`571-272-7822
`
`
` Paper 31
`
` Entered: May 11, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HUTCHINSON TECHNOLOGY INC.,
`HUTCHINSON TECHNOLOGY OPERATIONS (Thailand) CO., LTD.,
`Petitioner,
`
`v.
`
`NITTO DENKO CORP,
`Patent Owner.
`____________
`
`Case IPR2017-01421
`Patent 8,895,870
`____________
`
`Before THOMAS L. GIANNETTI, CHRISTA P. ZADO, and
`MELISSA A. HAAPALA, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`Case IPR2017-01421
`Patent No. 8,895,870
`
`
`BACKGROUND
`On May 9, 2018, a conference call was held among counsel for the
`
`parties and the panel. The purpose of the call was to discuss Patent Owner’s
`request for authorization to strike pages 7–27 of Paper 23, Petitioner’s Reply
`to Patent Owner’s Response to the Petition. The call was requested by
`Patent Owner in an email to the Board dated May 3, 2018. A reporter
`engaged by Patent Owner was present on the call. Patent Owner has filed
`the transcript as Paper 30.
`
`
`DISCUSSION
`
`Patent Owner contends that in responding to Patent Owner’s motion
`
`to amend, Petitioner exceeded the 25-page limit set forth in 37 C.F.R.
`§ 42.24 for oppositions to motions to amend. Patent Owner contends that in
`addition to Petitioner’s Opposition to the Motion to Amend (Paper 22),
`Petitioner’s Reply (Paper 23) improperly addresses the substitute amended
`claim proposed by Patent Owner. The result is that Petitioner’s challenge to
`the substitute claim exceeds the allotted page limit.
`
`After discussing the matter, Petitioner agreed to refile its Reply (Paper
`23), omitting the discussion of the proposed substitute claim. Petitioner will
`also refile its Opposition to the Motion to Amend (Paper 22). We granted
`Petitioner authorization for additional briefing in its refiled Opposition to
`address arguments under 35 U.S.C. § 103(c) directed to the Ohsawa
`reference and further authorized additional briefing for Patent Owner to
`reply.
`
`
`
`
`2
`
`
`
`Case IPR2017-01421
`Patent No. 8,895,870
`
`
`OTHER MATTERS
`The Board raised questions about Patent Owner’s Objections (Paper
`
`26) and provided guidance to Patent Owner’s counsel. Patent Owner agreed
`to simplify the objections in light of the Board’s guidance.
`
`The Board agreed to take Petitioner’s duty of candor issue under
`advisement.
`
`
`ORDER
`
`It is, therefore,
`
`ORDERED that Patent Owner’s request for authorization to file a
`
`motion to strike pages 7–27 of Paper 23 is denied as moot;
`
`FURTHER ORDERED that within five business days of entry of this
`Order, Petitioner will file a revised version of its Reply to Patent Owner’s
`Response to the Petition, omitting any discussion of Patent Owner’s
`proposed substitute amended claim;
`
`FURTHER ORDERED that within five business days of entry of this
`Order, Petitioner will file a revised version of its Opposition to Patent
`Owner’s Motion to Amend, and that the page limit for the Opposition is
`extended by up to five additional pages directed solely to the issue of
`whether Ohsawa is disqualified as a reference under 35 U.S.C. § 103(c);
`
`FURTHER ORDERED that the page limit for Patent Owner’s Reply
`to Petitioner’s Opposition to Patent Owner’s Motion to Amend is extended
`by up to five additional pages, solely to respond to Petitioner’s supplemental
`briefing on this §103(c) issue;
`
`
`
`3
`
`
`
`Case IPR2017-01421
`Patent No. 8,895,870
`
`FURTHER ORDERED that Paper 26 is withdrawn; Patent Owner
`
`will have ten days from entry of this Order to refile simplified objections to
`Petitioner’s evidence.
`
`
`
`
`
`
`
`4
`
`
`
`Case IPR2017-01421
`Patent No. 8,895,870
`
`
`
`
`PETITIONER:
`Jennifer Hayes
`Daniel J. Burnham
`NIXON PEABODY LLP
`jenhayes@nixonpeabody.com
`dburnham@nixonpeabody.com
`
`
`PATENT OWNER:
`
`Alex V. Chachkes
`Donald Daybell
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`a34ptabdocket@orrick.com
`d2dptabdocket@orrick.com
`
`
`
`5
`
`
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