`Trials@uspto.gov
`571-272-7822
`
`
`
`Paper No. 19
`Entered: October 1, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`SCHUL INTERNATIONAL COMPANY, LLC,
`Petitioner,
`
`v.
`
`EMSEAL JOINT SYSTEMS, LTD.,
`Patent Owner.
`____________
`
`Case PGR2017-00053 (Patent 9,528,262 B2)
`Case PGR2018-00034 (Patent 9,644,368 B1)1
`
`____________
`
`
`
`Before GEORGE R. HOSKINS, JAMES A. WORTH, and
`SCOTT C. MOORE, Administrative Patent Judges.
`
`HOSKINS, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. §§ 42.5 and 42.223
`
`
`
`
`
`1 This Order applies to both proceedings. The proceedings have not been
`consolidated, and the parties are not authorized to use a consolidated caption
`unless a paper contains a footnote indicating that the identical paper has
`been filed in each proceeding.
`
`
`
`
`
`Case PGR2017-00053 (Patent 9,528,262 B2)
`Case PGR2018-00034 (Patent 9,644,368 B1)
`
`
`On September 11, 2018, Petitioner sent e-mail communications to the
`
`Board in each of these two proceedings, requesting authorization to file a
`
`motion under 37 C.F.R. § 42.223 to submit supplemental information in
`
`each proceeding. On September 13, 2018, Patent Owner sent e-mail
`
`communications informing the Board that Patent Owner opposes both
`
`requests. The Board then scheduled and convened a telephone conference
`
`with the parties on September 26, 2018, to discuss Petitioner’s request.
`
`Mr. David Connaughton spoke on behalf of Petitioner. Mr. Michael Kinney
`
`spoke on behalf of Patent Owner, and Ms. Christine Beninati also
`
`participated on behalf of Patent Owner.
`
`Petitioner’s counsel informed the Board that the supplemental
`
`information consists of documents which became available through
`
`co-pending District Court proceedings concerning the ’262 patent and the
`
`’368 patent. Patent Owner’s counsel objected that Petitioner failed to
`
`demonstrate the relevance of the documents to these two PGR proceedings
`
`before the USPTO. However, the only issue to be decided at this initial
`
`stage is whether to authorize Petitioner to file a motion for leave to submit
`
`supplemental information. See 37 C.F.R. § 42.223(a)–(b). The fact that the
`
`documents became available through co-pending District Court proceedings
`
`concerning the ’262 patent and the ’368 patent is a sufficient basis to
`
`authorize the filing of such a motion, in which Petitioner may then make its
`
`case for relevance to the two Board proceedings here. Therefore, during the
`
`telephone conference, we authorized the filing of a motion and an
`
`opposition, according to the schedule set forth below. Neither party objected
`
`to the briefing schedule during the telephone conference.
`
`2
`
`
`
`Case PGR2017-00053 (Patent 9,528,262 B2)
`Case PGR2018-00034 (Patent 9,644,368 B1)
`
`
`As noted above, Petitioner’s request for authorization was made on
`
`September 11, 2018, in both proceedings. That date falls within one month
`
`of the institution of trial in the later-filed ’034 PGR on August 22, 2018, but
`
`outside of one month of the institution of trial in the earlier-filed ’053 PGR
`
`on April 9, 2018. Therefore, the applicable standards are different. In the
`
`’034 PGR, Petitioner must show the information is “relevant to a claim for
`
`which trial has been instituted.” 37 C.F.R. § 42.223(a). In the ’053 PGR,
`
`Petitioner must “show why the supplemental information reasonably could
`
`not have been obtained earlier, and that consideration of the supplemental
`
`information would be in the interests-of-justice.” Id. § 42.223(b).
`
`In the event a respective motion in one or both of these proceedings is
`
`granted by the Board, the Board will schedule a telephone conference with
`
`the parties to establish a briefing schedule for the submission and
`
`consideration of the supplemental information, and also to discuss whether
`
`further modifications to the case schedule(s) may be warranted.
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that, Petitioner may file a Motion to Submit Supplemental
`
`Information in the ’053 PGR, not to exceed five pages in length, at or before
`
`5:00 p.m. Eastern Time on October 3, 2018;
`
`FURTHER ORDERED that, Petitioner may file a Motion to Submit
`
`Supplemental Information in the ’034 PGR, not to exceed five pages in
`
`length, at or before 5:00 p.m. Eastern Time on October 3, 2018;
`
`FURTHER ORDERED that, at the time each respective Motion is
`
`filed, Petitioner shall provide Patent Owner with complete copies of the
`
`documents which Petitioner seeks to submit as supplemental information,
`
`but Petitioner shall not file copies of such documents with the Board;
`
`3
`
`
`
`Case PGR2017-00053 (Patent 9,528,262 B2)
`Case PGR2018-00034 (Patent 9,644,368 B1)
`
`
`FURTHER ORDERED that, Patent Owner may file an Opposition to
`
`each Motion filed by Petitioner, with each Opposition not to exceed five
`
`pages in length, at or before 5:00 p.m. Eastern Time on October 10, 2018.
`
`PETITIONER:
`
`Gary E. Lambert
`David J. Connaughton, Jr.
`LAMBERT & ASSOCIATES
`lambert@lambertpatentlaw.com
`connaughton@lambertpatentlaw.com
`
`James E. Hudson III
`CRAIN, CATON & JAMES
`jhudson@craincaton.com
`
`
`PATENT OWNER:
`
`Michael K. Kinney
`MKG, LLC
`kinney@mkgip.com
`
`
`4
`
`
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