Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper: 9
`Entered: October 1, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioners,
`
`
`v.
`
`
`DYNAMIC DATA TECHNOLOGIES, LLC,
`Patent Owner.
`__________
`
`Case IPR2019-01085
`Patent 8,135,073 B1
`_______________
`
`
`Before PATRICK M. BOUCHER, MINN CHUNG, and NORMAN H.
`BEAMER, Administrative Patent Judges.
`
`BEAMER, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper: 9
`Entered: October 1, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioners,
`
`
`v.
`
`
`DYNAMIC DATA TECHNOLOGIES, LLC,
`Patent Owner.
`__________
`
`Case IPR2019-01085
`Patent 8,135,073 B1
`_______________
`
`
`Before PATRICK M. BOUCHER, MINN CHUNG, and NORMAN H.
`BEAMER, Administrative Patent Judges.
`
`BEAMER, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`Case IPR2019-01085
`Patent 8,135,073 B1
`
`
`
`INTRODUCTION
`On September 24, 2019, a conference call was held among the parties
`and the Panel. A court reporter was not present on the conference call. The
`purpose of the conference call was to discuss Petitioner’s request for
`authorization to file a Reply to Patent Owner’s Preliminary Response
`(Paper 6).
`This proceeding involves obviousness challenges to Shen United
`States Patent 8,135,073 (“the Shen patent”), filed December 12, 2003, and
`claiming priority based on a Provisional Application filed December 20,
`2002. Paper 2, 7; Ex. 1001, [22], [60].
`During the call, Petitioner sought authorization to respond to Patent
`Owner’s contention that Pre-AIA 35 U.S.C. § 103(c)(1) disqualifies the use
`of Yang et al. United States Patent 6,873,657 (Ex. 1004, “the Yang patent”)
`patent in Petitioner’s obviousness challenges. Petitioner argued, inter alia,
`that Patent Owner’s introduction of declaration testimony of the inventor of
`the Shen patent provides good cause for allowing its request.
`During the call, Patent Owner argued that there is insufficient
`showing of good cause given that the issue of the prior art status of Yang
`was evident from public documents, including Petitioner’s exhibits, and
`Petitioner failed to properly investigate the issue before filing its Petition.
`
`ANALYSIS
`A petitioner seeking leave to file a reply to a preliminary response
`must show good cause for filing a reply. 37 C.F.R. § 42.108(c). Here, to
`demonstrate good cause, Petitioner primarily relies on the fact that Patent
`Owner has submitted testimonial evidence in the form of the inventor’s
`
`
`
`
`
`Case IPR2019-01085
`Patent 8,135,073 B1
`
`
`declaration in support of Patent Owner’s Section 103(c) disqualification of
`the Yang patent as prior art.
`Pre-AIA Section 103(c)(1) provides:
`Subject matter developed by another person, which qualifies as
`prior art only under one or more of subsections (e), (f), and (g)
`of section 102 of this title, shall not preclude patentability under
`this section where the subject matter and the claimed invention
`were, at the time the claimed invention was made, owned by the
`same person or subject to an obligation of assignment to the same
`person.
`35 U.S.C. § 103(c)(1). The Yang patent was filed on December 27, 2001.
`Ex. 1004, [22]. Petitioner is offering the Yang patent as prior art pursuant to
`Section 102(e). At least at this point in the proceeding, the parties are
`treating “the time the claimed invention was made” as December 20, 2002,
`the filing date of the provisional application referenced in the Shen patent.
`Paper 2, 5 n. 1; Paper 6, 13–14. As of that date, the Yang patent was
`assigned to Koninklijke Philips Electronics N.V. (“Philips”). Paper 6, 19;
`Ex. 2002.
` Therefore, the pertinent issue at hand is whether the Shen patent was
`also owned by, or subject to an obligation of assignment to, Philips as of
`December 20, 2002.1 The earliest assignment on record for the Shen patent
`is signed February 26, 2004, recorded June 7, 2005, with Philips as assignee.
`Ex. 2006. In asserting that Shen had an obligation to assign the invention to
`Philips (or its subsidiaries) on December 20, 2002, Patent Owner relies on
`the inventor’s declaration to that effect, along with other facts that, Patent
`
`
`1 As Patent Owner points out, ownership by, or obligation of assignment to,
`an entity sufficiently related to Philips also satisfies the requirements of
`Section 103(c). Paper 6, 31–33.
`
`
`
`
`
`Case IPR2019-01085
`Patent 8,135,073 B1
`
`
`Owner argues, lead to an inference of such obligation. Paper 6, 19–30;
`Ex. 2004. However, Patent Owner has not provided an employment
`agreement executed to by Chen to that effect, although it has entered a 2002-
`era agreement by another into the record. See Ex. 2011.
`When a patent owner submits declaration testimony with its
`preliminary response, “a genuine issue of material fact created by such
`testimonial evidence will be viewed in the light most favorable to the
`petitioner solely for purposes of deciding whether to institute an inter partes
`review.” 37 C.F.R. § 42.108(c). To fully explore whether a genuine issue of
`material fact is presented on this record, we determine that there is good
`cause at this juncture to permit limited additional briefing addressing Patent
`Owner’s evidence of Section 103(c) disqualification, including the
`inventor’s declaration. Petitioner could not have addressed this declaration
`in the Petition because it was not of public record.
`
`ORDER
`
`Accordingly, it is:
`ORDERED that Petitioner may file a seven (7) page reply to Patent
`Owner’s Preliminary Response by October 9, 2019;
`FURTHER ORDERED that Patent Owner may file a seven (7) page
`sur-reply to Petitioner’s reply by October 16, 2019; and
`FURTHER ORDERED that no additional evidence shall be submitted
`with these papers, and no additional discovery is permitted at this time.
`
`
`
`
`
`
`
`
`
`Case IPR2019-01085
`Patent 8,135,073 B1
`
`
`For PETITIONER:
`Eric A. Buresh
`ERISE IP, P.A
`eric.buresh@eriseip.com
`ptab@eriseip.com
`
`Ashraf Fawzy
`Jonathan R. Bowser
`UNIFED PATENTS INC.
`afawzy@unifiedpatents.com
`jbowser@unifiedpatents.com
`
`
`PATENT OWNER:
`Kenneth Weatherwax
`Patrick Maloney
`Jason Linger
`LOWENSTEIN & WEATHERWAX LLP
`weatherwax@lowensteinweatherwax.com
`maloney@lowensteinweatherwax.com
`linger@lowensteinweatherwax.com
`
`
`
`
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