`571-272-7822
`
`
`
`
`
`Paper No. 37
`Filed: June 13, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`VOIP-PAL.COM INC.,
`Patent Owner
`____________
`
`Cases IPR2016-01198 and IPR2016-01201
`Patents 9,179,005 B2 and 8,542,815 B21
`____________
`
`
`
`Before JOSIAH C. COCKS, JENNIFER MEYER CHAGNON, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`1 This Order pertains to both noted proceedings. The Board exercises its
`discretion to issue a single Order for entry in each proceeding. The parties
`are not authorized to use this style heading for any subsequent papers.
`
`
`
`IPR2016-01198 and IPR2016-01201
`Patent 9,179,005 B2 and 8,542,815 B2
`
`
`1. Introduction
`On June 7, 2017, a call was held between counsel for the respective
`parties and Judges Cocks, Chagnon, and Hudalla. Apple Inc. (“Petitioner”)
`was represented by Adam Seitz. Voip-Pal.com Inc. (“Patent Owner”) was
`represented by Kerry Taylor. The purpose of the call was to discuss Patent
`Owner’s request for authorization to file a sur-reply to Petitioner’s Reply to
`Patent Owner’s Response in each proceeding (Paper 34).2
`2. Discussion
`During the call, Patent Owner indicated to the panel that it was
`seeking a 5-page sur-reply to respond to arguments made by Petitioner in
`each of its Replies in response to Patent Owner’s arguments and evidence
`that references applied by Petitioner in its Petition are not prior art to either
`involved patent. Petitioner conveyed to the panel that it opposed Patent
`Owner’s request.
`Sur-replies are not prohibited, but they also are not routine. The
`Board has, however, on various occasions permitted a patent owner to file a
`sur-reply to address arguments raised in a petitioner’s reply to address
`similar issues as those present in these proceedings. See, e.g., ABB, Inc. v.
`ROY-G-BIV Corp., IPR2013-00063 (Paper 51); Sensio, Inc. v. Select Brands,
`Inc., IPR2013-00580 (Paper 19); Cox Comm’ns, Inc. v. AT&T Intellectual
`Prop. I, L.P., IPR2015-01227 (Paper 50). Where, as here, a patent owner
`seeks to demonstrate actual reduction to practice for purposes of antedating a
`prior art reference, the patent owner bears the burden of production. See
`
`
`2 Patent Owner had arranged for a court reporter to transcribe the call. When
`a transcript of the call is available, Patent Owner should file a copy of the
`transcript using its next available exhibit number.
`
`2
`
`
`
`IPR2016-01198 and IPR2016-01201
`Patent 9,179,005 B2 and 8,542,815 B2
`
`HTC Corp. v. NFC Tech., LLC, IPR2014-01198 (Paper 45). Indeed, during
`the call, Patent Owner acknowledged that it had such a burden. With that in
`mind, and recognizing that there is no prejudice to Petitioner that Patent
`Owner be permitted a short, focused sur-reply pertaining to the antedating
`issue, we authorize such a sur-reply. Accordingly, Patent Owner is
`permitted to file a sur-reply in each proceeding that is no longer than five (5)
`pages in length, and due no later than June 14, 2017. No new evidence or
`testimony of any kind shall be introduced or filed with each sur-reply.
`It is so ORDERED.
`
`
`
`
`For PETITIONER:
`Adam P. Seitz
`Eric A. Buresh
`Paul R. Hart
`ERISE IP, P.A
`adam.seitz@eriseip.com
`eric.buresh@eriseip.com
`paul.hart@eriseip.com
`
`For PATENT OWNER:
`Kerry Taylor
`John M. Carson
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2KST@knobbe.com
`2jmc@knobbe.com
`
`3
`
`
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