`Tel: 571-272-7822
`
`Paper 42
`Entered: April 19, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WHATSAPP INC. and FACEBOOK, INC.,
`Petitioner,
`
`v.
`
`TRIPLAY, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00740
`Patent 8,332,475 B2
`____________
`
`Before BENJAMIN D. M. WOOD, BRIAN J. McNAMARA, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`IPPOLITO, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`IPR2015-00740
`Patent 8,332,475 B2
`
`
`On April 18, 2016, by email correspondence to the Board, Patent
`Owner requested guidance on the issue of whether a motion to exclude may
`address the scope of Petitioner’s Reply and Reply Declaration of Mr.
`Klausner. In particular, Patent Owner requested confirmation that a motion
`to exclude is not a proper vehicle for addressing arguments that exceed the
`scope of a reply. Patent Owner indicated that it submitted objections to
`Petitioner’s reply evidence pursuant to 37 C.F.R. § 42.64(b)(1) on April 14,
`2016. Paper 41. Patent Owner further requests authorization to file a
`sur-reply and sur-reply declaration to address “new matters” raised in
`Petitioner’s Reply and Reply Declaration.
`Petitioner responded, also by email correspondence to the Board, that
`Patent Owner’s objections were untimely as these were filed after the five
`business days required by 37 C.F.R. § 42.64(b)(1). Additionally, Petitioner
`maintains its Reply and accompanying evidence are responsive to the Patent
`Owner’s Response, and opposes Patent Owner’s request for a sur-reply.
`As an initial matter, we reiterate that a motion to exclude is not a
`proper vehicle for a party to raise the issue of arguments exceeding the
`permissible scope of a reply. Generally, the Board will determine for itself
`whether arguments in the replies and the exhibits are outside the appropriate
`scope under 37 C.F.R. § 42.23(b) and, if so, not consider those arguments
`and exhibits. Nonetheless, after considering each party’s position, we
`authorize Patent Owner to file a two-page submission that identifies
`arguments and evidence in the Reply and in Petitioner’s Exhibits, filed
`contemporaneously therewith, that Patent Owner contends exceeds the
`proper scope of a reply. The submission shall be in the form of a
`sequentially numbered, itemized list, containing the paper/exhibit number
`
`
`
`IPR2015-00740
`Patent 8,332,475 B2
`
`and page/paragraph range, as appropriate, of the material that Patent Owner
`alleges exceeds the proper scope of a reply. Other than a brief introductory
`sentence immediately after the Caption identifying the submission as being
`responsive to this Order, no explanation, elaboration, or discussion should be
`included in the submission.
`We also authorize Petitioner to file a two-page Response to Patent
`Owner’s submission. The Response shall be in the form of an itemized list
`with sequential numbering in one-to-one correspondence with the
`numbering of Patent Owner’s list. Each listed item in Petitioner’s Response
`should provide citations to the Record by paper/exhibit number and
`page/paragraph range, as appropriate, namely: (1) where, if at all, Petitioner
`initially raised the issue in its initial Petition and accompanying Exhibits;
`and/or (2) the specific portions of the Patent Owner Response to which the
`Reply or accompanying Exhibits are responsive. To maintain sequential
`correspondence, state “none” for any items for which Petitioner lacks a
`corresponding citation to the Record. Other than a brief, introductory
`sentence immediately after the Caption identifying the submission as being
`responsive to this Order, Petitioner’s Response should not include arguments
`and explanations.
`Additionally, we have considered Patent Owner’s request for a
`sur-reply and sur-reply declaration. However, we are not persuaded that a
`sur-reply is needed at this time.
`
`Accordingly, it is
`
`ORDERED that Patent Owner’s two-page, non-argumentative,
`sequentially numbered, itemized list submission is due on April 26, 2016;
`
`
`
`IPR2015-00740
`Patent 8,332,475 B2
`
`
`
`FURTHER ORDERED that Petitioner’s two-page,
`non-argumentative, sequentially numbered itemized list in Response thereto
`is due on May 3, 2016; and
`
`FURTHER ORDERED that Patent Owner’s request for authorization
`to file a sur-reply is denied.
`
`PETITIONER:
`Heidi Keefe
`Andrew Mace
`Reuben Chen
`Mark Weinstein
`hkeefe@cooley.com
`amace@cooley.com
`whatsapp_ptab_ipr@cooley.com
`mweinstein@cooley.com
`
`PATENT OWNER:
`Barry Schindler
`Jeremy Monaldo
`schindlerb@gtlaw.com
`monaldo@fr.com
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
