`Tel: 571-272-7822
`
`Paper No. 9
`Entered: August 2, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`NEW NGC, INC. dba NATIONAL GYPSUM COMPANY,
`Petitioner,
`
`v.
`
`UNITED STATES GYPSUM COMPANY,
`Patent Owner.
`
`
`
`Cases IPR2017–01011 (Patent 7,964,034)
`IPR2017–01086 (Patent 6,632,550)
`
`
`Before RAE LYNN P. GUEST, JON B. TORNQUIST, and JEFFREY W.
`ABRAHAM, Administrative Patent Judges.
`
`TORNQUIST, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`IPR2017–01011 (Patent 7,964,034)
`IPR2017–01086 (Patent 6,632,550)
`
`On July 31, 2017, a conference call was conducted between Judges
`
`Guest, Abraham, and Tornquist and counsel for Petitioner and Patent Owner.
`The purpose of the call was to discuss Petitioner’s request to file a reply to
`Patent Owner’s Preliminary Response in IPR2017–01011 and IPR2017–
`01086.
`On the call, Petitioner explained that it was seeking authorization to
`file the replies in order to address three issues: (1) whether the version of 35
`U.S.C. § 102(e) in force post–November 29, 2000 is applicable to the
`Hjelmeland (Ex. 1008) reference; (2) whether Hjelmeland is, in any event,
`prior art under §102(a); and (3) whether additional evidence of record
`demonstrates that the subject matter identified in the Hjelmeland reference
`by Petitioner was generally known in the art.
`
`Patent Owner opposed the request, asserting that: (1) to the extent
`Petitioner considered the post–November 29, 2000 version of § 102(e)
`applicable to Hjelmeland, it should have raised such arguments in the
`Petition; (2) any argument by Petitioner that Hjelmeland is prior art under
`§ 102(a) would constitute an improper new ground of unpatentability; and
`(3) to the extent additional evidence of record supports Petitioner’s
`arguments relating to the subject matter identified in Hjelmeland, good cause
`does not exist to allow a reply to re-identify this evidence.
`
`Upon conferring, the panel authorized Petitioner to file a five page
`reply, addressing the issue of whether Hjelmeland is prior art under § 102(e).
`We also instructed Petitioner to identify where in the Petition Hjelmeland
`was asserted as prior art under § 102(a) and, if such an assertion was not set
`forth expressly in the Petition, to address whether Hjelmeland is prior art
`under § 102(a) and why it would be appropriate to consider such an
`
`2
`
`
`
`IPR2017–01011 (Patent 7,964,034)
`IPR2017–01086 (Patent 6,632,550)
`
`argument, set forth for the first time in a reply. Petitioner was not authorized
`to address any other arguments or evidence.
`We authorized Patent Owner to file a five page sur–reply.
`ORDER
`
`It is hereby
`ORDERED that Petitioner may file a five page reply to the
`Preliminary Response filed in IPR2017–01011 and the Preliminary
`Response filed in IPR2017–01086, on or before August 7, 2017, limited to
`the issues discussed above; and
`FURTHER ORDERED that Patent Owner may file a five page sur–
`reply on or before August 14, 2017.
`
`3
`
`
`
`IPR2017–01011 (Patent 7,964,034)
`IPR2017–01086 (Patent 6,632,550)
`
`
`PETITIONER:
`
`Ross R. Barton
`Benjamin Pleune
`Lauren E. Burrow
`Stephen Lareau
`Tasneem Delphry
`ALSTON & BIRD LLP
`ross.barton@alston.com
`ben.pleune@alston.com
`lauren.burrow@alston.com
`stephen.lareau@alston.com
`tasneem.delphry@alston.com
`
`PATENT OWNER:
`
`Timothy P. Maloney
`Karl R. Fink
`FITCH, EVEN, TABIN & FLANNERY LLP
`120 South LaSalle Street, Suite 1600
`Chicago, Illinois 60603
`tpmalo@fitcheven.com
`krfink@fitcheven.com
`
`
`
`
`4
`
`
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