`571-272-7822
`
`
`
`
`Paper 29
`Entered: May 14, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY CORPORATION,
`Petitioner,
`v.
`
`COLLABO INNOVATIONS, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00958 (Patent 7,023,034 B2)
`Case IPR2017-00960 (Patent 7,023,034 B2) 1
`____________
`
`
`
`Before DAVID C. McKONE, GREGG I. ANDERSON, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`1 The parties are not authorized to use this caption. The parties should use
`the caption appropriate to the specific case.
`
`
`
`IPR2017-00958 (Patent 7,023,034 B2)
`IPR2017-00960 (Patent 7,023,034 B2)
`
`Pursuant to 37 C.F.R. § 42.70, oral argument in IPR2017-00958
`(“’958 IPR”) and IPR2017-00960 (“’960 IPR”), captioned above, occurred
`on May 9, 2018. In our Decision on Institution (“Inst. Dec.,” Paper 82), we
`construed the term “reflecting walls” as “structures having approximately
`vertical surfaces that reflect light.” Inst. Dec. 12. In its Responses (“PO
`Resp.,” Paper 19), Collabo Innovations, Inc. (“Patent Owner”) argued that
`“[f]or the purposes of this proceeding only, Patent Owner applies the
`Board’s construction for its analysis, but reserves the right to seek
`alternative constructions in other proceedings and matters.” PO Resp. 22.
`Notwithstanding this representation, Patent Owner characterized the
`construction of “reflecting walls” as “overly broad” in its Response. See,
`e.g., PO Resp. 30. Patent Owner did not specify why the construction was
`“overly broad” nor did it provide an alternative construction for “reflecting
`walls.”
`During oral argument, Patent Owner continued to take the position
`asserted in its Response. However, in response to Sony Corporation’s
`(“Petitioner”) argument and further questioning from the panel, Patent
`Owner answered affirmatively that it would like an opportunity to brief a
`construction of “reflecting walls” after the hearing. Petitioner objected. For
`reasons set out below, Patent Owner’s request is denied.3
`
`
`2 As relevant to this Order, the two cases have the identical issues and
`citations are to the ’958 IPR.
`3 At the hearing we stated that an order would not issue if authorization for
`further briefing was denied. However, an order is deemed necessary for
`purposes of the making the record clear.
`2
`
`
`
`IPR2017-00958 (Patent 7,023,034 B2)
`IPR2017-00960 (Patent 7,023,034 B2)
`
`Petitioner’s Reply (“Pet. Reply,” Paper 22) argued that there was an
`inconsistency between applying our construction “for purposes of this
`proceeding only” and contending that construction was overly broad.
`Pet. Reply 11–12 (citing PO Resp. 30). Petitioner’s Reply was filed after the
`Response. Also after the Response was filed, the deposition of Patent
`Owner’s expert, Dr. Afromowitz (Ex. 1020) was taken. Importantly,
`Dr. Afromowitz’s testimony was based on the Panel’s preliminary
`construction of “reflecting walls.” Specifically, Dr. Afromowitz testified
`that the construction of “reflecting walls” from the Institution Decision did
`not require that a minimum amount of light be reflected. Ex. 1002, 131:2–
`22; see also Pet. Reply 24–25 (arguing Dr. Afromowitz “acknowledged the
`nature of the construction”). Only after the events subsequent to its
`Response does Patent Owner seek additional briefing and potentially
`supporting evidence.
`Patent Owner had ample opportunity to argue for an alternative
`construction of “reflecting walls” in its Response. It did not do so. Nor did
`Patent Owner contact the Panel prior to the oral argument to request
`authorization for additional claim construction briefing. As noted above,
`Patent Owner has already accepted our preliminary construction for
`purposes of the proceedings. The statements made in the Response are clear
`and the addition of an “overly broad” argument that does not specify what is
`overly broad does not provide sufficient reason to authorize additional
`briefing. Additionally, we are not persuaded that more briefing would
`further focus the issues in dispute.
`
`3
`
`
`
`IPR2017-00958 (Patent 7,023,034 B2)
`IPR2017-00960 (Patent 7,023,034 B2)
`
`
`ORDER
`
`Accordingly, it is
`ORDERED that the Patent Owner is not authorized to file a brief
`concerning the construction of “reflecting walls;” and
`FURTHER ORDERED that a copy of this Order will be filed in each
`of the ’958 and ’960 IPRs.
`
`PETITIONER:
`Matthew Smith
`smith@smithbaluch.com
`
`PATENT OWNER:
`
`Terry Saad
`tsaad@bcpc-law.com
`
`Nicholas Kliewer
`nkliewer@bcpc-law.com
`
`4
`
`
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