`
`Paper: 35
`Entered: May 14, 2018
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INFOBIONIC, INC.,
`Petitioner,
`
`v.
`
`BRAEMAR MANUFACTURING, LLC,
`Patent Owner.
`____________
`
`IPR2017-00796
`Patent RE43,767 E
`____________
`
`
`
`Before PHILLIP J. KAUFFMAN, KEVIN W. CHERRY, and
`MICHAEL L. WOODS, Administrative Patent Judges.
`
`WOODS, Administrative Patent Judge.
`
`
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`IPR2017-00796
`Patent RE43,767 E
`
`
`I.
`
`BACKGROUND
`
`On May 11, 2018, a conference call was held between counsel for
`
`Petitioner, counsel for Patent Owner, and Judges Woods, Cherry, and
`
`Kauffman to discuss the impact of an order entered on May 3, 2018, which
`
`modified our Decision to Institute (Paper 11, “DI”) to include all grounds
`
`presented in the Petition, including Grounds 4 and 5. Paper 34, 2 (“Order”).
`
`In our original DI, we instituted review of all challenged claims under
`
`Grounds 1–3. Paper 11, 2. We did not find persuasive, however,
`
`Petitioner’s challenges under Grounds 4 and 5. See id. at 35 (“Petitioner has
`
`not demonstrated a reasonable likelihood that it will prevail with regards to
`
`its challenge . . . under Ground 4 or . . . under Ground 5.”). As explained in
`
`our DI, we found persuasive Patent Owner’s arguments in response to those
`
`grounds. See id. at 32 (citing Prelim. Resp. 35–36 (“Patent Owner’s
`
`argument is persuasive”)); see also id. at 27–34.
`
`During the conference call, Petitioner acknowledged that in the DI, we
`
`determined that Petitioner’s Grounds 4 and 5 were not persuasive.
`
`Nevertheless, in the interests of efficiency, Petitioner represented that it does
`
`not request to submit additional briefing or supplemental evidence in
`
`connection with these grounds.
`
`Also during the conference call, however, Patent Owner expressed
`
`concern that the proceeding now includes Grounds 4 and 5. In particular,
`
`Patent Owner expressed concern that its Patent Owner Response (Paper 14)
`
`did not address these newly-added grounds, even though those grounds were
`
`addressed persuasively by Patent Owner in its Preliminary Response.
`
`This proceeding is in its late stages, as oral hearing was held on May
`
`1, 2018, and the Final Written Decision is due on or before July 31, 2018.
`
`2
`
`
`
`IPR2017-00796
`Patent RE43,767 E
`
`
`II. ANALYSIS
`
`Although we found Patent Owner’s arguments presented in its
`
`Preliminary Response persuasive as to Grounds 4 and 5 (see Paper 11, 32),
`
`Patent Owner’s concern that these arguments were not similarly presented in
`
`its Patent Owner Response has merit. Indeed, our Scheduling Order
`
`provides that “[t]he patent owner is cautioned that any arguments for
`
`patentability not raised and fully briefed in the [Patent Owner Response] will
`
`be deemed waived.” Paper 12, 3 (emphasis added).
`
`To address Patent Owner’s concerns, while keeping the current
`
`proceeding on-schedule and while avoiding the need for additional briefing,
`
`we now consider those particular arguments presented in Patent Owner’s
`
`Preliminary Response as not waived. In other words, we will consider
`
`Patent Owner’s arguments presented on pages 33–37 of its Preliminary
`
`Response (responding to Grounds 4 and 5, only) in our Final Written
`
`Decision. Based on representations made by Petitioner during the
`
`conference call, we understand that Petitioner does not request to file
`
`supplemental briefing or evidence to reply to Patent Owner’s arguments or
`
`respond to our analysis from the DI. Accordingly, we determine that no
`
`further briefing from either party is warranted at this time.
`
`
`
`III. ORDER
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that Patent Owner’s arguments responding to Grounds 4
`
`and 5 of the Petition, as presented in Patent Owner’s Preliminary Response,
`
`are not waived and shall be considered by the Board in its Final Written
`
`Decision analysis.
`
`
`
`3
`
`
`
`IPR2017-00796
`Patent RE43,767 E
`
`PETITIONERS:
`
`Charles H. Sanders
`Jonathan M. Strang
`Kristopher R. Davis
`LATHAM & WATKINS LLP
`charles.sanders@lw.com
`jonathan.strang@lw.com
`kris.davis@lw.com
`
`
`PATENT OWNER:
`
`Ching-Lee Fukuda
`Bradford J. Badke
`Thomas Broughan
`SIDLEY AUSTIN LLP
`clfukuda@sidlev.com
`jbadke@sidley.com
`tbroughan@sidley.com
`
`
`4
`
`
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