Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 19
`Entered: December 11, 2017
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ONE WORLD TECHNOLOGIES, INC.
`d/b/a TECHTRONIC INDUSTRIES POWER EQUIPMENT,
`Petitioner,
`
`v.
`
`THE CHAMBERLAIN GROUP, INC.,
`Patent Owner.
`____________
`
`Cases IPR2017-00073 and IPR2017-00214
`Patent 7,196,611 B21
`____________
`
`
`
`Before JONI Y. CHANG, JUSTIN T. ARBES, and JOHN F. HORVATH,
`Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`1 This Order addresses issues pertaining to both cases. Therefore, we
`exercise our discretion to issue a single Order to be filed in each case. Other
`than as expressly authorized herein, the parties are not authorized to use this
`style heading for any subsequent papers.
`
`
`571-272-7822
`
`
`
`
`Paper 19
`Entered: December 11, 2017
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ONE WORLD TECHNOLOGIES, INC.
`d/b/a TECHTRONIC INDUSTRIES POWER EQUIPMENT,
`Petitioner,
`
`v.
`
`THE CHAMBERLAIN GROUP, INC.,
`Patent Owner.
`____________
`
`Cases IPR2017-00073 and IPR2017-00214
`Patent 7,196,611 B21
`____________
`
`
`
`Before JONI Y. CHANG, JUSTIN T. ARBES, and JOHN F. HORVATH,
`Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`1 This Order addresses issues pertaining to both cases. Therefore, we
`exercise our discretion to issue a single Order to be filed in each case. Other
`than as expressly authorized herein, the parties are not authorized to use this
`style heading for any subsequent papers.
`
`
`
`IPR2017-00073 (Patent 7,196,611 B2)
`IPR2017-00214 (Patent 7,196,611 B2)
`
`
`A conference call in the above proceedings was held on December 7,
`2017, among respective counsel for Petitioner and Patent Owner, and Judges
`Chang, Arbes, and Horvath. The purpose of the call was to discuss Patent
`Owner’s request for authorization to file a motion to strike Petitioner’s
`Reply and accompanying declaration in each proceeding2 or, if such a
`motion is not authorized, to file a list of allegedly improper new arguments
`presented in each Reply, consistent with the practice outlined in Silicon
`Labs., Inc. v. Cresta Tech. Corp., Case IPR2015-00615 (PTAB Feb. 29,
`2016) (Paper 26).
`“A reply may only respond to arguments raised in the corresponding
`. . . patent owner response.” 37 C.F.R. § 42.23(b); see Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48,756, 48,763–48,767 (Aug. 14, 2012) (“The
`petition lays out the petitioner’s grounds for review and supporting evidence,
`on a claim-by-claim basis, for instituting the requested proceeding. . . .
`While replies can help crystalize issues for decision, a reply that . . .
`belatedly presents evidence will not be considered and may be returned. . . .
`Examples of indications that a new issue has been raised in a reply include
`new evidence necessary to make out a prima facie case for the patentability
`or unpatentability of an original or proposed substitute claim, and new
`evidence that could have been presented in a prior filing.”).
`Patent Owner argued during the call that Petitioner’s Replies contain
`numerous improper new arguments. For example, Patent Owner asserted
`that Petitioner’s arguments in both cases regarding “interrupts” constitute a
`new theory of unpatentability, as Petitioner never mentioned “interrupts” in
`
`
`2 See IPR2017-00073, Paper 17 (“-73 Reply”), Ex. 1014; IPR2017-00214,
`Paper 17 (“-214 Reply”), Ex. 1011.
`
`
`
`2
`
`
`
`IPR2017-00073 (Patent 7,196,611 B2)
`IPR2017-00214 (Patent 7,196,611 B2)
`
`its Petitions. See -73 Reply 18–19; -214 Reply 25–26. Petitioner responded
`that its arguments are proper because they show that Patent Owner’s
`contentions regarding the operation of the cited assembly source code are
`factually incorrect. See, e.g., -73 Reply 18 (citing IPR2017-00073,
`Paper 13, 13, 15). Likewise, Patent Owner asserted that Petitioner’s
`arguments regarding “[a]dditional [m]echanisms” identified in the Schindler
`reference constitute a new theory as to how the claim limitations allegedly
`are taught by the prior art. See -214 Reply 26–27. Petitioner stated that its
`arguments are proper because they respond to Patent Owner’s contention
`that Petitioner “failed to identify” sufficient disclosure in Schindler for
`certain limitations. See, e.g., IPR2017-00214, Paper 13, 6–7. We took the
`matter under advisement.
`After further consideration and review of the parties’ papers, we are
`not persuaded that a motion to strike each Reply and accompanying
`declaration would be appropriate under the circumstances. A motion to
`strike is not, ordinarily, a proper mechanism for raising the issue of whether
`a reply or reply evidence is beyond the proper scope permitted under the
`rules. In the absence of special circumstance, we determine whether a reply
`and supporting evidence contain material exceeding the proper scope when
`we review all of the pertinent papers and prepare the final written decision.
`We may exclude all or portions of Petitioner’s Replies and declarations, or
`decline to consider any improper argument and related evidence, at that
`time.
`
`To assist with that determination, however, we will authorize the
`parties to provide certain information in writing. Specifically, Patent Owner
`is authorized to file, in each proceeding, a paper in the form of a list
`
`
`
`3
`
`
`
`IPR2017-00073 (Patent 7,196,611 B2)
`IPR2017-00214 (Patent 7,196,611 B2)
`
`providing the location and a concise description of any portion of
`Petitioner’s Reply that Patent Owner believes constitutes improper new
`argument. The paper may not exceed three pages and may not contain
`substantive argument. Petitioner is authorized to file, in each proceeding,
`a response, itemized to correspond to Patent Owner’s paper, identifying
`where the challenged argument was made in the Petition and/or what
`material contained in Patent Owner’s Response triggered or caused
`Petitioner to include in its Reply each item listed by Patent Owner.
`Petitioner’s response may not exceed three pages and may not contain
`substantive argument. Finally, should either party request a hearing, the
`parties may address the issue of the propriety of Petitioner’s Reply
`arguments and evidence during oral argument.
`In consideration of the foregoing, it is hereby:
`ORDERED that Patent Owner is not authorized to file a motion to
`strike Petitioner’s Reply and declaration in each of the instant proceedings;
`FURTHER ORDERED that Patent Owner is authorized to file, in
`each of the instant proceedings, a list of arguments as explained herein,
`limited to three pages, by December 15, 2017; and
`FURTHER ORDERED that Petitioner is authorized to file, in each of
`the instant proceedings, a response to Patent Owner’s submission as
`explained herein, limited to three pages, by December 22, 2017.
`
`
`
`4
`
`
`
`IPR2017-00073 (Patent 7,196,611 B2)
`IPR2017-00214 (Patent 7,196,611 B2)
`
`PETITIONER:
`
`Dion M. Bregman
`Jason C. White
`Michael J. Lyons
`Ahren C. Hsu-Hoffman
`Alexander B. Stein
`MORGAN, LEWIS & BOCKIUS LLP
`dion.bregman@morganlewis.com
`jason.white@morganlewis.com
`ahren.hsu-hoffman@morganlewis.com
`michael.lyons@morganlewis.com
`alexander.stein@morganlewis.com
`
`
`PATENT OWNER:
`
`W. Karl Renner
`Jeremy J. Monaldo
`Joshua A. Griswold
`Dan Smith
`Jack R. Wilson IV
`Katherine Lutton
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`jjm@fr.com
`griswold@fr.com
`dsmith@fr.com
`jwilson@fr.com
`lutton@fr.com
`
`
`
`
`
`
`5
`
`
`
`
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