`571-272-7822
`
`
`
`
`
`Paper No. 43
`Filed: June 22, 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 20, 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 Brent Babcock. The purpose of the call was to discuss
`
`Petitioner’s request for authorization to file a motion to expunge pages 2–15
`
`of Patent Owner’s Motion to Exclude in each proceeding (Paper 402).3
`
`2. Discussion
`
`During the call, Petitioner indicated that it believed that the majority
`
`of Patent Owner’s Motion to Exclude constituted an unauthorized sur-reply
`
`to the Petitioner’s Reply to Patent Owner’s Response (Paper 34) rather than
`
`setting forth appropriate reasons to exclude content of the record. Petitioner,
`
`thus, requested authorization to file a motion to expunge portions of the
`
`Motion to Exclude. Patent Owner opposed Petitioner’s request. According
`
`to Patent Owner, even if portions of the Motion to Exclude do amount to
`
`substantive response to Petitioner’s Reply, the panel could deny the Motion
`
`to Exclude, if it believes that is appropriate, rather than entertain the extreme
`
`remedy of expungement.
`
`Motions to exclude are filed to preserve evidentiary objections
`
`previously made on the record; they “must identify the objections in the
`
`record in order and must explain the objections.” 37 C.F.R. § 42.64(c).
`
`
`2 The identified Paper numbers in this Order are the same for each
`proceeding.
`
`3 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
`
`
`Importantly, such motions are directed to “evidence” that a party considers
`
`to be inadmissible. Id. They do not pertain to a party’s arguments. In that
`
`respect, the panel advised the parties on the call that a motion seeking to
`
`exclude an opposing party’s argument is beyond of the scope of § 42.64 and
`
`will not be successful. In reviewing Patent Owner’s Motion to Exclude in
`
`each proceeding, we observe that various portions of the Motion seek to
`
`exclude Petitioner’s “citations” to evidence of record, rather than the
`
`underlying evidence itself. See, e.g., Paper 40, 6, 8, 11, 14, 15. Although
`
`we do not authorize, at this time, a motion to expunge, we advise the parties
`
`that, to the extent that Patent Owner’s Motion to Exclude amounts to an
`
`unauthorized sur-reply or seeks to exclude Petitioner’s argument in its
`
`Reply, such content is not proper for a motion to exclude.
`
`It is
`
`3. Order
`
`ORDERED that Petitioner is not authorized to file a motion to
`
`expunge in connection with Patent Owner’s Motion to Exclude (Paper 40);
`
`and
`
`FURTHER ORDERED that any opposition to the Motion to Exclude
`
`is due as set forth in the Scheduling Order (Paper 7).
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`3
`
`
`
`IPR2016-01198 and IPR2016-01201
`Patent 9,179,005 B2 and 8,542,815 B2
`
`
`For PETITIONER:
`
`Adam Seitz
`adam.seitz@eriseip.com
`
`Eric Buresh
`Eric.Buresh@EriseIP.com
`
`Paul Hart
`Paul.Hart@EriseIP.com
`
`
`
`For PATENT OWNER:
`
`Kerry Taylor
`2KST@knobbe.com
`
`John Carson
`2jmc@knobbe.com
`
`
`
`
`
`
`
`
`4
`
`
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