`and Administrative Patent Judges Green, Kim, and Scanlon. Petitioner requested
`the call to request authorization to file a corrected Petition, or in the alternative, to
`terminate the proceeding and refile the Petitions.
`
`Specifically, Petitioner stated that it mistakenly relied on the Adams patent,
`U.S. Patent No. 6,973,847, rather than the Adams publication, only the latter of
`which is prior art to the challenged claims under 35 U.S.C. § 102(b). Petitioner
`asserted the reliance on the Adams patent rather than the Adams publication was
`an inadvertent mistake. Petitioner acknowledged that it did not file the Adams
`publication as an exhibit with either Petition, but noted that Patent Owner would be
`aware of the reference, as it is Patent Owner’s own work.
`
`Petitioner suggested, therefore, that it could file a corrected Petition, citing
`37 C.F.R. § 42.104(c), which allows for correction of clerical or typographical
`errors. Patent Owner responded that Petitioner’s reliance on the Adams patent,
`rather than the Adams publication, cannot be characterized as a clerical error, but is
`rather an error of law. Thus, Patent Owner argued that Petitioner should not be
`allowed to file a corrected Petition.
`
`We agree with Patent Owner that citing the incorrect reference in a Petition
`is not an error that is correctable under 37 C.F.R. § 42.104(c). We, thus, decline to
`authorize Petitioner to file a corrected petition in the two proceedings.
`
`Petitioner suggested also that we allow it to terminate the instant
`proceedings, asserting that we have authorization under 37 C.F.R. § 42.71(a) to
`dismiss the Petitions. It could then refile corrected petitions. Patent Owner
`responded that 37 C.F.R. § 42.71(a) should not apply, and that Petitioner should be
`required to request adverse judgment under 37 C.F.R. § 42.73(b)(4).
`
`
`
`2
`
`

`

`IPR2017-01931 and IPR2017-01996
`Patents 8,117,930 B2 and 7,546,782 B2
`
`We agree with Petitioner that we have the authority to dismiss the Petitions
`
`under 37 C.F.R. § 42.71(a). We, therefore, authorize Petitioner to file a ten (10)
`page motion to dismiss in each proceeding, explaining how the error of citing to
`the Adams patent, rather than the Adams publication, arose and as to why
`dismissal is appropriate. The motions to dismiss are due within five (5) business
`days of the mailing date of this order. Patent Owner is then authorized to file ten
`(10) page opposition to the motion to dismiss in each proceeding, which is due
`within five (5) business days of Petitioner’s filing of their motion to dismiss. We
`do not authorize Petitioner to file a reply to Patent Owner’s opposition at this time.
`We point the parties attention to Gen. Plastic Indus. Co., Ltd. v. Canon Kabushiki
`Kaisha, Case IPR2016-01357, (PTAB September 6, 2017) (Paper 19)
`(precedential) which sets forth a non-exhaustive list of factors the Board takes into
`consideration in evaluating follow-on petitions. Petitioner should consider
`addressing those factors when it refiles its petitions.
`
`In addition, Patent Owner stated that the Petitions did not comply with the
`word count of 37 C.F.R. § 42.24(a). In particular, Patent Owner noted that
`Petitioner filed claim charts as exhibits, and did not include those claim charts in
`the word count. Petitioner responded that it referred to the claim charts in the
`Petition, but asked for guidance as to whether they should be considered part of the
`Petition, and, thus, included in the word count.
`
`Generally, claim charts should be included as part of the petition, and should
`be included in the word count. See Office Patent Trial Practice Guide, 77 C.F.R
`48756, 48764 (Aug. 14, 2012) (“Claim charts submitted as part of a petition,
`motion, patent owner preliminary response, patent owner response, opposition, or
`reply count towards applicable page limits.”). Thus, to the extent that Petitioner is
`relying on the claim charts as part of its challenge, and the claim charts are
`
`
`
`3
`
`

`

`IPR2017-01931 and IPR2017-01996
`Patents 8,117,930 B2 and 7,546,782 B2
`
`required to support that challenge, the claim charts should be considered as part of
`the Petitions, and included in the word count for each Petition. To the extent that
`the claim charts are not included in the word count, we cannot rely on that
`information as part of the challenge to the claims.
`
`In addition, Patent Owner filed its Preliminary Response in IPR2017-01931
`on November 17, 2017. In IPR2017-01996, and in view of Petitioner’s request for
`this conference call, Patent Owner requested an extension of time to file its
`preliminary response in that proceeding. IPR2017-01996, Paper 6. In an email
`dated December 5, 2017, we granted Patent Owner a one week extension for filing
`its preliminary response. In view of Petitioner’s request to file a motion to dismiss
`these proceeding, we exercise our discretion, and move the due date for Patent
`Owner’s preliminary response in IPR2017-01996 to January 8, 2018.
`
`Accordingly, it is:
`
`ORDERED that Petitioner is authorized to file a ten (10) page motion to
`dismiss in each proceeding, explaining how the error in citing to the Adams patent
`rather than the Adams publication occurred and as to why dismissal is appropriate.
`The motions to dismiss are due within five (5) business days of the mailing date of
`this order;
`
`FURTHER ORDERED that Patent Owner is authorized to file a ten (10)
`page opposition to the motion to dismiss in each proceeding, which oppositions are
`due within five (5) business days of Petitioner’s filing of their motion to dismiss;
`and
`FURTHER ORDERED that the due date for Patent Owner’s preliminary
`
`response in IPR2017-01996 is moved to January 8, 2018.
`
`
`
`
`
`4
`
`

`

`IPR2017-01931 and IPR2017-01996
`Patents 8,117,930 B2 and 7,546,782 B2
`
`
`Petitioner:
`
`David E. Bennett
`Brandee N. Woolard
`COATS & BENNETT, PLLC
`dbennett@coatsandbennett.com
`bwoolard@coatsandbennett.com
`
`Patent Owner:
`
`Edward J. Kelly
`ROPES & GRAY
`Edward.kelly@ropesgray.com
`
`
`
`5
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`