`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`NEW NGC, INC., dba NATIONAL GYPSUM COMPANY,
`Petitioner
`
`v.
`
`UNITED STATES GYPSUM COMPANY,
`Patent Owner.
`____________________
`
`Case No. IPR2017-01011
`U.S. Patent No. 7,964,034
`____________________
`
`MOTION & CERTIFICATION UNDER 37 C.F.R. § 42.100(b)
`REQUESTING EXPIRED PATENT CLAIM CONSTRUCTION
`
`
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`US Patent and Trademark Office
`PO Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`
`
`Motion & Certification Under 37 C.F.R. 42.100(b)
`Case IPR2017-01011
`U.S. Patent No. 7,964,034
`
`
`Notice of Request for Relief
`
`I.
`
`Pursuant to 37 C.F.R. §§ 42.21(a) and 42.100(b), Patent Owner United States
`
`Gypsum Company (“USG”) requests that the Board apply a district court-type claim
`
`construction approach in this proceeding. Amended Rule 37 C.F.R. § 42.100(b)
`
`(effective May 2, 2016) provides in part:
`
`A party may request a district court-type claim construction approach
`to be applied if a party certifies that the involved patent will expire
`within 18 months from the entry of the Notice of Filing Date Accorded
`to Petition. The request, accompanied by a party’s certification, must
`be made in the form of a motion under § 42.20, within 30 days from the
`filing of the petition.
`
`The patent subject to this proceeding, U.S. Patent 7,964,034 (’034 patent) was
`
`filed on June 9, 2010, and claims priority to Application No. 08/916,058, which was
`
`filed on August 21, 1997. (See Ex. 1029.) Thus, the ’034 patent will expire 20 years
`
`from filing, i.e., no later than August 21, 2017. Accordingly, the ’034 patent will
`
`necessarily expire within 18 months from the entry of the Notice of Filing Date
`
`Accorded to Petition. See also Section II, infra.
`
`This motion is made within 30 days from the filing of the Petition. Petitioner
`
`filed its Petition for inter partes review against the ’034 patent on March 17, 2017.
`
`(Paper 1.) This motion is made on April 13, 2017.
`
`2
`
`
`
`Motion & Certification Under 37 C.F.R. 42.100(b)
`Case IPR2017-01011
`U.S. Patent No. 7,964,034
`
`In its Petition, Petitioner noted the approaching expiration of the ’034 patent
`
`and has already applied claim constructions under both the broadest reasonable
`
`interpretation standard as well as a district court-type claim construction under
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). (Paper 1 at 9–15.)
`
`On April 5, 2017, the Board issued its Notice Of Filing Date Accorded to
`
`Petition And Time For Filing Patent Owner Preliminary Response, making USG’s
`
`preliminary response due July 5, 2017. (Paper 3 at 1–2.) USG intends to file a
`
`preliminary response in which it will address a district court-type claim construction
`
`under Phillips.
`
`On April 12, 2017, the Board authorized USG to file this motion under 37
`
`C.F.R. § 42.100(b).
`
`II. Certification
`
`USG hereby certifies, through the undersigned signature of its counsel, that
`
`the ’034 patent will expire no later than August 21, 2017 (see Ex. 1029), which is 20
`
`years from the filing date of the application from which the ’034 patent claims
`
`priority. 35 U.S.C. § 154. This expiration date is within 18 months from the entry of
`
`the Notice of Filing Date Accorded to Petition.
`
`3
`
`
`
`Motion & Certification Under 37 C.F.R. 42.100(b)
`Case IPR2017-01011
`U.S. Patent No. 7,964,034
`
`
`III. Requested Relief
`
`USG respectfully requests that the Board apply a district court-type claim
`
`construction in this proceeding.
`
`By: /Karl R. Fink/
`Timothy P. Maloney
`Reg. No. 38,233
`tpmalo@fitcheven.com
`Karl R. Fink
`Reg. No. 34,161
`krfink@fitcheven.com
`
`
`
`
`Date: April 13, 2017
`
`
`120 South LaSalle Street
`Suite 1600
`Chicago, Illinois 60603
`(312) 577-7000
`(312) 577-7007 (fax)
`
`
`
`
`
`
`
`4
`
`
`
`
`
`Motion & Certification Under 37 C.F.R. 42.100(b)
`Case IPR2017-01011
`U.S. Patent No. 7,964,034
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies service of the
`
`foregoing MOTION & CERTIFICATION UNDER 37 C.F.R. 42.100(b)
`
`REQUESTING EXPIRED PATENT CLAIM CONSTRUCTION on counsel of
`
`record for Petitioner by filing this document through the PTAB E2E System as well
`
`as by delivering a copy via email to the following addresses:
`
`ross.barton@alston.com,
`ben.pleune@alston.com,
`lauren.burrow@alston.com,
`stephen.lareau@alston.com,
`tasneem.delphry@alston.com,
`adam.doane@alston.com
`
`By: /Karl R. Fink/
`Timothy P. Maloney
`Reg. No. 38,233
`tpmalo@fitcheven.com
`Karl R. Fink
`Reg. No. 34,161
`krfink@fitcheven.com
`
`
`Date: April 13, 2017
`
`
`120 South LaSalle Street
`Suite 1600
`Chicago, Illinois 60603
`(312) 577-7000
`(312) 577-7007 (fax)
`
`
`
`
`
`5
`
`
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