Paper 7
`Trials@uspto.gov
`571-272-7822 Entered: February 9, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WESTERN DIGITAL CORPORATION,
`Petitioner,
`
`v.
`
`SPEX TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Cases IPR2018-00082 (Patent 6,088,802)
`IPR2018-00084 (Patent 6,003,135)1
`____________
`
`
`
`Before LYNNE E. PETTIGREW, DANIEL N. FISHMAN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`1 This Order applies to each referenced case. The parties are not authorized
`to use this heading style.
`
`
`Trials@uspto.gov
`571-272-7822 Entered: February 9, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WESTERN DIGITAL CORPORATION,
`Petitioner,
`
`v.
`
`SPEX TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Cases IPR2018-00082 (Patent 6,088,802)
`IPR2018-00084 (Patent 6,003,135)1
`____________
`
`
`
`Before LYNNE E. PETTIGREW, DANIEL N. FISHMAN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`1 This Order applies to each referenced case. The parties are not authorized
`to use this heading style.
`
`
`
`IPR2018-00082 (Patent 6,088,802)
`IPR2018-00084 (Patent 6,003,135)
`
`
`INTRODUCTION
`I.
`In an e-mail message sent February 2, 2018, Petitioner requested a
`conference call with the Board to request authorization to file a reply to
`Petitioner’s Preliminary Response in each of the above identified cases. On
`February 8, 2018, a conference call was conducted involving counsel for
`Petitioner, counsel for Patent Owner, and Judges Fishman and Pettigrew.
`Petitioner engaged the services of a court reporter and committed to filing a
`copy of the transcript of the conference call by February 15, 2018.
`Following the conference call, the panel determined this Order should
`precede filing of the transcript to assure the parties have clear directions for
`the below-authorized filings.
`
`
`II. GENERAL PLASTIC
`Patent Owner’s Preliminary Responses (IPR2018-00082, Paper 6;
`IPR2018-00084, Paper 6; both filed January 26, 2018) argue, inter alia, this
`panel should exercise our discretion under 35 U.S.C. § 314(a) to deny the
`Petitions in the above-identified cases. Patent Owner’s arguments discuss
`the non-exclusive factors enumerated in General Plastic Industrial Co., Ltd.
`v. Canon Kabushiki Kaisha (Case IPR2016-01357, Paper 19). In the
`conference call, Petitioner noted that these Petitions were filed October 16,
`2017, before the relevant portion of General Plastic was designated as a
`Precedential decision of the Board effective October 18, 2017. Petitioner
`requests authorization to file a Reply brief (in each above-identified case)
`responsive to the arguments presented in Patent Owner’s Preliminary
`Responses regarding General Plastic. Patent Owner indicated it did not
`object to such a Reply by Petitioner.
`
`2
`
`
`
`IPR2018-00082 (Patent 6,088,802)
`IPR2018-00084 (Patent 6,003,135)
`
`
`Upon consideration of the arguments discussed during the conference
`call, we are persuaded that Petitioner has shown good cause to authorize its
`request to file a Reply in each case to address whether we should exercise
`our discretion to deny the Petitions under 35 U.S.C. § 314(a). See 37 C.F.R.
`§ 42.108 (“A petitioner may seek leave to file a reply to the preliminary
`response in accordance with §§ 42.23 and 42.24(c). Any such request must
`make a showing of good cause.”). In particular, we note that the Petition in
`each case was filed (October 16, 2017) prior to the Precedential designation
`on October 18, 2018 of a portion of General Plastic addressing a non-
`exhaustive list of factors (the “General Plastic factors”) to be considered by
`the Board when evaluating whether to exercise discretion under § 314(a).
`Accordingly, Petitioner is authorized to file a Reply to Patent Owner’s
`Preliminary Response in each of the above-identified cases addressing the
`General Plastic factors. Petitioner’s Reply regarding the General Plastic
`factors shall not exceed five (5) pages and shall be filed no later than
`February 20, 2018. Patent Owner is authorized to file a Sur-Reply to
`Petitioner’s Reply in each case. Patent Owner’s Sur-Reply regarding the
`General Plastic factors shall not exceed three (3) pages and shall be filed no
`later than February 26, 2018.
`
`
`37 C.F.R. § 42.104(b)(3) COMPLIANCE
`III.
`In Patent Owner’s Preliminary Responses, Patent Owner argues, inter
`alia, that the Petitions should be denied because the Petitions fail to comply
`with 37 C.F.R. § 42.104(b)(3) (“[w]here the claim to be construed contains a
`means-plus-function or step-plus-function limitation as permitted under
`35 U.S.C. 112(f), the construction of the claim must identify the specific
`
`3
`
`
`
`IPR2018-00082 (Patent 6,088,802)
`IPR2018-00084 (Patent 6,003,135)
`
`portions of the specification that describe the structure, material, or acts
`corresponding to each claimed function”). Patent Owner’s Preliminary
`Responses argue “[a]s a threshold matter, all Grounds should be denied
`institution because Petitioner has failed to meet its burden under 37 C.F.R.
`§ 42.104(b)(3) to propose claim constructions that it believes are correct
`under applicable law.” IPR2018-00082 Paper 6, 2–3; IPR2018-00084
`Paper 6, 10. Patent Owner quotes from two decisions by other panels of the
`Board in support of its assertion that the Petition must indicate its agreement
`with such claim constructions and not merely identify claim constructions of
`a District Court or the Patent Owner. In the conference call, Petitioner
`argues Patent Owner incorrectly interprets our rule 42.104(b)(3) as requiring
`Petitioner to indicate its agreement with an identified claim construction and
`further notes that the quoted panel decisions are not precedential decisions of
`the Board binding on this panel. Instead, Petitioner argues in the conference
`call that our rule merely requires the Petition to identify the claim
`construction it proposes to be used for that Petition and does not require
`Petitioner to agree with that claim construction.
`Upon consideration of the arguments discussed during the conference
`call, we are persuaded that Petitioner has shown good cause to authorize its
`request to file a Reply in each proceeding to address whether each Petition
`has complied with 37 C.F.R. § 42.104(b)(3). In particular, Petitioner’s
`Reply should explain why Petitioner believes prior panel decisions
`interpreting 37 C.F.R. § 42.104(b)(3) are in error.
`Accordingly, Petitioner is authorized to include three (3) additional
`pages in its Reply to Patent Owner’s Preliminary Response in each of the
`above-identified cases addressing proper interpretation of our rule 37 C.F.R.
`
`4
`
`
`
`IPR2018-00082 (Patent 6,088,802)
`IPR2018-00084 (Patent 6,003,135)
`
`§ 42.104(b)(3). Patent Owner is authorized to include three (3) additional
`pages in its Sur-Reply in each case responding to Petitioner’s arguments
`directed to proper interpretation of our rule 37 C.F.R. § 42.104(b)(3).
`
`
`IV. ORDERS
`In consideration of the foregoing, it is hereby:
`ORDERED Petitioner is authorized to file a Reply to Patent Owner’s
`Preliminary Response in Cases IPR2018-00082 and in IPR2018-00084;
`FURTHER ORDERED Petitioner’s Reply is each case is limited to
`five (5) pages directed to the General Plastics factors plus three (3) pages
`directed to interpretation of our rule 37 C.F.R. § 42.104(b)(3);
`FURTHER ORDERED Petitioner’s Reply in each case shall be filed
`no later than February 20, 2018;
`FURTHER ORDERED Patent Owner is authorized to file a Sur-
`Reply to Petitioner’s Reply in Cases IPR2018-00082 and in IPR2018-00084;
`FURTHER ORDERED Patent Owner’s Sur-Reply in each case is
`limited to three (3) pages directed to the General Plastics factors plus three
`(3) pages directed to interpretation of our rule 37 C.F.R. § 42.104(b)(3); and
`FURTHER ORDERED Patent Owner’s Sur-Reply in each case shall
`be filed no later than February 26, 2018.
`
`
`
`5
`
`
`
`IPR2018-00082 (Patent 6,088,802)
`IPR2018-00084 (Patent 6,003,135)
`
`
`
`FOR PETITIONER:
`Brian Buroker
`Blair A. Silver
`GIBSON, DUNN & CRUTCHER LLP
`bburoker@gibsondunn.com
`bsilver@gibsondunn.com
`
`
`FOR PATENT OWNER:
`
`Peter Lambrianakos
`Alfred R. Fabricant
`Vincent J. Rubino
`Enrique W. Iturralde
`BROWN RUDNICK LLP
`plambrianakos@brownrudnick.com
`afabricant@brownrudnick.com
`vrubino@brownrudnick.com
`eiturralde@brownrudnick.com
`
`
`6
`
`
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
