`571-272-7822
`
`
`
`
`
`
`Paper No. 69
`Entered: December 28, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NESTLÉ USA, INC.,
`Petitioner,
`
`v.
`
`STEUBEN FOODS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00195 (Patent 6,475,435 B1)
`Case IPR2015-00249 (Patent 6,481,468 B1)1
`____________
`
`
`
`Before MICHAEL P. TIERNEY, BEVERLY M. BUNTING, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`PAULRAJ, Administrative Patent Judge.
`
`ORDER
`Granting Patent Owner’s Request to File a Sur-Reply
`37 C.F.R. § 42.5(a)
`Authorizing Motion for Additional Discovery
`37 C.F.R. § 42.5(a)
`
`
`
`1 This Order addresses issues that are common to both cases. We, therefore,
`exercise our discretion to issue a single Order to be filed in each of the cases.
`The parties are not authorized to use this heading style in the papers
`authorized by this Order.
`
`
`
`
`
`
`
`
`
`IPR2015-00195 (Patent 6,475,435 B1)
`IPR2015-00249 (Patent 6,481,468 B1)
`
`On December 22, 2015, a telephone conference call was held
`including Greg Gardella, counsel for Patent Owner Steuben Foods, Inc.,
`Virginia Carron, counsel for Petitioner Nestle USA, Inc., and Administrative
`Patent Judges Paulraj, Bunting, Kauffman, and Tierney.2 The call was held
`to address Patent Owner’s requests to a) file a sur-reply to Petitioner’s Reply
`in IPR2015-00195 in order to address arguments regarding whether the ratio
`of airborne sterilant concentration between or among zones is a “result
`effective variable” and b) file a motion for additional discovery relating to
`Petitioner’s Exhibits 1042–1043 (in IPR2015-00195) and Exhibits 1031–
`1032 (in IPR2015-00249).
`After considering the parties’ arguments, we authorized Patent Owner
`to file a sur-reply limited to addressing the arguments presented on pages 6–
`9 of Petitioner’s Reply Brief. The sur-reply shall be limited to 5 pages in
`length, and shall be filed on or before January 4, 2016. No declaration or
`other evidence is authorized to be submitted with the sur-reply.
`We further considered Patent Owner’s request for leave to file a
`motion for additional discovery with respect to the contract concerning the
`lines 1–6 equipment that relates to the standard terms and conditions
`produced as Exhibits 1042–1043 (in IPR2015-00195) and Exhibits 1031–
`1032 (in IPR2015-00249). Upon consideration of the parties’ arguments,
`the Board determined that briefing on the matter is warranted. Therefore,
`Patent Owner is authorized to file a motion for additional discovery, and
`Petitioner is authorized for file an opposition to the motion. Patent Owner’s
`motion for additional discovery shall be limited to 7 pages, and shall be filed
`
`2 A court reporter was also on the call, and a transcript of the call will be
`filed in each proceeding.
`
`
`2
`
`
`
`
`
`
`
`
`
`IPR2015-00195 (Patent 6,475,435 B1)
`IPR2015-00249 (Patent 6,481,468 B1)
`
`on or before January 6, 2016. Petitioner’s opposition shall be limited to 7
`pages in length, and shall be filed on or before January 12, 2016. No further
`briefing is authorized with respect to the motion for additional discovery. A
`party may move for additional discovery, but the moving party “must show
`that such additional discovery is in the interests of justice.” See 35 U.S.C.
`§ 316(a)(5) and 37 C.F.R. § 42.51(b)(2). The Board reminds the parties that
`the factors set forth in the “Decision on Motion for Additional Discovery”
`entered in IPR2012-00001 (Paper 26 at 6–7) are important in determining
`whether a discovery request meets the statutory and regulatory standard.
`In consideration of the foregoing, it is:
`ORDERED that, in IPR2015-00195, Patent Owner is authorized to
`file a sur-reply limited to addressing the arguments presented on pages 6–9
`of Petitioner’s Reply Brief. The sur-reply shall be limited to 5 pages in
`length, and shall be filed on or before January 4, 2016.
`FURTHER ORDERED that, in IPR2015-00195 and IPR2015-00249,
`Patent Owner is authorized to file a motion for additional discovery with
`respect to the contract concerning the lines 1–6 equipment that relates to the
`standard terms and conditions produced as Exhibits 1042–1043 (in IPR2015-
`00195) and Exhibits 1031–1032 (in IPR2015-00249). The motion for
`additional discovery shall be limited to 7 pages in length, and shall be filed
`on or before January 6, 2016.
`FURTHER ORDERED that, in IPR2015-00195 and IPR2015-00249,
`Petitioner is authorized to file an opposition to Patent Owner’s motion for
`additional discovery. The opposition shall be limited to 7 pages in length,
`and shall be filed on or before January 12, 2016.
`
`
`3
`
`
`
`
`
`
`
`
`
`IPR2015-00195 (Patent 6,475,435 B1)
`IPR2015-00249 (Patent 6,481,468 B1)
`
`
`PETITIONER:
`
`Thomas H. Jenkins
`tom.jenkins@finnegan.com
`
`Virginia L. Carron
`virginia.carron@finnegan.com
`
`Tyler M. Akagi
`tyler.akagi@finnegan.com
`
`
`
`PATENT OWNER:
`
`Greg H. Gardella
`CPDocketGardella@oblon.com
`
`Scott A. McKeown
`cpdocketmckeown@oblon.com
`
`Ruby J. Natnithithadha
`cpdocketrjn@oblon.com
`
`
`
`4
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