Paper 14
`Trials@uspto.gov
`Entered: October 4, 2017
`Tel: 571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ROQUETTE FRERES, S.A.,
`Petitioner,
`
`v.
`
`TATE & LYLE INGREDIENTS AMERICAS LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01506, Patent 7,608,436 B2
`Case IPR2017-01507, Patent 8,057,840 B21
`____________
`
`
`Before LORA M. GREEN, GRACE KARAFFA OBERMANN,
`and JACQUELINE T. HARLOW, Administrative Patent Judges..
`
`OBERMANN, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Petitioner’s Request to File a Reply Brief
`Granting Patent Owner’s Request to File a Sur-Reply Brief
`37 C.F.R. § 42.20(d)
`
`
`
`
`
`1 This Order addresses issues common to both proceedings, therefore, we
`issue a single Order that is entered in both case files. The parties may use
`this style heading when filing an identical paper in both proceedings,
`provided that such heading includes a footnote attesting that “the word-for-
`word identical paper is filed in each proceeding identified in the heading.”
`
`
`Trials@uspto.gov
`Entered: October 4, 2017
`Tel: 571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ROQUETTE FRERES, S.A.,
`Petitioner,
`
`v.
`
`TATE & LYLE INGREDIENTS AMERICAS LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01506, Patent 7,608,436 B2
`Case IPR2017-01507, Patent 8,057,840 B21
`____________
`
`
`Before LORA M. GREEN, GRACE KARAFFA OBERMANN,
`and JACQUELINE T. HARLOW, Administrative Patent Judges..
`
`OBERMANN, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Petitioner’s Request to File a Reply Brief
`Granting Patent Owner’s Request to File a Sur-Reply Brief
`37 C.F.R. § 42.20(d)
`
`
`
`
`
`1 This Order addresses issues common to both proceedings, therefore, we
`issue a single Order that is entered in both case files. The parties may use
`this style heading when filing an identical paper in both proceedings,
`provided that such heading includes a footnote attesting that “the word-for-
`word identical paper is filed in each proceeding identified in the heading.”
`
`
`
`IPR2017-01506 (Patent 7,608,436 B2)
`IPR2017-01507 (Patent 8,057,840 B2)
`
`
`At Petitioner’s request, the Board conducted a telephone conference
`with counsel for both parties on October 3, 2017. Ex. 3001. Judges
`Obermann, Green, and Harlow participated in the call. Neither party
`engaged a court reporter. During the call, both parties presented arguments
`regarding Petitioner’s request to file a Reply Brief, supported by limited
`additional evidence, targeted to addressing an “unanticipated” issue raised in
`the Preliminary Response. Id. After considering all arguments presented by
`both parties, we granted Petitioner’s request subject to the conditions and
`schedule set forth below.
`The Petition relied on the Board’s decision in Hamamatsu Corp. v.
`Sionyx, LLC., IPR2016-01910, Paper 22 (P.T.A.B. Mar. 30, 2017)
`(Hamamatsu I). Petitioner’s request for additional briefing was triggered by
`arguments made in the Preliminary Response, pertaining to the Board’s
`subsequent decision in Hamamatsu Corp. v. Sionyx, LLC., IPR2016-01910,
`Paper 28 (P.T.A.B. May 26, 2017) (Hamamatsu II), which reverses one
`portion of Hamamatsu I cited in the Petition. Ex. 3001. During the call, we
`were persuaded that several factors favored granting Petitioner’s request,
`given the particular circumstances presented in this case.
`First, Petitioner shows sufficiently that the arguments in the
`Preliminary Response, pertaining to Hamamatsu II, were “unanticipated.”
`Ex. 3001. The Hamamatsu II decision issued one business day before the
`filing of the Petition. During the conference call, counsel for Petitioner
`explained that the Petition was cite checked before issuance of the decision
`in Hamamatsu II. Accordingly, Petitioner was unaware of Hamamatsu II
`when the Petition was filed.
`
`2
`
`
`
`IPR2017-01506 (Patent 7,608,436 B2)
`IPR2017-01507 (Patent 8,057,840 B2)
`
`
`Second, considerations of timing and burden favor granting the
`request. The statutory due dates for the institution decisions in these cases
`fall on December 8, 2017, and December 15, 2017. Petitioner made the
`request for additional briefing well in advance of the due dates. Further,
`during the telephone conference, Petitioner proposed a reasonable briefing
`schedule that would include a Sur-Reply for Patent Owner. We were
`persuaded that the schedule proposed by Petitioner would not unduly burden
`either party or disturb the schedule in either proceeding. Patent Owner
`responded that it may require up to two weeks to prepare a Sur-Reply, in the
`event that Patent Owner resolves to include a supporting witness declaration.
`We pointed out that one week is reasonable in view of the impending
`deadline for the institution decisions and, further, observed that Patent
`Owner will have ample time and opportunity to fully develop its positions,
`in the context of a full Patent Owner’s Response, should trial be instituted.
`Third, interests of efficiency favor granting the request. Any error on
`Petitioner’s part, in failing to discover the Board’s decision in Hamamatsu II
`before filing of the Petition, is mitigated by the fact that Hamamatsu II
`issued only one business day before the filing of the Petition. Counsel for
`Petitioner confirmed that Petitioner has not been served with a district court
`complaint for infringement; therefore, Petitioner faces no statutory time bar
`that would preclude the filing of a Petition based on Hamamatsu II.
`Permitting additional briefing, under the circumstances, serves the interests
`of efficiency and speed in reaching a just resolution of the parties’ dispute.
`Fourth, the scope of the request is reasonable and narrowly tailored to
`develop issues necessary to our forthcoming decision on institution.
`Petitioner requests briefing limited to addressing Patent Owner’s
`
`3
`
`
`
`IPR2017-01506 (Patent 7,608,436 B2)
`IPR2017-01507 (Patent 8,057,840 B2)
`
`unanticipated arguments pertaining to Hamamatsu II. Those arguments
`relate to whether certain processes recited in the challenged claims impart
`distinctive structural and functional characteristics to a product. Ex. 3001.
`During the telephone conference, Petitioner demonstrated adequately that
`those issues warrant the submission of limited additional evidence, in the
`form of a short supplemental witness declaration. Granting the further
`request to include limited supporting evidence is warranted in view of the
`relevance of the information at hand. The interests of fairness favor
`providing Petitioner a limited opportunity to develop an evidentiary basis for
`briefing responsive to Petitioner’s “unanticipated” arguments. Ex. 3001.
`Based on the totality of the circumstances presented in this case,
`Petitioner shows good cause for a grant of the relief requested. Accordingly,
`pursuant to our authority to “order briefing on any issue involved in the
`trial” (37 C.F.R. § 42.20(d)), at the conclusion of the telephone conference,
`we authorized additional briefing subject to the conditions set forth below.
`
`
`It is:
`ORDERED that Petitioner’s request for additional briefing is granted
`subject to the conditions and schedule set forth herein;
`FURTHER ORDERED that Petitioner is authorized to file a Reply
`Brief limited to addressing arguments raised in the Preliminary Response,
`pertaining to the Board’s decision in Hamamatsu II;
`FURTHER ORDERED that Petitioner’s Reply Brief shall be limited
`to seven (7) pages;
`
`4
`
`
`
`IPR2017-01506 (Patent 7,608,436 B2)
`IPR2017-01507 (Patent 8,057,840 B2)
`
`
`FURTHER ORDERED that Petitioner is authorized to file, in support
`of the Reply Brief, a single witness declaration, not to exceed fourteen (14)
`pages;
`FURTHER ORDERED that Petitioner’s Reply Brief and supporting
`declaration shall be filed no later than October 10, 2017;
`FURTHER ORDERED that Patent Owner is authorized to file a Sur-
`Reply Brief limited to addressing arguments raised in Petitioner’s Reply
`Brief;
`FURTHER ORDERED that Patent Owner’s Sur-Reply Brief shall be
`limited to seven (7) pages;
`FURTHER ORDERED that Patent Owner is authorized to file, in
`support of the Sur-Reply Brief, a single witness declaration, not to exceed
`fourteen (14) pages;
`FURTHER ORDERED that Patent Owner’s Sur-Reply Brief and
`supporting declaration shall be filed no later than October 17, 2017;
`FURTHER ORDERED that no other briefing or supporting evidence
`is authorized at this time.
`
`
`
`5
`
`
`
`IPR2017-01506 (Patent 7,608,436 B2)
`IPR2017-01507 (Patent 8,057,840 B2)
`
`
`
`
`PETITIONER:
`David L. Glandorf
`Joseph Evall
`Daniel J. Thomasch
`Gibson, Dunn & Crutcher LLP
`dglandorf@gibsondunn.com
`jevall@gibsondunn.com
`dthomasch@gibsondunn.com
`
`
`PATENT OWNER:
`Paul H. Berghoff
`S. Richard Carden
`James V. Suggs
`McDonnell Boehnen Hulbert & Berghoff LLP
`Berghoff@mbhb.com
`Carden@mbhb.com
`Suggs@mbhb.com
`
`
`6
`
`
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