`Entered: August 16, 2017
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WENDT CORPORATION,
`Petitioner,
`
`v.
`
`IQASR, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01080
`Patent No. 9,132,432 B2
`____________
`
`Before BEVERLY M. BUNTING, KEVIN W. CHERRY, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`MARSCHALL, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`IPR2017-01080
`Patent 9,132,432 B2
`
`
`
`
`
`Wendt Corporation (“Petitioner”) requested a conference call regarding its
`
`request for authorization to file a Reply to the Preliminary Response filed by
`IQASR, LLC (“Patent Owner”). Patent Owner opposes Petitioner’s request. We
`convened the conference call on August 14, 2017, with Judges Marschall, Cherry,
`and Bunting and counsel for Petitioner and Patent Owner in attendance.
`
`Petitioner argues that a Reply is necessary to address the alleged
`indefiniteness of the term “magnetic fuzz” in the claims challenged in the Petition.
`The parties have already briefed the indefiniteness issue extensively. See Petition
`(“Pet.”) 14–31; Patent Owner’s Preliminary Response (“Prelim. Resp.”) 4–22.
`Petitioner requests that we “find all claims indefinite” based on the indefiniteness
`of “magnetic fuzz.” Pet. 31. Patent Owner argues that we should institute even if
`the term is “arguably indefinite . . . so that the Patent Owner may use its statutory
`right to file a motion to amend the claims to address any such indefiniteness issue.”
`Prelim. Resp. 4–5 (citing laws and regulations relating to amendments generally
`for support). Patent Owner also addresses the merits of Petitioner’s indefiniteness
`arguments. See id. at 6–22. Both parties rely on experts to support their respective
`positions. See Exs. 1004, 2001.
`
`According to Petitioner, the proposed Reply would address (1) the legal and
`policy reasons in support of declining to institute inter partes review due to
`indefiniteness; (2) reasons why the Board should make factual findings related to
`indefiniteness even though it cannot institute an inter partes review or issue a final
`decision finding any claims not patentable based on indefiniteness; and (3) Patent
`Owner’s use of its expert testimony. Petitioner does not seek to introduce
`additional expert testimony in conjunction with its proposed Reply. Finally,
`Petitioner argues that we should not institute an inter partes review on indefinite
`2
`
`
`
`
`
`IPR2017-01080
`Patent 9,132,432 B2
`
`
`
`
`
`claims merely to provide Patent Owner an opportunity to amend those claims and
`cure the indefiniteness, as Patent Owner proposes. Patent Owner argues that
`Petitioner provides insufficient grounds to justify a Reply. When queried, Patent
`Owner did not provide any support for its proposition in the Patent Owner
`Preliminary Response that we should institute review of claims with indefinite
`terms, to allow Patent Owner to amend those claims.
`
`After considering the respective positions of the parties, we find that
`Petitioner has not shown good cause to file a Reply. Petitioner already addressed
`the indefiniteness issue at length in the Petition, and had a full opportunity to
`present the legal, policy, and factual reasons in support of its position. Even if the
`Petition did not anticipate every argument Patent Owner or its expert would set
`forth in the Preliminary Response, that does not automatically entitle Petitioner to a
`Reply to address the new issues. As such, we do not view Petitioner’s present
`arguments as sufficient to warrant a Reply here. Regarding Petitioner’s argument
`that we should not institute on claims with indefinite terms merely to allow Patent
`Owner to amend the problematic terms and cure the indefiniteness problem, we
`agree. Patent Owner could not provide any support for that position, and we are
`unaware of any basis for such an approach. Petitioner need not file a Reply to
`further address the issue.
`
`
`ORDER
`
`Accordingly, it is hereby
`
`ORDERED that Petitioner’s request for authorization to file Reply to Patent
`
`Owner’s Preliminary Response is DENIED.
`
`
`3
`
`
`
`
`
`
`
`IPR2017-01080
`Patent 9,132,432 B2
`
`For PETITIONER:
`
`Robert Brunelli
`Kendria Pearson
`SHERIDAN ROSS P.C.
`rbrunelli@sheridanross.com
`kpearson@sheridanross.com
`
`For PATENT OWNER:
`
`Luke Santangelo
`Travis Whitsitt
`Misha Macaw
`SANTANGELO LAW OFFICES, P.C.
`lukes@idea-asset.com
`twhitsitt@idea-asset.com
`misham@idea-asset.com
`
`
`
`
`4
`
`
`
`
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