`Date: June 10, 2016
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`GOOGLE INC.,
`Petitioner,
`
`v.
`
`AT HOME BONDHOLDERS’ LIQUIDATING TRUST,
`Patent Owner.
`
`____________
`
`Case CBM2016-00036
`Patent 6,286,045 B1
`____________
`
`
`Before JUSTIN T. ARBES and MIRIAM L. QUINN, Administrative Patent
`Judges.
`
`
`
`QUINN, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`CBM2016-00036
`Patent 6,286,045 B1
`
`
`
`On June 10, 2016, Judges Easthom, Arbes, and Quinn held a conference call
`
`
`
`with counsel for the parties to discuss a request for authorization of a Petitioner
`
`Reply to Patent Owner’s Preliminary Response and a Patent Owner Sur-Reply, in
`
`accordance with an agreement between the parties. In particular, the request is
`
`limited to addressing two recently issued decisions: Enfish, LLC, v. Microsoft
`
`Corporation, No. 2015-1244, (Fed. Cir. May 12, 2016) (“Enfish”); and TLI
`
`Communications LLC, v. AV Automotive, L.L.C., et al., Nos. 2015-1372, -
`
`1376, -1377, -1378, -1379, -1382, -1383, -1384, -1385, -1417, -1419, -1421 (Fed.
`
`Cir. May 17, 2016) (“TLI”). According to Petitioner, the Enfish and TLI decisions
`
`issued after Petitioner filed its Petition, and Patent Owner addressed Enfish in its
`
`Preliminary Response. Patent Owner stated that it would not oppose Petitioner’s
`
`Reply, if it would be allowed to file a Sur-Reply. The parties proposed a 7-page
`
`Reply, and a 5-page Sur-Reply.
`
`During the call, we stated that we did not recognize a need for Patent Owner
`
`to have the last word or otherwise be entitled to a sur-reply given that a preliminary
`
`response is optional and that Patent Owner addressed Enfish in its brief without the
`
`expectation that it would have an opportunity for additional briefing. Upon
`
`consideration of the timing of the filing of the Petition and the failure of Patent
`
`Owner to address TLI in its Preliminary Response, we nevertheless allowed
`
`additional briefing as stated in this Order. The parties’ request is, therefore,
`
`granted, as stated hereunder.
`
`
`
`ORDER
`
`Having considered the parties’ request, the timing between the parties’
`
`filings and the issuance of Enfish and TLI, the parties’ agreement, and the deadline
`
`for issuing a decision on institution, it is hereby,
`
`2
`
`
`
`
`CBM2016-00036
`Patent 6,286,045 B1
`
`
`
`ORDERED that Petitioner is authorized to file, by June 17, a Reply, limited
`
`
`
`to addressing Enfish and TLI, and limited to 4 pages; and
`
`FURTHER ORDERED that Patent Owner is authorized to file, by June 24, a
`
`Sur-Reply, limited to addressing Petitioner’s Reply, and limited to 2 pages.
`
`
`
`
`
`
`
`
`
`3
`
`
`
`
`
`
`
`
`CBM2016-00036
`Patent 6,286,045 B1
`
`PETITIONER:
`Michelle Holoubek (Lead Counsel)
`Michael Messinger (Back-up Counsel)
`mhoubek-PTAB@skgf.com
`mikem-PTAB@skgf.com
`
`PATENT OWNER:
`
`Garland Stephens (Lead Counsel)
`Justin Constant (Back-up Counsel)
`garland.stephens@weil.com
`justin.constant@weil.com
`at.home.google@weil.com
`
`
`4
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