`Entered: August 9, 2016
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZTE (USA) INC., HTC CORPORATION, and
`HTC AMERICA, INC.,
`Petitioner,
`
`
`
`v.
`
`EVOLVED WIRELESS LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00758
`Patent 8,218,481 B2
`____________
`
`
`
`
`
`Before CHRISTOPHER L. CRUMBLEY, PETER P. CHEN, and
`TERRENCE W. McMILLIN, Administrative Patent Judges
`
`McMILLIN, Administrative Patent Judge
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`Case IPR2016-00758
`Patent No. 8,218,481
`
`
`On July 15, 2016, Petitioner filed Motion for Leave to file a Reply to
`Patent Owner’s Preliminary Response to Petition for Inter Partes Review
`(“Motion”) and, as Attachment A, Petitioner’s Reply to Patent Owner’s
`Preliminary Response to Petitioner’s Petition for Inter Partes Review
`(“Reply”) (Paper 10). Petitioner did not seek or obtain Board authorization
`to file the Motion or the Reply.
`On July 29, 2016, at the Board’s request, a conference call took place
`in order to discuss the propriety of the filing of the Motion and Reply. The
`parties were represented by their respective counsel.
`37 C.F.R. § 42.20(b) provides: “[a] motion will not be entered without
`Board authorization. Authorization may be provided in an order of general
`applicability or during the proceeding.” 37 C.F.R. § 42.108(c) provides: “[a]
`petitioner may seek leave to file a reply to the preliminary response in
`accordance with §§ 42.23 and 42.24(c). Any such request must make a
`showing of good cause.”
`During the teleconference, Petitioner’s counsel contended that the
`April 1, 2016, amendment to 37 C.F.R. § 42.108(c), adding the sentence,
`“[a] petitioner may seek leave to file a reply to the preliminary response in
`accordance with §§ 42.23 and 42.24(c)” was an “order of general
`applicability” authorizing Petitioner to file the Motion and Reply under 37
`C.F.R. § 42.20(b). Construing 37 C.F.R. § 42.20(b) and 37 C.F.R.
`§ 42.108(c) together, however, we determined that Petitioner’s
`understanding was in error. In particular, we clarified that Board
`authorization must be sought and obtained before a motion for leave to reply
`to the preliminary response is filed. The April 1, 2016, amendment to 37
`C.F.R. § 42.108(c), did not alter this requirement for prior authorization, and
`
`
`
`2
`
`
`
`Case IPR2016-00758
`Patent No. 8,218,481
`
`did not authorize Petitioner’s filing of the Reply with the Motion. Thus,
`authorization is necessary from the Board for a motion seeking leave to file
`such a reply. Under Board procedure, the proposed reply is not to be
`attached to the motion; only if that motion is granted may Petitioner file the
`reply.
`During the call, we also considered whether to retroactively authorize
`Petitioner’s Motion. With regard to the showing of good cause to file the
`Motion and Reply, the Petitioner argues, “Good cause supports this request.
`Patent Owner has misstated both the teachings of the prior art and
`Petitioner’s arguments, requiring a brief reply to correct the record on which
`the Board will render its institution decision.” Motion 1. We determine
`Petitioner has not established the requisite good cause merely by contending
`Patent Owner has made misstatements, or, as Petitioner asserted during the
`telephone conference, “objectively false” statements about the references
`and Petitioner’s arguments. The Board is capable of reviewing the record to
`determine whether any misstatements or mischaracterizations exist.
`37 C.F.R. §42.7(a) provides: “[t]he Board may expunge any paper
`directed to a proceeding . . . that is not authorized under this part or in a
`Board order.” Accordingly, we expunge the Motion and the attached Reply
`(Paper 10).
`Therefore, it is
`ORDERED that authorization to file a motion for leave to file a reply
`to the Patent Owner’s Preliminary Response is DENIED; and
`FURTHER ORDERED that Petitioner’s Motion for Leave to file a
`Reply to Patent Owner’s Preliminary Response to Petition for Inter Partes
`Review and Attachment A, Petitioner’s Reply to Patent Owner’s Preliminary
`
`
`
`3
`
`
`
`Case IPR2016-00758
`Patent No. 8,218,481
`
`Response to Petitioner’s Petition for Inter Partes Review (Paper 10) are
`expunged from the record.
`
`
`PETITIONER:
`Charles M. McMahon
`Hersh H. Mehta
`MCDERMOTT WILL & EMERY
`cmcmahon@mwe.com
`hmehta@mwe.com
`
`Stephen S. Korniczky
`Martin Bader
`Ericka J. Schulz
`SHEPPARD, MULLIN, RICHTER & HAMPTON, LLP
`skorniczky@sheppardmullin.com
`mbader@sheppardmullin.com
`eschulz@sheppardmullin.com
`
`
`
`PATENT OWNER:
`
`Cyrus A. Morton
`Ryan M. Schultz
`ROBINS KAPLAN LLP
`cmorton@robinskaplan.com
`rschultz@robinskaplan.com
`
`
`
`
`4
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