Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 19
`Entered: November 29, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KAWASAKI RAIL CAR, INC.,
`Petitioner,
`
`v.
`
`SCOTT BLAIR,
`Patent Owner.
`____________
`
`Case IPR2017-00117
`Patent 6,700,602 B1
`____________
`
`
`Before JAMESON LEE, SCOTT A. DANIELS, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`TROCK, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5(a)
`
`
`On November 13, 2017, the Board received an email from Patent
`Owner requesting leave to file a sur-reply in response to the Reply filed by
`Petitioner on November 6, 2017. Ex. 3001. In the email, Patent Owner
`asserted that the “Reply introduces new evidence for the first time including
`[supplemental] declaration testimony of Lowell Malo and selected,
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 19
`Entered: November 29, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KAWASAKI RAIL CAR, INC.,
`Petitioner,
`
`v.
`
`SCOTT BLAIR,
`Patent Owner.
`____________
`
`Case IPR2017-00117
`Patent 6,700,602 B1
`____________
`
`
`Before JAMESON LEE, SCOTT A. DANIELS, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`TROCK, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5(a)
`
`
`On November 13, 2017, the Board received an email from Patent
`Owner requesting leave to file a sur-reply in response to the Reply filed by
`Petitioner on November 6, 2017. Ex. 3001. In the email, Patent Owner
`asserted that the “Reply introduces new evidence for the first time including
`[supplemental] declaration testimony of Lowell Malo and selected,
`
`
`
`IPR2017-00117
`Patent 6,700,602 B1
`
`incomplete portions of a document entitled the Federal Railroad
`Administration (“FRA”) proposed rules that purports to sets forth proposed
`standards for certain railcars under FRA jurisdiction.” Patent Owner stated
`that “the Board should allow Patent Owner to address these new arguments
`and evidence and to submit its own rebuttal evidence.”
`The Board held a conference call with counsel for the parties on
`Friday, November 17, 2017, to discuss Patent Owner’s request. The Board
`asked Patent Owner to explain the basis for its request to file a sur-reply.
`Patent Owner argued that certain portions of the Reply and Mr. Malo’s
`supplemental declaration contain statements which were not presented in the
`Petition and Patent Owner would like an opportunity to file a sur-reply to
`respond to those submissions and to have its expert file a supplemental
`declaration in support of the sur-reply. We explained that Patent Owner had
`not articulated good cause for filing a sur-reply, because a reply is not
`expected to reiterate what is already stated in the Petition. The Petitioner is
`expected to use its reply to respond to Patent Owner’s arguments in the
`Patent Owner’s Response.
`We appreciate that Patent Owner would like to respond to a reply and
`to have the last word. However, it is the petitioner, under the applicable
`rules governing inter partes review, who bears the burden of proof and who
`makes the last submission to the panel. Patent Owner did not articulate any
`appropriate reason for authorizing a sur-reply.
` The Board inquired whether Patent Owner had taken Mr. Malo’s
`deposition. It had not. The Board was informed that a Notice of Deposition
`for Mr. Malo had just been issued. The Board explained to the parties that
`the upcoming deposition of Mr. Malo would provide Patent Owner with a
`
`2
`
`
`
`IPR2017-00117
`Patent 6,700,602 B1
`
`full and fair opportunity to cross-examine Mr. Malo on the basis for his
`opinion, including what portions of Patent Owner’s Response his
`supplemental declaration is responsive to and whether he took into
`consideration the entirety of the FRA proposed rules. Regarding Patent
`Owner’s assertion that Petitioner did not include all of the pages of the FRA
`proposed rules, Patent Owner may, when cross-examining Petitioner’s
`expert, address that subject, and then include any inconsistencies in an
`Observation on Cross-examination. We authorize Patent Owner to include
`as much of the proposed rules, as an exhibit, as are relevant for its
`Observation on Cross-examination, if any.
`The Board then inquired whether Patent Owner believes the Reply, or
`any evidence submitted in support of the Reply, exceeded the scope of a
`proper reply. We noted that if there is any such material, we would not
`consider that material. Counsel for Patent Owner responded by stating
`affirmatively that Patent Owner does believe that certain portions of the
`Reply and the declaration in support of the Reply went beyond the proper
`scope of a Reply.
`With respect to Patent Owner’s concerns that portions of Petitioner’s
`Reply and Mr. Malo’s supplemental declaration are outside the scope of
`Patent Owner’s Response, the Board authorized Patent Owner to submit a
`paper in the form of a list providing the location of any portion of
`Petitioner’s Reply (Paper 17) and the Supplemental Expert Declaration of
`Lowell Malo (Ex. 1025) that Patent Owner believes exceeds the scope of
`Patent Owner’s Response. The Board also authorized Petitioner to submit a
`similar list in response, itemized to correspond to Patent Owner’s submittal,
`with what Petitioner regards as the material contained in the Patent Owner’s
`
`3
`
`
`
`IPR2017-00117
`Patent 6,700,602 B1
`
`Response that caused the Petitioner to include in its Reply or Supplemental
`Declaration each item listed by Patent Owner and/or where each item listed
`by Patent Owner appears in the Petition.
`Accordingly, the issue of whether Petitioner’s Reply, inclusive of any
`declaration in support of the Reply, is beyond the scope of a proper reply is
`addressed by the above-noted procedure. The parties shall not use a motion
`to exclude evidence to address it again. A motion to exclude shall be used
`by the parties solely to address admissibility matters under the Federal Rules
`of Evidence.
`
`
`
`
`
`
`4
`
`
`
`IPR2017-00117
`Patent 6,700,602 B1
`
`
`ORDER
`
`Accordingly, it is
`ORDERED that Patent Owner may submit a paper in the form of a list
`providing the location by page and line numbers, of any portion of
`Petitioner’s Reply (Paper 17) and the Supplemental Expert Declaration of
`Lowell Malo (Ex. 1025) that Patent Owner believes exceeds the scope of
`Patent Owner’s Response or improperly introduces new evidence. This
`paper may not exceed 2 pages in length, may not contain argument, and is
`due no later than three business days from the entry of this Order; and
`FURTHER ORDERED that Petitioner may submit a list
`corresponding to Patent Owner’s submittal, identifying what Petitioner
`regards as the material contained in the Patent Owner’s Response that
`caused Petitioner to include in its Reply, or the Supplemental Expert
`Declaration of Lowell Malo, each item listed by Patent Owner and/or where
`each item listed by Patent Owner appears in the Petition. This paper may
`not exceed 2 pages in length, may not contain argument, and is due no later
`than three business days from the date of Patent Owner’s submittal; and
`FURTHER ORDERED that Patent Owner’s request for authorization
`to file a sur-reply is denied.
`
`
`
`5
`
`
`
`IPR2017-00117
`Patent 6,700,602 B1
`
`PETITIONER:
`
`Sheila Mortazavi
`Zaed M. Billah
`Armin Ghiam
`ANDREWS KURTH KENYON LLP
`SheilaMortazavi@andrewskurthkenyon.com
`ZaedBillah@andrewskurthkenyon.com
`arminghiam@andrewskurth.com
`
`
`PATENT OWNER:
`
`Jennifer Meredith
`Sucheta Chitgopekar
`MEREDITH & KEYHANI, PLLC
`jmeredith@meredithkeyhani.com
`
`
`6
`
`
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