`Tel: 571.272.7822
`
`Paper 11
`Entered: April 19, 2018
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`INAUTH, INC.,
`Petitioner,
`v.
`MSIGNIA, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00150
`Patent 9,559,852 B2
`____________
`
`
`Before TREVOR M. JEFFERSON, JAMES B. ARPIN, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`
`
`ORDER
`Denying Request for Additional Briefing
`37 C.F.R. § 42.5(a)
`
`
`
`Case IPR2018-00150
`Patent 9,559,852 B2
`
`
`I.
`
`DISCUSSION
`
`On April 10, 2018, mSIGNA, Inc. (“Patent Owner”) sought a
`conference call with us to request authorization to file (1) a copy of
`proposed, claim constructions prepared by InAuth, Inc. (“Petitioner”) for use
`in a related U.S. district court proceeding also directed to the above-
`captioned patent and (2) additional briefing based on the proposed claim
`constructions. We and the parties participated in a conference call on April
`13, 2018, to discuss Patent Owner’s requests.
`During the conference call, Patent Owner confirmed that the above-
`captioned patent has not expired, and the parties acknowledged that we shall
`apply the broadest reasonable interpretation standard in construing any
`disputed claim term in this Preliminary Proceeding. Petitioner further
`explained that its claim constructions were proposed under the Phillips
`standard used by the U.S. district court and for the purpose of conferring
`with Patent Owner in an effort to reduce claim construction issues before the
`U.S. district court.
`Further, the parties informed us that claim construction briefing is not
`due in the U.S. district court proceeding until May 14, 2018, and a Markman
`hearing in the U.S. district court proceeding is scheduled for June 5, 2018.
`Petitioner’s proposed claim constructions have not been filed with the U.S.
`district court. Thus, neither the parties’ claim construction briefs nor any
`claim construction order from the U.S. district court will be filed with us
`prior to the statutory deadline, i.e., May 11, 2018, for our institution
`decision.
`Because Petitioner’s proposed, claim constructions may or may not
`reflect the claim constructions ultimately argued in its briefing and
`
`2
`
`
`
`Case IPR2018-00150
`Patent 9,559,852 B2
`
`considered by the U.S. district court and because Petitioner’s proposed,
`claim constructions were not prepared under the standard which we will
`apply in reaching our institution decision, Patent Owner failed to persuade
`us that receiving the proposed, claim constructions and briefing discussing
`these proposed claim constructions is appropriate or desirable at this time.
`We informed the parties of our decision to deny Patent Owner’s request
`during the conference call.
`We have not yet determined whether to institute review. Consistent
`with guidance from our reviewing court, if we institute review in this
`proceeding and if claim construction briefing is filed in the U.S. district
`court and/or if the U.S. district court provides constructions for claim terms
`that either party believes are relevant to issues in this proceeding,1 either or
`both parties may seek to bring such briefing and/or any claim construction
`order to our attention. See Power Integrations, Inc. v. Lee, 797 F.3d 1318,
`1326 (Fed. Cir. 2015) (“The fact that the board is not generally bound by a
`previous judicial interpretation of a disputed claim term does not mean,
`however, that it has no obligation to acknowledge that interpretation or to
`assess whether it is consistent with the broadest reasonable construction of
`the term.”); see also 37 C.F.R. § 42.51(b)(1)(iii) (“Unless previously served,
`a party must serve relevant information that is inconsistent with a position
`advanced by the party during the proceeding concurrent with the filing of the
`documents or things that contains the inconsistency.”).
`
`
`1 During the conference call, Petitioner informed us that, if we institute
`review, Petitioner intends to seek a stay of the U.S. district court proceeding.
`
`3
`
`
`
`Case IPR2018-00150
`Patent 9,559,852 B2
`
`
`II. ORDER
`
`It is:
`ORDERED that Patent Owner’s request for authorization to file (1) a
`copy of proposed, claim constructions prepared by Petitioner for use in a
`related U.S. district court proceeding relating to the above-captioned patent
`and (2) additional briefing relating to those proposed, claim constructions is
`denied.
`
`For PETITIONER:
`
`Peter J. Armenio
`Matthew D. Robson
`QUINN EMANUEL URQUHART & SULLIVAN LLP
`peterarmenio@quinnemanuel.com
`matthewrobson@quinnemanuel.com
`
`For PATENT OWNER:
`
`Thomas B. King
`Kenneth G. Parker
`Jason T. Lao
`HAYNES AND BOONE, LLP
`thomas.king@haynesboone.com
`kenneth.parker@haynesboone.com
`jason.lao@haynesboone.com
`
`
`
`
`
`
`
`
`4
`
`
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
