Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 6
`Date Entered: May 30, 2014
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ERICSSON INC.
`Petitioner
`
`v.
`
`INTELLECTUAL VENTURES I LLC
`Patent Owner
`____________
`
`Case IPR2014-00527
`Patent 7,496,674 B2
`____________
`
`
`
`
`Before JOSIAH C. COCKS, WILLIAM A. CAPP, DAVID C. McKONE,
`Administrative Patent Judges.
`
`
`COCKS, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`571-272-7822
`
`
`Paper No. 6
`Date Entered: May 30, 2014
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ERICSSON INC.
`Petitioner
`
`v.
`
`INTELLECTUAL VENTURES I LLC
`Patent Owner
`____________
`
`Case IPR2014-00527
`Patent 7,496,674 B2
`____________
`
`
`
`
`Before JOSIAH C. COCKS, WILLIAM A. CAPP, DAVID C. McKONE,
`Administrative Patent Judges.
`
`
`COCKS, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`Case IPR2014-00527
`Patent 7,496,674 B2
`
`
`1. Introduction
`On May 29, 2014, a conference call in IPR2014-00527, which involves
`
`U.S. Patent No. 7,496,674, was conducted between respective counsel for the
`parties and Judges Cocks, Capp, and McKone. Petitioner, Ericsson Inc.
`(“Ericsson”), was represented by Todd Baker. Patent Owner, Intellectual Ventures
`I LLC (“Intellectual Ventures”), was represented by Jonathan Sick. The call was
`requested by Intellectual Ventures to discuss potential deficiencies of the Petition
`filed by Ericsson on March 21, 2014.
`Intellectual Ventures arranged for a court reporter to be on the call.
`Intellectual Ventures must file a transcript of the call as an exhibit when available.
`
`2. Discussion
`During the call, Intellectual Ventures raised two issues in connection with
`
`perceived deficiencies of Ericsson’s Petition. First, Intellectual Ventures asserted
`that the claim charts contained in the Petition included impermissible arguments.
`Second, Intellectual Ventures urged that the margins of the claim charts did not
`comply with Board rules. At the outset, we observe that more than two months
`have passed since the filing of Ericsson’s Petition on March 21, 2014. It is not
`apparent why Intellectual Ventures did not raise its concerns as to the formatting of
`the Petition sooner. Nevertheless, we now consider the issues raised by
`Intellectual Ventures.
`
`a. Alleged Arguments in Claim Charts
`According to Intellectual Ventures, Ericsson’s Petition in IPR2014-00527
`
`runs afoul of Board rules governing document formatting, see 37 C.F.R.
`§ 42.6(a)(2)(iii), by including argument within a claim chart. As support for its
`position, Intellectual Ventures directed the panel to Paper 3 of IPR2014-00587,
`
`
`
`2
`
`
`
`Case IPR2014-00527
`Patent 7,496,674 B2
`
`which states that: “Claim charts may not include arguments, claim construction,
`statement of the law, or detailed explanations as to why a claim limitation is taught
`or rendered obvious by the prior art.” As examples of such alleged impermissible
`argument, Intellectual Ventures pointed to content of the Petition at pages 19
`and 27.
`
`We have reviewed the claim charts, including the portions of the charts
`found at page 19 and 27 of the Petition. We do not discern, however, that the
`claim charts include content that is prohibited. Although quotations from a prior
`art reference are permitted, and, in many cases, may be preferable, Board rules do
`not mandate such quotation to the exclusion of other qualified indications of how
`the prior art teaches the limitations of a claim. To that end, there is no prohibition
`on the use of a concise summary of the disclosure of a reference as an alternative
`to quotation from the reference in an element-by-element showing. That
`Ericsson’s claim charts include summary of the disclosure of the involved
`references beyond strict quotation does not, in our view, present improper content
`in the claim charts. We also do not discern that, in this case, the brief introductory
`or expository phrases that precede expression of the disclosure of a reference in
`connection with a claim element rise to the level of “argument” that must be
`excluded from a claim chart.
`
`During the call, Intellectual Ventures expressed that the relief it seeks is an
`order from the Board requiring Ericsson to re-file its Petition omitting the alleged
`argument, and a three-to-four week extension of the due date for Intellectual
`Ventures to file its Patent Owner Preliminary Response. Because we do not
`conclude that the Petition contains impermissible argument, that requested relief is
`denied.
`
`
`
`3
`
`
`
`Case IPR2014-00527
`Patent 7,496,674 B2
`
`
`b. Alleged Improper Margins
`Intellectual Ventures also contended that the claim charts of the Petition are
`
`formatted with margins that violate Board rules. Title 37 C.F.R. § 42.6(a)(2)(iv)
`specifies that the margins in a Petition “must be at least 2.5 centimeters (1 inch) on
`all sides.” Intellectual Ventures asserted that the left-hand and right-hand margins
`of the claim charts in Ericsson’s Petition are smaller than the required 1 inch.
`Ericsson did not dispute that the margins of its claim charts may not comply with
`the above-noted rule. In that regard, Ericsson expressed that the deviation from
`acceptable margins likely arose when the Petition was converted into a PDF file for
`uploading to the Board’s Patent Review Processing System (PRPS).
`
`In reviewing the Petition, it is apparent that, in some cases, the claim charts
`do not comply strictly with the requirement of 1 inch margins on all sides. So as to
`comply with Board rules, Ericsson must re-file its Petition with claim charts having
`appropriate margins. In connection with the re-filing, Ericsson shall not add any
`substantive content to the Petition. The re-filed Petition is due no later than 5 pm
`Eastern Time on Friday, June 6, 2014.
`
`3. Order
`
`It is
`
`ORDERED that Ericsson must refile its Petition with margins that comply
`
`with 37 C.F.R. § 42.6(a)(2)(iv) no later than 5 pm Eastern Time on Friday, June 6,
`2014; and
`
`FURTHER ORDERED that no extension of the due date for Intellectual
`Ventures’s Patent Owner Preliminary Response is provided. The due date for any
`such response remains July 8, 2014.
`
`
`
`
`
`4
`
`
`
`Case IPR2014-00527
`Patent 7,496,674 B2
`
`PETITIONER:
`
`Todd Baker
`CPDocketBaker@oblon.com
`
`Robert Mattson
`cpdocketmattson@oblon.com
`
`
`PATENT OWNER:
`
`Herbert Hart
`hhart@mcandrews-ip.com
`
`
`
`
`5
`
`
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