Trials@uspto.gov Paper No. 61
`571-272-7822
`Date: March 1, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`YAMAHA GOLF CAR COMPANY,
`Petitioner,
`
`v.
`
`CLUB CAR, LLC,
`Patent Owner.
`_______________
`IPR2017-02141 (Patent 7,239,965 B2)1
` IPR2017-02142 (Patent 7,239,965 B2)
`IPR2017-02143 (Patent 7,480,569 B2)
`IPR2017-02144 (Patent 7,480,569 B2)
`_______________
`
`
`Before JOSIAH C. COCKS, CARL M. DEFRANCO, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`KINDER, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`1 This order addresses one issue common to all cases, but also certain issues
`only applicable to IPR2017-02141 and IPR2017-2143; therefore, we issue a
`single order to be entered in each case. The parties are not authorized to use
`this style heading for any subsequent papers.
`
`
`571-272-7822
`Date: March 1, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`YAMAHA GOLF CAR COMPANY,
`Petitioner,
`
`v.
`
`CLUB CAR, LLC,
`Patent Owner.
`_______________
`IPR2017-02141 (Patent 7,239,965 B2)1
` IPR2017-02142 (Patent 7,239,965 B2)
`IPR2017-02143 (Patent 7,480,569 B2)
`IPR2017-02144 (Patent 7,480,569 B2)
`_______________
`
`
`Before JOSIAH C. COCKS, CARL M. DEFRANCO, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`KINDER, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`1 This order addresses one issue common to all cases, but also certain issues
`only applicable to IPR2017-02141 and IPR2017-2143; therefore, we issue a
`single order to be entered in each case. The parties are not authorized to use
`this style heading for any subsequent papers.
`
`
`
`IPR2017-02141 (Patent 7,239,965 B2)
`IPR2017-02142 (Patent 7,239,965 B2)
`IPR2017-02143 (Patent 7,480,569 B2)
`IPR2017-02144 (Patent 7,480,569 B2)
`
`A telephonic conference was held on February 28, 2019 between
`
`counsel for the parties and the Board. The following issues were addressed
`during that conference call.
`A. Deposition Transcript of Scott Andrews
`Exhibit 1039 in IPR2017-02141 and IPR2017-02143, and Exhibit
`1030 in IPR2017-02142 and IPR2017-02144, were both originally filed as a
`partial transcript of the Deposition of Scott Andrews. Petitioner seeks to
`replace these currently filed partial transcripts with a complete transcript.
`Patent Owner does not object.
`Petitioner is authorized to replace Exhibit 1039 in IPR2017-02141 and
`IPR2017-02143, and Exhibit 1030 in IPR2017-02142 and IPR2017-02144,
`with a complete transcript of Mr. Andrews’s deposition. Petitioner should
`coordinate with the Board staff to file these with the same exhibit numbers.
`B. Exhibit 1052 in IPR2017-02141 and IPR2017-02143
`Petitioner seeks to include in the final record of the proceeding
`Exhibit 1052 – a copy of U.S. Provisional Application No. 60/754,894. This
`is the provisional application to which the challenged claims base priority.
`Exhibit 1052 is a record of the Patent Office. Petitioner notes that although
`Exhibit 1052 was not produced during the proceeding, specific reference
`was made in Petitioner’s Reply Briefs to content within the ’894 provisional
`application. See IPR2017-02141, Paper 45, 15.
`Patent Owner objects to the inclusion of Exhibit 1052 in the final
`record. Patent Owner contends the belated production of this exhibit would
`add new argument. Although recognizing the ’894 provisional was
`
`2
`
`
`
`IPR2017-02141 (Patent 7,239,965 B2)
`IPR2017-02142 (Patent 7,239,965 B2)
`IPR2017-02143 (Patent 7,480,569 B2)
`IPR2017-02144 (Patent 7,480,569 B2)
`
`discussed in Petitioner’s Reply Brief, Patent Owner believes adding the
`actual exhibit should not be allowed because it was not originally included.
`Because the ’894 provisional application was discussed in Petitioner’s
`Reply Briefs (see, e.g., IPR2017-02141, Paper 45, 15) and by Petitioner’s
`expert (IPR2017-02141, Exhibit 1047 ¶¶ 43, 47), and because the document
`is an official Patent Office record, we grant Petitioner’s request to submit a
`copy of the document as Exhibit 1052 in IPR2017-02141 and IPR2017-
`02143.
`C. Exhibit 1053 in IPR2017-02141 and IPR2017-02143
`Petitioner seeks to include in the final record of the proceeding
`Exhibit 1053 – a corrected appendix (A-6) to the Reply Declaration of Kevin
`C. Breen (Ex. 1047). The current A-6 appendix is actually another copy of
`the A-5 appendix – A-6 was inadvertently excluded. On the conference call,
`both parties agreed that the omission of A-6 as a part of Exhibit 1047 was a
`mistake. We grant Petitioner’s request. Petitioner may file as Exhibit 1053
`in IPR2017-02141 and IPR2017-02143 an original, unedited, copy of the
`original A-6 appendix to Exhibit 1047, noting on the cover page of Exhibit
`1053 the purpose of the exhibit, and also referencing this Order.
`D. Exhibits 1054 and 1055 in IPR2017-02141 and IPR2017-02143
`The documents identified as Exhibits 1054 and 1055 were never
`produced, cited, or referenced during this proceeding. We therefore deny
`Petitioner’s request to include these documents as exhibits in this
`proceeding. These documents consist of a foreign patent document and its
`English translation. Petitioner has no persuasive reason for the late inclusion
`
`3
`
`
`
`IPR2017-02141 (Patent 7,239,965 B2)
`IPR2017-02142 (Patent 7,239,965 B2)
`IPR2017-02143 (Patent 7,480,569 B2)
`IPR2017-02144 (Patent 7,480,569 B2)
`
`of these documents into the record for these proceedings. Therefore, these
`documents will not be entered or considered as we prepare final decisions in
`each of IPR2017-02141 and IPR2017-02143.
`
`
`ORDER
`
`It is, therefore,
`ORDERED that Petitioner refile Exhibit 1039 in IPR2017-02141 and
`IPR2017-02143, and Exhibit 1030 in IPR2017-02142 and IPR2017-02144,
`as a complete transcript for the deposition of Scott Andrews;
`FURTHER ORDERED that Petitioner may file Exhibit 1052 (’894
`provisional) in IPR2017-02141 and IPR2017-02143;
`FURTHER ORDERED that Petitioner may file Exhibit 1053
`(Appendix A-6 to Ex. 1047) in IPR2017-02141 and IPR2017-02143;
`FURTHER ORDERED that Petitioner is not permitted to file the
`documents identified as Exhibit 1054 and Exhibit 1055 as exhibits in these
`proceedings. These documents will also remain expunged from these
`proceedings.2
`
`
`
`
`
`2 Petitioner had previously filed, without authorization, copies of Exhibits
`1054 and 1055. Those unauthorized filings were expunged. See, e.g.,
`IPR2017-02141, Paper 65.
`
`4
`
`
`
`IPR2017-02141 (Patent 7,239,965 B2)
`IPR2017-02142 (Patent 7,239,965 B2)
`IPR2017-02143 (Patent 7,480,569 B2)
`IPR2017-02144 (Patent 7,480,569 B2)
`
`
`For PETITIONER:
`Robert W. Dickerson
`Armand F. Ayazi
`ZUBER LAWLER & DEL DUCA LLP
`rdickerson@zuberlaw.com
`aayazi@zuberlaw.com
`
`
`For PATENT OWNER:
`
`Cyrus Morton
`Shui Li
`ROBINS KAPLAN LLP
`cmorton@robinskaplan.com
`sli@robinskaplan.com
`
`
`
`
`
`
`
`
`5
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
