`571-272-7822
`
`
`
`Paper 28
`Entered: July 20, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`PROMOS TECHNOLOGIES, INC.,
`Patent Owner.
`
`
`Case IPR2017-01418
`Patent 6,559,044 B1
`
`
`
`Before JAMESON LEE and JOHN A. HUDALLA,
`Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`IPR2017-01418
`Patent 6,559,044 B1
`
`
`Introduction
`On July 19, 2018, a conference call was held to discuss Patent
`Owner’s Motion to Exclude Evidence. Paper 24. The participants were
`Judges Lee and Hudalla, and respective counsel for the parties.
`Counsel for Petitioner asserts that a proper Motion to Exclude
`Evidence should only be directed to admissibility issues under the Federal
`Rules of Evidence. Thus, Petitioner contends Patent Owner’s Motion to
`Exclude is improper because it asserts only that Petitioner’s Reply exceeds
`the proper scope of a reply by including new arguments and by relying on
`new evidence in support of those new arguments. According to counsel for
`Petitioner, Patent Owner should have filed a Motion to Strike, not a Motion
`to Exclude Evidence.
`
`Discussion
`We agree with Petitioner that a Motion to Exclude Evidence should
`only be used to raise admissibility issues under the Federal Rules of
`Evidence. When a Patent Owner asserts that a Reply exceeds the proper
`scope of a reply, we ordinarily allow the Patent Owner to file a one page
`listing, item by item, of the alleged new arguments by page and line number
`in the Reply. We also allow the Petitioner to file a responsive listing, item
`by item, of the portions of the Patent Owner Response that triggered the
`alleged new argument and new evidence in support of the alleged new
`argument. Counsel for Patent Owner confirmed that the Motion to Exclude
`Evidence raises for consideration its assertion that the Reply exceeds the
`proper scope of a reply by including new arguments and by relying on new
`evidence in support of the alleged new arguments.
`
`2
`
`
`
`IPR2017-01418
`Patent 6,559,044 B1
`
`
`We proposed simply to treat Patent Owner’s “Motion to Exclude
`Evidence” as a “Motion to Strike New Argument and Evidence in Support
`of New Argument,” because the latter is what Patent Owner seeks and also
`what Petitioner believes Patent Owner should have filed in the first instance.
`Under this proposal, there would be no “Motion to Exclude Evidence” by
`Patent Owner, and the objections Patent Owner filed with respect to the
`evidence in support of the alleged new arguments are null and void. The
`proposal was accepted by both parties.
`Counsel for Petitioner agreed to file an opposition by July 27, 2018,
`and to limit the opposition to no more than 10 pages. We also indicated that
`no reply to that opposition is authorized at this time.
`Order
`
`It is
`
`ORDERED that Patent Owner’s Motion to Exclude Evidence shall be
`
`treated as a “Motion to Strike New Argument and Evidence in Support of
`New Argument,” and the parties shall not refer to it as a motion to exclude
`evidence;
`
`FURTHER ORDERED that Petitioner is authorized to file an
`opposition, limited to no more than 10 pages, to Patent Owner’s “Motion to
`Strike New Argument and Evidence in Support of New Argument,” by
`July 27, 2018; and
`
`FURTHER ORDERED that no reply by Patent Owner to Petitioner’s
`opposition is authorized at this time, and that if Patent Owner desires to file
`a reply, it must arrange for a conference call with the Board to seek such
`authorization and explain why such a reply is necessary by August 3, 2018.
`
`
`
`3
`
`
`
`IPR2017-01418
`Patent 6,559,044 B1
`
`For PETITIONER:
`Naveen Modi
`Joseph E. Palys
`Chetan R. Bansal
`Quadeer Ahmed
`PAUL HASTINGS LLP
`naveenmodi@paulhastings.com
`josephpalys@paulhastings.com
`chetanbansal@paulhastings.com
`quadeerahmed@paulhastings.com
`
`
`
`
`For PATENT OWNER:
`
`Craig R. Kaufman
`Kevin C. Jones
`TECHKNOWLEDGE LAW GROUP LLP
`ckaufman@tklg-llp.com
`kjones@tklg-llp.com
`
`
`
`
`
`
`4
`
`
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