Trials@uspto.gov
`571-272-7822
`
`
`
`Paper: 18
`Entered: December 21, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MLB ADVANCED MEDIA, L.P.,
`Petitioner,
`
`v.
`
`FRONT ROW TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01127
`Patent 8,583,027 B2
`____________
`
`Before JUSTIN T. ARBES, KERRY BEGLEY, and
`TERRENCE W. McMILLIN, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`571-272-7822
`
`
`
`Paper: 18
`Entered: December 21, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MLB ADVANCED MEDIA, L.P.,
`Petitioner,
`
`v.
`
`FRONT ROW TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01127
`Patent 8,583,027 B2
`____________
`
`Before JUSTIN T. ARBES, KERRY BEGLEY, and
`TERRENCE W. McMILLIN, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`IPR2017-01127
`Patent 8,583,027 B2
`
`
`A conference call in the above proceeding was held on December 20,
`2017, among respective counsel for Petitioner and Patent Owner, and Judges
`Arbes, Begley, and McMillin. The call was held to discuss two issues
`regarding Patent Owner’s Motion to Amend (Paper 14).
`First, Patent Owner stated that, to comply with its duty of candor
`under 37 C.F.R. § 42.11(a), it filed with its Motion to Amend and shortly
`thereafter a list of approximately 1,100 references (Exhibit 2001) and copies
`of a large subset of the foreign patents and non-patent literature references
`on the list that were in Patent Owner’s possession (Exhibits 2002–2036).
`Patent Owner explained that the references were cited in related litigation
`and various reexaminations of patents related to the challenged patent in this
`proceeding. Patent Owner inquired as to whether it also should file copies
`of the United States patents on the list or whether there is another procedural
`mechanism Patent Owner should follow to ensure that it complies with its
`duty of candor.
`Petitioner sought authorization to file a motion to strike the exhibits
`because none of them are cited or substantively discussed in the Motion to
`Amend. Petitioner also stated that it could not determine how to object to
`the exhibits, if necessary, because it was unknown how Patent Owner
`intended to use them. Petitioner requested that the deadline for objecting to
`the exhibits under 37 C.F.R. § 42.64(b)(1) be extended until after a decision
`on whether the exhibits will remain in the record.
`Second, Patent Owner’s Motion to Amend itself is 24 pages. The
`Motion, however, also includes Appendices A–C, which show clean and
`modified versions of Patent Owner’s proposed substitute claims, and
`Appendices D–F, which are approximately 282 pages of claim charts
`
`
`
`2
`
`
`
`IPR2017-01127
`Patent 8,583,027 B2
`
`purportedly showing written description support for the proposed substitute
`claims in various applications as filed. Petitioner sought authorization to file
`a motion to strike the Motion to Amend for violating the 25-page limit
`set forth in 37 C.F.R. § 42.24(a)(1)(vi), when counting the Motion itself and
`Appendices D–F, and for improperly incorporating arguments in Appendices
`D–F by reference under 37 C.F.R. § 42.6(a)(3). Patent Owner responded by
`citing 37 C.F.R. § 42.24(a)(1), which provides that the word count for a
`motion to amend does not include a “claim listing,” and 37 C.F.R.
`§ 42.121(b), which provides that “[a] motion to amend claims must include a
`claim listing, which claim listing may be contained in an appendix to the
`motion, show the changes clearly, and set forth . . . [t]he support in the
`original disclosure of the patent for each claim that is added or amended”
`(emphasis added).1 Patent Owner read § 42.121(b) as providing that the
`claims “and” the written description support are part of the required “claim
`listing.” Patent Owner also argued that Appendices D–F are merely quoted
`excerpts from the earlier applications and do not constitute “arguments” that
`are incorporated by reference in the Motion, and requested permission to
`re-file if the Motion to Amend was improper. Petitioner disagreed with
`Patent Owner’s reading of § 42.121(b).
`We took both matters under advisement. After further consideration,
`we determine that briefing from the parties is appropriate. See 37 C.F.R.
`§ 42.20(d). First, Petitioner is authorized to file a motion to strike Exhibits
`
`
`1 See Amendments to the Rules of Practice for Trials Before the Patent Trial
`and Appeal Board, 80 Fed. Reg. 28,561, 28,562 (May 19, 2015) (describing
`the final rule amending § 42.121(b) “to permit an appendix for the claim
`listing accompanying a motion to amend that is not counted toward the
`25-page limitation”).
`
`
`
`3
`
`
`
`IPR2017-01127
`Patent 8,583,027 B2
`
`2001–2036, and Patent Owner is authorized to file an opposition. The
`parties should address in their papers whether Patent Owner’s list of
`references and accompanying documents should remain in the record, as
`well as the proper mechanism(s) for patent owners to comply with the duty
`of candor when filing a motion to amend. We will extend the deadline for
`filing objections to the exhibits until after we decide whether the exhibits
`should remain in the record.
`Second, Petitioner is authorized to file a motion to strike the Motion
`to Amend, and Patent Owner is authorized to file an opposition. If Patent
`Owner desires to re-file its Motion to Amend in the event the motion to
`strike is granted, Patent Owner should explain in its opposition why it
`should be permitted to do so after the deadline for filing such a motion.
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner is authorized to file a motion to strike
`Exhibits 2001–2036, limited to five pages, by December 29, 2017, and
`Patent Owner is authorized to file an opposition, limited to five pages, by
`January 8, 2018;
`FURTHER ORDERED that the deadline to object to Exhibits
`2001–2036 under 37 C.F.R. § 42.64(b)(1) is extended until further notice;
`and
`
`FURTHER ORDERED that Petitioner is authorized to file a motion to
`strike Patent Owner’s Motion to Amend, limited to five pages, by December
`29, 2017, and Patent Owner is authorized to file an opposition, limited to
`five pages, by January 8, 2018.
`
`
`
`4
`
`
`
`IPR2017-01127
`Patent 8,583,027 B2
`
`PETITIONER:
`
`George C. Beck
`Chase J. Brill
`FOLEY & LARDNER LLP
`gbeck@foley.com
`cbrill@foley.com
`
`
`PATENT OWNER:
`
`Richard T. Black
`Benjamin J. Hodges
`Kevin Ormiston
`FOSTER PEPPER PLLC
`rich.black@foster.com
`
`Richard Krukar
`ORTIZ & LOPEZ, PLLC
`krukar@olpatentlaw.com
`
`
`
`
`5
`
`
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