`Tel: 571-272-7822
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` Paper 68
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` Entered: March 29, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SIPNET EU S.R.O.,
`Petitioner,
`
`v.
`
`STRAIGHT PATH IP GROUP, INC.,
`Patent Owner.
`____________
`
`Case IPR2013-00246
`Patent 6,108,704 C1
`____________
`
`Before KALYAN K. DESHPANDE, TRENTON A. WARD, and
`BART A. GERSTENBLITH, Administrative Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`
`ORDER
`Authorization to File Additional Briefing
`37 C.F.R. § 42.5
`
`
`
`Case IPR2013-00246
`Patent 6,108,704 C1
`
`
`The Board held a conference call with Petitioner on March 22, 2016 and
`Patent Owner on March 29, 2015. Petitioner requests authorization to submit
`additional briefing, from both Petitioner and Patent Owner, in light of the decision
`by the United States Court of Appeals for the Federal Circuit in Straight Path IP
`Group, Inc. v. Sipnet EU S.R.O., 806 F.3d 1356 (Fed. Cir. 2015). Petitioner
`specifically requests additional briefing to explain how, if at all, the decision
`impacts the Board’s final written decision on unpatentability in this matter.
`Petitioner requests ten pages of additional briefing. Patent Owner opposes
`Petitioner’s request to file additional briefing, asserting that arguments regarding
`the claim construction of “is connected” and “on-line status” were advocated
`throughout these proceedings and have already been addressed fully. Patent Owner
`requests that if additional briefing is authorized, citations should be provided to
`where in the record these arguments have been originally raised. Patent Owner
`additionally requests that if additional briefing is authorized, it is limited to seven
`pages in order to remain consistent with the other related proceedings.
`We grant Petitioner’s request to file additional briefing in order to assist the
`Board in determining the impact of the Federal Circuit’s decision on these
`proceedings. Petitioner’s additional briefing is to not exceed seven pages, and shall
`not include any new evidence or any new argument. Rather, Petitioner should limit
`the briefing to explain the impact of the Federal Circuit decision on these
`proceedings. We further require Petitioner to provide citations in this additional
`briefing to those portions of the previously existing record where the argument or
`evidence was originally introduced. We also authorize Patent Owner to file a reply
`to Petitioner’s additional briefing. Patent Owner’s reply shall not exceed seven
`pages, and shall also not include any new evidence or arguments. We also require
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`2
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`Case IPR2013-00246
`Patent 6,108,704 C1
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`Patent Owner to provide citations in the reply to those portions of the previously
`existing record where the arguments or evidence were originally introduced.
`Petitioner’s additional briefing shall be submitted by Tuesday, April 5, 2016.
` Patent Owner’s briefing shall be submitted by Tuesday, April 12, 2016.
`
`
`Order
`
`It is
`ORDERED that Petitioner’s request to file additional briefing is granted;
`FURTHER ORDERED that Petitioner’s additional briefing shall not exceed
`seven pages, shall not include any new evidence or argument, and is due no later
`than April 5, 2016; and
`FURTHER ORDERED that Patent Owner is authorized to file a reply to
`Petitioner’s additional briefing, where Patent Owner’s reply shall not exceed seven
`pages, shall not include any new evidence or argument, and is due no later than
`April 12, 2016.
`
`PETITIONER:
`
`Pavel Pogodin
`Pavel@transpecificlaw.com
`
`
`
`PATENT OWNER:
`
`William Meunier
`WAMeunier@mintz.com
`Michael Newman
`StraightPathIPRs@mintz.com
`
`
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`3