`571-272-7822
`
`Paper 25
`Entered: August 23, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY CORPORATION,
`Petitioner,
`
`v.
`
`FUJIFILM CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2017-00618
`Patent 7,355,805 B2
`____________
`
`
`
`Before JO-ANNE M. KOKOSKI and JEFFREY W. ABRAHAM,
`Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`IPR2017-00618
`Patent 7,355,805 B2
`
`
`On August 15, 2018, a conference call was held between counsel for
`the parties and Judges Kokoski, Abraham, and Ankenbrand. A court
`reporter was on the line, and a copy of the transcript will be filed as an
`exhibit in the proceeding in due course.1 Patent Owner requested the
`conference to seek authorization to file a motion to strike arguments in
`Petitioner’s Reply (Paper 22). In particular, Patent Owner argued that
`Petitioner’s Reply improperly includes new arguments and relies on new
`evidence that are outside the scope of what is permitted in a reply. Petitioner
`disagreed, arguing that the information included in the Reply was properly
`included to address arguments made in Patent Owner’s Response and/or
`Patent Owner’s Supplement Response (Papers 14, 17).
`Our Rules explain that “[a] reply may only respond to arguments
`raised in the corresponding opposition . . . or patent owner response.
`37 C.F.R. § 42.23(b). For example, our Trial Practice Guide explains that
`“[e]xamples 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.” Office Patent
`Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012). The
`Trial Practice Guide also provides that “a reply that raises a new issue or
`belatedly presents evidence will not be considered and may be returned.” Id.
`Upon consideration of the arguments and positions presented during
`the call, we are not persuaded that the requested motion to strike is
`warranted. To the extent that Petitioner’s Reply contains improper
`
`
`1 This Order summarizes the statements made during the conference call. A
`more detailed record may be found in the transcript.
`
`2
`
`
`
`
`IPR2017-00618
`Patent 7,355,805 B2
`
`argument, the Board ordinarily is capable of determining at the close of
`evidence whether new arguments were raised and disregarding any improper
`reply evidence or arguments. In that regard, we note that the transcript of
`the call will reflect Patent Owner’s identification of the arguments in
`Petitioner’s Reply that it alleges are new and the reasons why Patent Owner
`contends they are improper, as well as Petitioner’s arguments in response.
`Accordingly, it is
`ORDERED that Patent Owner’s request for authorization to file a
`motion to strike is denied.
`
`
`
`
`
`3
`
`
`
`IPR2017-00618
`Patent 7,355,805 B2
`
`PETITIONER:
`
`Richard F. Giunta
`Randy J. Pritzker
`Marc S. Johannes
`WOLF, GREENFIELD & SACKS, P.C.
`RGiunta-PTAB@wolfgreenfield.com
`RPritzker-PTAB@wolfgreenfield.com
`MJohannes-PTAB@wolfgreenfield.com
`
`
`
`PATENT OWNER:
`
`Eliot D. Williams
`Neil S. Sirota
`Robert C. Scheinfeld
`Neil P. Sirota
`Eric J. Faragi
`BAKER BOTTS L.L.P.
`eliot.williams@bakerbotts.com
`neil.sirota@bakerbotts.com
`robert.scheinfeld@bakerbotts.com
`neil.sirota@bakerbotts.com
`eric.faragi@bakerbotts.com
`
`
`
`
`
`
`
`
`4
`
`
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