Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 17
`
` Entered: May 24, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FUJIFILM CORPORATION,
`Petitioner,
`
`v.
`
`SONY CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2017-01390
`Patent 7,115,331 B2
`____________
`
`
`
`Before JON B. TORNQUIST, JEFFREY W. ABRAHAM, and
`ELIZABETH M. ROESEL, Administrative Patent Judges.
`
`
`
`ABRAHAM, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`571-272-7822
`
`
`Paper No. 17
`
` Entered: May 24, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FUJIFILM CORPORATION,
`Petitioner,
`
`v.
`
`SONY CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2017-01390
`Patent 7,115,331 B2
`____________
`
`
`
`Before JON B. TORNQUIST, JEFFREY W. ABRAHAM, and
`ELIZABETH M. ROESEL, Administrative Patent Judges.
`
`
`
`ABRAHAM, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`IPR2017-01390
`Patent 7,115,331 B2
`
`
`Fujifilm Corporation (“Petitioner”) filed a Petition seeking inter
`
`partes review of claims 1–18 (“challenged claims”) of U.S. Patent No.
`
`7,115,331 B2 (Ex. 1001, “the ’331 patent”) based on the following grounds:
`
`Ground
`
`Reference(s)
`
`Statutory Basis
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`Mori1
`
`Sasaki2
`Aonuma3 and
`Mori
`
`Sasaki and Mori
`
`Mori and Aunoma
`
`Mori and Sasaki
`Mori, Mee,4 and
`Tokuoka5
`Sasaki, Mee, and
`Tokuoka
`
`Mori and Mee
`
`10
`
`Sasaki and Mee
`
`
`
`Claim(s)
`
`Challenged
`
`1–11, 13, and 16–18
`
`1–11 and 13–18
`
`1–18
`
`1–11 and 13–18
`
`12, 14, and 15
`
`14 and 15
`
`§ 102
`
`§ 102
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`1–11, 13, and 16–18
`
`§ 103
`
`1–11 and 13–18
`
`§ 103
`
`§ 103
`
`1–11, 13, and 16–18
`
`1–11 and 13–18
`
`
`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).
`
`
`
`
`2
`
`
`
`IPR2017-01390
`Patent 7,115,331 B2
`
`Paper 1 (“Pet.”). Sony Corporation (“Patent Owner”) filed a Patent Owner
`
`Preliminary Response to the Petition. Paper 8 (“Prelim. Resp.”). In our
`
`institution decision, we ordered review of all challenged claims but limited
`
`the proceeding to Grounds 1 (for claims 1, 3–11 and 13 only), 3, 5, 6, 9, and
`
`10. Paper 9. On April 27, 2018, we modified our institution decision to
`
`include review of “all challenged claims and all grounds presented in the
`
`Petition.” Paper 15, 2.
`
`
`
`In view of our April 27, 2018 Order modifying the institution
`
`decision, the parties filed a Joint Proposal for Additional Briefing and a
`
`Revised Schedule. Paper 16. According to the parties’ Joint Proposal,
`
`“Petitioner agrees to withdraw Ground 7 (combination of Mori in view of
`
`Mee and Tokuoka) and Ground 8 (combination of Sasaki in view of Mee
`
`and Tokuoka) from its Petition.” Id. at 1. Ground 2, Ground 4, and the
`
`newly-instituted claims in Ground 1 (claims 2 and 16–18) remain in the
`
`proceeding, but Patent Owner agrees it will not seek to cross-examine
`
`Petitioner’s declarant, Dr. Wang, on these grounds. Id.
`
`
`
`The parties agree that Patent Owner may file a supplemental Patent
`
`Owner Response addressing only Ground 2, Ground 4, and the newly-
`
`instituted claims in Ground 1 (claims 2 and 16–18) and limited to 5,000
`
`words. Id. The parties also agree that the supplemental response and
`
`supporting supplemental declaration of Dr. Bain (if necessary) shall be filed
`
`by June 15, 2018.
`
`
`
`
`
`The parties further agree to modify DUE DATES 2 and 4 in the
`
`original Scheduling Order (Paper 10) such that the new deadline for DUE
`
`DATE 2 is July 27, 2018, and the new deadline for DUE DATE 4 is August
`
`
`
`3
`
`
`
`IPR2017-01390
`Patent 7,115,331 B2
`
`3, 2018. Paper 16, 1. The parties also agree that the deadline for DUE
`
`DATE 3 is no longer applicable. Id.
`
`
`
`Removing Grounds 7 and 8 from this dispute, allowing the requested
`
`briefing, and modifying the scheduling order, pursuant to the parties’ joint
`
`request, serves our overarching goal of resolving this proceeding in a just,
`
`speedy, and inexpensive manner. 37 C.F.R. § 42.1(b).
`
`
`
`
`
`
`
`Accordingly, it is hereby
`
`ORDERED that the Petition is limited to Grounds 1–6, 9, and 10;
`
`FURTHER ORDERED that Patent Owner may file a supplemental
`
`Patent Owner Response on or before June 15, 2018; such supplemental
`
`response shall address only Ground 2, Ground 4, and the newly-instituted
`
`claims in Ground 1 (claims 2 and 16–18), and is limited to 5,000 words;
`
`FURTHER ORDERED that Patent Owner shall not cross-examine
`
`Dr. Wang on Ground 2, Ground 4, and the newly-instituted claims in
`
`Ground 1 (claims 2 and 16–18); and
`
`
`
`FURTHER ORDERED that the schedule is modified such that the
`
`new deadline for DUE DATE 2 is July 27, 2018, and the new deadline for
`
`DUE DATE 4 is August 3, 2018.
`
`
`
`4
`
`
`
`IPR2017-01390
`Patent 7,115,331 B2
`
`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
`
`
`
`
`
`
`5
`
`
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