Trials@uspto.gov
`Tel: 571-272-7822
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` Paper 43
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` Entered: January 5, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS, INC., TOSHIBA CORP., VIZIO, INC.,
`HULU, LLC, CISCO SYSTEMS, INC.,
`AVAYA, INC., VERIZON SERVICES CORP., and VERIZON BUSNESS
`NETWORK SERVICES INC.,
`Petitioner,
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`v.
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`STRAIGHT PATH IP GROUP, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-001961 (Patent 6,131,121)
`Case IPR2015-001982 (Patent 6,009,469)
`Case IPR2015-002093 (Patent 6,108,704)
`____________
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`Before KALYAN K. DESHPANDE, TRENTON A. WARD, and
`BART A. GERSTENBLITH, Administrative Patent Judges.
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`DESHPANDE, Administrative Patent Judge.
`
`
`ORDER
`Authorization to File Additional Briefing
`37 C.F.R. § 42.5
`
`
`1 IPR2015-01397 and IPR2015-01407 have been joined with this proceeding.
`2 IPR2015-01400 has been joined with this proceeding.
`3 IPR2015-01398 and IPR2015-01406 have been joined with this proceeding.
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`

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`IPR2015-00196 (Patent 6,131,121)
`IPR2015-00198 (Patent 6,009,469)
`IPR2015-00209 (Patent 6,108,704)
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`The Board held a conference call with Petitioner and Patent Owner on
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`December 15, 2015. A transcript of that call has been entered into the record.
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`Paper 43. Petitioner requests authorization to submit additional briefing, from both
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`Petitioner and Patent Owner, in light of the decision by the United States Court of
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`Appeals for the Federal Circuit in Straight Path IP Group, Inc. v. Sipnet EU S.R.O.,
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`806 F.3d 1356 (Fed. Cir. 2015). Petitioner specifically requests additional briefing
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`to explain how, if at all, the decision impacts the Board’s final written decision on
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`unpatentability in this matter. Patent Owner opposes Petitioner’s request to file
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`additional briefing, asserting that arguments regarding the claim construction of “is
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`connected” were advocated throughout these proceedings and have already been
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`addressed fully. Patent Owner requests that if additional briefing is authorized,
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`citations should be provided to where in the record these arguments have been
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`originally raised.
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`We grant Petitioner’s request to file additional briefing in order to assist the
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`Board in determining the impact of the Federal Circuit’s decision on these
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`proceedings. Petitioner’s additional briefing is to not exceed seven pages, and shall
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`not include any new evidence or any new argument. Rather, Petitioner should limit
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`the briefing to explain the impact of the Federal Circuit decision on these
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`proceedings. We further require Petitioner to provide citations in this additional
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`briefing to those portions of the previously existing record where the argument or
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`evidence was originally introduced. We also authorize Patent Owner to file a reply
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`to Petitioner’s additional briefing. Patent Owner’s reply shall not exceed seven
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`pages, and shall also not include any new evidence or arguments. We also require
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`Patent Owner to provide citations in the reply to those portions of the previously
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`existing record where the arguments or evidence were originally introduced.
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`
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`2
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`

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`IPR2015-00196 (Patent 6,131,121)
`IPR2015-00198 (Patent 6,009,469)
`IPR2015-00209 (Patent 6,108,704)
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`Petitioner’s additional briefing shall be submitted by Tuesday, January 12,
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`2016. Patent Owner’s briefing shall be submitted by Tuesday, January 19, 2016.
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`Petitioner’s request for authorization to file a sur-reply is denied.
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`
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`It is
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`Order
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`ORDERED that Petitioner’s request to file additional briefing is granted;
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`FURTHER ORDERED that Petitioner’s additional briefing shall not exceed
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`seven pages, shall not include any new evidence or argument, and is due no later
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`than January 12, 2016; and
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`FURTHER ORDERED that Patent Owner is authorized to file a reply to
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`Petitioner’s additional briefing, where Patent Owner’s reply shall not exceed seven
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`pages, shall not include any new evidence or argument, and is due no later than
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`January 19, 2016.
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`3
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`

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`4
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`IPR2015-00196 (Patent 6,131,121)
`IPR2015-00198 (Patent 6,009,469)
`IPR2015-00209 (Patent 6,108,704)
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`PETITIONER:
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`Darren M. Jiron
`darren.jiron@finnegan.com
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`Rajeev Gupta
`raj.gupta@finnegan.com
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`Clint Conner
`conner.clint@dorsey.com
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`Leo Lam
`llam@kvn.com
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`
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`PATENT OWNER:
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`William Meunier
`WAMeunier@mintz.com
`
`Michael Newman
`MCNewman@mintz.com