`571.272.7822
`
`Paper No. 10
`Entered: January 23, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`HUAWEI TECHNOLOGIES CO., LTD.,
`Petitioner,
`
`v.
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Patent Owner.
`_______________
`
`Case IPR2017-01979
`Patent 8,761,130 B2
`_______________
`
`Before JAMESON LEE, PATRICK M. BOUCHER, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`JIVANI, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5(a) and 37 C.F.R. § 42.108(c)
`
`
`
`
`
`IPR2017-01979
`Patent 8,761,130 B2
`
`
`This Order summarizes a conference call held between the Board and
`counsel for the parties on January 18, 2018. A transcript of the conference
`call appears in the record as Exhibit 1051.
`Background
`Petitioner Huawei Technologies seeks inter partes review of claims
`9–16 (the “Challenged Claims”) of U.S. Patent No. 8,761,130 B2 (the “’130
`patent”). Paper 1. Patent Owner Samsung Electronics has filed a
`Preliminary Response. Paper 7. We have not yet entered a decision on
`whether to institute the requested inter partes review.
`On January 12, 2018, Petitioner emailed the Board to request
`permission to file a reply to the Preliminary Response. Petitioner stated in
`its email that the proposed reply would address Patent Owner’s
`interpretation and application of the term “symbol,” which appears in each
`of the Challenged Claims.1 Petitioner’s email indicated that Patent Owner
`opposes the request for a reply.
`During the conference, Petitioner argued that good cause for a reply
`exists because Patent Owner’s application of the term “symbol” in this
`proceeding conflicts with positions taken by Patent Owner in litigation
`involving the ’130 patent. E.g., Ex. 1051 at 43:1–9. We denied Petitioner’s
`request on the conference call. Id. at 67:1–3. Reasons for the denial are set
`forth below.
`
`
`1 Petitioner’s email also sought leave to reply to Patent Owner’s
`interpretation and application of the claim term “sub-frame;” however,
`counsel for Petitioner withdrew this request during the conference.
`Ex. 1051.
`
`2
`
`
`
`IPR2017-01979
`Patent 8,761,130 B2
`
`
`Analysis
`The rules applicable to inter partes review do not, as of right, provide
`an opportunity for a petitioner to file a reply to a preliminary response. See
`37 C.F.R. § 42.108(c). However, a petitioner “may seek leave to file a
`reply,” and “[a]ny such request must make a showing of good cause.” Id.
`According to Petitioner, Patent Owner’s argument in its Preliminary
`Response on the claim term “symbol” amounts to an assertion that the
`claimed symbol must be afforded the same meaning that the prior art
`reference Cho affords that term. Ex. 1051 at 44:12–18. More specifically,
`Petitioner summarizes Patent Owner argument as asserting that Cho’s
`symbol block cannot meet the claimed “symbol” because Cho describes its
`block as containing constituent symbols. Id. at 47:22–48:4. Petitioner
`contends that such an interpretation of the claimed symbol is narrower than
`positions taken by Patent Owner in infringement contentions in related
`district court litigation. Id. at 44:19–45:6. According to Petitioner, the
`alleged breadth of Patent Owner’s infringement contentions is inconsistent
`with Patent Owner’s position in this proceeding that Cho’s symbol block
`does not meet the claimed symbol. Id. at 46:6–13.
`We are not persuaded that the alleged inconsistency constitutes good
`cause justifying the filing of a reply brief. There is no requirement that the
`positions taken by a party in an inter partes review must identically match
`the positions taken by that party in related litigation. Moreover, we interpret
`claims of an unexpired patent using the broadest reasonable construction in
`light of the specification of the patent in which they appear––a standard
`different from the claim construction standard applied in district court
`litigation. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136
`
`3
`
`
`
`IPR2017-01979
`Patent 8,761,130 B2
`
`S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable
`interpretation standard in inter partes reviews). Accordingly we are not
`persuaded on this record that the inconsistency alleged by Petitioner
`warrants a reply.
`For the reasons set forth above, it is:
`ORDERED that Petitioner’s request for authorization to file a motion
`
`for permission to file a reply brief is denied.
`
`
`4
`
`
`
`IPR2017-01979
`Patent 8,761,130 B2
`
`PETITIONER:
`
`Joseph A. Micallef
`Jeffrey P. Kushan
`SIDLEY AUSTIN LLP
`jmicallef@sidley.com
`jkushan@sidley.com
`
`
`PATENT OWNER:
`
`Kevin Johnson
`Alan L. Whitehurst
`Marissa R. Ducca
`Brian Mack
`Deepa Acharya
`Jared Newton
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`QE_Huaweiv.Samsung@quinnemanuel.com
`
`5
`
`
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