Trials@uspto.gov
`571.272.7822
`
`
`
` Paper No. 8
`
` Entered: January 31, 2020
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ERICSSON INC.,
`Petitioner,
`
`v.
`
`ELECTRONICS AND TELECOMMUNICATIONS
`RESEARCH INSTITUTE,
`Patent Owner.
`____________
`
`IPR2020-00239 and IPR2020-002411
`Patent 9,204,438B2
`____________
`
`
`Before KRISTEN L. DROESCH, and SCOTT B. HOWARD,
`Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`1 This Order addresses overlapping issues in the cases listed above.
`Therefore, we issue one Order to be filed in each case. The parties,
`however, are not authorized to use this style of filing.
`
`
`
`
`571.272.7822
`
`
`
` Paper No. 8
`
` Entered: January 31, 2020
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ERICSSON INC.,
`Petitioner,
`
`v.
`
`ELECTRONICS AND TELECOMMUNICATIONS
`RESEARCH INSTITUTE,
`Patent Owner.
`____________
`
`IPR2020-00239 and IPR2020-002411
`Patent 9,204,438B2
`____________
`
`
`Before KRISTEN L. DROESCH, and SCOTT B. HOWARD,
`Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`1 This Order addresses overlapping issues in the cases listed above.
`Therefore, we issue one Order to be filed in each case. The parties,
`however, are not authorized to use this style of filing.
`
`
`
`
`
`IPR2020-00239, IPR2020-00241
`Patent 9,204,438 B2
`On December 10, 2019, Petitioner filed Petitions for inter partes
`review in IPR2020-00239 and IPR2020-00241. IPR2020-00239, Paper 2
`(“’239 Petition” or “’239 Pet.”); IPR2020-00241, Paper 2 (“’241 Petition” or
`“’241 Petition”). Pursuant to 37 C.F.R. § 42.24(d) Petitioner certified that
`the ’239 Petition contained 13,356 words and that the ‘’241 Petition
`contained 13,767 words. ’239 Pet. 88; ’241 Pet. 88.
`A conference call was held on January 29, 2020, between counsel for
`the parties and Judge Droesch and Judge Howard. A court reporter also
`attended the conference call. Counsel for Patent Owner requested the
`conference call to discuss asserted word count violations in each of the
`Petitions. Patent Owner filed a copy of the transcript. IPR2020-00239,
`Ex. 2001; IPR2020-00241, Ex. 2001.
`Patent Owner contends that each Petition includes more than 3500
`words in images that were not counted toward the word count. Counsel for
`Patent Owner points to pages 19–24 and 41–44 of the ’239 Petition and
`pages 19–24 and 38–45 of the ’241 Petition as examples of images with
`excessive words. In support of its position that the Petition images include
`excessive words in violation of 37 C.F.R. § 42.24, counsel for Patent Owner
`directs our attention to Google Inc., v. Ji-Soo Lee, IPR2016-00022, Paper 25
`(PTAB Dec. 2, 2016). Counsel for Patent Owner explains that the Board
`expunged the reply briefs for word count violations in Google v. Ji-Soo Lee.
`Counsel for Patent Owner further asserts that each Petition omitted
`spacing for exhibit and paragraph numbers resulting in savings of at least
`600 words counted towards the word count limits of the Petitions,
`specifically, roughly 300 words for the ’239 Petition and 430 words for the
`’241 Petition.
`
`2
`
`
`
`IPR2020-00239, IPR2020-00241
`Patent 9,204,438 B2
`Counsel for Patent Owner asserts that the Board should not consider
`the Petitions due to the word count violations. Counsel for Patent Owner
`further contends that the Petitions that exceed the word count requirements
`of 37 C.F.R. § 42.24 are not complete petitions as required by 37 C.F.R.
`§§ 42.104, 42.106 and should be dismissed if not corrected. Counsel for
`Patent Owner further asserts that if Petitioner were to correct the word count
`violations by filing new petitions, those newly filed petitions would be
`accorded a new filing date and, therefore, be time-barred under 35 U.S.C.
`§ 315(b) based on the filing date of the complaint in related district court
`proceedings.
`Counsel for Petitioner disagrees with Patent Owner’s characterization
`of the images with words in each Petition. Counsel for Petitioner asserts that
`it reproduced the images with text to as a matter of convenience for the
`Board in navigating the cited exhibits. Counsel for Petitioner contends that
`the images containing words are not intended to be arguments because the
`substantive arguments are laid out in the text of the Petitions. Counsel for
`Petitioner states that the images with words could be removed without
`affecting the arguments laid out in the text of the Petitions. In other words,
`Counsel for Petitioner contends that Petitioner merely reproduces the
`relevant portions of the exhibits cited in the Petitions. Counsel for Petitioner
`states that when the parties met and conferred, Petitioner offered to Patent
`Owner to correct the atypical spacing for the exhibit and paragraph numbers
`and would not oppose allowing Petitioner to have additional words in the
`preliminary responses. Counsel for Petitioner further asserts that the Trial
`Practice Guidelines are not specific regarding spacing.
`Counsel for Petitioner further disagrees with Patent Owner’s assertion
`that Petitioner has not filed complete Petitions. Counsel for Petitioner
`
`3
`
`
`
`IPR2020-00239, IPR2020-00241
`Patent 9,204,438 B2
`indicates that it is open to taking action to correct the Petitions, as deemed
`necessary by the Board. Counsel for Petitioner further states that revocation
`of a filing date already accorded is inappropriate based on a dispute over
`word count, which Counsel for Petitioner argues is a clerical error.
`Counsel for Patent Owner further requests that, if the Board orders
`Petitioner to refile the Petitions without necessitating a new filing date, the
`time period for filing the Preliminary Response be reset to the full three
`month period. Counsel for Patent Owner contends that Patent Owner is
`prejudiced in these circumstances because the Petitions have 30 percent
`more content than they are supposed to have.
`We have considered the positions advanced by each of the parties.
`With respect to the word count limits, the Patent Trial and Appeal Board
`Consolidated Trial Practice Guide November 2019 (“Consolidated TPG”)
`explains:
`Parties should not abuse the process. Excessive 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. See, e.g., Pi-Net Int’l, Inc. v.
`JPMorgan Chase & Co., 600 F. App’x 774 (Fed. Cir. 2015).
`Consolidated TPG 40 (emphasis added).
`Based on our review of the Petitions, it appears that the Petitions
`circumvent the word count limits set forth in 37 C.F.R. § 42.24(1)(a) by
`including numerous images with excessive wording. See e.g., ’239 Pet. 19–
`24. As a result, Petitioner’s certification of word count in each Petition is
`inaccurate. Patent Owner, however, does not direct us to, nor are we aware
`of, any Board rule that precludes the use of atypical spacing for citations to
`exhibit and paragraph numbers such as, “EX-1001” instead of “Ex. 1001”
`
`4
`
`
`
`IPR2020-00239, IPR2020-00241
`Patent 9,204,438 B2
`and “¶¶53-54” instead of “¶¶ 53-54.” At worst, Petitioner has used atypical
`citations for exhibit and paragraph numbers, and did not delete spacing
`between words. Petitioner’s intent may have been to reduce the number of
`spaces in Petitions, thereby reducing the word count reported by the word
`processing program. We strongly discourage such space saving for
`citations, but acknowledge that it does not render the Petitions unreadable or
`incomprehensible. See Verasonics, Inc. v. Supersonic Imangine, S.A.,
`IPR2019-00799, Paper 6 at 3–4 (PTAB May 13, 2019) (Order); cf. Pi-Net
`Int’l, Inc. v. JPMorgan Chase & Co., 600 F. App’x 774 (Fed. Cir. 2015).
`Our rules provide us with the authority and discretion to take certain
`actions for any abuse of our rules. 37 C.F.R. §§ 42.5, 42.12(b)(8). Patent
`Owner does not direct us to, nor are we aware of any Board case dismissing
`a petition because it exceeded the word count limit. See e.g., Comcast Cable
`Comms, LLC, v. Rovi Guides, Inc., IPR2019-01413, Paper 10 (PTAB Dec.
`17, 2019); St. Jude Medical LLC v. Snyders Heart Valve LLC, IPR2018-
`00105, Paper 12 at 4–5 (PTAB Apr. 3, 2018); Innovations4Flooring NV v.
`Välinge Innovation AB, IPR2017-02130, Paper 10 (PTAB Feb. 22, 2018);
`Artic Cat, Inc. v. Polaris Indus. Inc., IPR20179-00433, Paper 15 at 3 (PTAB
`June 22, 2017); Google Inc., v. Makor Issues & Rights LTD., IPR2016-
`01535, Paper 11 (PTAB Dec. 12, 2016). In view of Petitioner’s
`characterizations of the images with excessive wording as reproductions of
`portions of the exhibits to aid in navigation of the Petitions and supporting
`exhibits, and Petitioner’s assertion that the images with excessive words
`could be removed without affecting the arguments in the Petitions, we
`decline to dismiss the Petitions. In the circumstances before us, the Board
`will not consider the images with excessive wording in the Petitions. After
`conferring with Patent Owner, for the convenience of the Board, Petitioner is
`
`5
`
`
`
`IPR2020-00239, IPR2020-00241
`Patent 9,204,438 B2
`ordered to file replacement Petitions that do not include (1) any images with
`excessive wording and (2) the corresponding citation immediately following
`each image with excessive wording. No other changes to the replacement
`Petitions will be permitted. Specifically, Petitioner need not correct the
`atypical spacing for the exhibit and paragraph numbers. Also for the
`convenience of the Board, Petitioner is ordered to file marked-up versions of
`the Petitions showing where each image with excessive wording and
`corresponding citation to the same has been deleted from the Petitions, as
`originally filed. The replacement Petitions will be not be accorded a new
`filing date.
`In view of Petitioner’s assertions that the arguments in the Petitions
`can stand alone without the images with excessive words, and because the
`Board will not consider the images with excessive words in the Petitions, we
`are not persuaded that it is appropriate to reset the time period for filing the
`preliminary responses. To the extent that Petitioner’s assertions are
`inaccurate regarding the substance of the images with excessive words in
`each Petition, Petitioner will appropriately suffer the consequence of the loss
`of any persuasive value of said words contained in the images.
`The parties are strongly discouraged against using atypical spacing for
`exhibit and paragraph numbers in future filings before the Board. To
`obviate any prejudice to Patent Owner for Petitioner’s use of atypical
`spacing for exhibit and paragraph numbers, Patent Owner may, in its
`responses2 to the Petition, exceed the 14,000-word count limit by a number
`of words equal to the number of omitted spaces Patent Owner identifies in
`
`
`2 Patent Owner may use the additional words in both its preliminary
`response (if Patent Owner chooses to file one) and in its response (if we
`institute inter partes review).
`
`6
`
`
`
`IPR2020-00239, IPR2020-00241
`Patent 9,204,438 B2
`the corresponding Petition. See 37 C.F.R. § 42.5(b) (stating that the Board
`“may waive or suspend a requirement of parts 1, 41, and 42”).
`
`ORDER
`
`Accordingly, it is:
`ORDERED that Petitioner, after conferring with Patent Owner, file
`replacement Petitions that do not include any images with excessive wording
`and the corresponding citation immediately following each image with
`excessive wording;
`FURTHER ORDERED that Petitioner file corresponding marked-up
`versions of the replacement Petitions showing where each image with
`excessive wording and corresponding citation has been deleted from each of
`the Petitions, as originally filed;
`FURTHER ORDERED that the replacement Petitions and marked-up
`versions of the replacement Petitions be filed no later than five (5) business
`days from the entry of this Order;
`FURTHER ORDERED that the replacement Petitions will be not be
`accorded a new filing date; and
`FURTHER ORDERED that Patent Owner may exceed the 14,000-
`word count limit for its responses to each of the Petitions by a number of
`words equal to the number of omitted spaces Patent Owner identifies in each
`of the corresponding Petitions.
`
`
`
`
`
`
`
`
`7
`
`
`
`IPR2020-00239, IPR2020-00241
`Patent 9,204,438 B2
`PETITIONER:
`
`Theodore Stevenson, III
`tstevenson@mckoolsmith.com
`
`Scott Hejny
`shejny@mckoolsmith.com
`
`Nicholas Mathews
`nmathews@mckoolsmith.com
`
`
`
`PATENT OWNER:
`
`Richard Giunta
`rgiunta-ptab@wolfgreenfield.com
`
`Elisabeth Hunt
`ehunt-ptab@wolfgreenfield.com
`
`
`8
`
`
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