`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`NEW NGC, INC., dba NATIONAL GYPSUM COMPANY,
`Petitioner
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`v.
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`UNITED STATES GYPSUM COMPANY,
`Patent Owner.
`____________________
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`Case No. IPR2017-01088
`U.S. Patent No. 7,425,236
`____________________
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`MOTION & CERTIFICATION UNDER 37 C.F.R. § 42.100(b)
`REQUESTING EXPIRED PATENT CLAIM CONSTRUCTION
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`US Patent and Trademark Office
`PO Box 1450
`Alexandria, Virginia 22313-1450
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`Motion & Certification Under 37 C.F.R. 42.100(b)
`Case IPR2017-01088
`U.S. Patent No. 7,425,236
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`Notice of Request for Relief
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`I.
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`Pursuant to 37 C.F.R. §§ 42.21(a) and 42.100(b), Patent Owner United States
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`Gypsum Company (“USG”) requests that the Board apply a district court-type claim
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`construction approach in this proceeding. Amended Rule 37 C.F.R. § 42.100(b)
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`(effective May 2, 2016) provides in part:
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`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.
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`The patent subject to this proceeding, U.S. Patent 7,425,236 (’236 patent) was
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`filed on June 11, 2007, and claims priority to Application No. 08/916,058, which was
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`filed on August 21, 1997. (See Ex. 1029.) Thus, the ’236 patent will expire 20 years
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`from filing, i.e., no later than August 21, 2017. Accordingly, the ’236 patent will
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`necessarily expire within 18 months from the entry of the Notice of Filing Date
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`Accorded to Petition. See also Section II, infra.
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`This motion is made within 30 days from the filing of the Petition. Petitioner
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`filed its Petition for inter partes review against the ’236 patent on March 17, 2017.
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`(Paper 1.) This motion is made on April 13, 2017.
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`2
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`
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`Motion & Certification Under 37 C.F.R. 42.100(b)
`Case IPR2017-01088
`U.S. Patent No. 7,425,236
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`In its Petition, Petitioner noted the approaching expiration of the ’236 patent
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`and has already applied claim constructions under both the broadest reasonable
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`interpretation standard as well as a district court-type claim construction under
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`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). (Paper 1 at 10–16.)
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`On April 5, 2017, the Board issued its Notice Of Filing Date Accorded to
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`Petition And Time For Filing Patent Owner Preliminary Response, making USG’s
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`preliminary response due July 5, 2017. (Paper 3 at 1–2.) USG intends to file a
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`preliminary response in which it will address a district court-type claim construction
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`under Phillips.
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`On April 12, 2017, the Board authorized USG to file this motion under 37
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`C.F.R. § 42.100(b).
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`II. Certification
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`USG hereby certifies, through the undersigned signature of its counsel, that
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`the ’236 patent will expire no later than August 21, 2017 (see Ex. 1029), which is 20
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`years from the filing date of the application from which the ’236 patent claims
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`priority. 35 U.S.C. § 154. This expiration date is within 18 months from the entry of
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`the Notice of Filing Date Accorded to Petition.
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`3
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`Motion & Certification Under 37 C.F.R. 42.100(b)
`Case IPR2017-01088
`U.S. Patent No. 7,425,236
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`III. Requested Relief
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`USG respectfully requests that the Board apply a district court-type claim
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`construction in this proceeding.
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`By: /Karl R. Fink/
`Timothy P. Maloney
`Reg. No. 38,233
`tpmalo@fitcheven.com
`Karl R. Fink
`Reg. No. 34,161
`krfink@fitcheven.com
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`Date: April 13, 2017
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`120 South LaSalle Street
`Suite 1600
`Chicago, Illinois 60603
`(312) 577-7000
`(312) 577-7007 (fax)
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`Motion & Certification Under 37 C.F.R. 42.100(b)
`Case IPR2017-01088
`U.S. Patent No. 7,425,236
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies service of the
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`foregoing MOTION & CERTIFICATION UNDER 37 C.F.R. 42.100(b)
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`REQUESTING EXPIRED PATENT CLAIM CONSTRUCTION on counsel of
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`record for Petitioner by filing this document through the PTAB E2E System as well
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`as by delivering a copy via email to the following addresses:
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`ross.barton@alston.com,
`ben.pleune@alston.com,
`lauren.burrow@alston.com,
`stephen.lareau@alston.com,
`tasneem.delphry@alston.com,
`adam.doane@alston.com
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`By: /Karl R. Fink/
`Timothy P. Maloney
`Reg. No. 38,233
`tpmalo@fitcheven.com
`Karl R. Fink
`Reg. No. 34,161
`krfink@fitcheven.com
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`Date: April 13, 2017
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`120 South LaSalle Street
`Suite 1600
`Chicago, Illinois 60603
`(312) 577-7000
`(312) 577-7007 (fax)
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