Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 80
`Entered: July 6, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`v.
`PRISUA ENGINEERING CORP.,
`Patent Owner.
`____________
`
`IPR2017-01188
`Patent 8,650,591 B2
`____________
`
`
`Before BARBARA A. PARVIS, STACEY G. WHITE, and
`TERRENCE W. MCMILLIN, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`
`ORDER
`Conduct of Proceeding on Remand
`37 C.F.R. § 42.5
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 80
`Entered: July 6, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`v.
`PRISUA ENGINEERING CORP.,
`Patent Owner.
`____________
`
`IPR2017-01188
`Patent 8,650,591 B2
`____________
`
`
`Before BARBARA A. PARVIS, STACEY G. WHITE, and
`TERRENCE W. MCMILLIN, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`
`ORDER
`Conduct of Proceeding on Remand
`37 C.F.R. § 42.5
`
`
`
`IPR2017-01188
`Patent 8,650,591 B2
`
`
`This case is before us on remand from the Federal Circuit. Samsung
`Elecs. Am., Inc. v. Prisua Eng’r Corp., 948 F.3d 1342, 1354 (Fed. Cir.
`2020). A conference call was held on May 13, 2020 to discuss procedures on
`remand. We listened to proposals from both parties.
`Petitioner requests briefing on one topic—whether estoppel or law of
`the case doctrine applies with respect to Petitioner’s ground that claim 1
`would have been obvious over Sitrick because claim 1 is the same as claim
`11, except claim 1 recites one additional limitation. Petitioner requests ten
`(10) pages and three (3) weeks for its brief and agrees to Patent Owner
`having the same for its response. Patent Owner opposes Petitioner’s request
`on the basis that the aforementioned doctrines do not apply in this case.
`Patent Owner requests authorization to file a motion to terminate the
`proceeding under two theories: (1) NHK Spring Co. v. Intri-Plex Techs.,
`Inc., IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) (Decision Denying
`Institution of Inter Partes Review) (“NHK”) applies because the trial in the
`instant proceeding is over and validity was already considered; and (2) we
`cannot construe claim 1 due to IPXL-type1 indefiniteness, which has not
`been disputed by either party. Patent Owner also asserts if briefing pointing
`to arguments and evidence already in the record would be helpful to the
`panel, Petitioner should file first and Patent Owner would like a responsive
`brief. Patent Owner asks for the default rules to apply regarding page length
`and timing.
`Petitioner opposes Patent Owner’s motion to terminate on the basis
`that the efficiency considerations Patent Owner relies on do not apply at this
`
`1 IPXL Holdings, LLC v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir.
`2005) (“IPXL”).
`
`2
`
`
`
`IPR2017-01188
`Patent 8,650,591 B2
`
`late, post-remand juncture in the proceeding. Petitioner also indicated it does
`not seek a brief pointing to arguments and evidence already in the record.
`We determine that it would be helpful to the panel to have briefing on
`whether estoppel or law of the case doctrine applies and whether a motion to
`terminate is appropriate. The parties’ opposing arguments may be raised in
`responsive briefs. We, therefore, grant the parties’ requests to brief their
`proposed topics. Specifically, Petitioner is authorized to file a ten (10) page
`brief regarding whether estoppel or law of the case doctrine applies with
`respect to Petitioner’s ground that claim 1 would have been obvious over
`Sitrick and Patent Owner is authorized to file a response of the same length.
`Also, Patent Owner is authorized to file its motion to terminate the
`proceeding under both theories limited to fifteen (15) pages, and Petitioner is
`authorized to file an opposition of the same length. The parties are given
`three (3) weeks from the date of entry of this order to file each authorized
`opening paper and three (3) weeks from receipt of the opening paper to file
`the response or opposition.
`The panel has determined that the record is sufficiently clear and
`further briefing pointing to past briefing would not be particularly useful.
`Accordingly, no further briefing is authorized at this time.
`For the foregoing reasons, it is
`ORDERED that Petitioner is authorized to file a brief regarding
`whether estoppel or law of the case doctrine applies with respect to
`Petitioner’s ground that claim 1 would have been obvious over Sitrick
`limited to ten (10) pages and due three (3) weeks from the date of entry of
`this order;
`
`3
`
`
`
`IPR2017-01188
`Patent 8,650,591 B2
`
`
`FURTHER ORDERED that Patent Owner is authorized to file a
`responsive brief limited to responding to arguments in Petitioner’s brief and
`also limited to ten (10) pages and due three (3) weeks from the date of filing
`of Petitioner’s brief;
`FURTHER ORDERED that Patent Owner is authorized to file a
`Motion to Terminate the instant proceeding limited to fifteen (15) pages and
`due three (3) weeks from the date of entry of this order; and
`FURTHER ORDERED that Petitioner is authorized to file a
`responsive brief limited to responding to arguments in Patent Owner’s
`Motion and also limited to fifteen (15) pages and due three (3) weeks from
`the date of filing of Patent Owner’s Motion; and
`FURTHER ORDERED that no reply, sur-reply, or other briefing is
`authorized at this time and no new evidence may be introduced.
`
`
`
`4
`
`
`
`IPR2017-01188
`Patent 8,650,591 B2
`
`PETITIONER:
`
`Heath Briggs
`briggsh@gtlaw.com
`
`Patrick McCarthy
`mccarthyp@gtlaw.com
`
`Barry Schindler
`schindlerb@gtlaw.com
`
`PATENT OWNER:
`
`Bryan Wilson
`bwilson@careyrodriguez.com
`
`Thomas Landry
`tlandry@careyrodriguez.com
`
`Adam Underwood
`aunderwood@careyrodriguez.com
`
`John Carey
`jcarey@careyrodriguez.com
`
`5
`
`
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