Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper 100
`Entered: May 15, 2014
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.
`Petitioner
`
`v.
`
`SIGHTSOUND TECHNOLOGIES, LLC
`Patent Owner
`____________
`
`Case CBM2013-00020 (Patent 5,191,573)
`Case CBM2013-00023 (Patent 5,966,440)1
`
`
`Before MICHAEL P. TIERNEY, JUSTIN T. ARBES, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`1 This Order addresses issues pertaining to both cases. Therefore, we
`exercise our discretion to issue one Order to be filed in each case. The
`parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`Tel: 571-272-7822
`
`
`
`Paper 100
`Entered: May 15, 2014
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.
`Petitioner
`
`v.
`
`SIGHTSOUND TECHNOLOGIES, LLC
`Patent Owner
`____________
`
`Case CBM2013-00020 (Patent 5,191,573)
`Case CBM2013-00023 (Patent 5,966,440)1
`
`
`Before MICHAEL P. TIERNEY, JUSTIN T. ARBES, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`1 This Order addresses issues pertaining to both cases. Therefore, we
`exercise our discretion to issue one Order to be filed in each case. The
`parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`
`Case CBM2013-00020 (Patent 5,191,573)
`Case CBM2013-00023 (Patent 5,966,440)
`
`
`
`
`Sur-Reply Regarding Obviousness Ground
`
`In the Decision on Institution in each of the instant proceedings,
`
`we instituted a trial on two grounds as to all of the challenged claims:
`
`(1) anticipation by the CompuSonics system under 35 U.S.C. § 102, and
`
`(2) obviousness over the CompuSonics publications under 35 U.S.C.
`
`§ 103(a). See CBM2013-00020, Paper 14 at 31-32; CBM2013-00023,
`
`Paper 12 at 32. At the oral hearing on May 6, 2014,2 Patent Owner argued
`
`that it did not have a fair opportunity to respond to the obviousness ground
`
`because Petitioner did not assert the ground in its petitions and argued the
`
`issue for the first time in its replies, to which Patent Owner was not able to
`
`respond.
`
`Under the particular factual circumstances of these cases, to ensure
`
`that Patent Owner has a full and fair opportunity to be heard on the issue of
`
`obviousness, we are persuaded to authorize, on an expedited basis, a
`
`sur-reply from Patent Owner in each proceeding. The sur-replies are limited
`
`to a single issue—responding to the arguments made by Petitioner in its
`
`papers and at the hearing that the challenged claims would have been
`
`obvious over the CompuSonics publications. Any sur-reply filed by Patent
`
`Owner shall not repeat arguments previously made or argue any other issue
`
`in these proceedings (e.g., anticipation). Patent Owner may, if necessary,
`
`submit new declaration testimony with its sur-replies. Should Patent Owner
`
`do so, Petitioner is authorized to cross-examine the witness(es) and file a
`
`motion for observation on cross-examination to alert the Board to any
`
`relevant testimony. Petitioner is reminded that an observation is not an
`
`
`2 A transcript of the hearing will be entered into the record of each
`proceeding as soon as possible.
`
`
`
`2
`
`
`
`Case CBM2013-00020 (Patent 5,191,573)
`Case CBM2013-00023 (Patent 5,966,440)
`
`opportunity to raise new issues, re-argue issues, or pursue objections.
`
`
`
`Each observation should be in the following form:
`
`In Exhibit __, on page __, lines __, the witness testified
`__. This testimony is relevant to the __ on page __ of __. The
`testimony is relevant because __.
`
`The entire observation should not exceed one short paragraph. We may
`
`decline consideration or entry of excessively long or argumentative
`
`observations.
`
`
`
`Sealed Documents
`
`On April 30, 2014, we granted three motions to seal filed in each of
`
`the instant proceedings, and ordered that certain papers and exhibits be
`
`maintained under seal. See CBM2013-00020, Paper 92; CBM2013-00023,
`
`Paper 88. On May 8, 2014, the parties filed a joint notice in each proceeding
`
`stating that they have agreed that the sealed materials may be unsealed and
`
`made available to the public. See CBM2013-00020, Paper 99;
`
`CBM2013-00023, Paper 95. Accordingly, the materials will be unsealed,
`
`and access to the materials in the Patent Review Processing System (PRPS)
`
`will be changed from “Parties and Board Only” to “Public.” The protective
`
`order entered in each proceeding shall remain in effect and govern the future
`
`treatment and filing of any confidential information in the proceedings.
`
`
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that Patent Owner is authorized to file, in each of the
`
`instant proceedings, a sur-reply to Petitioner’s reply in the respective
`
`proceeding addressing only the issue set forth herein, by June 6, 2014,
`
`limited to 15 pages;
`
`
`
`3
`
`
`
`Case CBM2013-00020 (Patent 5,191,573)
`Case CBM2013-00023 (Patent 5,966,440)
`
`
`
`
`FURTHER ORDERED that Patent Owner is authorized to file, with
`
`its sur-reply in each proceeding, new declaration testimony;
`
`FURTHER ORDERED that if Patent Owner files new declaration
`
`testimony with its sur-reply in the respective proceeding, Patent Owner shall
`
`make the witness(es) available for cross-examination as soon as possible
`
`following the filing of the sur-reply, and Petitioner is authorized to file a
`
`motion for observation on cross-examination of the witness, by June 27,
`
`2014, limited to 15 pages;
`
`FURTHER ORDERED that no response to a motion for observation
`
`on cross-examination is authorized; and
`
`FURTHER ORDERED that the following papers and exhibits are
`
`unsealed:
`
`CBM2013-00020: Papers 52, 71, and 88, and Exhibits
`4157-4163, 4256, and 4262; and
`
`CBM2013-00023: Papers 49, 67, and 85, and Exhibits
`4358-4364, 4414, and 4420.
`
`
`
`
`
`
`
`
`
`4
`
`
`
`
`
`Case CBM2013-00020 (Patent 5,191,573)
`Case CBM2013-00023 (Patent 5,966,440)
`
`PETITIONER:
`
`J. Steven Baughman
`Ching-Lee Fukuda
`ROPES & GRAY LLP
`steven.baughman@ropesgray.com
`ching-lee.fukuda@ropesgray.com
`
`
`PATENT OWNER:
`
`David R. Marsh
`Kristan L. Lansbery
`ARNOLD & PORTER LLP
`david.marsh@aporter.com
`kristan.lansbery@aporter.com
`
`
`
`
`
`
`
`5
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
