Trials@uspto.gov
`571-272-7822
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`Paper No. 25
`Entered: May 17, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.; AND
`SAMSUNG ELECTRONICS AMERICA, INC.
`Petitioners
`
`v.
`
`IMAGE PROCESSING TECHNOLOGIES, LLC
`Patent Owner
`____________
`
` IPR2017-01190 (Patent 6,717,518 B1)1
`IPR2017-01218 (Patent 8,983,134 B2)
`
`____________
`
`
`Before JONI Y. CHANG, MIRIAM L. QUINN, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`McSHANE, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`1 We exercise our discretion to issue one order to be filed in each case. The
`parties, however, are not authorized to use this style heading in any
`subsequent papers without prior authorization.
`
`
`571-272-7822
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`Paper No. 25
`Entered: May 17, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.; AND
`SAMSUNG ELECTRONICS AMERICA, INC.
`Petitioners
`
`v.
`
`IMAGE PROCESSING TECHNOLOGIES, LLC
`Patent Owner
`____________
`
` IPR2017-01190 (Patent 6,717,518 B1)1
`IPR2017-01218 (Patent 8,983,134 B2)
`
`____________
`
`
`Before JONI Y. CHANG, MIRIAM L. QUINN, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`McSHANE, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`1 We exercise our discretion to issue one order to be filed in each case. The
`parties, however, are not authorized to use this style heading in any
`subsequent papers without prior authorization.
`
`
`
`IPR2017-01190 (Patent 6,717,518 B1)
`IPR2017-01218 (Patent 8,983,134 B2)
`
`
`I. BACKGROUND
`In Case IPR2017-01190 (“the -01190 case”), Samsung Electronics
`
`Co., Ltd. and Samsung Electronics America, Inc. (“Petitioner”) filed a
`Petition requesting inter partes review of claim 39 of U.S. Patent No.
`6,717,518 (“the ’518 patent”). Paper 2. There were three (3) obviousness
`grounds on which institution was requested. Id. at 3. Image Processing
`Technologies, LLC (“Patent Owner”) filed a Preliminary Response to the
`Petition. On October 3, 2017, we issued a Decision instituting inter partes
`review of claim 39 of the ’518 patent on two (2) of the three (3) asserted
`grounds for unpatentability. Paper 11.
`
`In Case IPR2017-01218 (“the -01218 case”), Petitioner filed a Petition
`requesting inter partes review of claims 3–6 of U.S. Patent No. 8,983,134
`(“the ’134 patent”). Paper 2. There were two (2) obviousness grounds on
`which institution was requested for claims 3–6. Id. at 3. Patent Owner filed
`a Preliminary Response to the Petition. On October 3, 2017, we issued a
`Decision instituting inter partes review of claim 3, and not claims 4–6, on
`the two (2) asserted grounds for unpatentability. Paper 11.
`
`A common Scheduling Order was entered in both the -01190 case and
`the -01218 case, setting the oral hearing date on June 29, 2018. Paper 12
`(both cases).
`
`On April 24, 2018, the U.S. Supreme Court held that a final written
`decision under 35 U.S.C. § 318(a) shall be with respect to the patentability
`of all of the claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138
`S.Ct. 1348, 1358 (2018). As noted above, in the -01190 case, although
`Petitioner challenged claim 39 of the ’518 patent on three grounds, we did
`not institute review on one ground. In the -01218 case, although Petitioner
`
`2
`
`
`
`IPR2017-01190 (Patent 6,717,518 B1)
`IPR2017-01218 (Patent 8,983,134 B2)
`
`challenged claim 3–6 of the ’134 patent, we did not institute review of
`claims 4–6 on the two grounds asserted. We modified our Decisions on
`Institution to institute on all of the challenged claims and on all of the
`grounds asserted in the Petitions in both the -01190 and -01218 cases. See
`-01190 case, Paper 24; -01218 case, Paper 25.
`
`On April 26, 2018, the Board received an email request from Patent
`Owner requesting leave to file a sur-reply in the -01218 case, which was
`responded to by an email authorizing the parties to file papers relating to the
`identification of the alleged out-of-proper-scope portions of Petitioner’s
`Rely at issue. On May 10, 2018, Patent Owner renewed its request for leave
`to file a sur-reply, which Petitioner opposes, and stated that “Patent Owner
`does not contend that Petitioner’s reply is beyond the proper scope of a
`reply.”
`
`On April 26, 2018, the Board also received an email from Petitioner
`requesting a change in the oral hearing date due to a conflict of a counsel,
`and the Board responded that the request could be further discussed at any
`call conducted regarding SAS Institute issues.
`
`
`II. PROCEDURES
`In the wake of the U.S. Supreme Court’s SAS Institute decision, we
`
`held a conference call with the parties on May 14, 2018, to discuss how to
`proceed in this cases.
`
`In the -01190 case, neither party requested additional briefing,
`however, neither party agreed to withdraw the newly-instituted ground from
`the proceeding.
`
`3
`
`
`
`IPR2017-01190 (Patent 6,717,518 B1)
`IPR2017-01218 (Patent 8,983,134 B2)
`
`In the -01218 case, Patent Owner did not want to file additional
`
`briefing, and did not believe that any Petitioner additional briefing should be
`permitted. However, to the extent that the Board permitted Petitioner to file
`additional briefing, Patent Owner also requested leave to be permitted to file
`responsive briefing. Petitioner requested additional briefing, but did not
`request that new evidence be permitted or that additional discovery be
`conducted, including expert depositions. Petitioner indicated that the
`briefing was requested to address issues on newly-instituted claims 4–6 as
`discussed in the Institution Decision. Petitioner and Patent Owner indicated
`a general agreement that if briefing were permitted, the briefing should be
`limited to 5,000 words per side. Petitioner indicated that its view was that
`briefing should be conducted with Patent Owner first filing its briefing, and
`then Petitioner filing its responsive briefing. Patent Owner disagreed with
`Petitioner’s proposed order of briefing, asserting that because Petitioner
`wanted the briefing, Petitioner’s briefing should be filed first, with Patent
`Owner’s responsive briefing to follow. The parties were in general
`agreement that the first round of briefing should be due in three weeks, with
`responding briefing due in another three weeks.
`
`We have considered the parties’ positions on additional briefing and
`determine that in the -01218 case Petitioner is authorized to file a
`supplemental brief addressing the claims on which the Board had previously
`denied institution. The supplemental brief is limited to the existing record in
`the proceeding, and shall address only the arguments and evidence in the
`Petition and the portions of the Decision to Institute related to the newly-
`instituted claims 4–6 of the ’134 patent. Petitioner may not raise new
`arguments or submit new evidence. Petitioner’s supplemental brief shall be
`
`4
`
`
`
`IPR2017-01190 (Patent 6,717,518 B1)
`IPR2017-01218 (Patent 8,983,134 B2)
`
`no more than eight (8) pages to be filed within two weeks of the date of this
`order. Patent Owner, at this time, is not authorized to file a response.
`
`We have considered Petitioner’s request for rescheduling the oral
`hearing date of June 29, 2018, and deny the request. The parties were
`provided notice of the oral hearing date in an October 3, 2017 Scheduling
`Order, and the request for a changed date was made at a late stage in the
`proceedings. The request generally states there is a conflict in a counsel’s
`schedule, however, we also note that Petitioner has multiple counsel of
`record in these proceedings.
`
`As to Patent Owner’s request for a sur-reply to Petitioner’s Reply in
`the -01218 case, Patent Owner’s stated reason for the request is that the
`proposed additional briefing would be helpful to the Board. Petitioner
`opposes the request, arguing that Patent Owner is trying to get the last word.
`We have considered the parties’ positions on the sur-reply request and, given
`that there is no dispute that Petitioner’s reply is within the proper scope of a
`reply, we deny Patent Owner’s request for leave to file a sur-reply in the
`-01218 case.
`
`III. ORDER
`Accordingly, it is hereby:
`
`ORDERED that in the -01218 case, Petitioner may file a supplemental
`
`brief addressing the newly-instituted claims, limited to eight (8) pages,
`within two weeks of the date of this order;
`
`FURTHER ORDERED that Petitioner’s request for rescheduling the
`June 29, 2018 oral hearing date in the -01190 and -01218 cases is denied;
`and
`
`5
`
`
`
`IPR2017-01190 (Patent 6,717,518 B1)
`IPR2017-01218 (Patent 8,983,134 B2)
`
`FURTHER ORDERED that Patent Owner’s request for leave to file a
`
`sur-reply to Patent Owner’s reply in the -01218 case is denied.
`
`6
`
`
`
`IPR2017-01190 (Patent 6,717,518 B1)
`IPR2017-01218 (Patent 8,983,134 B2)
`
`PETITIONER:
`John Kappos
`Nick Whilt
`Brian M. Cook
`Marc Pensabene
`Clarence Rowland
`O’MELVENY & MYERS LLP
`jkappos@omm.com
`nwhilt@omm.com
`bcook@omm.com
`mpensabene@omm.com
`crowland@omm.com
`
`
`PATENT OWNER:
`Chris Coulson
`ANDREWS KURTH KENYON LLP
`ccoulson@kenyon.com
`
`
`7
`
`
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