`571-272-7822
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`Paper No. 17
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` Entered: May 24, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`FUJIFILM CORPORATION,
`Petitioner,
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`v.
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`SONY CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2017-01389
`Patent 6,896,959 B2
`____________
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`
`
`Before JON B. TORNQUIST, JEFFREY W. ABRAHAM, and
`ELIZABETH M. ROESEL, Administrative Patent Judges.
`
`
`
`ABRAHAM, Administrative Patent Judge.
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`
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`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
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`
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`IPR2017-01389
`Patent 6,896,959 B2
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`Fujifilm Corporation (“Petitioner”) filed a Petition seeking inter
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`partes review of claims 1–18 (“challenged claims”) of U.S. Patent No.
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`6,896,959 B2 (Ex. 1001, “the ’959 patent”) based on the following grounds:
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`Ground
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`Reference(s)
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`Statutory Basis
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`1
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`2
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`3
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`4
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`5
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`6
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`7
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`8
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`9
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`10
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`11
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`Mori1
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`Sasaki2
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`Aonuma3
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`Aunoma and Mori
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`Aonuma and
`Sasaki
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`Mori and Aonuma
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`Mori and Sasaki
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`Sasaki and
`Aonuma
`Mori, Mee,4 and
`Tokuoka5
`Sasaki, Mee, and
`Tokuoka
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`Aonuma
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`§ 102
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`§ 102
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`§ 102
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`§ 103
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`§ 103
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`§ 103
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`§ 103
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`§ 103
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`§ 103
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`§ 103
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`§ 103
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`Claim(s)
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`Challenged
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`1–9 and 11–16
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`1–9 and 11–18
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`1, 2, and 4–18
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`1–18
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`1 and 6
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`10, 17, and 18
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`17 and 18
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`10
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`1–9 and 11–16
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`1–9 and 11–18
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`1, 2, and 4–18
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`1 Mori et al., JP 2002-74641A, published Mar. 15, 2002 (“Mori,” Ex. 1003
`(certified translation); Ex. 1022 (original)).
`2 Sasaki et al., JP 2000-40217A, published Feb. 8, 2000 (“Sasaki,” Ex. 1004
`(certified translation); Ex. 1019 (original)).
`3 Aonuma, JP 2001-319315A, published Nov. 16, 2001 (“Aonuma,”
`Ex. 1002 (certified translation); Ex. 1018 (original)).
`4 Magnetic Recording, Volume I: Technology (C. Denis Mee & Eric. D.
`Daniel eds., 1987) (“Mee,” Ex. 1005).
`5 Tokuoka, U.S. Patent No. 4,347,291, issued Aug. 31, 1982 (“Tokuoka,”
`Ex. 1006).
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`2
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`IPR2017-01389
`Patent 6,896,959 B2
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`Paper 1 (“Pet.”). Sony Corporation (“Patent Owner”) filed a Patent Owner
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`Preliminary Response to the Petition. Paper 8 (“Prelim. Resp.”). In our
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`institution decision, we ordered review of all challenged claims but limited
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`the proceeding to Grounds 1, 2, and 4–8. Paper 9. On April 27, 2018, we
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`modified our institution decision to include review of “all challenged claims
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`and all grounds presented in the Petition.” Paper 15, 2.
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`
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`In view of our April 27, 2018 Order modifying the institution
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`decision, the parties filed a Joint Proposal for Additional Briefing and a
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`Revised Schedule. Paper 16. According to the parties’ Joint Proposal,
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`“Petitioner agrees to withdraw Ground 9 (combination of Mori in view of
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`Mee and Tokuoka) and Ground 10 (combination of Sasaki in view of Mee
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`and Tokuoka) from its Petition.” Id. at 1. Grounds 3 and 11 remain in the
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`proceeding, but Patent Owner agrees it will not seek to cross-examine
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`Petitioner’s declarant, Dr. Wang, on these grounds. Id.
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`
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`The parties agree that Patent Owner may file a supplemental
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`Patent Owner Response addressing only Grounds 3 and 11 and limited to
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`5,000 words. Id. The parties also agree that the supplemental response and
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`supporting supplemental declaration of Dr. Bain (if necessary) shall be filed
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`by June 15, 2018.
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`
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`The parties further agree to modify DUE DATES 2 and 4 in the
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`original Scheduling Order (Paper 10), such that the new deadline for DUE
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`DATE 2 is July 27, 2018, and the new deadline for DUE DATE 4 is
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`August 3, 2018. Paper 16, 1. The parties also agree that the deadline for
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`DUE DATE 3 is no longer applicable. Id.
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`
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`Removing Grounds 9 and 10 from this dispute, allowing the requested
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`briefing, and modifying the scheduling order, pursuant to the parties’ joint
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`3
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`IPR2017-01389
`Patent 6,896,959 B2
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`request, serves our overarching goal of resolving this proceeding in a just,
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`speedy, and inexpensive manner. 37 C.F.R. § 42.1(b).
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`Accordingly, it is hereby
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`ORDERED that the Petition is limited to Grounds 1–8 and 11;
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`FURTHER ORDERED that Patent Owner may file a supplemental
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`Patent Owner Response on or before June 15, 2018; such supplemental
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`response shall address only Grounds 3 and 11, and is limited to 5,000 words;
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`FURTHER ORDERED that Patent Owner shall not cross-examine
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`Dr. Wang on Grounds 3 and 11; and
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`
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`FURTHER ORDERED that the schedule is modified such that the
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`new deadline for DUE DATE 2 is July 27, 2018, and the new deadline for
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`DUE DATE 4 is August 3, 2018.
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`4
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`IPR2017-01389
`Patent 6,896,959 B2
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`PETITIONER:
`
`Eliot Williams
`Eliot.williams@bakerbotts.com
`
`Robert Scheinfeld
`Robert.scheinfeld@bakerbotts.com
`
`Robert Maier
`Robert.maier@bakerbotts.com
`
`Paul Ragusa
`Paul.ragusa@bakerbotts.com
`
`Jessica Lin
`Jessica.lin@bakerbotts.com
`
`PATENT OWNER:
`
`Kevin Johnson
`kevinjohnson@quinnemanuel.com
`
`Joseph Milowic III
`josephmilowic@quinnemanuel.com
`
`Brett Watkins
`brettwatkins@quinnemanuel.com
`
`John McKee
`johnmckee@quinnemanuel.com
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`5
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