Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 13
`Entered: March 23, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DONGHEE AMERICA, INC. and DONGHEE ALABAMA, LLC,
`Petitioner,
`v.
`PLASTIC OMNIUM ADVANCED INNOVATION AND RESEARCH,
`Patent Owner.
`
`Case IPR2017-01654
`Patent 9,079,490 B2
`
`
`
`
`
`
`
`
`
`Before MITCHELL G. WEATHERLY, CHRISTOPHER M. KAISER, and
`ROBERT L. KINDER, Administrative Patent Judges.
`KAISER, Administrative Patent Judge.
`
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`As required under 37 C.F.R. § 42.121(a), Patent Owner requested a
`conference call to confer with the Board regarding its desire to file a motion to
`amend. The panel conducted the conference call on March 22, 2018. Patent
`Owner indicated that it intends to file a contingent motion to amend by no later
`than Due Date 1 set forth in the Case Management and Scheduling Order.
`
`
`
`
`Tel: 571-272-7822
`
`Paper 13
`Entered: March 23, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DONGHEE AMERICA, INC. and DONGHEE ALABAMA, LLC,
`Petitioner,
`v.
`PLASTIC OMNIUM ADVANCED INNOVATION AND RESEARCH,
`Patent Owner.
`
`Case IPR2017-01654
`Patent 9,079,490 B2
`
`
`
`
`
`
`
`
`
`Before MITCHELL G. WEATHERLY, CHRISTOPHER M. KAISER, and
`ROBERT L. KINDER, Administrative Patent Judges.
`KAISER, Administrative Patent Judge.
`
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`As required under 37 C.F.R. § 42.121(a), Patent Owner requested a
`conference call to confer with the Board regarding its desire to file a motion to
`amend. The panel conducted the conference call on March 22, 2018. Patent
`Owner indicated that it intends to file a contingent motion to amend by no later
`than Due Date 1 set forth in the Case Management and Scheduling Order.
`
`
`
`
`
`IPR2017-01654
`Patent 9,079,490 B2
`
`DISCUSSION
`In the call, we explained that a motion to amend under 37 C.F.R. § 42.121
`may cancel claims and/or propose substitute claims. As we further explained, a
`motion to amend may propose only a reasonable number of substitute claims, and
`there is a rebuttable presumption that only one proposed substitute claim will
`generally be needed to replace each challenged claim. 35 U.S.C. § 316(d);
`37 C.F.R. § 42.121(a)(3).
`On October 4, 2017, the Federal Circuit issued an en banc decision in Aqua
`Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017). In light of the Aqua
`Products decision, the Board will not place the burden of persuasion on a patent
`owner with respect to the patentability of substitute claims presented in a motion to
`amend. Aqua Products, 872 F.3d at 1327. A motion to amend still must meet the
`statutory requirements of 35 U.S.C. § 316(d) and the procedural requirements of
`37 C.F.R. § 42.121.
`Pursuant to 35 U.S.C. § 316(d)(3), “[a]n amendment under this subsection
`may not enlarge the scope of the claims of the patent or introduce new matter.”
`Similarly, 37 C.F.R. § 42.121(a)(2)(ii) provides that a motion to amend may be
`denied where the amendment seeks to enlarge the scope of the claims of the patent
`or introduces new subject matter. Patent Owner must establish that each proposed
`substitute claim is supported by the written description of the application upon
`which the proposed substitute claims rely, and citations should be to this original
`application – not the issued patent.1 See 37 C.F.R. § 42.121(b).
`Additionally, we noted that further guidance regarding the mechanics and
`substance of motions to amend appears in the memorandum titled, “Guidance on
`
`
`1 Patent Owner may also establish that the original application and the issued
`patent are the same, and if that is the case, citations may be to the issued patent.
`
`2
`
`
`
`IPR2017-01654
`Patent 9,079,490 B2
`Motions to Amend in view of Aqua Products” (Nov. 21, 2017)
`(https://www.uspto.gov/sites/default/files/documents/guidance_on_motions_to_am
`end_11_2017.pdf) (“Guidance”). If Patent Owner files a motion to amend that
`meets the requirements of 35 U.S.C. § 316(d) (i.e., proposes a reasonable number
`of substitute claims, and the substitute claims do not enlarge scope of the original
`claims of the patent or introduce new matter), the Board will proceed to determine
`whether the substitute claims are unpatentable by a preponderance of the evidence
`based on the entirety of the record, including any opposition made by the
`Petitioner.
`We also noted that our rules were amended on May 19, 2015, to change the
`page limits for certain papers associated with a motion to amend as well as to allow
`a claims appendix. See Amendments to the Rules of Practice for Trials Before the
`Patent Trial and Appeal Board, 80 Fed. Reg. 28,561, 28,565–66 (May 19, 2015).
`Finally, the panel informed the parties that it would set forth a briefing
`schedule for the parties to present issues related to Patent Owner’s motion to
`amend. The panel proposed a series of four briefs, which the parties agreed to
`during the conference call. The panel generally described the schedule set forth
`below. Except as otherwise stated in this Paper, the Case Management and
`Scheduling Order entered January 19, 2018, as modified by the stipulation of the
`parties on February 26, 2018, remains in effect.
`
`A. DUE DATES
`This order sets due dates for the parties to take action from this point
`forward in the proceeding. The parties may stipulate to different dates for DUE
`DATES 1 through 5 (earlier or later, but no later than DUE DATE 6). A notice of
`the stipulation, specifically identifying the changed due dates, must be promptly
`filed. The parties may not stipulate to an extension of DUE DATES 6 or 7. Any
`
`3
`
`
`
`IPR2017-01654
`Patent 9,079,490 B2
`stipulated extension of DUE DATE 4 shall not modify the deadline set forth in this
`Order by which a party must request oral argument.
`In stipulating to different times, the parties should consider the effect of the
`stipulation on times to object to evidence (37 C.F.R. § 42.64(b)(1)), to supplement
`evidence (37 C.F.R. § 42.64(b)(2)), to conduct cross-examination (37 C.F.R.
`§ 42.53(d)(2)), and to draft papers depending on the evidence and cross-
`examination testimony.
`1. DUE DATE 1
`The patent owner may file—
`a.
`A response to the petition (37 C.F.R. § 42.120), and
`b.
`A motion to amend the patent (37 C.F.R. § 42.121).
`The patent owner must file any such response or motion to amend by DUE
`DATE 1. Any motion to amend need only address those issues set forth in
`35 U.S.C. § 316(d) and 37 C.F.R. § 42.121. The motion to amend shall be limited
`to 6,000 words, which shall be counted as set forth in 37 C.F.R. § 42.24.
`If the patent owner elects not to file anything, the patent owner must arrange
`a conference call with the parties and the Board. The patent owner is cautioned
`that any arguments for patentability not raised in the response will be deemed
`waived.
`2. DUE DATE 2
`The petitioner must file any reply to the patent owner’s response and
`opposition to the motion to amend by DUE DATE 2. The opposition to the motion
`to amend shall address any arguments set forth in the motion to amend and may
`present any evidence and argument relating to the patentability of substitute claims
`that Patent Owner proposes in its motion to amend. The opposition to the motion
`
`4
`
`
`
`IPR2017-01654
`Patent 9,079,490 B2
`to amend shall be limited to 12,000 words, which shall be counted as set forth in
`37 C.F.R. § 42.24.
`3. DUE DATE 3
`Patent Owner must file any reply to Petitioner’s opposition to Patent
`Owner’s motion to amend by DUE DATE 3. Patent Owner’s reply may respond to
`arguments raised by Petitioner relating to Patent Owner’s compliance with the
`requirements of 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121 and present Patent
`Owner’s opposition to Petitioner’s arguments regarding the patentability of Patent
`Owner’s proposed substitute claims. Patent Owner’s reply shall be limited to
`12,000 words, which shall be counted as set forth in 37 C.F.R. § 42.24.
`3.5 DUE DATE 3.5
`Petitioner must file any surreply in support of its arguments relating to the
`patentability of Patent Owner’s proposed substitute claims by DUE DATE 3.5.
`Petitioner’s surreply may respond to Patent Owner’s arguments for patentability as
`presented in Patent Owner’s reply. Petitioner’s surreply shall be limited to 6,000
`words, which shall be counted as set forth in 37 C.F.R. § 42.24.
`4. DUE DATE 4
`a.
`Each party must file any observations on the cross-examination
`testimony of a reply witness (see section A.7 of Paper 24) by DUE DATE 4.
`b.
`Each party must file any motion to exclude evidence (37 C.F.R
`§ 42.64(c)) by DUE DATE 4.
`c.
`Each party must file any request for oral argument (37 C.F.R.
`§ 42.70(a)) by DUE DATE 4.
`5. DUE DATE 5
`a.
`Each party must file any reply to an observation on cross-examination
`testimony by DUE DATE 5.
`
`5
`
`
`
`IPR2017-01654
`Patent 9,079,490 B2
`b.
`Each party must file any opposition to a motion to exclude evidence
`by DUE DATE 5.
`6. DUE DATE 6
`Each party must file any reply for a motion to exclude evidence by DUE
`DATE 6.
`7. DUE DATE 7
`The oral argument (if requested by either party) is set for DUE DATE 7.
`
`6
`
`
`
`IPR2017-01654
`Patent 9,079,490 B2
`
`DUE DATE APPENDIX
`
`DUE DATE 1 .............................................................................. May 2, 2018
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ............................................................................. July 26, 2018
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ........................................................................ August 21, 2018
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 3.5 ................................................................. September 4, 2018
`Petitioner’s surreply to Patent Owner’s reply to Petitioner’s opposition to
`motion to amend
`
`DUE DATE 4 .................................................................. September 17, 2018
`Observations regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`
`DUE DATE 5 ........................................................................ October 1, 2018
`Response to observations
`Opposition to motion to exclude
`
`DUE DATE 6 ........................................................................ October 8, 2018
`Reply to opposition to motion to exclude
`
`7
`
`
`
`IPR2017-01654
`Patent 9,079,490 B2
`DUE DATE 7 ...................................................................... October 22, 2018
`Oral argument (if requested)
`
`8
`
`
`
`IPR2017-01654
`Patent 9,079,490 B2
`PETITIONER:
`Alyssa Caridis
`Bas de Blank
`ORRICK, HERRINGTON, & SUTCLIFFE LLP
`a8cptabdocket@orrick.com
`M2BPTABDocket@orrick.com
`
`
`
`PATENT OWNER:
`Robert C. Mattson
`Vincent Shier
`Christopher Ricciuti
`OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP
`CPDocketMattson@oblon.com
`CPDocketShier@oblon.com
`CPDocketRicciuti@oblon.com
`
`
`9
`
`
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