`571-272-7822
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`Paper 42
`Entered: July 14, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`H&S MANUFACTURING COMPANY, INC.,
`Petitioner,
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`v.
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`OXBO INTERNATIONAL CORPORATION,
`Patent Owner.
`____________
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`Case IPR2016-00950
`Patent 8,166,739 B2
`____________
`
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`Before PHILLIP J. KAUFFMAN and JAMES A. TARTAL,
`Administrative Patent Judges.
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`TARTAL, Administrative Patent Judge.
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`ORDER
`Conduct of the Proceeding
`37 C.F.R. §§ 42.5(a), 42.20(d)
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`IPR2016-00950
`Patent 8,166,739 B2
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`A conference call was held on May 31, 2017, between respective
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`counsel for Petitioner, H&S Manufacturing Company, Inc., Patent Owner,
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`Oxbo International Corporation, and Judges Kauffman and Tartal. Patent
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`Owner sought authorization to file: (1) an opinion and order related to the
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`challenged patent issued by the District Court of the Western District of
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`Wisconsin on May 23, 2017, in Oxbo Int’l Corp. v. H&S Mfg. Co., Inc.,
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`3:15-cv-00292-jdp, as an exhibit; and (2) a surreply to Petitioner’s Reply to
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`address new evidence provided by Petitioner. Petitioner opposed Patent
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`Owner’s requests. Subsequent to the conference the parties also filed
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`additional documents as exhibits without prior authorization, which we
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`discuss further below.
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`With regard to the District Court order, Patent Owner contended that
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`the order addresses the patent challenged in this proceeding, is a public
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`document, and should be available to the Board as supplemental legal
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`authority. Petitioner contended that the order is not binding authority on the
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`Board, is premised on a different record than what has been developed in
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`this proceeding, and applies different legal standards, but Petitioner also
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`acknowledged that the order may be informative. In light of the recent
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`issuance of the order, it could not have been brought to our attention earlier
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`and, as a public decision of a district court, it is informative at least as to
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`issues before the district court that are related to the patent at issue in this
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`proceeding. Accordingly, Patent Owner was authorized to file a copy of the
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`order as an exhibit. Subsequent to the conference call, Patent Owner
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`submitted the District Court order on June 16, 2017, as Exhibit 2020.
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`Paper 30.
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`2
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`IPR2016-00950
`Patent 8,166,739 B2
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`With regard to Patent Owner’s request to file a surreply, Patent Owner
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`contended that Petitioner’s Reply includes new evidence, including Exhibit
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`1025, an Operator’s Manual for Petitioner’s mergers, which Petitioner relies
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`upon concerning arguments pertaining to copying and secondary
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`considerations of nonobviousness. See Reply (Paper 28), 17. Petitioner
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`argued that Patent Owner was obligated to address the issue of secondary
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`considerations in its Response, and should not be permitted to remedy
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`deficiencies through a surreply or to use a surreply as a backdoor to
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`introduce new arguments based on the order issued in the district court,
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`addressed above.
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`We have considered both parties’ arguments, and, based on the
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`circumstances of this case, we are persuaded it is appropriate to allow Patent
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`Owner to file a short surreply to Petitioner’s Reply. See 37 C.F.R.
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`§§ 42.5(a), 42.20(d); see also Belden Inc. v. Berk-Tek, LLC, 805 F.3d 1064,
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`1081 (Fed. Cir. 2015) (noting that, in inter partes review proceedings, when
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`new evidence is submitted by a petitioner in its reply, a patent owner may
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`request permission to submit a surreply responding to the new evidence).
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`Our decision to authorize a surreply is influenced by the fact that Petitioner’s
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`Reply is accompanied by new evidence related to secondary considerations
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`of nonobviousness that Patent Owner could not reasonably have been
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`expected to directly address in its Response. The surreply shall be limited to
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`three (3) pages and shall be filed no later than July 21, 2017. The surreply
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`shall be directed only to new evidence introduced by Petitioner pertaining to
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`secondary considerations of nonobviousness. Although Patent Owner is not
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`precluded from citing any decision in support of its arguments, including the
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`3
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`IPR2016-00950
`Patent 8,166,739 B2
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`district court order addressed above, Patent Owner may not present new
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`arguments that are not responsive as a surreply to Petitioner’s Reply. Patent
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`Owner may not introduce new evidence or testimony with its surreply.
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`Petitioner is not authorized to file a responsive paper.
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`Subsequent to the conference call the parties appear to have filed
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`additional documents not discussed during the conference call as exhibits
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`without seeking leave from the Board in advance. On June 23, 2017, Patent
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`Owner filed Exhibit 2021. On July 12, 2017, Petitioner filed Exhibit 1027
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`and Exhibit 1028 as purported supplemental authority. Paper 39. Because
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`neither party sought leave to file Exhibits 1027, 1028, and 2021 as
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`supplemental authority in advance, these exhibits shall be expunged. If
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`either party seeks to file additional supplemental authority, prior to
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`requesting a call with the Board, that party shall discuss its request with
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`opposing counsel and identify times when counsel for both parties are
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`available for a teleconference with the Board. Counsel should further
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`consider whether it is necessary to file documents as additional supplemental
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`authority, or whether, instead, the information may be addressed sufficiently
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`during oral argument.
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`For the foregoing reasons, it is hereby:
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`ORDERED that Patent Owner is authorized to file as an exhibit the
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`opinion and order related to the challenged patent issued by the District
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`Court of the Western District of Wisconsin on May 23, 2017, in Oxbo Int’l
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`Corp. v. H&S Mfg. Co., Inc., 3:15-cv-00292-jdp;
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`FURTHER ORDERED that Patent Owner is authorized to file a
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`surreply limited to three (3) pages and responsive only to arguments in
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`4
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`IPR2016-00950
`Patent 8,166,739 B2
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`Petitioner’s Reply addressing new evidence concerning secondary
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`considerations of nonobviousness, to be filed no later than July 21, 2017;
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`and
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`FURTHER ORDERED that no other document is authorized to be
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`filed as an exhibit as supplemental authority, and that Exhibits 1027, 1028,
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`and 2021 shall be expunged.
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`5
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`IPR2016-00950
`Patent 8,166,739 B2
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`PETITIONER
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`Brad D. Pedersen
`Eric H. Chadwick
`Michael P. Gates
`PATTERSON THUENTE PEDERSEN, P.A.
`pedersen@ptslaw.com
`chadwick@ptslaw.com
`gates@ptslaw.com
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`PATENT OWNERS
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`Andrew J. Lagatta
`Gregory A. Sebald
`MERCHANT & GOULD P.C.
`alagatta@merchantgould.com
`gsebald@merchantgould.com
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`6
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