`571-272-7822
`
`
`
`
`
`Paper No. 44
`Filed: October16, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DROPBOX, INC.,
`Petitioner,
`
`v.
`
`SYNCHRONOSS TECHNOLOGIES, INC.,
`Patent Owner.
`
`
`
`
`
`
`
`
`Case IPR2016-00850
`Case IPR2016-00851
`Patent 6,671,757 B11
`
`
`
`Before TREVOR M. JEFFERSON, Administrative Patent Judge.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`
`1 This Decision will be entered in each case. The parties are not authorized
`to use this caption style.
`
`
`
`IPR2016-00850
`IPR2016-00851
`Patent 6,671,757 B1
`
`On July 23, 2018, The U.S Court of Appeals for the Federal Circuit
`
`issued an Order in Dropbox, Inc. v. Synchronoss Technologies, Inc.,2
`remanding IPR2016-00850 and IPR2016-00851 (the “Dropbox IPRs”) for
`final written decisions as to all uninstituted claims and grounds raised in the
`Dropbox IPR petitions, which were decided prior to SAS Institute Inc. v.
`Iancu, 138 S. Ct. 1348 (2018).
`
`By email message dated August 17, 2018, Dropbox, Inc. (Petitioner)
`and Synchronoss Technologies, Inc. (Patent Owner) agreed to the following
`procedures for briefing and argument on remand in the Dropbox IPRs:
`Patent Owner will not file an additional Patent Owner’s
`1.
`Response on the previously uninstituted claims or grounds in
`the Dropbox IPRs;
`Petitioner will submit a Reply brief in each proceeding, of no
`more than 5,600 words, relating to the previously uninstituted
`claims and grounds, on or before October 19, 2018;
`Patent Owner will submit a Sur-reply brief in each proceeding,
`of no more than 5,600 words, relating to the previously
`uninstituted claims and grounds, on or before December 19,
`2018;
`Neither Petitioner nor Patent Owner will submit additional
`evidence with their Reply or Sur-reply or take additional cross-
`examination testimony; and
`
`2.
`
`3.
`
`4.
`
`
`2 Dropbox, Inc. v. Synchronoss Technologies, Inc., Case Nos. 2018-1291, -
`1292, -1342, -1343, slip op. at 3 (Fed. Cir. July 23, 2018)
`2
`
`
`
`
`IPR2016-00850
`IPR2016-00851
`Patent 6,671,757 B1
`
`
`5.
`
`The parties will notify the board on or before December 26,
`2018, whether they request oral argument.
`We adopt the parties’ procedures and due dates for the Petitioner and
`
`Patent Owner to submit additional briefing and, if needed, request oral
`argument.
`
`It is
`
`ORDERED that Patent Owner will not file an additional Patent
`Owner’s Response on previously uninstituted claims or grounds in IPR2016-
`00850 and IPR2016-00851;
`
` FURTHER ORDERED that the Petitioner will submit a Reply brief
`related to the previously uninstituted claims or grounds in each proceeding
`(IPR2016-00850 and IPR2016-00851), not to exceed 5,600 words, on or
`before October 19, 2018; and Patent Owner will submit a Sur-reply brief
`related to the previously uninstituted claims or grounds in each proceeding
`(IPR2016-00850 and IPR2016-00851), not to exceed 5,600 words;
`
`FURTHER ORDERED that neither Petitioner nor Patent Owner will
`take additional cross-examination testimony or submit additional evidence
`with their Reply and Sur-reply briefs; and
`
`FURTHER ORDERED that the parties may request oral argument on
`or before December 26, 2018.
`
`
`
`
`
`3
`
`
`
`
`IPR2016-00850
`IPR2016-00851
`Patent 6,671,757 B1
`
`PETITIONER:
`David M. Krinsky
`Christopher S. Geyer
`WILLIAMS & CONNOLLY LLP
`dkrinsky@wc.com
`cgeyer@wc.com
`
`PATENT OWNER:
`
`Scott W. Cummings
`DENTONS US LLP
`scott.cummings@dentons.com
`
`
`
`4
`
`
`
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