Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper No. 36
`Entered: May 8, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`SONY CORPORATION,
`Petitioner,
`
`v.
`
`FUJIFILM CORPORATION,
`Patent Owner.
`
`____________
`
`Cases IPR2017-00800
`Patents 6,767,612 B2
`____________
`
`Before JO-ANNE M. KOKOSKI, JEFFREY W. ABRAHAM, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`ABRAHAM, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper No. 36
`Entered: May 8, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`SONY CORPORATION,
`Petitioner,
`
`v.
`
`FUJIFILM CORPORATION,
`Patent Owner.
`
`____________
`
`Cases IPR2017-00800
`Patents 6,767,612 B2
`____________
`
`Before JO-ANNE M. KOKOSKI, JEFFREY W. ABRAHAM, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`ABRAHAM, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`
`
`IPR2017-00800
`Patent 6,767,612 B2
`
`
`Sony Corporation (“Petitioner”) filed a Corrected Petition seeking
`inter partes review of claims 1, 2, 4, 5, and 7–11 (“challenged claims”) of
`U.S. Patent No. 6,767,612 B2 (Ex. 1001, “the ’612 patent”). Paper 9
`(“Pet.”). Fujifilm Corporation (“Patent Owner”) filed a Patent Owner
`Preliminary Response to the Petition. Paper 13 (“Prelim. Resp.”).
`On August 18, 2017, we issued a Decision instituting inter partes
`review with respect to the questions of whether the subject matter of the
`challenged claims would have been obvious in view of the combined
`teachings of Matsuno1 and Endo,2 and Matsuno, Endo, and Wallace.3 Paper
`14, 23. We declined to institute inter partes review with respect to the
`question of whether the subject matter of the challenged claims would have
`been obvious in view of the combined teachings of Matsuno, Endo, Wallace,
`and Yamazaki.4 Id. at 22–23. Also on August 18, 2017, we issued a
`Scheduling Order setting May 17, 2018, as the date for oral argument, if
`requested by the parties. Paper 15, 7. Patent Owner submitted an Oral
`Hearing Request on April 5, 2018 (Paper 33), and Petitioner submitted an
`Oral Hearing Request on April 9, 2018 (Paper 34).
`On April 26, 2018, subsequent to the Supreme Court’s decision in
`SAS Inst., Inc. v. Iancu, No. 16-969, 2018 WL 1914661, at *10 (U.S.
`Apr. 24, 2018), we issued an Order modifying our Decision instituting inter
`
`
`1 Matsuno, JP 2001-84549A, published Mar. 30, 2001 (“Matsuno,”
`Ex. 1004).
`2 Endo et al., JP 2000-40218A, published Feb. 8, 2000 (“Endo,” Ex. 1005).
`3 R.L. Wallace, Jr., The Reproduction of Magnetically Recorded Signals,
`BELL SYS. TECH. J. 1145–1173 (1951) (“Wallace,” Ex. 1006).
`4 Yamazaki et al., U.S. Patent No. 6,017,605, issued Jan. 25, 2000
`(“Yamazaki,” Ex. 1007).
`
`
`
`2
`
`
`
`IPR2017-00800
`Patent 6,767,612 B2
`
`partes review to institute on all of the grounds presented in the Petition,
`including the question of whether the subject matter of the challenged claims
`would have been obvious in view of the combined teachings of Matsuno,
`Endo, Wallace, and Yamazaki. Paper 35, 2. We also ordered the parties to
`confer to determine whether it would be necessary to change the schedule or
`to submit briefing not already permitted under the Scheduling Order, and if
`so, to request a conference call with the panel to seek authorization for such
`changes. Id.
`On May 7, 2018, a conference call was held between counsel for the
`parties and Judges Kokoski, Ankenbrand, and Abraham. During the call,
`counsel for the parties indicated that, after conferring, they desired to
`conduct additional discovery and file supplemental briefs to address whether
`the subject matter of the challenged claims would have been obvious in view
`of the combined teachings of Matsuno, Endo, Wallace, and Yamazaki. The
`parties also requested authorization to amend the Scheduling Order to
`account for the at least one additional deposition and supplemental briefing
`sought by Patent Owner and Petitioner. The parties were optimistic that the
`deposition would occur in early June 2018, and had agreed to a briefing
`schedule allowing each party three weeks to submit supplemental briefs,
`subject to the condition that Petitioner may need more time to file its
`supplemental reply brief if additional discovery was deemed necessary. The
`parties also indicated that they agreed to limit the deposition to three (3)
`hours and the supplemental briefs to seven (7) pages each.
`We noted the parties’ agreement and request for authorization to
`submit additional briefing and change the Scheduling Order. The parties
`acknowledged that we would have to reschedule the hearing set for May 17,
`
`3
`
`
`
`IPR2017-00800
`Patent 6,767,612 B2
`
`2018, in order to account for the proposed modifications to the schedule.
`We asked the parties to submit a joint proposed modified Scheduling Order
`by May 11, 2018, reflecting the agreements discussed during the conference.
`At this time, the panel expects the proposed schedule to permit
`issuance of a final written decision on or before the statutory due date of
`August 17, 2018. In order to do so, the panel intends to reschedule the
`hearing during the month of July, and will provide a specific date once we
`receive the parties’ proposed modified Scheduling Order.
`Accordingly, it is
`ORDERED that the parties shall file a joint proposed modified
`Scheduling Order on or before May 11, 2018; and
`FURTHER ORDERED that the oral hearing previously scheduled for
`May 17, 2018, is postponed until further notice.
`
`
`
`
`
`
`
`
`4
`
`
`
`IPR2017-00800
`Patent 6,767,612 B2
`
`PETITIONER:
`Michael Rader
`Randy Pritzker
`Richard Giunta
`Gerald Hrycyszyn
`Brandon Blackwell
`WOLF, GREENFIELD & SACKS, P.C.
`Mrader-PTAB@wolfgreenfield.com
`RPritzker-PTAB@wolfgreenfield.com
`RGiunta-PTAB@wolfgreenfield.com
`GHrycyszyn-PTAB@wolfgreenfield.com
`BBlackwell-PTAB@wolfgreenfield.com
`
`PATENT OWNER:
`Eliot Williams
`Robert Scheinfeld
`Robert Maier
`Michael E. Knierim
`Joseph C. Akalski
`BAKER BOTTS LLP
`eliot.williams@bakerbotts.com
`robert.scheinfeld@bakerbotts.com
`robert.maier@bakerbotts.com
`michael.knierim@bakerbotts.com
`joseph.akalski@bakerbotts.com
`
`
`
`
`
`5
`
`
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