Trials@uspto.gov
`Tel: 571-272-7822
`
`
` Paper No. 21
`Entered: May 21, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`MASABI LTD.,
`Petitioner,
`
`v.
`
`BYTEMARK, INC.,
`Patent Owner.
`_______________
`
`Case IPR2017-01449
`Patent 8,494,967 B2
`_______________
`
`
`
`Before JOSIAH C. COCKS, NEIL T. POWELL, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
`
`
`GROSSMAN, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`Tel: 571-272-7822
`
`
` Paper No. 21
`Entered: May 21, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`MASABI LTD.,
`Petitioner,
`
`v.
`
`BYTEMARK, INC.,
`Patent Owner.
`_______________
`
`Case IPR2017-01449
`Patent 8,494,967 B2
`_______________
`
`
`
`Before JOSIAH C. COCKS, NEIL T. POWELL, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
`
`
`GROSSMAN, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`IPR2017-01449
`Patent 8,494,967 B2
`
`
`A telephone conference was held on May 17, 2018 with counsel for
`the parties1. A court reporter retained by Patent Owner transcribed the
`telephone conference. The purpose of the conference was to discuss any
`need for supplemental briefing, supplemental depositions, and changes to the
`Scheduling Order (Paper 11) because of our Order (Paper 20) adding
`additional patent claims and additional grounds to the instituted trial.
`The Petition challenged the patentability of each of claims 1–6, 17–
`23, and 34 as anticipated by each of Terrell, Cruz, or Dutta based on 35
`U.S.C. § 102. We instituted an inter partes review based solely on whether
`claims 1, 3–6, 17, 18, 20–23, and 34 are anticipated by Terrell. See Paper 11
`(“Dec. Inst.), 34. We did not institute a review on whether claims 2 and 19
`are anticipated by Terrell. Id. at 31. We also did not institute a review on
`whether claims 1–6, 17–23, and 34 are anticipated by each of Cruz or Dutta.
`Id. at 33.
`Following the Supreme Court decision in SAS Inst., Inc. v. Iancu,
`2018 WL 1914661, at *10 (U.S. Apr. 24, 2018), we modified our institution
`decision to institute on all of the challenged claims and all of the grounds
`presented in the Petition. Paper 20.
`The current status of the case, based on schedule revisions previously
`agreed to by the Parties (see Paper 16), is:
`Patent Owner took the deposition of Petitioner’s expert on March 7;
`Patent Owner’s Response and a Motion to Amend were filed
`March 15;
`Petitioner’s Reply is due June 14;
`
`1 Messrs. LaLone and Donohue appeared for Petitioner. Ms. Meredith
`appeared for Patent Owner.
`
`2
`
`
`
`IPR2017-01449
`Patent 8,494,967 B2
`
`
`A hearing, if requested, will be held on August 22.
`During the conference, Patent Owner requested a supplemental
`response to address the newly-added challenges in this proceeding, which
`are whether claims 2 and 19 are anticipated by Terrell and whether claims 1–
`6, 17–23, and 34 are anticipated by each of Cruz or Dutta.
`Supplemental Filings and Other Activity
`We determine good cause exists to permit the requested Supplemental
`Response. See 37 C.F.R. § 42.5. Patent Owner is authorized to file a
`Supplemental Response directed to the newly-added challenges in this
`proceeding. The Supplemental Response is limited to 10,500 words. Any
`arguments for patentability regarding the newly-added challenges that are
`not raised in the Supplemental Patent Owner Response are deemed waived.
`Patent Owner also is authorized to file a supplemental expert report in
`support of its Supplemental Response. The supplemental expert report also
`is limited to addressing the newly-added challenges in this proceeding.
`Patent Owner also may take a supplemental deposition of Petitioner’s
`expert witness. The supplemental deposition is limited to addressing the
`newly-added challenges in this proceeding. The supplemental deposition
`direct examination is limited to four (4) hours.
`Patent Owner also is authorized to file a motion to expunge its Motion
`to Amend (Paper 18) and to substitute in its place a Substitute Motion to
`Amend.
`In consideration for Patent Owner’s combined Response and
`Supplemental Response having a combined authorized word count of 24,500
`words, Petitioner is authorized to file a single Reply to the Response and
`Supplemental Response, the single Reply having a corresponding
`
`3
`
`
`
`IPR2017-01449
`Patent 8,494,967 B2
`
`proportional increase in words from 5,600 to 9,800 words. Petitioner’s
`Reply may respond to preliminary findings made by the Board in the
`Decision on Institution with respect to the newly-added challenges, but
`otherwise is subject to 37 C.F.R. § 42.23(b) (“A reply may only respond to
`arguments raised in the corresponding . . . response.”). Evidence relied on
`by Petitioner in its Supplemental Reply is limited to rebuttal evidence only.
`Revised Due Dates
`Following our May 17 conference call with the parties, based on their
`input and requests, and in accordance with the supplemental activities
`authorized above, we revise the following dates in our Scheduling Order
`(Paper 11), as previously modified by the parties (Paper 16).
`Action
`Old Due Date
`Revised Due Date
`Patent Owner’s
`N.A.
`May 31, 2018
`Supplemental
`Deposition of
`Petitioner’s Expert
`Patent Owner’s
`Supplemental
`Response
`Patent Owner’s
`Substitute Motion to
`Amend
`(1) Petitioner’s Reply
`to Patent Owner’s
`Response and Patent
`Owner’s
`Supplemental
`Response; and (2)
`Petitioner’s
`opposition to Motion
`to Amend
`Patent Owner’s Reply
`to Petitioner’s
`
`June 14, 2018
`(see Paper 16)
`
`July 5, 2018
`
`July 15, 2018
`
`4
`
`N.A.
`
`N.A.
`
`June 8, 2018
`
`June 15, 2018
`
`June 29, 2018
`
`
`
`IPR2017-01449
`Patent 8,494,967 B2
`
`
`Opposition to Motion
`to Amend
`All other due dates established in the Scheduling Order (Paper 11),
`beginning with due date 4, remain unchanged. We note for emphasis and
`clarity that the oral argument, if requested, remains as scheduled on August
`22, 2018.
`As set out in our original Scheduling Order (Paper 11, 6), the parties
`may stipulate to different dates for DUE DATES 1 through 5 in the original
`Scheduling Order, as revised herein (earlier or later, but no later than DUE
`DATE 6). A notice of the stipulation, specifically identifying the changed
`due dates, must be filed with the Board. The parties may not stipulate to an
`extension of DUE DATES 6 and 7.
`As an alternative, the Board authorizes the parties to file, within three
`(3) business days of this Order, a Joint Motion to Limit the Petition by
`removing the claims and grounds upon which we did not institute in our
`Decision on Institution. See, e.g., Apotex Inc., v. OSI Pharms., Inc., Case
`IPR2016-01284 (PTAB Apr. 3, 2017) (Paper 19) (granting, after institution,
`a joint motion to limit the petition by removing a patent claim that was
`included for trial in the institution decision). Such a Joint Motion would
`moot the schedule detailed above.
`In consideration of the foregoing, it is so ORDERED.
`
`
`
`
`
`
`
`5
`
`
`
`IPR2017-01449
`Patent 8,494,967 B2
`
`PETITIONER:
`
`Douglas P. LaLone
`Thomas E. Donohue
`FISHMAN STEWART PLLC
`DLalone@fishstewip.com
`TDonohue@fishstewip.com
`
`PATENT OWNER:
`
`Jennifer Meredith
`MEREDITH & KEYHANI, PLLC
`jmeredith@meredithkeyhani.com
`
`6
`
`
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