Trials@uspto.gov
`571-272-7822
`
`
` Paper 53
` Entered: May 22, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`WESTINGHOUSE AIR BRAKE TECHNOLOGIES CORPORATION
`(d/b/a WABTEC CORPORATION),
`Petitioner,
`v.
`SIEMENS INDUSTRY, INC.,
`Patent Owner.
`
`
`Case IPR2017-00580
`Patent 9,233,698 B2
`____________
`
`
`
`Before KRISTEN L. DROESCH, MEREDITH C. PETRAVICK, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`571-272-7822
`
`
` Paper 53
` Entered: May 22, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`WESTINGHOUSE AIR BRAKE TECHNOLOGIES CORPORATION
`(d/b/a WABTEC CORPORATION),
`Petitioner,
`v.
`SIEMENS INDUSTRY, INC.,
`Patent Owner.
`
`
`Case IPR2017-00580
`Patent 9,233,698 B2
`____________
`
`
`
`Before KRISTEN L. DROESCH, MEREDITH C. PETRAVICK, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`IPR2017-00580
`Patent 9,233,698 B2
`Petitioner filed a Petition requesting inter partes review of claims 1, 2,
`5, 10, 11, 14, 17 and 18 of U.S. Patent No. 9,233,698 B2 (“the ’698 Patent”).
`On July 20, 2017, the Board instituted an inter partes review of claims 1, 2,
`10, 11, 17, and 18 of the ’698 Patent, a subset of the challenged claims in the
`Petition. Paper 12, 28–29. Oral argument was held on April 17, 2018.
`Thereafter, on April 24, 2018, the Supreme Court issued its decision in SAS
`Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018) (“SAS decision”).
`Pursuant to our Order of April 27, 2018 (Paper 49), the parties
`conferred to discuss supplemental briefing and a corresponding schedule for
`supplemental briefing in light of our modification to institute review of all of
`the challenged claims presented in the Petition. A conference call was held
`on May 8, 2018 between counsel for the parties and Judges Droesch,
`Petravick, and Goodson.
`
`A. Supplemental Briefing Schedule
`Prior to the conference call, the parties submitted their proposals for a
`supplemental briefing schedule. The parties’ proposals for a supplemental
`briefing schedule is reproduced below:
`
`2
`
`
`
`IPR2017-00580
`Patent 9,233,698 B2
`
`
`
`During the conference call, counsel for the parties informed the panel
`that May 30, 2018, was the earliest availability of Petitioner’s declarant Dr.
`Pullen for a supplemental deposition. Counsel for Patent Owner further
`indicated that Patent Owner wanted to file a motion to amend to address
`newly added challenged claims 5 and 14, and may need to file a motion to
`exclude, a motion for observation, and request additional oral argument.
`
`As evidenced in the chart reproduced above, the parties’ proposals for
`a supplemental briefing schedule extend beyond the one-year period
`
`3
`
`
`
`IPR2017-00580
`Patent 9,233,698 B2
`normally available to issue a Final Written Decision, which expires on July
`20, 2018. Pursuant to 35 U.S.C. § 316(a)(11) and 37 C.F.R. § 42.100(c), the
`Chief Administrative Patent Judge determined that good cause exists to
`extend the one-year period for issuing a Final Written Decision in the
`present proceeding. See Paper 51; see also Paper 52 (Order). Accordingly,
`based upon the Chief Administrative Patent Judge’s determination that good
`cause exists to extend the one-year period for issuing a Final Written
`Decision, and after considering the parties’ proposals and the information
`received during the conference call, we provide the supplemental briefing
`schedule as follows:
`Supplemental Due Date 1
`Patent Owner’s supplemental response to the Petition
`Patent Owner’s supplemental motion to amend the patent
`Supplemental Due Date 2
`Petitioner’s reply to supplemental patent owner’s
`response
`Petitioner’s opposition to supplemental motion to amend
`Supplemental Due Date 3
`Patent Owner’s reply to Petitioner’s opposition to
`supplemental motion to amend
`Supplemental Due Date 4
`Supplemental Motion for observation regarding cross-
`examination of supplemental reply witness
`Supplemental Motion to exclude evidence
`Request for supplemental oral argument
`Supplemental Due Date 5
`Response to supplemental observation
`Opposition to supplemental motion to exclude
`Supplemental Due Date 6
`Reply to opposition to supplemental motion to exclude
`Supplemental Due Date 7
`Supplemental oral argument (if requested and determined
`necessary)
`
`Aug. 17, 2018
`
`
`
`4
`
`June 13, 2018
`
`June 27, 2018
`
`July 16, 2018
`
`July 23, 2018
`
`July 30, 2018
`
`Aug. 6, 2018
`
`
`
`IPR2017-00580
`Patent 9,233,698 B2
`B. Word Counts for Supplemental Briefing
`During the conference call, the panel also asked the parties to provide
`proposals concerning the word limits for the proposed additional briefing.
`In a follow-up e-mail to the Board on May 11, 2018, the parties submitted
`their proposed word limits for the additional proposed briefing. The parties’
`agreed-upon word limit proposals are reproduced below:
`
`
`We adopt the parties’ agreed-upon word limits for the supplemental briefing.
`C. Scope of Supplemental Briefing
`Patent Owner’s supplemental response to the petition may only
`address newly added challenged claims 5 and 14. In addition to addressing
`Patent Owner’s supplemental response, Petitioner’s supplemental reply may
`
`5
`
`
`
`IPR2017-00580
`Patent 9,233,698 B2
`respond to preliminary findings made by the Board in the Decision on
`Institution with respect to newly-added challenged claims 5 and 14, but
`otherwise is subject to 37 C.F.R. § 42.23(b) (“A reply may only respond to
`arguments raised in the corresponding . . . [supplemental] patent owner
`response.”). Evidence relied on by Petitioner in its supplemental reply is
`limited to rebuttal evidence only. Patent Owner’s supplemental motion to
`amend is limited to amending newly added challenged claims 5 and 14.
`Should issues arise in complying with this Order, the parties should
`make every effort to resolve those issues without intervention by the Board.
`If issues remain unresolved, however, the parties should contact the Board as
`soon as reasonably practicable.
`In consideration of the foregoing, it is hereby:
`ORDERED that the parties may file supplemental briefing according
`to the schedule set forth in Section A of this Order;
`FURTHER ORDERED that the word limits for the supplemental
`briefing is set forth in Section B of this Order; and
`FURTHER ORDERED that the scope of the additional briefing is
`limited as set forth in Section C of this Order.
`
`
`
`
`6
`
`
`
`IPR2017-00580
`Patent 9,233,698 B2
`PETITIONER:
`Jason Engel
`Jason.engel.ptab@klgates.com
`
`Alan Barry
`Al.barry.ptab@klgates.com
`
`Benjamin Weed
`Benjamin.weed.ptab@klgates.com
`
`Katherine Hoffee
`Katy.hoffee@klgates.com
`
`Robert Capriotti
`Roberto.capriotti@klgates.com
`
`Erik Halverson
`Erik.halverson@klgates.com
`
`
`
`PATENT OWNER:
`Jeffrey Sanok
`jsanok@crowell.com
`
`Vincent Galluzzo
`vgalluzzo@crowell.com
`
`
`7
`
`
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