`Tel: 571-272-7822
`
`
`
`
`
`Paper 52
`Entered: June 22, 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
`Authorizing Patent Owner’s Motion to Exclude
`37 C.F.R. §§ 42.5, 42.20–22, 42.64
`
`
`
`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)
`
`
`INTRODUCTION
`I.
`On June 21, 2018, the Board received an email from the parties
`wherein Patent Owner seeks authorization to file a Motion to Exclude
`Evidence based on objections (Paper 50 (filed June 8, 2018)) it filed
`responsive to Petitioner’s new evidence (Exs. 1053, 1054 (filed June 1,
`2018)). Patent Owner notes that the new evidence it objected to was filed
`after DUE DATES 4–6 as they relate to motions to exclude and related
`briefs. In the email message, Petitioner expresses its opposition to Patent
`Owner’s request contending further briefing is not necessary and could lead
`to further problems if the briefing is improper.
`
`
`II. DISCUSSION
`Our Order (Paper 40 “SAS Order”)) mailed May 10, 2018 authorized
`the parties to file additional briefs regarding the claims added into the trial
`responsive to the recent Supreme Court decision in SAS Inst., Inc. v. Iancu,
`138 S. Ct. 1348 (2018). In accordance with our SAS Order, the authorized
`additional briefing culminated with Petitioner filing a Sur-Reply (Paper 46)
`accompanied by new evidence (Exs. 1053 and 1054) responsive to Patent
`Owner’s arguments in a Supplemental Response (Paper 45).
`In accordance with our rules, Patent Owner timely filed objections to
`the new evidence and now requests authorization to file a Motion to Exclude
`Evidence to preserve those objections. See 37 C.F.R. § 42.64. As noted by
`Patent Owner, the deadline for filing a Motion to Exclude Evidence, as set
`by our Scheduling Order, has passed and our SAS Order authorizing
`Petitioner’s filing of new evidence does not address the timing for new
`objections and associated motions to exclude. Accordingly, pursuant to
`
`
`
`2
`
`
`
`IPR2017-00861 (Patent 7,627,708 B2)
`IPR2017-00864 (Patent 7,523,243 B2)
`
`rules 37 C.F.R. §§ 42.5, 42.20–22, and 42.64, we now authorize Patent
`Owner to file a Motion to Exclude Evidence, no longer than three pages and
`no later than June 29, 2018. Patent Owner’s Motion to Exclude Evidence
`shall be limited to issues raised in its objections filed June 8, 2018 (Paper
`50). We further authorize Petitioner to file an Opposition to Patent Owner’s
`Motion to Exclude Evidence, no longer than three pages and no later than
`July 6, 2018. Still further, if Petitioner files an Opposition to Patent
`Owner’s Motion to Exclude Evidence, we authorize Patent Owner to file a
`Reply to Petitioner’s Opposition, no longer than three pages and no later
`than July 13, 2018.
`We remind the parties that a Motion to Exclude Evidence should be
`directed to admissibility of evidence rather than the weight to be accorded
`any evidence. The Board will determine the weight to be accorded
`admissible evidence of record.
`
`
`
`3
`
`
`
`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 Patent Owner is authorized to file a Motion to
`Exclude Evidence (“Motion”) by June 29, 2018, not to exceed three pages,
`limited to addressing issues raised in its objections filed June 8, 2018;
`FURTHER ORDERED that Petitioner is authorized to file an
`Opposition to Patent Owner’s Motion (“Opposition”) by July 6, 2018, not to
`exceed three pages, limited to addressing issues raised by Patent Owner’s
`Motion; and
`FURTHER ORDERED that, if Petitioner files an Opposition, Patent
`Owner is authorized to file a Reply to Petitioner’s Opposition by July 13,
`2018, not to exceed three pages, limited to rebutting issues raised in
`Petitioner’s Opposition.
`
`
`
`PETITIONER:
`Scott McKeown
`scott.mckeown@ropesgray.com
`
`James L. Davis, Jr.
`james.l.davis@ropesgray.com
`
`PATENT OWNER:
`
`Bruce W. Slayden II
`R. William Beard, Jr.
`Truman H. Fenton
`Jerry F. Suva
`SLAYDEN GRUBERT BEARD PLLC
`bslayden@sgbfirm.com
`
`
`
`4
`
`
`
`IPR2017-00861 (Patent 7,627,708 B2)
`IPR2017-00864 (Patent 7,523,243 B2)
`
`wbeard@sgbfirm.com
`tfenton@sgbfirm.com
`jsuva@sgbfirm.com
`
`
`
`
`5
`
`
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