`571.272.7822
`
`
`Paper 44
`Entered: December 11, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE INC.,
`Petitioner
`
`v.
`
`QUALCOMM INCORPORATED,
`Patent Owner.
`____________
`
`Case IPR2018-01277
`Case IPR2018-01278
`Patent 8,497,928 B21
`____________
`
`
`
`Before DANIEL N. FISHMAN, MICHELLE N. WORMMEESTER, and
`AARON W. MOORE, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`1 Because this Order addresses an issue that is common to both proceedings,
`it uses a common header. The parties may not use this style heading.
`
`
`
`IPR2018-01277; IPR2018-01278
`Patent 8,497,928 B2
`
`
`The panel has identified a potential construction of the term “focal
`point” in the claims of U.S. Patent 8,497,928 B2 that differs from those
`advanced by the parties. Specifically, the panel is considering whether
`“focal point” should be construed to mean “area on which the lens
`component was focused or is to be focused.” The panel is also considering
`an alternative approach, in which “first focal point” is construed to mean
`“area on which the lens component was focused” and “second focal point” is
`construed to mean “area on which the lens component is to be focused.”
`In order that the parties have the opportunity2 to present argument
`under these possible theories in addition to the discussion at the hearing,3
`they are invited to submit one additional brief, to be filed in each case, and
`not to exceed ten (10) pages, on or before December 20, 2019. The briefs
`shall be limited to (a) the appropriateness of the above constructions, and (b)
`the effect of such constructions on the theories of invalidity presented in the
`Petitions. The parties are not authorized to submit new evidence.
`
`
`
`
`
`
`
`
`2 See 5 U.S.C. § 554(b)(3); Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064,
`1080 (Fed. Cir. 2015) (“an agency may not change theories in midstream
`without giving respondents reasonable notice of the change” and “the
`opportunity to present argument under the new theory”) (quoting Rodale
`Press, Inc. v. FTC, 407 F.2d 1252, 1256–57 (D.C. Cir. 1968)).
`3 See IPR2018-01277, Paper 42 at 9, 40–41.
`2
`
`
`
`
`
`IPR2018-01277; IPR2018-01278
`Patent 8,497,928 B2
`
`
`ORDER
`
`Accordingly, it is
`ORDERED that each party may file one brief, no longer than ten (10)
`pages, that addresses the above-identified issues. The brief shall be filed in
`each case no later than December 20, 2019. No new evidence may be
`submitted.
`
`
`
`
`
`
`
`
`3
`
`
`
`IPR2018-01277; IPR2018-01278
`Patent 8,497,928 B2
`
`PETITIONER:
`
`W. Karl Renner
`Thomas A. Rozylowicz
`Timothy W. Riffe
`Kenneth W. Darby
`Thad Kodish
`Fish & Richardson P.C.
`IPR39521-0047IP1@fr.com
`PTABInbound@fr.com
`axf-ptab@fr.com
`rozylowicz@fr.com
`riffe@fr.com
`kdarby@fr.com
`tkodish@fr.com
`
`
`
`PATENT OWNER:
`
`Brian W. Oaks
`Eliot Williams
`Joseph Akalski
`Jessica Lin
`Chad Walters
`Charles Yeh
`Baker Botts L.L.P.
`brian.oaks@bakerbotts.com
`eliot.williams@bakerbotts.com
`joe.akalski@bakerbotts.com
`jessica.lin@bakerbotts.com
`chad.walters@bakerbotts.com
`charles.yeh@bakerbotts.com
`
`
`
`
`4
`
`
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