`571-272-7822
`
`
`
` Paper 29
`
`Entered: September 03, 2013
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LIBERTY MUTUAL INSURANCE CO.
`Petitioner,
`
`v.
`
`PROGRESSIVE CASUALTY INSURANCE CO.
`Patent Owner.
`____________
`
`Case CBM2013-00009 (JL)
`Patent 8,140,358
`____________
`
`
`
`Before JAMESON LEE, JONI Y. CHANG, and MICHAEL R. ZECHER,
`Administrative Patent Judges.
`
`LEE, Administrative Patent Judge
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`On August 29, 2013, a telephone conference call was held between
`
`respective counsel for the parties and Judges Lee, Chang, and Zecher.
`Counsel for the Patent Owner commenced the discussion by representing
`
`
`
`Case CBM2013-00009
`Patent 8,140,358
`
`that Petitioner’s Reply is improper and is accompanied by evidence which
`could have been submitted together with the initial petition.
`
`The Board explained that while it is possible that Petitioner’s Reply
`may be inappropriate, the Patent Owner should recognize the following:
`
`(1) the standard for determining whether a Reply is appropriate is not
`whether an argument contained therein or evidence submitted therewith
`“could have been” submitted in the original petition;
`
`(2) the Board already determined it is more likely than not that
`Petitioner would prevail on one or more grounds of alleged unpatentability;
`thus, it is generally less likely than in the case of a motion which has not yet
`been reviewed by the Board that Petitioner in its initial petition did not make
`out a prima facie case and needs to rely on its reply to do so;
`
`(3) by standard procedure the Petitioner has the last word with regard
`to the petition and it would not be unusual that one or more reply
`declarations may be necessitated by the arguments and evidence presented
`with the Patent Owner Response;
`
`(4) a petitioner reasonably cannot anticipate in advance everything
`that may be presented in a Patent Owner Response; and
`
`(5) the mere fact that Petitioner did not rely on declarations of Ms.
`O’Neal and Mr. Andrews in the initial petition does not mean automatically
`that Petitioner may not rely on testimony of those declarants to support its
`Reply.
`Counsel for Patent Owner, upon hearing the Board’s explanation, did
`not pursue the subject of allegedly inappropriate reply further except to state
`
`2
`
`
`
`Case CBM2013-00009
`Patent 8,140,358
`
`that the Patent Owner has no opportunity to file a surreply or to cross-
`examine Petitioner’s reply declarants. The Board stated that that is only
`partially true. While there is no preset opportunity to file a surreply, Patent
`Owner does have the right to cross-examine Petitioner’s reply declarants and
`then, in appropriate circumstance, request authorization to file a motion for
`observation on cross-examination. That is so notwithstanding that the
`Scheduling Order issued in this case made no reference to such cross-
`examination and filing of a motion for observation on cross-examination.
`Counsel for each party agreed to confer with each other to propose a
`time schedule for Patent Owner to cross-examine Petitioner’s reply
`declarants, and to propose to the Board an appropriate adjustment to Due
`Dates 4-7. The Board indicated that it would move Due Dates 4-7 to
`accommodate the schedule jointly proposed by the parties but that only a
`small adjustment of Due Date 7 would be acceptable. The Board further
`indicated that any motion for observation on cross-examination of
`Petitioner’s reply declarants should be filed by Due Date 4.
`It is
`ORDERED that the parties shall, by September 4, 2013, file a
`proposed revised Scheduling Order for consideration by the Board, which
`makes it possible for Patent Owner to cross-examine Petitioner’s reply
`declarants and file a motion for observation on cross-examination by Due
`Date 4; and
`FURTHER ORDERED that subsequent to the cross-examination of
`Petitioner’s reply declarants, if Patent Owner desires to file a motion for
`
`3
`
`
`
`Case CBM2013-00009
`Patent 8,140,358
`
`observation on cross-examination, a joint telephone conference call should
`be made to confer with the Board about authorization to file the motion for
`observation.
`
`
`
`
`
`4
`
`
`
`Case CBM2013-00009
`Patent 8,140,358
`
`PETITIONER:
`
`J. Steven Baughman
`Nicole M. Jantzi
`Ropes & Gray
`Email: steven.baughman@ropesgray.com
`Email: Nicole.jantzi@ropesgray.com
`
`PATENT OWNER:
`
`Calvin P. Griffith
`James L. Wamsley, III
`John V. Biernacki
`Jones Day
`Email: cpgriffith@jonesday.com
`Email: jlwamsley@jonesday.com
`Email: jvbiernacki@jonesday.com
`
`
`5
`
`
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