`Tel: 571-272-7822
`Entered: July 7, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`GENERAL ELECTRIC COMPANY,
`Petitioner,
`
`v.
`
`UNITED TECHNOLOGIES CORPORATION,
`Patent Owner.
`_______________
`
`Case IPR2016-00952
`Patent 9,121,412 B2
`_______________
`
`
`Before HYUN J. JUNG, SCOTT A. DANIELS, and
`GEORGE R. HOSKINS, Administrative Patent Judges.
`
`JUNG, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of Proceedings
`37 C.F.R. § 42.5
`
`
`BACKGROUND
`I.
`In an email dated July 3, 2017, Patent Owner requested authorization
`to file a motion to strike certain portions of Petitioner’s Reply that Patent
`
`
`
`Case IPR2016-00952
`Patent 9,121,412 B2
`
`
`Owner believed to be new arguments. Petitioner indicated that it opposed
`Patent Owner’s request in another email dated July 5, 2017.
`After considering the request, Patent Owner’s request for
`authorization to file a motion to strike is denied. Patent Owner, however, is
`authorized to file a notice calling the Board’s attention to those portions of
`Petitioner’s Reply that are believed by Patent Owner to raise new issues or
`belatedly present evidence. We also authorize Petitioner to file a paper in
`response to Patent Owner’s submission in each proceeding.
`In rendering a Final Written Decision, the Board will determine what
`weight, if any, is to be given to all of the presented evidence and arguments
`in accordance with the rules of the Board.
`II. ORDER
`Accordingly, it is ORDERED that Patent Owner is authorized to file a
`notice of new arguments in the form of a list providing the location and a
`concise description of any portion of the Petitioner’s Reply that Patent
`Owner wishes to draw to the Board’s attention. The paper should not
`contain argument, is limited to a list of no more than two (2) pages, and
`should be filed by July 14, 2017.
`It is FURTHER ORDERED that Petitioner is authorized to file a
`response. The response should identify, in an itemized manner, what
`Petitioner regards as the material contained in the Patent Owner Response
`that triggered or caused Petitioner to include in its Reply each item listed by
`Patent Owner and/or where each item listed by Patent Owner appears in the
`Petition. The paper should not contain argument, is limited to a list of no
`more than two (2) pages, and should be filed by July 21, 2017.
`
`
`
`Case IPR2016-00952
`Patent 9,121,412 B2
`
`
`
`
`PETITIONER:
`Anish Desai
`Brian Ferguson
`Christopher Pepe
`David Lender (pro hac vice)
`WEIL, GOTSHAL & MANGES LLP
`
`anish.desai@weil.com
`brian.ferguson@weil.com
`christopher.pepe@weil.com
`david.lender@weil.com
`GE.412.IPR@weil.com
`
`PATENT OWNER:
`M. Andrew Holtman, Ph.D.
`Jason E. Stach
`Jeffrey C. Totten
`James D. Stein
`Daniel C. Cooley
`Patrick J. Coyne
`FINNEGAN, HENDERSON, FARRABOW, GARRETT & DUNNER, LLP
`
`andy.holtman@finnegan.com
`jason.stach@finnegan.com
`jeffrey.totten@finnegan.com
`james.stein@finnegan.com
`daniel.cooley@finnegan.com
`patrick.coyne@finnegan.com
`UTC-IPR@finnegan.com
`
`
`
`Michael J. Valaik (pro hac vice)
`BARTLIT BECK HERMAN PALENCHAR & SCOTT LLP
`michael.valaik@bartlit-beck.com
`
`
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