`571-272-7822
`
`
`
` Paper 19
`
`Entered: December 21, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`
`POWER INTEGRATIONS, INC.,
`Petitioner,
`
`v.
`
`SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC,
`Patent Owner.
`
`______________________
`
`Case IPR2018-00180
`Patent 6,597,221 B2
`
`__________________________________
`
`
`
`Before BRYAN F. MOORE, JOHN F. HORVATH, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`
`JIVANI, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`IPR2018-00180
`Patent 6,597,221 B2
`
`
`A conference call in the above proceeding was held on December 19
`
`2018, among respective counsel for the parties and Judges Moore and Jivani.
`
`The purpose of the call was to discuss Patent Owner’s request for
`
`authorization to file a sur-reply, in lieu of observations on cross-examination
`
`testimony, and a motion to strike arguments and related exhibits that were
`
`not present in the Petition.
`
`Regarding the proposed sur-reply, Patent Owner proposes submitting
`
`its sur-reply in lieu of observations. Petitioner represented during the call
`
`that it does not oppose Patent Owner’s request to submit a sur-reply in lieu
`
`of observations. Accordingly, we grant Patent Owner’s unopposed request
`
`to submit a sur-reply, which is consistent with the guidance in our Trial
`
`Practice Guide. See 83 Fed. Reg. 39,989 *14 (Aug. 13, 2018) (“Sur-replies
`
`to principal briefs (i.e., to a reply to a patent owner response or to a reply to
`
`an opposition to a motion to amend) normally will be authorized by the
`
`scheduling order entered at institution.”). Patent Owner’s shall sur-reply
`
`shall be submitted in lieu of observations, consistent with our Trial Practice
`
`Guide. Id. (“[S]ur-reply practice essentially replaces the previous practice of
`
`filing observations on cross-examination testimony.”).
`
`Regarding the proposed motion to strike, Patent Owner argued during
`
`the call that the Reply cites eight new exhibits consisting of prior art
`
`references on which Petitioner relies to assert new theories not previously
`
`presented in the Petition. For instance, Patent Owner contends that six of the
`
`new references are used to support a theory of inherency not previously
`
`presented in the Petition. Patent Owner thus seeks authorization to file a
`
`motion to strike these exhibits and arguments.
`
`
`
`IPR2018-00180
`Patent 6,597,221 B2
`
`
`In response, Petitioner contends that the exhibits and arguments at
`
`issue rebut directly arguments presented in Patent Owner’s Response. For
`
`instance, Petitioner states that it is not asserting the legal theory of inherency
`
`as related to anticipation, but rather proffers the exhibits and arguments to
`
`establish the knowledge of one of ordinary skill in the art. Id.
`
`Our Trial Practice Guide suggests that a motion to strike may be
`
`proper in circumstances where “a party believes that a brief filed by the
`
`opposing party raises new issues,” and when the requesting party “believes
`
`the Board should disregard arguments or late-filed evidence in its entirety.”
`
`See 83 Fed. Reg. 39,989 * 17. Here, the parties’ arguments identify at least
`
`inherency as a potentially new legal theory introduced into this proceeding
`
`in the Reply. Accordingly, we grant Patent Owner’s request for
`
`authorization to file a motion to strike. We further authorize Petitioner to
`
`file an opposition to Patent Owner’s motion to strike. No further briefing is
`
`authorized.
`
`
`
`It is, therefore,
`
`ORDER
`
`ORDERED that Patent Owner’s request for authorization to file a
`
`sur-reply in lieu of observations on cross-examination testimony is granted
`
`and the sur-reply shall be filled on or before DUE DATE 4;
`
`FURTHER ORDERED that Patent Owner’s request for authorization
`
`to file a motion to strike is granted and the motion shall be filled on or
`
`before DUE DATE 4;
`
`FURTHER ORDERED that Petitioner is authorized to file an
`
`opposition to Patent Owner’s motion to strike on or before DUE DATE 5;
`
`2
`
`
`
`
`IPR2018-00180
`Patent 6,597,221 B2
`
`
`
`
`FURTHER ORDERED that Patent Owner’s motion and Petitioner’s
`
`opposition thereto each shall be limited to no more than five (5) pages; and
`
`
`
`
`
`
`
`FURTHER ORDERED that no additional briefing is authorized.
`
`
`
`3
`
`
`
`
`IPR2018-00180
`Patent 6,597,221 B2
`
`
`FOR PETITIONER:
`
`John Phillips
`Neil Warren
`James Huguenin-Love
`FISH & RICHARDSON PC
`phillips@fr.com
`warren@fr.com
`huguenin-love@fr.com
`
`
`PATENT OWNER:
`
`Roger Fulghum
`Brian W. Oaks
`Brett J. Thompsen
`Nick Schuneman
`Jennifer Nall
`Seth Lindner
`BAKER BOTTS LLP
`roger.fulghum@bakerbotts.com
`brian.oaks@bakerbotts.com
`brett.thompsen@bakerbotts.com
`nick.schuneman@bakerbotts.com
`jennifer.nall@bakerbotts.com
`seth.lindner@bakerbotts.com
`
`
`4
`
`
`
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