Paper 22
`Date: July 3, 2014
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`Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`INTERNATIONAL BUSINESS MACHINES CORPORATION
`Petitioner,
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`v.
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`INTELLECTUAL VENTURES II LLC
`Patent Owner.
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`____________
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`Case IPR2014-00180
`Patent 7,634,666
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`Before DAVID C. McKONE, JAMES A. TARTAL, and MIRIAM L. QUINN,
`Administrative Patent Judges.
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`QUINN, Administrative Patent Judge.
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`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
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`IPR2014-00180
`Patent 7,634,666
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`On July 2, 2014, we held a conference call between respective counsel for
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`Petitioner and Patent Owner, and Judges Quinn, Tartal, and McKone. Petitioner
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`requested the call to request authorization for a motion to file additional
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`information under 37 C.F.R. § 42.123(b). A court reporter was present. Patent
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`Owner also sought to conference with the panel regarding the filing of a motion to
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`amend. Because it is expected that a transcript of the conference call will be filed
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`as an exhibit, this order summarizes the rulings of the panel and sets forth the
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`procedure to follow in contacting the Board, if the need arises during this trial.
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`A. MOTION TO FILE SUPPLEMENTAL INFORMATION
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`Petitioner seeks authorization to file a transcript of a named inventor,
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`Dr. Chang, because, according to Petitioner, the testimony would be instructive as
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`to the operation of the patent-at-issue and as to claim construction and because the
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`testimony reveals statements inconsistent with positions taken by Patent Owner in
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`the Preliminary Response. Because the testimony is sought to be introduced more
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`than one month after institution of trial, Petitioner further argued that it could not
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`have been reasonably obtained earlier. Patent Owner objected to the filing of the
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`testimony questioning the “remote” relevance that inventor testimony would have
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`on any claim for which trial has been instituted.
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`After consideration of the parties’ arguments and contentions, we denied
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`Petitioner’s request because we were unpersuaded by the argument that the
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`inventor testimony is relevant to a claim for which trial has been instituted.
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`Specifically, the general relevancy of an inventor’s testimony regarding the
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`operation of the invention has little relevance to our proceedings. The possibility
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`that it might be useful in understanding the invention is not significant enough to
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`show that consideration of the information would be in the interests of justice to
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`allow additional testimony on issues already developed by Petitioner on the record.
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`IPR2014-00180
`Patent 7,634,666
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`No argument presented demonstrated a need for the inventor testimony. Indeed,
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`the plea for its submission focused on its utility to the panel’s understanding of the
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`technology or assistance in claim construction, a utility that seems generic in
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`nature and untethered to any specific claim for which trial has been instituted.
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`Furthermore, at this stage of the proceeding, when Patent Owner has not filed yet
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`its Response, we find unpersuasive the argument that the inventor testimony is
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`offered as evidence of Patent Owner’s inconsistent statements made in the
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`preliminary response. A Patent Owner’s Response—not the preliminary
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`response—is the brief controlling the positions of Patent Owner during trial.
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`To alleviate the concerns Petitioner demonstrated regarding our denial of the
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`request to file the inventor testimony, we advised that in its reply, Petitioner may
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`have an opportunity to respond to any argument made in the Patent Owner
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`Response. Petitioner should point out how the evidence is responsive to any such
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`argument by Patent Owner. Attempting to introduce evidence in a reply without
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`anchoring that evidence to a responsive argument increases the risk that the panel
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`may disregard portions or all of the reply. It is premature, at this juncture, to reach
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`a decision on whether the inventor testimony would be allowable in a reply
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`because Patent Owner has not filed its response.
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`Accordingly, Petitioner’s request for authorization to file supplemental
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`information under 37 C.F.R. § 42.123 (b) is denied.
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`IPR2014-00180
`Patent 7,634,666
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`B. PATENT OWNER MOTION TO AMEND
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`Patent Owner sought to confer with the panel regarding its intent to file a
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`contingent motion to amend. After a brief discussion concerning the form and
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`substance of the proposed substitute claims and the evidence that must be included
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`in such a motion, the panel found the conference requirement satisfied and
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`authorized the filing of the motion to amend.
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`C. MISCELLANEOUS
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`During the call, the panel raised the concern that the parties did not seem to
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`be coordinating their efforts to contact the Board in an appropriate manner. Patent
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`Owner argued it had not had the opportunity to consider the specific testimony
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`sought to be filed before the Board was contacted by Petitioner. If the situation
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`arises in the future, the following procedure for contacting the Board should be
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`followed:
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`1) Before contacting the Board, the parties shall identify to each other, with
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`specificity and clarity, the document, testimony, or other matter,
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`including the precise portion thereof, that is in dispute.
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`2) The parties shall meet and confer to address the specifically identified
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`issues and shall each weigh the merits and reasonableness of the
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`contentions at issue and the possibility of a compromise.
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`3) Jointly, the parties shall contact the Board at trials@uspto.gov to identify
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`to the Board the dispute and certify that the parties reasonably conferred
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`on the matter in an attempt to resolve the issue.
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`4) Jointly, the parties shall indicate several dates/times during which the
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`parties would be available for a conference with the panel.
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`IPR2014-00180
`Patent 7,634,666
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`5) The parties shall be prepared to discuss the attempts made to resolve the
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`dispute, the authorization requested from the Board, and the basis for the
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`request.
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`The parties are reminded that our mission is to conduct the just, speedy, and
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`inexpensive resolution of the trial. We seek the parties’ cooperation in respecting
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`that mission and following the Board procedures.
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`It is
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`Order
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`ORDERED that Patent Owner has conferred regarding the filing of a motion
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`to amend in satisfaction of 37 C.F.R. § 42.221(a);
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`FURTHER ORDERED that Petitioner’s request for authorization to file
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`supplemental information under 37 C.F.R. § 42.123(b) is denied; and
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`FURTHER ORDERED that the parties shall follow the procedure for
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`contacting the Board outlined in this decision.
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`IPR2014-00180
`Patent 7,634,666
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`PETITIONER:
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`Kenneth R. Adamo
`Eugene Goryunov
`KIRKLAND & ELLIS LLP
`kenneth.adamo@kirkland.com
`eugene.goryunov@kirkland.com
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`PATENT OWNER:
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`Herbert D. Hart III
`Jonathan R. Sick
`Peter J. McAndrews
`MCANDREWS, HELD & MALLOY, LTD.
`hhart@mcandrews-ip.com
`jsick@mcandrews-ip.com
`pmcandrews@mcandrews-ip.com
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