Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper No. 29
`Entered: November 13, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`VIZIO, INC.,
`Petitioner,
`
`v.
`
`NICHIA CORP.,
`Patent Owner.
`____________
`
`Case IPR2018-00437
`Patent 9,537,071 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, WILLIAM V. SAINDON, and NATHAN A.
`ENGELS, Administrative Patent Judges.
`
`SAINDON, Administrative Patent Judge.
`
`
`
`ORDER
`Denying Patent Owner’s Request to File Certain Documents
`Denying Petitioner’s Request for Additional Pages in a Response
`37 C.F.R. § 42.5
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper No. 29
`Entered: November 13, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`VIZIO, INC.,
`Petitioner,
`
`v.
`
`NICHIA CORP.,
`Patent Owner.
`____________
`
`Case IPR2018-00437
`Patent 9,537,071 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, WILLIAM V. SAINDON, and NATHAN A.
`ENGELS, Administrative Patent Judges.
`
`SAINDON, Administrative Patent Judge.
`
`
`
`ORDER
`Denying Patent Owner’s Request to File Certain Documents
`Denying Petitioner’s Request for Additional Pages in a Response
`37 C.F.R. § 42.5
`
`
`
`IPR2018-00437
`Patent 9,537,071 B2
`
`
`On November 7, 2018, a conference call was held to discuss two
`issues raised by the parties. A court reporter was present on the call and
`Petitioner was instructed to file the transcript as an exhibit.
`1.
`First was Patent Owner’s request for guidance regarding submission
`of Information Disclosure Statements (IDS) filed in various patent
`applications, as well as Petitioner’s invalidity contentions from the co-
`pending district court litigation. Patent Owner stated its desire to file that
`information as part of its effort to comply with its duty of candor under 37
`C.F.R. § 42.11(a) in view of its Contingent Motion to Amend. During the
`call, Patent Owner represented that the various references cited in the IDSs
`and the contentions were not material to the patentability of the proposed
`substitute claims. Patent Owner provided a copy of these documents to
`Petitioner.
`The facts relating to Patent Owner’s request here are similar to those
`found in MLB Advanced Media, L.P., v. Front Row Techs., LLC, IPR2017-
`01127, Paper 24 (PTAB Jan. 16, 2018) (non-precedential). There, the patent
`owner was also concerned about its duty of candor under Rule 42.11(a) and
`analogized its request to submit an extensive list of exhibits as analogous to
`submitting an IDS during prosecution. MLB, Paper 24, 6. As the panel in
`MLB found, and with which we agree:
`During examination, . . . 37 C.F.R. § 1.56(a) only
`imposes “a duty to disclose to the Office all
`information known to [an individual associated with
`the filing and prosecution of a patent application] to
`be material to patentability . . . . There is no duty to
`submit information which is not material to the
`patentability of any existing claim.”
`
`2
`
`
`
`IPR2018-00437
`Patent 9,537,071 B2
`
`Id. Because Patent Owner here represents that the various items are not
`material to patentability, we hold that there is no reason to enter them into
`the record at this time. Accordingly, to the extent Patent Owner’s request
`for guidance is a request to file the IDSs and invalidity contentions, that
`request is denied.
`
`2.
`The second issue raised during the call was Petitioner’s request for 25
`additional pages or, in the alternative, a total of 10,000 words, for its
`opposition to Patent Owner’s Contingent Motion to Amend. Petitioner
`argued that the additional pages were necessary due to the number of
`proposed amendments and potential challenges to those amendments under
`35 U.S.C. §§ 103 and 112. Petitioner represented that it had begun drafting
`its opposition and that it did not see how it would be able to comply with the
`default 25 page limit. Petitioner also directed our attention to Westinghouse
`Air Brake Tech. Corp. v. Siemens Industry, Inc, IPR2017-00580, Paper 25
`(PTAB Jan. 18, 2018), which it believed represented a similar situation and
`where the Board granted a 10,000 word response.
`In Westinghouse, the Board granted a petitioner 10,000 words to
`oppose to a contingent motion to amend. Westinghouse, Paper 24, 3. The
`Board noted that the patent owner in that proceeding submitted two sets of
`substitute claims, that 35 U.S.C. § 101 was at issue, and that there was
`additional prior art in related petitions. Id. at 2. The Board also took into
`consideration the fact that Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed.
`Cir. 2017), had recently issued.
`In the present case, however, we do not have two alternative sets of
`substitute claims, and Petitioner did not raise the issue of § 101. Further,
`
`3
`
`
`
`IPR2018-00437
`Patent 9,537,071 B2
`
`since Westinghouse, we are not aware of any other Board panel granting a
`contested request for additional pages for an opposition to a contingent
`motion to amend. Indeed, our informative decision Western Digital Corp. v.
`Spex Techs., Inc., IPR2018-00082, Paper 13, 9 (PTAB Apr. 25, 2018) later
`reaffirmed the default 25 page limit of Rule 42.24(b)(3).
`Although we will waive the rule when sufficient need is shown,
`waiver should not swallow the rule. Here, we are not persuaded that there is
`anything sufficiently unusual with Patent Owner’s Motion to Amend to
`justify such a significant increase in pages. Patent Owner proposes to amend
`eight claims; three of which (claims 29, 32, and 34) are essentially changing
`the claim’s dependency; and one of which merely changes a single word
`(claim 33). The remainder share many of the same amendments, and we are
`not apprised of any particularly unusual issue presented by the proposed
`amendments. Likewise, we do not view Petitioner’s argument that it bears
`the burden on the motion persuasive; prior to Aqua Products, patent owners
`faced the same 25-page default limit to meet their burden. Our Western
`Digital decision reaffirmed the default page limit after Aqua Products.
`Accordingly, Petitioner’s present request for 10,000 total words or 25
`additional pages is denied.
`It is so ORDERED.
`
`
`
`
`
`
`4
`
`
`
`IPR2018-00437
`Patent 9,537,071 B2
`
`For PETITIONER:
`
`Gabrielle E. Higgins
`Kathryn N. Hong
`ROPES & GRAY LLP
`Gabrielle.Higgins@ropesgray.com
`Kathryn.Hong@ropesgray.com
`
`For PATENT OWNER:
`
`Martin Zoltick
`Michael Jones
`Mark Rawls
`ROTHWELLL, FIGG, ERNST & MANBECK, P.C.
`mzoltick@rfem.com
`mjones@rfem.com
`mrawls@rfem.com
`
`
`5
`
`
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