Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`Paper 51
`Entered: June 20, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DELPHI TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`MICROCHIP TECHNOLOGY INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00861 (Patent 7,627,708 B2)
`Case IPR2017-00864 (Patent 7,523,243 B2)1
`
`____________
`
`
`
`Before BRIAN J. McNAMARA, DANIEL N. FISHMAN, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 This order addresses issues that are the same in both identified cases. We
`exercise our discretion to issue one order to be filed in each case. The
`parties are not authorized to use this style heading in subsequent papers.
`
`
`Tel: 571-272-7822
`
`
`
`
`
`Paper 51
`Entered: June 20, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DELPHI TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`MICROCHIP TECHNOLOGY INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00861 (Patent 7,627,708 B2)
`Case IPR2017-00864 (Patent 7,523,243 B2)1
`
`____________
`
`
`
`Before BRIAN J. McNAMARA, DANIEL N. FISHMAN, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 This order addresses issues that are the same in both identified cases. We
`exercise our discretion to issue one order to be filed in each case. The
`parties are not authorized to use this style heading in subsequent papers.
`
`
`
`IPR2017-00861 (Patent 7,627,708 B2)
`IPR2017-00864 (Patent 7,523,243 B2)
`
`
`JUNE 7 CONFERENCE CALL
`I.
`In an order mailed May 10, 2018, we authorized additional briefing by
`the parties (Paper 402) culminating in Petitioner’s Sur-Reply filed on June 1,
`2018 (Paper 46). On June 7, 2018, the Board received an email message
`from Patent Owner requesting a conference call with the parties. On that
`same day, we conducted the requested call with the parties’ counsel and
`Judges McNamara, Fishman, and Clements to discuss (1) Patent Owner’s
`request to file a Sur-Sur-Reply responsive to Petitioner’s Sur-Reply and (2)
`Patent Owner’s request for clarification as to the issues that may be
`discussed at the scheduled oral argument.
`In the conference call, we denied authorization for Patent Owner’s
`request to file a Sur-Sur-Reply and clarified that all issues of record may be
`discussed in the scheduled oral argument.
`In the conference call, Petitioner indicated it had attempted (on short
`notice) to arrange a court reporter to transcribe the conference call. We
`delayed the start of the call to await arrival of the court reporter but the
`reporter did not show up. Patent Owner indicated it was recording the call
`and would file a transcript of that recording. At oral argument, on June 14,
`2018, Patent Owner indicated that it had technical difficulties with the
`recording of the June 7 conference call and, thus, would be unable to file any
`transcript of the call. Petitioner responded that it desired authorization to file
`email messages exchanged between the parties leading up to the June 7
`conference call to memorialize the issues discussed and the positions of the
`parties. We instructed the parties to confer and reach an agreement as to the
`messages to be filed.
`
`2 Citations are to IPR2017-00861 unless otherwise noted.
`2
`
`
`
`
`
`IPR2017-00861 (Patent 7,627,708 B2)
`IPR2017-00864 (Patent 7,523,243 B2)
`
`
`On June 18, 2018, the Board received an email message from
`Petitioner indicating, in essence, that the parties could not agree what email
`messages and other information should be filed regarding the June 7
`conference call. On June 19, 2018, the Board received an email message
`from Patent Owner responsive to Petitioner’s email the day before
`expressing its concerns regarding Petitioner’s proposed email messages to be
`filed and requesting yet another conference call to discuss its concerns.
`We do not authorize any further filings regarding the substance of the
`June 7, 2018 conference call. We perceive no need for any documentation
`memorializing the conference call beyond this order.
`We further remind the parties that email messages to the Board shall
`not include argument regarding any issues but, instead, shall briefly indicate
`that the parties had conferred on an issue, cannot reach agreement on the
`issue, and request a conference call with the Board to resolve the issue.
`
`
`PATENT OWNER’S REQUEST FOR REHEARING
`II.
`On May 21, 2018, Patent Owner filed a Request for Rehearing (Paper
`44) requesting the panel to reconsider its Decision on Institution (Paper 14)
`as modified by our order of May 3, 2018 (Paper 38) responsive to the recent
`Supreme Court decision in SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018).
`Our rules authorize a party dissatisfied with a decision to file a request for
`rehearing of that decision. See 37 C.F.R. § 42.71. These rules do not
`normally require or authorize a reply from a party opposing such a Request
`for Rehearing. However, in this case, the request raises issues of particular
`interest to the Board—issues that arise in the context of a modified
`
`
`
`3
`
`
`
`IPR2017-00861 (Patent 7,627,708 B2)
`IPR2017-00864 (Patent 7,523,243 B2)
`
`institution decision pursuant to the recent SAS decision. In particular, Patent
`Owner’s Request for Rehearing raises the following questions.
`
`
`1. Whether Patent Owner’s Request for Rehearing is timely.
`Although our rules allow a request for rehearing to be filed for any
`decision, a request to rehear a decision on institution is due within 14
`days or 30 days of that decision (depending on the granting or denial
`of review). This Request for Rehearing indicates it is a request to
`rehear the decision in our order of May 3, 2018 (modifying the
`Decision on Institution). The request is, therefore, only timely if it is,
`in fact, a request to rehear the May 3, 2018 order. If the request is to
`reconsider the underlying Decision on Institution (entered August 29,
`2017), the request is not timely filed. The substance of Patent
`Owner’s argument is, arguably, directed to the underlying, earlier
`Decision on Institution and not directed to the May 3, 2018 order
`modifying that decision. If so, the Request for Rehearing is not timely
`filed.
`
`
`2. Whether 35 U.S.C. § 312(a)(4) precludes consideration, and
`therefore institution, of a petition if one of multiple grounds does not
`comply with 37 C.F.R. § 42.104(b)(4). The substance of Patent
`Owner’s Request for Rehearing asserts that the Petition should have
`never been considered because there was no statutory authority to do
`so under 35 U.S.C. § 312(a)(4). Specifically, the statute recites that a
`petition “may be considered only if . . . the petition provides such
`other information as the Director may require by regulation.” 35
`
`
`
`4
`
`
`
`IPR2017-00861 (Patent 7,627,708 B2)
`IPR2017-00864 (Patent 7,523,243 B2)
`
`
`U.S.C. § 312(a)(4). In our Decision on Institution, we had originally
`denied review of some claims because the Petition failed to
`adequately specify where each element of the claim is found in the
`references as required by our regulation 37 C.F.R. § 104(b)(4). In its
`Request for Reconsideration, Patent Owner argues that failure of the
`Petition to comply with 37 C.F.R. § 42.104(b)(4) required that the
`Petition not be considered in accordance with 35 U.S.C. § 312(a)(4).
`
`We request further briefing regarding (1) whether this Request for
`Rehearing is timely filed based on the issues raised in this request; and (2)
`whether 35 U.S.C. § 312(a)(4) demands compliance with every regulation
`under 37 C.F.R. § 42 to permit institution of review.
`At oral argument, in response to a question from the panel, Petitioner
`indicated it had no desire to file a Reply to Patent Owner’s Request for
`Rehearing but would consider doing so if requested.
`Accordingly, we authorize Petitioner to file an Opposition to Patent
`Owner’s Request for Rehearing. If Petitioner files such a Paper, the Paper
`shall be no more than ten (10) pages, shall be filed no later than July 13,
`2018, and shall be limited to the above-identified issues regarding Patent
`Owner’s Request for Rehearing. We further authorize Patent Owner to file a
`Reply in Support of its Request for Rehearing no later than July 27, 2018,
`consisting of no more than ten (10) pages, and addressing the above-
`identified issues regarding its Request for Rehearing.
`
`
`
`5
`
`
`
`IPR2017-00861 (Patent 7,627,708 B2)
`IPR2017-00864 (Patent 7,523,243 B2)
`
`
`III. ORDER
`In view of the foregoing discussion, it is hereby:
`ORDERED that Petitioner is authorized to file a Paper (“Opposition
`to Patent Owner’s Request for Rehearing”) no later than July 13, 2018, not
`to exceed ten (10) pages, and limited to addressing the above-identified
`issues regarding Patent Owner’s Request for Rehearing; and
`FURTHER ORDERED that Patent Owner is authorized to file a Paper
`(“Reply in Support of its Request for Rehearing”) no later than July 27,
`2018, not to exceed ten (10) pages, and limited to addressing the above-
`identified issues regarding Patent Owner’s Request for Rehearing.
`
`
`
`
`6
`
`
`
`IPR2017-00861 (Patent 7,627,708 B2)
`IPR2017-00864 (Patent 7,523,243 B2)
`
`PETITIONER:
`Scott McKeown
`scott.mckeown@ropesgray.com
`
`James L. Davis, Jr.
`james.l.davis@ropesgray.com
`
`PATENT OWNER:
`Bruce Slayden
`bslayden@sgbfirm.com
`
`Brian Banner
`bbanner@sgbfirm.com
`
`Truman Fenton
`tfenton@sgbfirm.com
`
`Jerry Suva
`jsuva@sgbfirm.com
`
`R. Beard
`wbeard@sgbfirm.com
`
`
`
`7
`
`
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