Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`Paper 27
`Entered: May 15, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`K/S HIMPP,
`Petitioner,
`
`v.
`
`BENHOV GMBH, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00930
`Patent 8,170,884 B2
`____________
`
`
`
`Before BARBARA A. PARVIS, DANIEL N. FISHMAN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`Tel: 571-272-7822
`
`
`
`
`
`Paper 27
`Entered: May 15, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`K/S HIMPP,
`Petitioner,
`
`v.
`
`BENHOV GMBH, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00930
`Patent 8,170,884 B2
`____________
`
`
`
`Before BARBARA A. PARVIS, DANIEL N. FISHMAN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`IPR2017-00930
`Patent 8,170,884 B2
`
`
`INTRODUCTION
`I.
`On April 24, 2018, the Supreme Court held that a decision to institute
`under 35 U.S.C. § 314 may not institute on less than all claims challenged in
`the petition. SAS Inst., Inc. v. Iancu, 2018 WL 1914661, at *10 (U.S.
`Apr. 24, 2018). In our Decision on Institution, we determined that Petitioner
`demonstrated a reasonable likelihood that it would establish that at least one
`of the challenged claims of the ’930 patent is unpatentable. Paper 9, 2, 39–
`40. We modify our institution decision to institute on all the challenged
`claims and all the grounds presented in the Petition.
`On April 30, 2018, oral arguments were presented in the above-
`identified case. We asked the parties whether either party felt the need for
`additional briefing regarding issues arising from the SAS decision. Petitioner
`requested additional briefing directed to the newly instituted claims and
`ground but Patent Owner perceived no such need unless Petitioner was
`authorized to provide additional briefing.
`
`
`II. DISCUSSION
`In accordance with our rules, other than in exceptional circumstances,
`Petitioner’s Reply to the Patent Owner’s Response “may only respond to
`arguments raised in the . . . patent owner response.” 37 C.F.R. § 42.23(b).
`Thus, where a patent owner elects not to file a response with regard to a
`ground of unpatentability, a petitioner is limited to the petition and
`associated evidence with regard to that ground, and may not submit
`additional argument or evidence. See id. This would be true even if we had
`instituted the newly instituted grounds in our original Decision on
`Institution. In general, permitting a petitioner to file additional arguments
`
`
`
`2
`
`
`
`IPR2017-00930
`Patent 8,170,884 B2
`
`and evidence under these circumstances would unfairly prejudice a patent
`owner, who would not have reasonably foreseen that the petitioner would
`essentially “supplement” its petition sua sponte. Here, Patent Owner’s
`Response (Paper 12) did not address the previously non-instituted claims
`and grounds and, thus, Petitioner’s Reply (Paper 14) had no basis to respond
`to any (non-existent) Patent Owner arguments regarding the newly instituted
`claims and grounds.
`We recognize that the SAS decision has presented the Board and the
`parties with an unusual situation. In view of the particular facts of these
`proceedings and out of an abundance of caution, we will permit Petitioner to
`comment on the sufficiency of the Petition with respect to the newly
`instituted claims and grounds.
`Accordingly, we authorize Petitioner to file a Supplemental Reply
`Brief, not to exceed ten (10) pages, limited to addressing issues regarding
`the newly added claims and grounds raised by: (1) our Decision on
`Institution (Paper 9) or (2) Patent Owner’s Response (Paper 12).
`Petitioner’s Supplemental Reply Brief shall be filed no later than May 23,
`2018. No new evidence may be submitted with Petitioner’s Supplemental
`Reply Brief.
`Furthermore, if Petitioner files a Supplemental Reply Brief, we
`authorize Patent Owner to file a Supplemental Response Brief in response to
`Petitioner’s Supplemental Reply Brief, not to exceed ten (10) pages, limited
`to responding to issues raised in Petitioner’s Supplemental Reply Brief. If
`Patent Owner chooses to file a Supplemental Response Brief, it shall be filed
`no later than May 30, 2018. Patent Owner may file new evidence with its
`
`
`
`3
`
`
`
`IPR2017-00930
`Patent 8,170,884 B2
`
`Supplemental Response Brief limited to evidence responsive to issues raised
`by Petitioner’s Supplemental Reply Brief.
`Still further, if Patent Owner files a Supplemental Response Brief, we
`authorize Petitioner to file a Sur-Reply to Patent Owner’s Supplemental
`Response Brief, not to exceed five (5) pages, limited to rebutting issues
`raised in Patent Owner’s Supplemental Response Brief. Petitioner may file
`new evidence with its Sur-Reply, limited to evidence responsive to issues
`raised by Patent Owner’s Supplemental Response Brief. Petitioner’s Sur-
`Reply, if any, shall be filed no later than June 6, 2018.
`
`
`III. ORDER
`In view of the foregoing discussion, it is hereby:
`ORDERED that our institution decision is modified to include review
`of all challenged claims and all grounds presented in the Petition;
`FURTHER ORDERED that Petitioner is authorized to file a Paper
`(“Supplemental Reply Brief”) by May 23, 2018, not to exceed ten (10)
`pages, limited to addressing issues, regarding the newly added claims and
`grounds, raised by our Decision on Institution (Paper 9) or by Patent
`Owner’s Response (Paper 12);
`FURTHER ORDERED that Petitioner shall not file any new evidence
`with its Supplemental Reply Brief;
`FURTHER ORDERED that, if Petitioner files a Supplemental Reply
`Brief, Patent Owner is authorized to file a Paper (“Supplemental Response
`Brief”) by May 30, 2018, not to exceed ten (10) pages, limited to addressing
`issues raised by Petitioner’s Supplemental Reply Brief;
`
`
`
`4
`
`
`
`IPR2017-00930
`Patent 8,170,884 B2
`
`
`FURTHER ORDERED that Patent Owner is authorized to file new
`evidence with its Supplemental Response Brief limited to evidence
`responsive to issues raised by Petitioner’s Supplemental Reply Brief;
`FURTHER ORDERED that, if Patent Owner files a Supplemental
`Response Brief, Petitioner is authorized to file a Paper (“Sur-Reply to Patent
`Owner’s Supplemental Response Brief”) by June 6, 2018, not to exceed five
`(5) pages, limited to rebutting issues raised in Patent Owner’s Supplemental
`Response Brief; and
`FURTHER ORDERED that Petitioner may file new evidence with its
`Sur-Reply limited to evidence responsive to issues raised by Patent Owner’s
`Supplemental Response Brief.
`
`
`
`
`5
`
`
`
`IPR2017-00930
`Patent 8,170,884 B2
`
`PETITIONER:
`Donald Steinberg
`Yung-Hoon Ha
`Haixia Lin
`Christopher O'Brien
`WILMER CUTLER PICKERING HALE AND DORR LLP
`don.steinberg@wilmerhale.com
`sam.ha@wilmerhale.com
`haixia.lin@wilmerhale.com
`christopher.obrien@wilmerhale.com
`
`
`PATENT OWNER:
`Henry Petri
`James Murphy
`Margaux Savee
`POLSINELLI PC
`hpetri@polsinelli.com
`jpmurphy@polsinelli.com
`msavee@polsinelli.com
`Tim Seeley
`Russell Rigby
`INTELLECTUAL VENTURES
`tims@intven.com
`rrigby@intven.com
`
`
`
`6
`
`
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