Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 39
`Entered: May 22, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`HENDRICKSON USA L.L.C., GREAT DANE L.L.C., and
`QUEST GLOBAL, INC.,
`Petitioners,
`
`v.
`
`TRANS TECHNOLOGIES COMPANY,
`Patent Owner.
`_______________
`
`Case IPR2017-01510
`Patent 7,669,465 B2
`_______________
`
`Before KEN B. BARRETT, MICHAEL J. FITZPATRICK, and
`JEFFREY A. STEPHENS, Administrative Patent Judges.
`
`STEPHENS, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`Tel: 571-272-7822
`
`Paper 39
`Entered: May 22, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`HENDRICKSON USA L.L.C., GREAT DANE L.L.C., and
`QUEST GLOBAL, INC.,
`Petitioners,
`
`v.
`
`TRANS TECHNOLOGIES COMPANY,
`Patent Owner.
`_______________
`
`Case IPR2017-01510
`Patent 7,669,465 B2
`_______________
`
`Before KEN B. BARRETT, MICHAEL J. FITZPATRICK, and
`JEFFREY A. STEPHENS, Administrative Patent Judges.
`
`STEPHENS, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`Case IPR2017-01510
`Patent 7,669,465 B2
`
`On April 30, 2018, we modified our Institution Decision (Paper 7) to
`include review of all grounds presented in the Petition (Paper 2), including
`asserted grounds of (1) obviousness over Stech and Loewe (Ground 2) and
`(2) obviousness over White and Schultz (Ground 3). Paper 35. The parties
`were directed to confer to determine whether they desired any changes to the
`schedule or briefing not already permitted under the Scheduling Order
`(Paper 8), and, if so, request a conference call with the panel to seek
`authorization for such changes or briefing. Paper 35, 2. The parties
`submitted a request for a conference call along with proposed changes,
`agreed upon by the parties, to the briefing schedule.
`On May 10, this panel held a conference call with counsel for the
`parties. The panel indicated that we appreciated the parties working together
`to agree upon modifications to the schedule in light of our modification of
`the institution decision. The panel asked the parties whether it would be
`possible to agree on a schedule that did not alter the date previously set for
`an oral hearing, if one is requested. Counsel for both parties indicated it
`would be possible. The panel authorized the parties to submit a joint request
`for alteration of the schedule within one week of the conference call. The
`parties filed a Joint Motion to Modify Schedule on May 15, 2018. Paper 38
`(“Joint Motion”).
`Patent Owner, Trans Technologies Company, previously filed its
`Patent Owner Response on February 26, 2018 (Papers 10 & 11), with
`authorized corrections filed on March 9 (Papers 14 & 15) and April 16
`(Paper 34). The parties’ Joint Motion proposes Due Date 1B for Patent
`Owner to file a revised response to the Petition (“Revised Patent Owner
`Response”). Joint Motion 3. Patent Owner did not file a motion to amend
`
`2
`
`
`
`Case IPR2017-01510
`Patent 7,669,465 B2
`
`any claims challenged in this proceeding, and the Joint Motion provides that
`Patent Owner will not be filing such a motion. Id. at 3, n.2. The Joint
`Motion presents the parties’ agreement that, in the Revised Patent Owner
`Response, Patent Owner may: (1) add arguments directed to Grounds 2 and
`3, (2) modify its constitutionality arguments in view of the Supreme Court’s
`decision in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC,
`138 S. Ct. 1365 (2018), (3) remove or reduce language from the corrected
`Patent Owner Response in order to achieve a word count limit of 14,000
`words in the Revised Patent Owner Response. Joint Motion 4.
`The parties further agree:
`Patent Owner agrees that it will not introduce new arguments
`specific to Ground 1. Patent Owner may submit a supplemental
`expert declaration under 10 pages limited to Grounds 2 and 3
`from previous declarants Mr. McCann or Dr. Parnell. Patent
`Owner will not submit any other testimonial evidence. Patent
`Owner may submit new evidence in support of Grounds 2 and
`3, but only in the form of publicly available documents relied
`upon by the supplemental declarant. Notwithstanding the
`stipulation, Petitioners reserve the right to object to additional
`evidence that could have been presented in the Patent Owner’s
`previous response to the petition.
`Id. The Joint Motion also reflects the parties’ agreement regarding
`supplemental deposition discovery as follows: “Patent Owner agrees to
`make available for supplemental deposition testimony previous declarants
`Mr. McCann and Dr. Parnell. The parties agree that the supplemental
`depositions will each be limited to three hours of testimony and limited to
`Grounds 2 and 3.” Id. at 5. The Joint Motion proposes revised dates for
`Due Dates 2, 4, 5, and 6. Id. at 3.
`Having reviewed the parties’ proposed new schedule and agreements
`regarding the scope of Patent Owner’s Revised Response and discovery, we
`
`3
`
`
`
`Case IPR2017-01510
`Patent 7,669,465 B2
`
`grant the parties’ Joint Motion, except for the proposed date for the parties
`to request oral argument. By Due Date 4A set forth below, each party must
`file any request for oral argument (37 C.F.R. § 42.70(a)). Due Date 4B set
`forth below shall apply to any observations on cross-examination testimony
`of a reply witness and any motion to exclude evidence.
`In addition, in an email sent May 2, 2018, Patent Owner requested
`that the Board expunge Exhibit 2049, stating that Exhibit 2049 is a duplicate
`of Exhibit 2013 and was filed inadvertently. Patent Owner stated that the
`parties met and conferred and Petitioners do not oppose the request. Exhibit
`2049 shall be expunged.
`
`
`ORDER
`
`Accordingly, it is
`ORDERED that by June 1, 2018 (Due Date 1B), Patent Owner may
`file a revised Patent Owner Response in accordance with the parties’ Joint
`Motion and 37 C.F.R. § 42.120(a),
`FURTHER ORDERED that Patent Owner will make available for
`supplemental deposition testimony previous declarants Mr. McCann and Dr.
`Parnell, and the supplemental depositions will each be limited to three hours
`of testimony and limited to Grounds 2 and 3, except as the parties may
`otherwise agree,
`FURTHER ORDERED that Due Date 3 is moot,
`FURTHER ORDERED that Due Dates 2, 4, 5, and 6 in the
`Scheduling Order are modified as follows:
`Due Date 2
`Due Date 4A
`
`July 24, 2018
`July 31, 2018
`
`4
`
`
`
`Case IPR2017-01510
`Patent 7,669,465 B2
`
`August 13, 2018
`Due Date 4B
`August 22, 2018
`Due Date 5
`August 29, 2018
`Due Date 6
`FURTHER ORDERED that the parties may stipulate to different dates
`for Due Dates 1B, 2, 4B, and 5 (earlier or later, but no later than Due Date
`6), in accordance with the terms of the Scheduling Order, and
`FURTHER ORDERED that Exhibit 2049 shall be expunged.
`
`5
`
`
`
`Case IPR2017-01510
`Patent 7,669,465 B2
`
`PETITIONERS:
`Michael G. Babbitt
`Timothy J. Barron
`Sara Tonnies Horton
`JENNER & BLOCK LLP
`mbabbitt@jenner.com
`tbarron@j enner.com
`shorton@jenner.com
`chgoip@jenner.com
`
`Paul J. Ripp
`David L. Applegate
`Jonathan E. Grossman
`WILLIAMS MONTGOMERY & JOHN LTD
`pjr@willmont.com
`dla@willmont.com
`jeg@willmont.com
`
`Lloyd G. Farr
`NELSON MULLINS RILEY & SCARBOROUGH LLP
`lloyd.farr@nelsonmullins.com
`
`PATENT OWNER:
`Vivek Ganti
`John North
`Jennifer Calvert
`HILL, KERTSCHER & WHARTON, LLP
`vg@hkw-law.com
`jln@hkw-law.com
`jc@hkw-law.com
`
`6
`
`
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