`571-272-7822
`
`
`
`
`
`Paper 30
`Entered: September 6, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`AGILENT TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`THERMO FISHER SCIENTIFIC INC. and
`THERMO FISHER SCIENTIFIC (BREMEN) GMBH,
`Patent Owner.
`____________
`
`Case IPR2018-00297
`Patent RE45,553 E
`____________
`
`
`Before MICHAEL R. ZECHER, JOHN F. HORVATH, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`
`ZECHER, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5(a)
`
`
`
`
`
`IPR2018-00297
`Patent RE45,553 E
`
`
`I.
`
`DISCUSSION
`
`A conference call in this proceeding was held on September 5, 2018,
`
`between respective counsel for Petitioner and Patent Owner, and Judges Zecher,
`
`Horvath, and Galligan. Patent Owner, Thermo Fisher Scientific Inc. and Thermo
`
`Fischer Scientific (Bremen) GmbH (collectively, “Thermo”), requested the
`
`conference call to discuss its intention to file a motion to amend.
`
`During the conference call, Thermo represented that it intends to file a
`
`motion to amend that proposes a reasonable number of substitute claims for claims
`
`32–35 and 62–66 of U.S. Patent No. RE45,553 E. In particular, Thermo
`
`represented that it would be proposing a smaller set of substitute claims than the
`
`nine claims on which we instituted trial. As one example, Thermo represented that
`
`it may propose one substitute independent claim, along with three or four substitute
`
`dependent claims. For further information and guidance on filing a motion to
`
`amend, we directed the parties to Western Digital Corp. v. SPEX Technologies,
`
`Inc., Case IPR2018-00082 (PTAB Apr. 25, 2018) (Paper 13) (informative).
`
`Both parties also inquired about the recent updates to the Office Patent Trial
`
`Practice Guide, 77 Fed. Reg. 48,756 (Aug. 14, 2012) (“Trial Practice Guide”),1
`
`and the proper procedure for requesting a sur-reply to allow (1) Petitioner, Agilent
`
`Technologies, Inc. (“Agilent”), to respond to Thermo’s reply to an opposition to a
`
`motion to amend, and (2) Thermo to respond to Agilent’s reply. We explained
`
`that, when, as here, a scheduling order was issued prior to the updates to the Trial
`
`Practice Guide, we handle requests for sur-replies on a case-by-case basis. We
`
`explained that the parties should wait for the record to develop further before
`
`determining whether a sur-reply is necessary.
`
`
`1https://www.uspto.gov/sites/default/files/documents/2018_Revised_Trial_Practice
`_Guide.pdf
`
`2
`
`
`
`IPR2018-00297
`Patent RE45,553 E
`
`
`II. ORDER
`
`In consideration of the foregoing, it is hereby ORDERED that Thermo has
`
`satisfied the conference requirement of 37 C.F.R. § 42.121(a) for this proceeding.
`
`
`
`
`
`
`3
`
`
`
`IPR2018-00297
`Patent RE45,553 E
`
`
`For PETITIONER:
`
`Brian M. Buroker
`Mark N. Reiter
`David L. Glandorf
`Anne Y. Brody
`Gibson, Dunn & Crutcher LLP
`bburoker@gibsondunn.com
`mreiter@gibsondunn.com
`dglandorf@gibsondunn.com
`abrody@gibsondunn.com
`
`
`For PATENT OWNER:
`
`Adam R. Brausa
`Matthew Becker
`David Ludwig
`Jeremy Lowe
`Sonal N. Mehta (pro hac vice)
`Eneda Hoxha (pro hac vice)
`Durie Tangri LLP
`abrausa@durietangri.com
`mbecker@axinn.com
`dludwig@axinn.com
`jlowe@axinn.com
`smethta@durietangri.com
`ehoxha@durietangri.com
`
`
`4
`
`
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