Trials@uspto.gov
`571.272.7822
`
`
`
` Paper No.34
`
` Entered: February 21, 2019
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SZ DJI TECHNOLOGY CO., LTD. and PARROT INC.,
`Petitioners,
`
`v.
`
`DRONE-CONTROL, LLC,
`Patent Owner.
`____________
`
`Case IPR2018-00204 (Patent 8,200,375 B2)
`Case IPR2018-00205 (Patent 8,380,368 B2)
`Case IPR2018-00206 (Patent 8,649,918 B2)
`Case IPR2018-00207 (Patent 9,079,116 B2)
` Case IPR2018-00208 (Patent 9,568,913 B2)1
`____________
`
`
`
`Before PATRICK R. SCANLON, FRANCES L. IPPOLITO, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`GOODSON, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`1 We exercise our discretion to issue one order to be filed in each
`proceeding. The parties may use this style heading only if the paper includes
`a statement certifying that the identical paper is being filed in each
`proceeding listed in the caption.
`
`
`
`
`571.272.7822
`
`
`
` Paper No.34
`
` Entered: February 21, 2019
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SZ DJI TECHNOLOGY CO., LTD. and PARROT INC.,
`Petitioners,
`
`v.
`
`DRONE-CONTROL, LLC,
`Patent Owner.
`____________
`
`Case IPR2018-00204 (Patent 8,200,375 B2)
`Case IPR2018-00205 (Patent 8,380,368 B2)
`Case IPR2018-00206 (Patent 8,649,918 B2)
`Case IPR2018-00207 (Patent 9,079,116 B2)
` Case IPR2018-00208 (Patent 9,568,913 B2)1
`____________
`
`
`
`Before PATRICK R. SCANLON, FRANCES L. IPPOLITO, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`GOODSON, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`1 We exercise our discretion to issue one order to be filed in each
`proceeding. The parties may use this style heading only if the paper includes
`a statement certifying that the identical paper is being filed in each
`proceeding listed in the caption.
`
`
`
`
`
`IPR2018-00204 (Patent 8,200,375 B2)
`IPR2018-00205 (Patent 8,380,368 B2)
`IPR2018-00206 (Patent 8,649,918 B2)
`IPR2018-00207 (Patent 9,079,116 B2)
`IPR2018-00208 (Patent 9,568,913 B2)
`
`
`At Patent Owner’s request, we conducted a pre-hearing conference
`call with counsel for the parties on February 20, 2019. In its email
`requesting the conference, Patent Owner stated that it “would like to discuss
`the possibility of Patent Owner submitting, prior to the oral hearing, a
`revised listing of amended claims that make clear the corrections to
`typographical errors collectively addressed in the papers surrounding the
`Motions to Amend.” During the call, Patent Owner explained that the
`corrections it wishes to make are as follows:
`
` In IPR2018-00206, claim 33 recites “wherein (cid:2032)2 comprises the
`quoted phrase to “wherein (cid:2032)2 comprises the pitch axis command
`
`roll axis command angle.” Patent Owner wishes to change the
`
`angle.”
` In IPR2018-00207, claim 25 recites that “the command data is
`generated only at the RC aircraft.” Patent Owner wishes to
`change the quoted phrase to “the motion data is generated only
`at the RC aircraft.”
`Patent Owner argues that these changes correct inadvertent,
`typographical errors in its proposed substitute claims. Patent Owner states
`that it first became aware of these errors when Petitioners pointed them out
`in their oppositions to the motions to amend. Petitioners oppose Patent
`Owner’s request to submit a revised listing. Petitioners argue that Patent
`Owner’s changes are not typographical because they seek to change words
`that have one meaning to other words that have a different meaning.
`Further, Petitioners argue that their oppositions to the motions to amend
`
`2
`
`
`
`IPR2018-00204 (Patent 8,200,375 B2)
`IPR2018-00205 (Patent 8,380,368 B2)
`IPR2018-00206 (Patent 8,649,918 B2)
`IPR2018-00207 (Patent 9,079,116 B2)
`IPR2018-00208 (Patent 9,568,913 B2)
`
`
`were based on the substitute claims that were presented, and that permitting
`Patent Owner to change its claims at this stage would deprive Petitioners of
`a fair opportunity to address the new claims.
`After considering the parties’ arguments, we are not persuaded that
`Patent Owner should be permitted to submit a revised listing of amended
`claims at this stage of the proceedings. During the call, Patent Owner was
`unable to direct us to any proceeding in which the Board allowed a patent
`owner to revise its proposed claim amendments. Further, Patent Owner did
`not provide a satisfactory explanation for why it chose to wait until the final
`days before the hearing to seek this relief. Permitting a change in the
`proposed substitute claims at this point leaves little opportunity for
`Petitioners to present their opposition to the newly revised claims.
`Accordingly, no submission of a revised listing is authorized.
`During the call, the parties also raised potential objections to hearing
`demonstratives. Patent Owner expressed its concern that Petitioners’
`introductory slides include citation to evidence that is discussed only in the
`briefing on the motions to amend, and not in the briefing on the cases-in-
`chief. Patent Owner argues that this blending of the record may be
`confusing, and requests that we require Petitioners to remove from their
`introductory slides any evidence that was cited only in the briefing on the
`motions to amend. Petitioners respond that their slides include citations to
`the papers in the record where the evidence is discussed, so there is no risk
`of confusion.
`The panel has not seen the slides in question, so we are not prepared
`to issue specific rulings at this time. However, by way of guidance, the
`
`3
`
`
`
`IPR2018-00204 (Patent 8,200,375 B2)
`IPR2018-00205 (Patent 8,380,368 B2)
`IPR2018-00206 (Patent 8,649,918 B2)
`IPR2018-00207 (Patent 9,079,116 B2)
`IPR2018-00208 (Patent 9,568,913 B2)
`
`
`panel does not intend to police the manner in which either party organizes its
`presentation. There is a significant overlap of issues and arguments between
`these five proceedings, which is why we granted the parties’ request for a
`single hearing for all five cases. See Case IPR2018-00204, Paper 28, 2.
`Attempting to impose a rigid framework controlling when certain issues or
`evidence can be discussed within a party’s allotted argument time would be
`inefficient and, in our view, unhelpful. The parties are not permitted to
`present new arguments at the hearing, but we leave it up to them to decide
`which arguments from their briefs they wish to highlight at the hearing and
`how best to organize those remarks. If Patent Owner believes that
`Petitioners are improperly relying on arguments or evidence against the
`original claims that were presented only in opposition to the motion to
`amend, Patent Owner should make that point during its presentation at the
`hearing.
`As for other demonstrative-related disputes, to the extent the parties
`are unable to resolve those disputes through meeting and conferring, the
`parties should follow the procedure outlined in the Hearing Order regarding
`objections to demonstratives. See Case IPR2018-00204, Paper 28, 4.
`
`
`
`
`
`
`
`
`
`
`
`
`4
`
`
`
`IPR2018-00204 (Patent 8,200,375 B2)
`IPR2018-00205 (Patent 8,380,368 B2)
`IPR2018-00206 (Patent 8,649,918 B2)
`IPR2018-00207 (Patent 9,079,116 B2)
`IPR2018-00208 (Patent 9,568,913 B2)
`
`
`
`PETITIONER:
`
`
`
`Stephen Kabakoff
`Joshua Goldberg
`Qingyu Yin
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP
`stephen.kabakoff@finnegan.com
`joshua.goldberg@finnegan.com
`qingyu.yin@finnegan.com
`
`Matthew Traupman
`Jim Glass
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`matthewtraupman@quinnemanuel.com
`jimglass@quinnemanuel.com
`
`
`PATENT OWNER:
`
`Jeffrey Toler
`Aakash Parekh
`Craig Jepson
`TOLER LAW GROUP, PC
`jtoler@tigiplaw.com
`aparekh@tlgiplaw.com
`cjepson@tlgiplaw.com
`
`
`
`5
`
`
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