`571-272-7822
`
`Paper 49
`Entered: May 2, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ARKEMA INC. and ARKEMA FRANCE,
`Petitioner,
`
`v.
`
`HONEYWELL INTERNATIONAL INC.,
`Patent Owner.
`____________
`
`Case PGR2016-00011
`Patent 9,157,017 B2
`____________
`
`
`Before MICHAEL P. TIERNEY, GRACE KARAFFA OBERMANN, Vice
`Chief Administrative Patent Judges, and MICHELLE N. ANKENBRAND,
`Administrative Patent Judge.
`
`ANKENBRAND, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`PGR2016-00011
`Patent 9,157,017 B2
`
`
`On May 1, 2017, a conference call was held between counsel for the
`parties and Judges Ankenbrand, Tierney, and Obermann. Petitioner
`requested the call to ask the Board to expunge Exhibits 2165 and 2166, filed
`with Patent Owner’s Opposition to Petitioner’s Motion to Exclude or,
`alternatively, to request leave to file either a motion to strike or a motion to
`exclude those exhibits.
`Petitioner argued that Exhibits 2165 and 2166 are unauthorized
`exhibits that the Board should expunge pursuant to 37 C.F.R. § 42.7. In
`particular, Petitioner asserted that, at best, Exhibits 2165 and 2166 are
`supplemental evidence to support the admissibility of Exhibit 2103, but that
`Patent Owner did not timely serve those exhibits in response to Petitioner’s
`objections to Exhibit 2103. In that regard, Petitioner noted that its
`objections to Exhibit 2103 were filed on December 22, 2016, but that Patent
`Owner did not serve Exhibits 2165 and 2166 until it filed an opposition to
`Petitioner’s Motion to Exclude, on April 17, 2017—more than three months
`late. See 37 C.F.R. § 42.64(b)(2) (providing that supplemental evidence
`must be served “within ten business days of service of the objection”).
`Patent Owner responded that Petitioner’s objections did not identify
`the grounds for the objection to Exhibit 2103 with sufficient particularity
`under 37 C.F.R. § 42.64(b)(1), and that Petitioner’s Motion to Exclude was
`the first time Petitioner detailed its objections to Exhibit 2103. Patent
`Owner stated that it served Exhibits 2165 and 2166 in response to the more
`detailed explanations set forth in Petitioner’s Motion to Exclude. Thus,
`Patent Owner argued that if Exhibits 2165 and 2166 are viewed as
`supplemental evidence, they are timely based on the April 3, 2017 filing date
`of Petitioner’s Motion to Exclude.
`
`2
`
`
`
`PGR2016-00011
`Patent 9,157,017 B2
`
`
`After considering the arguments raised by the parties, as well as the
`facts and circumstances of this case, we declined to expunge Exhibits 2165
`and 2166 at the present time. We did, however, authorize Petitioner to file
`an additional motion to exclude addressing the admissibility of Exhibits
`2165 and 2166. We also authorized Patent Owner to file a response to the
`motion, and Petitioner to file a reply. We ordered briefing on the motion as
`follows: Petitioner’s motion is limited to four (4) pages and shall be filed no
`later than close of business (5 pm EST) on Thursday, May 4, 2017; Patent
`Owner’s response is limited to four (4) pages and shall be filed no later than
`close of business (5 pm EST) on Tuesday, May 9, 2017; and Petitioner’s
`reply is limited to two (2) pages and shall be filed no later than close of
`business (5 pm EST) on Thursday, May 11, 2017.
`Accordingly, it is
`
`
`ORDERED that parties are authorized to file the above-discussed
`papers addressing the admissibility of Exhibits 2165 and 2166 in accordance
`with the requirements and deadlines set forth herein.
`
`3
`
`
`
`PGR2016-00011
`Patent 9,157,017 B2
`
`
`FOR PETITIONER:
`Mark D. Sweet
`Mark J. Feldstein
`Erin M. Sommers
`Charles W. Mitchell
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, L.L.P.
`mark.sweet@finnegan.com
`mark.feldstein@finnegan.com
`erin.sommers@finnegan.com
`charles.mitchell@finnegan.com
`
`
`
`FOR PATENT OWNER:
`Gregg F. LoCascio
`Eugene Goryunov
`Noah Frank
`KIRKLAND & ELLIS LLP
`glocascio@kirkland.com
`egoryunov@kirkland.com
`noah.frank@kirkland.com
`
`4
`
`
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