`571.272.7822
`
`Paper No. 43
`
` Filed: September 25, 2017
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`HAMAMATSU CORPORATION
`Petitioner,
`
`v.
`
`SIONYX, LLC
`Patent Owner.
`_______________
`
`Case IPR2016-01910
`Patent 8,680,591 B2
`_______________
`
`
`
`
`Before GEORGIANNA W. BRADEN, MATTHEW R. CLEMENTS, and
`MONICA S. ULLAGADDI, Administrative Patent Judges.
`
`ULLAGADDI, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`IPR2016-01910
`Patent 8,680,591 B2
`
`
`On September 22, 2017, a conference call was held between counsel
`for Patent Owner, counsel for Petitioner, and Judges Braden, Clements, and
`Ullagaddi. Patent Owner requested the conference call to seek authorization
`to file a motion to submit supplemental information, namely, a Claim
`Construction Order issued in a related district court litigation, SiOnyx LLC,
`et al. v. Hamamatsu Photonics K.K., et al., 1:2015-cv-13488 (D. Mass.).
`Petitioner did not oppose the request. Upon considering Patent Owner’s
`arguments, we authorized Patent Owner to file the Claim Construction Order
`from the related district court proceeding.
`Pursuant to 37 C.F.R. § 42.123(b), a movant “must show why the
`supplemental information reasonably could not have been obtained earlier,
`and that consideration of the supplemental information would be in the
`interests-of-justice.” Patent Owner indicated that it became aware of the
`Claim Construction Order on September 8, 2017, a week before Patent
`Owner requested the conference call. Patent Owner further indicated that
`the Claim Construction Order addresses at least one claim construction issue
`that is relevant to the claims at issue in the present inter partes review
`proceeding. For these reasons, we are persuaded that Patent Owner has
`shown sufficiently that the request is timely and in the interests-of-justice.
`We further note that Patent Owner met and conferred with Petitioner,
`who indicated that it would not oppose Patent Owner’s submission of the
`Claim Construction Order as long as it is submitted without comment.
`Accordingly, Patent Owner is authorized to file the Claim Construction
`Order, but is not authorized to file any other listings, papers, or exhibits
`containing arguments.
`
`It is so ORDERED.
`
`
`
`2
`
`
`
`IPR2016-01910
`Patent 8,680,591 B2
`
`
`FOR PETITIONER:
`
`John D. Simmons
`Stephen E. Murray
`Keith A. Jones
`SCHWARZE BELISARIO & NADEL LLP
`jsimmons@panitchlaw.com
`smurray@panitchlaw.com
`kjones@panitchlaw.com
`uspto@panitchlaw.com
`
`
`FOR PATENT OWNER:
`
`Thomas J. Engellenner
`Reza Mollaaghababa
`PEPPER HAMILTON LLP
`engellennert@pepperlaw.com
`mollaaghababar@pepperlaw.com
`
`
`
`
`
`3
`
`