`Tel: 571-272-7822
`
`Paper: 45
`Entered: August 12, 2020
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMP PLUS, INC., dba ELCO LIGHTING,
`Petitioner,
`
`v.
`
`DMF, INC.,
`Patent Owner.
`____________
`
`IPR2019-01094
`Patent 9,964,266 B2
`____________
`
`
`Before CHRISTOPHER L. CRUMBLEY, JEFFREY W. ABRAHAM, and
`DEBRA L. DENNETT, Administrative Patent Judges.
`
`DENNETT, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`IPR2019-01094
`Patent 9,964,266 B2
`The Board received email correspondence from the parties on July 31,
`2020 concerning four issues. Ex. 3010 (July 31, 2020 email correspondence
`directed to the Board from Patent Owner and Petitioner). The Board held a
`conference call with the parties on August 11, 2020 to discuss the issues.
`Jurisdiction
`Patent Owner alleges that the Petition is barred as to claims 17 and 21
`under 35 U.S.C. § 315(a)(1) because Petitioner filed a declaratory judgment
`action alleging invalidity of those claims in a parallel district court action.
`Patent Owner may file a motion to dismiss of no more than five pages
`on or before August 17, 2020. Petitioner may file a response of no more
`than five pages on or before August 24, 2020.
`Transcript of Deposition of James Benya
`Patent Owner alleges that poor audio quality caused portions of the
`July 7, 2020 transcript of the deposition of James Benya (Ex. 1038) to be
`mistranscribed, and seeks authority to replace the original version with a
`revised version certified by the court reporter. Petitioner cites to Exhibit
`1038 repeatedly in its Reply (Paper 42).
`Patent Owner may file the revised deposition transcript certified by
`the court reporter as a new exhibit with its sur-reply. Existing Exhibit 1038
`shall remain a part of the record.
`New Arguments in Petitioner’s Reply Brief
`Patent Owner alleges that Petitioner makes new arguments in its
`Reply Brief (Paper 42), and requests permission to file a separate document
`identifying the new arguments.
`The general purpose of a sur-reply is to address matters presented in
`an opposing party’s reply. Under such circumstances, Patent Owner may
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`IPR2019-01094
`Patent 9,964,266 B2
`identify and address any new arguments in Petitioner’s Reply in its sur-
`reply. Patent Owner’s request for an additional filing on new arguments is
`denied.
`Alleged Inconsistent Statements by Petitioner
`Patent Owner alleges that Petitioner made statements in the Petition
`that are inconsistent with statements made in U.S. Patent No. 10,295,163
`(the “’163 patent”) and its prosecution history. Patent Owner contends that
`Petitioner was required to disclose the inconsistent statements in discovery
`in compliance with 37 C.F.R.§ 42.51(b)(1)(iii). Patent Owner argues that
`the inventor listed on the ’163 patent is a Director of Operations for
`Petitioner.
`Petitioner disputes that the statements identified by Patent Owner are
`inconsistent, and asserts that the inventor listed on the ’163 patent, while an
`employee of Petitioner, filed the application leading to the ’163 in his
`individual capacity, and thus any statements made in the patent or during
`prosecution of the application leading to the patent are from the inventor
`himself, and not attributable to Petitioner.
`Even accepting Patent Owner’s allegations that statements made in
`the Petition are inconsistent with statements made in connection with the
`’163 patent as accurate, we do not agree that such statements made in the
`’163 patent and its prosecution history are relevant—and thus
`discoverable—in this matter, given that the inventor of the ’163 patent was
`acting in his individual capacity, and not on behalf of Petitioner, in making
`such statements. As a result, we deny Patent Owner’s request to submit
`evidence of the allegedly inconsistent statements made in the ’163 patent
`and its prosecution history.
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`IPR2019-01094
`Patent 9,964,266 B2
`
`ORDER
`
`It is
`ORDERED that Patent Owner is authorized to file a motion to dismiss
`the inter partes review as barred under 35 U.S.C. § 315(a)(1) of no more
`than five pages on or before August 17, 2020, and Petitioner may file a
`response of no more than five pages on or before August 24, 2020;
`FURTHER ORDERED that Patent Owner is authorized to submit the
`revised certified version of the July 7, 2020 deposition transcript of James
`Benya as a new exhibit with its sur-reply;
`FURTHER ORDERED Patent Owner’s request for authorization to
`submit a document separate from its sur-reply identifying new arguments in
`Petitioner’s Reply is DENIED; and
`FURTHER ORDERED that Patent Owner’s request for authorization
`to submit evidence of alleged inconsistent statements made in the ’163
`patent and its prosecution history is DENIED.
`
`
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`4
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`IPR2019-01094
`Patent 9,964,266 B2
`PETITIONER:
`
`Robert E. Boone
`Daniel A. Crowe
`Erin A. Kelly
`BRYAN CAVE LEIGHTON PAISNER LLP
`reboone@blcplaw.com
`dan.crowe@bclplaw.com
`erin.kelly@bclplaw.com
`
`
`PATENT OWNER:
`David W. Long
`ERGONIC, LLC
`longdw@ergonic.com
`
`Kevin B. Laurence
`LAURENCE & PHILLIPS IP LAW
`klaurence@lpiplaw.com
`
`Ben M. Davidson
`DAVIDSON LAW GROUP, ALC
`ben@dlgla.com
`
`5
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