Trials@uspto.gov
`Tel: 571-272-7822
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`
`Paper No. 32
`Entered: May 2, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
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`PERSONALIZED MEDIA COMMUNICATIONS LLC,
`Patent Owner.
`_______________
`
`Case IPR2016-00754
`Patent 8,559,635 B1
`____________
`
`
`Before KARL D. EASTHOM, TRENTON A. WARD, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`WARD, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
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`IPR2016-00754
`Patent 8,559,635 B1
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`A conference call was held on April 26, 2017 and attended by respective
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`counsel for the parties. The conference was scheduled to discuss Petitioner’s
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`request for authorization to file a motion to strike the Declaration of Dr. Timothy
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`Dorney In Support of Patent Owner’s Reply to Petitioner’s Opposition to Patent
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`Owner’s Contingent Motion to Amend (Ex. 2140, “Dorney Reply Declaration”) or,
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`in the alternative, to file a Sur-Reply to Patent Owner’s Motion to Amend. During
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`the conference, Petitioner indicated that it wished to move to strike the Dorney
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`Reply Declaration on the basis that it improperly included information, filed for the
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`first time, which purports to identify specification support for the proposed
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`amended claims. Petitioner argued that this information should have been
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`submitted along with Patent Owner’s Motion to Amend. Alternatively, Petitioner
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`stated that should the Board not authorize a motion to strike, it requests
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`authorization to file a Sur-Reply to Patent Owner’s Motion to Amend to address
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`the new information in the Dorney Reply Declaration.
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`Patent Owner opposes the request to file a motion to strike on the basis that
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`the information included in the Dorney Reply Declaration was properly included to
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`address arguments raised in Petitioner’s Opposition to Patent Owner’s Motion to
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`Amend regarding the lack of support in the specification for the proposed amended
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`claims. Patent Owner also opposes Petitioner’s alternative request for
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`authorization to file a Sur-Reply on the same basis.
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`Our Rules require that “[a] reply may only respond to arguments raised in
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`the corresponding opposition . . . or patent owner response.” See 37 C.F.R. §
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`42.23(b). This reasoning applies equally to reply declarations, submitted to
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`support a party’s reply brief. See Intelligent Bio-Sys., Inc., 821 F.3d at 1369–70
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`(affirming exclusion of reply brief and supporting declaration). Our Trial Practice
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`Guide provides that “a reply that raises a new issue or belatedly presents evidence
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`IPR2016-00754
`Patent 8,559,635 B1
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`will not be considered. . . . The Board will not attempt to sort proper from
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`improper portions of a reply.” Here, we decline to authorize a motion to strike,
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`because not only has other requested relief been authorized below, the Board
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`ordinarily is capable of determining at the close of evidence whether new
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`arguments were raised and disregarding any improper reply evidence.
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`Additionally, during the call, Petitioner confirmed that it filed Objections
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`(Paper 29) to evidence submitted by Patent Owner with its Reply to the Motion to
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`Amend and specifically objected to the Dorney Reply Declaration, Exhibit 2140.
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`We note that Petitioner is free to preserve this objection by filing a motion to
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`exclude under 37 C.F.R. § 42.64, without prior authorization, to address any
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`evidentiary objections to the Dorney Reply Declaration.
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`Patent Owner confirmed during the conference that the Dorney Reply
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`Declaration, Ex. 2140, contains much of the same testimony submitted in the
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`Declaration of Dr. Timothy Dorney In Support of Patent Owner’s Contingent
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`Motion to Amend (Ex. 2130, “Dorney Declaration”) filed along with Patent
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`Owner’s Motion to Amend. Petitioner stated on the call that it was concerned
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`primarily with its ability to address new information submitted in the Dorney
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`Reply Declaration, Ex. 2140, that was not included in the Dorney Declaration, Ex.
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`2130. Accordingly, we hereby authorize Petitioner to file a Sur-Reply to Patent
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`Owner’s Motion to Amend limited to addressing only the new information
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`included in Exhibit 2140 that was not included in Exhibit 2130. The Sur-Reply
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`shall be limited to five pages and must be fild no later than May 17, 2017.
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`Accordingly, Petitioner’s request for authorization to file a motion to strike
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`Patent Owner’s Exhibit 2140 is denied and Petitioner’s request for authorization to
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`file a Sur-Reply to Patent Owner’s Motion to Amend is granted.
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`IPR2016-00754
`Patent 8,559,635 B1
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`Accordingly, it is hereby
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`ORDER
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`ORDERED that Petitioner may file a Sur-Reply to Patent Owner’s Motion
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`to Amend limited to addressing only the new information included in Ex. 2140 that
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`was not included in Ex. 2130; and
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`FURTHER ORDERED that the Sur-Reply shall be limited to five pages and
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`be filed no later than May 17, 2017.
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`IPR2016-00754
`Patent 8,559,635 B1
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`PETITIONER:
`
`Marcus E. Sernel
`Joel R. Merkin
`Eugene Goryunov
`Gregory Arovas
`KIRKLAND &ELLIS LLP
`marc.sernel@kirkland.com
`joel.merkin@kirkland.com
`egoryunov@kirkland.com
`greg.arovas@kirkland.com
`
`
`
`PATENT OWNER:
`
`
`Douglas J. Kline
`Jennifer Albert
`Stephen Schreiner
`Krupa Parikh
`Sarah Fink
`GOODWIN PROCTER LLP
`dkline@goodwinprocter.com
`jalbert@goodwinprocter.com
`sschreiner@goodwinprocter.com
`sfink@goodwinlaw.com
`
`Thomas J. Scott, Jr.
`tscott@pmcip.com
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`
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`