Paper No. 6
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`Trials@uspto.gov
`571-272-7822 Entered: May 13, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`Before CHRISTOPHER L. CRUMBLEY, JON B. TORNQUIST, and
`SHELDON M. MCGEE, Administrative Patent Judges.
`
`MCGEE, Administrative Patent Judge.
`
`
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`VERASONICS, INC.,
`Petitioner,
`
`v.
`
`SUPERSONIC IMAGINE, S.A.,
`Patent Owner.
`____________
`
`Case IPR2019-00799
`Patent 7,252,004 B2
`____________
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
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`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: May 13, 2019
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`Before CHRISTOPHER L. CRUMBLEY, JON B. TORNQUIST, and
`SHELDON M. MCGEE, Administrative Patent Judges.
`
`MCGEE, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`VERASONICS, INC.,
`Petitioner,
`
`v.
`
`SUPERSONIC IMAGINE, S.A.,
`Patent Owner.
`____________
`
`Case IPR2019-00799
`Patent 7,252,004 B2
`____________
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`IPR2019-00799
`Patent 7,252,004 B2
`
`
`On May 10, 2019, a conference call was held among counsel for the
`parties and Judges Crumbley, Tornquist, and McGee to discuss Patent
`Owner’s request to rescind the filing date accorded the Petition due to an
`alleged violation of the word count rule set forth in 37 C.F.R. § 42.24(a)(i).
`Patent Owner asserted Petitioner intentionally violated the word count rule
`by, inter alia, eliminating spaces in citations and failing to account
`adequately for words appearing in the Petition’s signature block. According
`to Patent Owner, the Petition exceeds the word count limit of 14,000 set
`forth in our Rule 42.24(a)(i) by approximately 500 words.
`Patent Owner requested the following relief from the Board:
`1) requiring Petitioner to refile the Petition to address the alleged
`formatting violations and comply with Rule 42.24(a)(i); and
`2) rescinding the Notice of Accorded Filing Date currently in this
`proceeding (Paper 3) dated March 22, 2019 in favor of a new Notice
`of Accorded Filing Date upon filing of the new Petition.
`In response, Petitioner indicated that it does not believe it is in
`violation of Rule 42.24(a)(i) and stands by its word count of 13,937 as set
`forth in the Petition. Pet. 76. In Petitioner’s view, because its word count
`does not exceed the 14,000 words allowed by Rule 42.24(a)(i), there is no
`violation of the rule to warrant the requested relief.
`After considering the parties’ arguments, we agree with Petitioner and
`hereby deny Patent Owner’s request for relief. Patent Owner does not point
`us to, nor are we aware of, any Board rule that precludes the use of the
`
`2
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`IPR2019-00799
`Patent 7,252,004 B2
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`unconventional1 formatting employed here by Petitioner, such as the absence
`of a space between the paragraph symbol and the paragraph numbers or the
`citation of an exhibit as “VRS-1003” instead of “Ex. 1003.” See, e.g., Pet. 4
`(referencing exhibit “VRS-1003, ¶44” and “VRS-1003, ¶¶31-35). Rather, as
`set forth on page 7 of our Revised Trial Practice Guide,2 “[e]xcessive words
`in figures, drawings, or images, deleting spacing between words, or using
`excessive acronyms or abbreviations for word phrases, in order to
`circumvent the rules on word count, may lead to a party’s brief not being
`considered” so as to avoid “undue prejudice” to a party (emphasis added).
`Here, Patent Owner does not allege any instance of Petitioner deleting
`spacing between words. At worst, Petitioner has used unconventional
`citation format to reduce the number of spaces in its Petition, thereby
`lowering the word count reported by its word processing program. While
`this may have been a strategic choice in order to squeeze the Petition in
`under the word limit, and while we generally do not encourage such
`behavior, the formatting does not render the Petition unreadable or
`incomprehensible. Cf. Pi-Net Int’l, Inc. v. JPMorgan Chase & Co., 600 Fed.
`Appx. 774 (Fed. Cir. 2015) (unpublished). We do not deem Petitioner’s lack
`of spacing between the paragraph symbol and the following numerals, or the
`
`1 When using the “¶” symbol, “insert a space between [the symbol] and the
`numeral.” THE BLUEBOOK: A UNIFORM SYSTEM OF CITATION R. 6.2(c)
`at 74 (Columbia Law Review Ass’n et al. eds., 18th ed. 2005). While the
`Board generally follows Bluebook citation format, we are not aware of any
`rule that requires parties appearing before the Board to do so.
`2 https://www.uspto.gov/sites/default/files/documents/2018_Revised_Trial_
`Practice_Guide.pdf
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`3
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`IPR2019-00799
`Patent 7,252,004 B2
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`other citation formatting identified by the Patent Owner, as sufficiently
`“excessive” to warrant the requested relief.
`With respect to Patent Owner’s allegation that Petitioner failed to
`account for the words appearing in the signature block, we agree with Patent
`Owner that such words should be reflected in the total word count because
`Rule 42.24(a) does not specifically exclude the signature block from the
`word count for petitions. 37 C.F.R. § 42.24(a) (“The word count or page
`limit does not include a table of contents, a table of authorities, mandatory
`notices under § 42.8, a certificate of service or word count, or appendix of
`exhibits or claim listing.”). In this case, by our calculation, the signature
`block contains seventy words. Pet. 75. Thus, even accounting for
`Petitioner’s omission from the word count of the words appearing in the
`signature block, the Petition stands at 14,007 words (i.e., 13,937 words
`appearing in the certified total (Pet. 76) + 70 words appearing in the
`signature block (id. at 75)). Patent Owner has not demonstrated how
`exceeding the word count limit by seven words rises to the level of “undue
`prejudice” to Patent Owner.
`To the extent Patent Owner feels it has been prejudiced by Petitioner’s
`omission of spaces from its citations, Patent Owner may elect to use the
`same formatting in their Preliminary Response.
`
`Accordingly, it is
`ORDERED that Patent Owner’s request for relief is denied; and
`ORDERED that the due date for the Patent Owner Preliminary
`Response stands at June 22, 2019.
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`4
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`IPR2019-00799
`Patent 7,252,004 B2
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`PETITIONER:
`
`E. Russell Tarleton
`Thomas A. Shewmake
`SEED INTELLECTUAL PROPERTY LAW GROUP LLP
`RussT@seedip.com
`TomShewmake@seedip.com
`
`Eric S. Walters
`Erica D. Wilson
`WALTERS WILSON LLP
`Eric@walterswilson.com
`EricaWilson@walterswilson.com
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`
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`PATENT OWNER:
`
`Dion M. Bregman
`Christopher Halliday
`Alexander B. Stein
`MORGAN, LEWIS & BOCKIUS LLP
`dion.bregman@morganlewis.com
`christopher.halliday@morganlewis.com
`alexander.stein@morganlewis.com
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`5
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