Trials@uspto.gov
`Tel: 571-272-7822
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`
`
`Paper 60
`Entered: February 4, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.
`Petitioner
`
`v.
`
`ACHATES REFERENCE PUBLISHING, INC.
`Patent Owner
`____________
`
`Case IPR2013-00080 (Patent 6,173,403)
`Case IPR2013-00081 (Patent 5,982,889)1
`
`
`Before HOWARD B. BLANKENSHIP, JUSTIN T. ARBES, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`1 This Order addresses an issue pertaining to both cases. Therefore, we
`exercise our discretion to issue one Order to be filed in each case. The
`parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`Tel: 571-272-7822
`
`
`
`Paper 60
`Entered: February 4, 2014
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.
`Petitioner
`
`v.
`
`ACHATES REFERENCE PUBLISHING, INC.
`Patent Owner
`____________
`
`Case IPR2013-00080 (Patent 6,173,403)
`Case IPR2013-00081 (Patent 5,982,889)1
`
`
`Before HOWARD B. BLANKENSHIP, JUSTIN T. ARBES, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`1 This Order addresses an issue pertaining to both cases. Therefore, we
`exercise our discretion to issue one Order to be filed in each case. The
`parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`
`Case IPR2013-00080 (Patent 6,173,403)
`Case IPR2013-00081 (Patent 5,982,889)
`
`
`
`
`A conference call in the above proceedings was held on February 3,
`
`2014 between respective counsel for Petitioner and Patent Owner, and
`
`Judges Blankenship, Arbes, and Anderson. Petitioner requested the call to
`
`address the motions to exclude filed by Patent Owner in the proceedings.
`
`See IPR2013-00080, Paper 65 (“Mot.”); IPR2013-00081, Paper 57.2
`
`Petitioner has not yet filed oppositions to the motions.
`
`During the call, Petitioner argued that the motions to exclude were
`
`improper and should be stricken because (1) Patent Owner did not identify
`
`where in the record objections were made to the evidence sought to be
`
`excluded under 37 C.F.R. § 42.64(c), (2) the motions contain new arguments
`
`and are not directed solely to the admissibility of evidence, and (3) Patent
`
`Owner improperly submitted nine new exhibits with its motion in Case
`
`IPR2013-00080 (Exhibits 2039-2047). Patent Owner responded that
`
`Petitioner’s arguments are premature because briefing on the motions has
`
`not been completed. Patent Owner also argued that its motions properly
`
`assert that evidence submitted by Petitioner is inadmissible because
`
`Petitioner mischaracterizes certain testimony in the record, and that Patent
`
`Owner should be permitted to submit new evidence for the purpose of
`
`showing that other evidence is inadmissible.
`
`As explained during the call, apart from one issue discussed below,
`
`we agree with Patent Owner that Petitioner’s arguments are premature. The
`
`usual procedure, as contemplated by the Scheduling Order in the instant
`
`proceedings, is for a party to file a motion to exclude, the opposing party to
`
`file an opposition, and the moving party to file a reply. The Board then
`
`
`2 A court reporter was present on the call. The parties shall file the transcript
`of the call as an exhibit in the instant proceedings.
`
`
`
`2
`
`
`
`Case IPR2013-00080 (Patent 6,173,403)
`Case IPR2013-00081 (Patent 5,982,889)
`
`decides the motion to exclude when the Board reviews all of the pertinent
`
`
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`papers and prepares a final written decision. Petitioner has not shown a
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`sufficient reason for departing from that procedure with respect to all of the
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`issues presented by the motions except one.
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`One of Patent Owner’s newly submitted exhibits in Case
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`IPR2013-00080 is a new, seven-page declaration from Dr. Xin Wang
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`(Exhibit 2045). During the call, the Board questioned Patent Owner as to
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`why the declaration was appropriate in the context of a motion to exclude
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`evidence submitted by Petitioner. Patent Owner responded that Dr. Wang’s
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`testimony was necessary to explain why two statements in Petitioner’s reply
`
`are incorrect. First, Patent Owner moved to exclude two exhibits submitted
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`by Petitioner regarding Windows XP, and argued in its motion that
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`Petitioner misrepresented the exhibits in its reply by asserting that Windows
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`XP installer software was in widespread commercial use “by February of
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`1997.” See Mot. 9-11. Petitioner acknowledged during the call that its
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`statement regarding February 1997 was incorrect. Thus, there is no dispute
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`as to the timing of Windows XP and no need for declarant testimony on the
`
`issue. Second, Patent Owner moved to exclude certain testimony regarding
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`U.S. Patent No. 5,933,497 (“Beetcher”), again citing an alleged
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`misrepresentation of the record in Petitioner’s reply. See Mot. 11-14. Upon
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`further inquiry, however, Patent Owner acknowledged that the factual issue
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`regarding Beetcher could be explained sufficiently in the motion itself
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`without the need for declarant testimony. Therefore, based on the parties’
`
`representations during the call, declarant testimony is unnecessary on both
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`points raised by Patent Owner.
`
`
`
`3
`
`
`
`Case IPR2013-00080 (Patent 6,173,403)
`Case IPR2013-00081 (Patent 5,982,889)
`
`
`
`
`Moreover, regardless of the purported need for new declarant
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`testimony, we are not persuaded that the declaration is appropriate under the
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`circumstances. Although Patent Owner characterizes Dr. Wang’s
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`declaration as being offered only to show the inadmissibility of other
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`evidence submitted by Petitioner, it is not so limited. Rather, Dr. Wang
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`makes factual statements directly responding to arguments made by
`
`Petitioner. A motion to exclude, however, is not an opportunity to file a
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`sur-reply. See 37 C.F.R. § 42.64(c); Office Patent Trial Practice Guide,
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`77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012) (“A motion to exclude must
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`explain why the evidence is not admissible (e.g., relevance or hearsay) but
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`may not be used to challenge the sufficiency of the evidence to prove a
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`particular fact.”). The late stage of these proceedings, and the Board’s need
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`to complete them in a timely manner, also weighs against permitting new
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`declarant testimony in connection with Patent Owner’s motion. As
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`explained during the call, Dr. Wang’s declaration will be expunged and
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`Patent Owner may re-file its motion to exclude without reference to the
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`declaration.
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`In consideration of the foregoing, it is hereby:
`
`ORDERED that Exhibit 2045 is expunged from the record of Case
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`IPR2013-00080;
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`FURTHER ORDERED that Patent Owner’s motion to exclude in
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`Case IPR2013-00080 (Paper 65) is considered withdrawn, and Patent Owner
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`may re-file its motion to exclude, without reference to Exhibit 2045, by
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`February 4, 2014; and
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`FURTHER ORDERED that Petitioner may file an opposition to the
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`re-filed motion to exclude by February 6, 2014.
`
`
`
`4
`
`
`
`
`
`Case IPR2013-00080 (Patent 6,173,403)
`Case IPR2013-00081 (Patent 5,982,889)
`
`PETITIONER:
`
`Jeffrey P. Kushan
`Joseph A. Micallef
`SIDLEY AUSTIN LLP
`jkushan@sidley.com
`
`
`PATENT OWNER:
`
`Brad D. Pedersen
`PATTERSON THUENTE PEDERSEN, P.A.
`prps@ptslaw.com
`
`Jason Paul DeMont
`KAPLAN BREYER SCHWARTZ & OTTESEN
`jpdemont@kbsolaw.com
`
`
`
`
`
`5
`
`
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