`Tel: 571.272.7822
`
`
`Paper No. 27
`Entered: November 30, 2017
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.
`Petitioner,
`v.
`PAPST LICENSING GMBH & CO. KG,
`Patent Owner.
`____________
`
`Case IPR2016-01839
`Patent 6,470,399 B1
`____________
`
`Before JONI Y. CHANG, JAMES B. ARPIN, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`IPR2016-01839
`Patent 6,470,399 B1
`
`
`In its email to the Board on November 30, 2017, Patent Owner
`requested guidance on how to address allegedly new matter improperly
`added to Petitioner’s Reply. Ex. 3001. As we previously discussed during a
`conference call with Patent Owner in related cases1, a motion to exclude is
`not a proper mechanism to present arguments that a reply and evidence filed
`in support of the reply are outside the scope of a proper reply under 37
`C.F.R. § 42.23(b), and we will determine whether a reply and supporting
`evidence are outside the scope of a proper reply when we review all of the
`parties’ briefs and prepare the final written decision. See, e.g., IPR2016-
`01212, Paper 24, 2. As we also noted, other panels had authorized parties to
`file a two-page itemized listing or surreply in similar situations. Id.
`Consistent with those other related cases, we hereby authorize Patent
`Owner to file a paper limited to two pages, in the instant proceeding, that
`lists, by page and line number, the specific statements in the Petitioner’s
`Reply and evidence filed in support of the Petitoner’s Reply that Patent
`Owner believes to be beyond the proper scope of a reply. No argument is to
`be included in the contents of the submission.
`We also authorized Petitioner to file a responsive paper, limited to two
`pages, in the instant proceeding, to provide an item-by-item response to the
`items listed in Patent Owner’s submission. Each item in Petitioner’s
`responsive paper should identify specifically the part of Patent Owner’s
`Response and/or expert declaration filed in support of Patent Owner’s
`Response, by page and line number, to which the corresponding item
`complained of by the Patent Owner is provided as a response, if indeed that
`
`
`1 Cases IPR2016-01211, IPR2016-01212, IPR2016-01213, IPR2016-01214,
`IPR2016-01216, and IPR2016-01225.
`
`2
`
`
`
`IPR2016-01839
`Patent 6,470,399 B1
`
`is the case. Petitioner also should identify, by page and line number, where
`in the Petition or other previously-filed paper or exhibit specifically
`discusses the issue raised in that item. No argument is to be included in the
`contents of the submission.
`Accordingly, it is
`ORDERED that Patent Owner is authorized to file a two-page
`itemized listing, as described above, within five business days from the date
`of this Order, and
`FURTHER ORDERED that Petitioner is authorized to file a two-page
`responsive itemized listing, as described above, within five business days
`from the filing of Patent Owner’s listing.
`
`
`
`
`3
`
`
`
`IPR2016-01839
`Patent 6,470,399 B1
`
`For PETITIONER:
`
`Lori A. Gordon
`Steven W. Peters
`Yasser Mourtada
`lgordon-ptab@skgf.com
`speters-ptab@skgf.com
`ymourtad-ptab@skgf.com
`STERNE, KESSLER, GOLDSTEIN & FOX
`
`
`For PATENT OWNER:
`
`Gregory s. Donahue
`Minghui Yang
`gdonahue@dpelaw.com
`myang@dpelaw.com
`docketing@dpelaw.com
`DiNOVO PRICE ELLWANGER & HARDY LLP
`
`Michael R. Fleming
`mfleming@irell.com
`IRELL & MANELLA LLP
`
`Anthony Meola
`Jason. A. Murphy
`Victor J. Baranowshi
`Arlen L. Olsen
`ameola@iplawusa.com
`jmurphy@iplawsa.com
`vbaranowski@iplawusa.com
`aolsen@iplawusa.com
`SCHMEISER, OLSEN & WATTS, LLP
`
`
`4
`
`
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