Paper Entered: March 16, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD

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1 Paper Entered: March 16, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD SEOUL SEMICONDUCTOR CO., LTD and NORTH AMERICA SEOUL SEMICONDUCTOR INC., Petitioner, v. ENPLAS CORPORATION, Patent Owner. Case IPR Before HOWARD B. BLANKENSHIP, JAMES B. ARPIN, and JAMES A. TARTAL, Administrative Patent Judges. ARPIN, Administrative Patent Judge. DECISION Denying Request for Rehearing 37 C.F.R (d)

2 I. INTRODUCTION Seoul Semiconductor Co., Ltd. and North America Seoul Semiconductor Inc. ( Petitioner ) filed a Request for Rehearing (Paper 29; Reh g Req. ) of our Order to Expunge (Paper 28; Order ), entered on March 13, 2015, expunging a paper entitled: Petitioner s Response to Patent Owner s Statement of Facts (Paper 24). Petitioner requests rehearing of our Order under 37 C.F.R In particular, Petitioner asserts that the relevant submission should not be deemed an unauthorized submission, was not argumentative, and did not exceed the page limits for reply. Reh g Req. 2. For the reasons that follow, Petitioner s Request for Rehearing is denied. II. STANDARD OF REVIEW Under 37 C.F.R (d), [a] party dissatisfied with a decision 1 may file a request for rehearing, without prior authorization from the Board. The burden of showing that a decision should be modified lies with the party challenging the decision. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its Request for Rehearing, the dissatisfied party must (1) specifically identify all matters the party believes the Board misapprehended or overlooked and (2) identify the place where each matter was previously addressed. 37 C.F.R (d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48, We do not decide here whether Petitioner s Request for Rehearing of our Order is authorized under 37 C.F.R , which is directed specifically to decisions on petitions and motions. Nevertheless, we exercise our discretion under 37 C.F.R. 42.5(a) and consider Petitioner s Request for Rehearing under the requirements of 37 C.F.R (d). 2

3 III. ANALYSIS In Patent Owner s Response, Patent Owner included Section III entitled Statement of Material Facts Not In Dispute, listing fifty-four numbered facts. Paper 18, Petitioner s Reply to Patent Owner s Response to the Petition was filed on March 9, On the same day, Petitioner filed a separate paper (Paper 24), without authorization, entitled: Petitioner s Response to Patent Owner s Statement of Facts. Our Order expunged this separate filing. In its Request for Rehearing, Petitioner argues that the relevant regulations and the Office Patent Trial Practice Guide provide little guidance regarding the format or requirements for a Response to a Statement of Facts. Reh g Req. 2. Petitioner contends that the only express guidance provided is that [t]he page limits [of a reply] do not include... a listing of facts which are admitted, denied, or cannot be admitted or denied. Id. (emphasis omitted; italics added; quoting 37 C.F.R (c)). Thus, Petitioner argues that Paper 24 was authorized. Such a listing is a limited exclusion to the page limit of a reply. Nevertheless, the quoted rule applies to material included in the reply, e.g., a table of contents, certificate of service, or appendix of exhibits, not to a separate paper filed with the reply. Petitioner does not cite to authorization in our rules or in this panel s orders for filing a response to Patent Owner s statement of facts, separate from its Reply. 37 C.F.R. 42.7(a). As noted above, Petitioner must identify the place where each matter that we allegedly misapprehended or overlooked was addressed previously. 37 C.F.R (d). Petitioner fails to indicate where it argued in the Reply (Paper 26) or in Petitioner s Response to Patent Owner s Statement 3

4 of Facts (Paper 24) that the expunged filing was made in accordance with 37 C.F.R (c). We could not have misapprehended or overlooked a matter that was not previously raised, and the Request for Rehearing is not the place for Petitioner to raise new arguments. 2 Petitioner also suggests that we erred in expunging Paper 24 because a different panel permitted entry of a paper entitled: Petitioner s Response to Patent Owner Statement of Facts, in another case. Reh g Req. 3 (citing Apple Inc. v. Achates Reference Publishing Inc., IPR (PTAB Jan. 13, 2014) (Paper 59)). Petitioner does not suggest, however, that the Board has identified the other panel s entry of the cited paper as a representative, informative, or precedential decision, which we should or must follow. Further, Petitioner does not demonstrate that the facts of that other case or the analysis by the other panel are sufficiently similar to the facts or analysis here to warrant our taking similar action (id.), and Petitioner does not indicate where it cited to the other panel s decision in its Reply (see Paper 26, Table of Authorities) or in the expunged Paper 24. As noted above, Petitioner must identify the place where each matter that we allegedly misapprehended or overlooked previously was addressed, and we could not have misapprehended or overlooked a matter that was not previously raised. Again, the Request for Rehearing is not the place for Petitioner to raise new arguments. 2 Petitioner may request authorization to file a second corrected Reply including a listing indicating simply whether each of the facts identified by Patent Owner is admitted, denied, or cannot be admitted or denied, as provided in 37 C.F.R (c). Any argument explaining why a fact in the listing is admitted, denied, or cannot be admitted or denied already must appear within the 15 page-limited body of the corrected Reply (Paper 26). 4

5 Finally, Petitioner argues that its assertions in Paper 24 were not argumentative. Reh g Req We disagree. Petitioner s Paper 24 was not merely a listing of whether the facts alleged by Patent Owner were admitted, denied, or cannot be admitted or denied. Instead. Paper 24 was a response to facts allegedly asserted by Patent Owner in its Response. Reh g Req. 3 (Petitioner s Response (Paper 24) identified infirmities in the manner in which Patent Owner presented its facts [and] cit[ed] evidence that could be relied upon to dispute [the facts] ; emphases added). Petitioner s reliance upon 37 C.F.R (c) is misplaced. Moreover, Petitioner s suggestion that we review the unauthorized filing and strike or read, but not consider, improper argument places an unnecessary burden on the panel and is not consistent with the just, speedy, and inexpensive resolution of this proceeding. Id. at 3 4; see 37 C.F.R. 42.1(b). In addition and as noted above, Petitioner does not identify where it previously asserted that its responses to Patent Owner s statement of facts were a listing under 37 C.F.R (c), and were not argumentative. We could not have misapprehended or overlooked a matter that was not previously raised, and the Request for Rehearing is not the place for Petitioner to raise new arguments. IV. CONCLUSION For the foregoing reasons, Petitioner has not demonstrated that we misapprehended or overlooked matters raised by Petitioner in the Reply (Paper 26) or in the expunged paper, in our Order. 37 C.F.R (d). Accordingly, it is V. ORDER ORDERED that Petitioner s Request for Rehearing is denied. 5

6 For PETITIONER: Michael B. Eisenberg David W. Wallace HOLLAND & KNIGHT, LLP For PATENT OWNER: Mark R. Labgold, Ph.D. Steven Kelber Patrick J. Hoeffner 6