`
`
`
`Trials@uspto.gov
`Tel: 571.272.7822
`
`
`Paper 25
`Entered: August 2, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CANON INC., CANON U.S.A., INC.,
`CANON FINANCIAL SERVICES, INC., FUJIFILM CORPORATION,
`FUJIFILM HOLDINGS AMERICA CORPORATION,
`FUJIFILM NORTH AMERICA CORPORATION, JVC KENWOOD
`CORPORATION, JVCKENWOOD USA CORPORATION,
`NIKON CORPORATION, NIKON INC., OLYMPUS CORPORATION,
`OLYMPUS AMERICA INC., PANASONIC CORPORATION,
`PANASONIC CORPORATION OF NORTH AMERICA,
`SAMSUNG ELECTRONICS CO., LTD., and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`v.
`PAPST LICENSING GMBH & CO. KG,
`Patent Owner.
`____________
`
`Cases IPR2016-01211 (Patent 8,504,746 B2),
`IPR2016-01213 (Patent 8,504,746 B2),
`IPR2016-01212, IPR2016-01214, IPR2016-01216, and IPR2016-01225
`(Patent 8,966,144 B2)1
`____________
`
`Before JONI Y. CHANG, JENNIFER S. BISK, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 This Order addresses the same issues for the above-identified cases. We,
`therefore, exercise our discretion to issue one order to be filed in each case.
`
`
`
`IPR2016-01211 (Patent 8,504,746 B2)
`IPR2016-01213 (Patent 8,504,746 B2)
`IPR2016-01212, IPR2016-01214, IPR2016-01216, and IPR2016-01225
`(Patent 8,966,144 B2)
`
`
`On August 2, 2017, a conference call was held among respective
`counsel for Petitioner and Patent Owner, and Judges Chang, Bisk, and
`Quinn. Patent Owner requested the call to seek the panel’s guidance on how
`to address allegedly new arguments and supporting evidence filed with
`Petitioner’s Reply in each of the above-identified proceedings, and to seek
`clarification whether motions to exclude would be a proper mechanism.
`As we discussed during the conference call, a motion to exclude is not
`a proper mechanism to present argument that a reply and evidence filed in
`support of the reply are outside the scope of a proper reply under 37 C.F.R.
`§ 42.23(b); and we will determine whether a reply and supporting evidence
`are outside the scope of a proper reply when we review all of the parties’
`briefs and prepare the final written decision. During the conference call, we
`also noted that other panels had authorized parties to file a two-page
`itemized listing or surreply in similar situations.
`Patent Owner indicated that a two-page itemized listing would be
`sufficient for each proceeding, and requested our authorization for filing
`such a listing. Petitioner did not object to Patent Owner’s request, but also
`requested our authorization to file a two-page responsive itemized listing.
`Upon consideration of the parties’ positions, we authorized Patent
`Owner to file a paper limited to two pages, in each above-identified
`proceeding, that lists, by page and line number, the specific statements in the
`Petitioner’s Reply and evidence filed in support of the Petitoner’s Reply that
`Patent Owner deems to be beyond the proper scope of a reply. No argument
`is to be included in the contents of the submission.
`
`2
`
`
`
`IPR2016-01211 (Patent 8,504,746 B2)
`IPR2016-01213 (Patent 8,504,746 B2)
`IPR2016-01212, IPR2016-01214, IPR2016-01216, and IPR2016-01225
`(Patent 8,966,144 B2)
`
`
`We also authorized Petitioner to file a responsive paper, limited to two
`pages, in each proceeding, to provide an item-by-item response to the items
`listed in Patent Owner’s submission. Each item in Petitioner’s responsive
`paper should identify specifically the part of Patent Owner’s Response
`and/or expert declaration filed in support of Patent Owner’s Response, by
`page and line number, to which the corresponding item complained of by the
`Patent Owner is provided as a response, if indeed that is the case. Petitioner
`should also identify, by page and line number, where in the Petition or other
`previously-filed paper or exhibit specifically discusses the issue raised in
`that item. No argument is to be included in the contents of the submission.
`Accordingly, it is
`ORDERED that, in each of the above-identified proceedings, Patent
`Owner is authorized to file a two-page itemized listing, as described above,
`within five business days from the date of this Order, and
`FURTHER ORDERED that, in each of the above-identified
`proceedings, Petitioner is authorized to file a two-page responsive itemized
`listing, as described above, within five business days from the filing of
`Patent Owner’s listing.
`
`
`
`
`3
`
`
`
`IPR2016-01211 (Patent 8,504,746 B2)
`IPR2016-01213 (Patent 8,504,746 B2)
`IPR2016-01212, IPR2016-01214, IPR2016-01216, and IPR2016-01225
`(Patent 8,966,144 B2)
`
`For PETITIONER:
`
`T. Vann Pearce
`Christopher Higgins
`Christopher Siebens
`John Inge
`TVPPTABDocket@orrick.com
`0CHPTABDocket@orrick.com
`29CPTABDocket@orrick.com
`JRIPTABDocket@orrick.com
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`
`David Maiorana
`Matthew Johnson
`David Witcoff
`Marc Blackman
`dmaiorana@JonesDay.com
`mwjohnson@jonesday.com
`dlwitcoff@jonesday.com
`msblackman@jonesday.com
`JONES DAY
`
`Ahren Hsu-Hoffman
`Dion Bregman
`Chris Mizumoto
`Ahren.hsu-hoffman@morganlewis.com
`dion.bregman@morganlewis.com
`chris.mizumoto@morganlewis.com
`MORGAN, LEWIS & BOCKIUS LLP
`
`Gregory Cordrey
`gcordrey@jmbm.com
`JEFFER MANGELS BUTLER & MITCHELL LLP
`
`
`4
`
`
`
`IPR2016-01211 (Patent 8,504,746 B2)
`IPR2016-01213 (Patent 8,504,746 B2)
`IPR2016-01212, IPR2016-01214, IPR2016-01216, and IPR2016-01225
`(Patent 8,966,144 B2)
`
`
`
`Brian Rupp
`Carrie Beyer
`Nikola Colic
`Brian.Rupp@dbr.com
`Carrie.Beyer@dbr.com
`Nick.Colic@dbr.com
`DRINKR BIDDLE & REATH LLP
`
`For PATENT OWNER:
`Nicholas T. Peters
`Paul Henkelmann
`Joseph Marinelli
`ntpete@fitcheven.com
`phenkelmann@fitcheven.com
`jmarinelli@fitcheven.com
`FITCH, EVEN, TABIN & FLANNERY LLP
`
`Anthony Meola
`info@themeolafirm.com
`THE MEOLA FIRM, PLLC
`
`
`5
`
`
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