Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 31
`Entered: January 30, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`NICHIA CORP.,
`Patent Owner.
`____________
`
`Case IPR2018-00386
`Patent No. 9,490,411 B2
`
`Case IPR2018-00437
`Patent No. 9,537,071 B2
`______________
`
`
`Before SALLY C. MEDLEY, WILLIAM V. SAINDON, and
`NATHAN A. ENGELS, Administrative Patent Judges.
`
`ENGELS, Administrative Patent Judge.
`
`
`
`
`
`
`
`VIZIO, INC.,
`Petitioner,
`
`v.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 31
`Entered: January 30, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`NICHIA CORP.,
`Patent Owner.
`____________
`
`Case IPR2018-00386
`Patent No. 9,490,411 B2
`
`Case IPR2018-00437
`Patent No. 9,537,071 B2
`______________
`
`
`Before SALLY C. MEDLEY, WILLIAM V. SAINDON, and
`NATHAN A. ENGELS, Administrative Patent Judges.
`
`ENGELS, Administrative Patent Judge.
`
`
`
`
`
`
`
`VIZIO, INC.,
`Petitioner,
`
`v.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`IPR2018-00386 (Patent No. 9,490,411 B2)
`IPR2018-00437 (Patent No. 9,537,071 B2)
`
`
`The Board entered Scheduling Orders in these proceedings setting the
`same schedule for both proceedings. Paper 16. 1 Consistent with the
`Scheduling Orders, in each proceeding, Patent Owner filed its Response on
`September 18, 2018 (Paper 22), and Petitioner filed its Reply to Patent
`Owner’s Response on December 11, 2018 (Paper 31).
`On January 17, 2019, a telephone conference call was held to discuss
`requests from each party for authorization to file certain papers in addition to
`those identified in the Scheduling Order. A transcript of the telephone
`conference has been entered into the record. IPR2018-00386, Ex. 2020. 2
`
`The Parties’ Requests for Sur-Replies and Sur-Sur-Replies re: the Petition
`Patent Owner requests authorization to file a sur-reply in response to
`Petitioner’s Reply to Patent Owner’s Response in each of the proceedings by
`January 29, 2019, the date provided in the Scheduling Order for observations
`regarding cross-examination of reply witnesses, among other things. Paper
`22 at 9. Petitioner does not oppose Patent Owner’s request for sur-replies
`“on the condition that the board also authorizes sur-sur-replies.” IPR2018-
`00386, Ex. 2020 at 4:16–19. To that end, Petitioner also requests
`authorization to file a sur-sur-reply to any sur-reply filed by Patent Owner,
`
`
`
`1 Unless otherwise noted, paper numbers and exhibit numbers in this Order
`refer to IPR2018-00437.
`2 In IPR2018-00437, the document uploaded as Exhibit 2037 is Patent
`Owner’s Exhibit List (also uploaded as Paper 38), instead of a copy of the
`hearing transcript. The Board will expunge the incorrectly filed document,
`and the parties should upload a copy of the hearing transcript as an exhibit in
`IPR2018-00437.
`
`2
`
`
`
`
`IPR2018-00386 (Patent No. 9,490,411 B2)
`IPR2018-00437 (Patent No. 9,537,071 B2)
`
`arguing it would be unfair to allow Patent Owner to file a sur-reply in place
`of the observations regarding cross-examination while not also allowing
`Petitioner to file a sur-sur-reply. Id. at 4:11–6:1. Specifically, Petitioner
`notes that the Scheduling Order provides a February 12, 2019 date for a
`response to observations, and Petitioner contends that it would be deprived
`of an opportunity for briefing if Patent Owner files a sur-reply instead of
`observations on cross examination, as Petitioner would no longer have the
`opportunity to file a paper on February 12, 2019 without authorization to file
`a sur-sur-reply. Id.
`As discussed in the telephone conference, the Office issued an update
`to the Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756 (Aug. 14,
`2012), in August 2018 to reflect that sur-replies to principal briefs will
`normally be authorized as part of the Board’s standard practices. See 83
`Fed. Reg. 39,989 (Aug. 13, 2018) (explaining that the revised sections of the
`Trial Practice Guide are available at https://go.usa.gov/xU7GP). The Trial
`Practice Guide does not address sur-sur-replies.
`Consistent with the Trial Practice Guide as updated, we grant Patent
`Owner’s request for authorization to file, in each of the proceedings, a five-
`page sur-reply in response to Petitioner’s Reply to Patent Owner’s Response
`by January 29, 2019. We deny as premature Petitioner’s request to file a
`sur-sur-reply. Contrary to Petitioner’s arguments, the Scheduling Order’s
`February 12, 2019 deadline for a response to observations did not represent
`an opportunity for substantive briefing, as the Scheduling Order limited
`observations on cross-examination and any responses to “concise
`statements” not to exceed a single, short paragraph. Paper 22 at 6. If, after
`Patent Owner files sur-replies, Petitioner can establish that the content of the
`3
`
`
`
`
`IPR2018-00386 (Patent No. 9,490,411 B2)
`IPR2018-00437 (Patent No. 9,537,071 B2)
`
`sur-replies creates adequate cause for a sur-sur-reply, Petitioner can again
`request authorization to file a sur-sur-reply.
`
`
`
`Patent Owner’s Request for a Motion to Strike
`In IPR2018-00437, Patent Owner filed a Contingent Motion to
`Amend Claims on September 18, 2018. Paper 24. Petitioner filed an
`Opposition to Patent Owner’s Contingent Motion to Amend Claims on
`December 11, 2018 (Paper 32), and Patent Owner filed a Reply to
`Petitioner’s Opposition to Patent Owner’s Contingent Motion to Amend
`Claims on January 8, 2019 (Paper 34).
`In addition to its Reply to Petitioner’s Opposition (Paper 34), Patent
`Owner requests authorization to file a motion to strike portions of
`Petitioner’s Opposition (Paper 32). During the telephone conference, Patent
`Owner stated, among other things, that Petitioner’s Opposition improperly
`incorporates by reference more than 200 pages of argument and includes a
`277-page declaration in an alleged effort to circumvent the 25-page limit
`allowed for Petitioner’s Opposition. IPR2018-00386, Ex. 2020 at 10:13–
`13:22.
`Petitioner opposes Patent Owner’s request and disagrees with Patent
`Owner’s characterization of Petitioner’s Opposition. Petitioner stated that
`its arguments and evidence are presented in Petitioner’s Opposition itself,
`with its declaration providing underlying facts and data supporting the
`Petitioner’s expert’s opinion. Id. at 14:1–1412, 15:4–15:17. Among other
`things, Petitioner stated that Patent Owner’s proposed substitute claims
`made it necessary to cite additional prior art and combinations of prior art to
`4
`
`
`
`
`IPR2018-00386 (Patent No. 9,490,411 B2)
`IPR2018-00437 (Patent No. 9,537,071 B2)
`
`present Petitioner’s obviousness arguments, in addition to Petitioner’s other
`arguments such as written description. Id. at 14:13–18, 15:18–20.
`In inter partes review proceedings, “[a]rguments must not be
`incorporated by reference from one document into another” and “combined
`documents are not permitted.” 37 C.F.R. § 42.6(a)(3). Although there is no
`bright line for determining what constitutes an incorporation by reference,
`the practice of citing a declaration “to support conclusory statements that are
`not otherwise supported in [a document] amounts to incorporation by
`reference.” Cisco Sys., Inc. v. C-Cation Techs., LLC, Case IPR2014–00454,
`slip op. at 10 (PTAB Aug. 29, 2014) (Paper 12) (informative).
`Although at this stage in the proceeding we have not evaluated the
`substance or adequacy of Petitioner’s obviousness arguments, we are not
`persuaded that a motion to strike would be appropriate in this case. Rather
`than expending the parties’ and the Board’s resources on a motion to strike,
`the Board will consider whether particular arguments and citations amount
`to incorporation by reference as it weighs arguments and evidence as part of
`a final written decision. We deny Patent Owner’s request for authorization
`to file a motion to strike.
`
`Petitioner’s Request for a Sur-Reply Re: Patent Owner’s Motion to Amend
`Petitioner requests authorization to file a sur-reply in response to the
`Reply to Petitioner’s Opposition to Patent Owner’s Contingent Motion to
`Amend Claims (Paper 34). Patent Owner does not oppose this request.
`Similar to the discussion above and consistent with the Trial Practice Guide,
`we grant Petitioner’s request for authorization to file a sur-reply to Patent
`
`5
`
`
`
`
`IPR2018-00386 (Patent No. 9,490,411 B2)
`IPR2018-00437 (Patent No. 9,537,071 B2)
`
`Owner’s Reply regarding the Contingent Motion to Amend Claims (Paper
`34).
`
`
`
`V. ORDER
`In view of the foregoing, it is hereby:
`ORDERED that Patent Owner is authorized to file a sur-reply not to
`exceed five pages in response to Petitioner’s Reply to Patent Owner’s
`Response in each of the proceedings by January 29, 2019;
`FURTHER ORDERED that Petitioner’s request for authorization to
`file a sur-sur-reply to Patent Owner’s sur-reply is DENIED without
`prejudice;
`FURTHER ORDERED that Petitioner’s request for authorization to
`file a motion to strike portions of Petitioner’s Opposition to Patent Owner’s
`Contingent Motion to Amend Claims is DENIED;
`FURTHER ORDERED that Petitioner is authorized to file a sur-reply
`not to exceed five pages in response to the Reply to Petitioner’s Opposition
`to Patent Owner’s Contingent Motion to Amend Claims by February 12,
`2019; and
`FURTHER ORDERED that the parties shall upload a copy of the
`transcript from the January 17, 2019 telephone conference as an exhibit in
`IPR2018-00437.
`
`
`
`
`
`
`
`6
`
`
`
`
`IPR2018-00386 (Patent No. 9,490,411 B2)
`IPR2018-00437 (Patent No. 9,537,071 B2)
`
`PETITIONER:
`Gabrielle E. Higgins
`James L. Davis, Jr.
`Christopher M. Bonny
`James F. Mack
`Scott McKeown
`ROPES & GRAY LLP
`gabrielle.higgins@ropesgray.com
`James.L.Davis@ropesgray.com
`Christopher.Bonny@ropesgray.com
`James.Mack@ropesgray.com
`Scott.McKeown@ropesgray.com
`VIZIO2NichiaIPRs@ropesgray.com
`
`
`PATENT OWNER:
`Martin Zoltick
`Michael Jones
`Mark Rawls
`Robert P. Parker
`Derek F. Dahlgren
`mzoltick@rfem.com
`mjones@rfem.com
`mrawls@rfem.com
`rparker@rfem.com
`ddahlgren@rfem.com
`
`
`7
`
`
`
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