`Tel: 571-272-7822
`
`
`Paper 45
`Entered: May 26, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE INC.,
`Petitioner,
`v.
`ANDREA ELECTRONICS CORP.,
`Patent Owner.
`_______________
`
`Case IPR2017-00626
`Patent 6,363,345 B1
`
`_______________
`
`
`Before MICHAEL R. ZECHER, JEREMY M. PLENZLER, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`
`PLENZLER, Administrative Patent Judge.
`
`
`
`
`
`
`
`ORDER
`Conduct of the Proceeding—Supplemental Remand Briefing
`37 C.F.R. § 42.5(a)
`
`
`
`
`
`IPR2017-00626
`Patent 6,363,345 B1
`
`
`On May 21, 2020, the panel held a conference call with counsel for
`Apple, Inc. (“Petitioner”) and Andrea Electronics Corp. (“Patent Owner”) to
`discuss Patent Owner’s request for authorization to file a motion to strike or,
`alternatively, its request for supplemental briefing. A court reporter
`transcribed the call and a copy of the transcript will be included in the record
`when available.
`As indicated in an email correspondence to the Board, and discussed
`during the call, Patent Owner requested authorization to file a motion to
`strike certain portions of Petitioner’s Responsive Remand Brief (Paper 44)
`directed to claim 9, asserting that page 5 of Petitioner’s Responsive Remand
`Brief raised a new issue regarding the unpatentability of claim 9. As an
`alternative to striking the portion of Petitioner’s Responsive Remand Brief
`noted above, Patent Owner proposed briefing responsive to the alleged new
`issue. The issue presented is whether the teachings of Martin relied on by
`Petitioner, in its Petition (Paper 1), meet the “periodically” limitation of
`claim 9.1
`During the call, the parties agreed to brief the issue raised by Patent
`Owner, obviating Patent Owner’s request for authorization to file a motion
`to strike. As discussed during the call, each party is authorized to file a three
`page brief addressing the original arguments presented in the Petition
`regarding claim 9 with no new evidence presented. Petitioner will file its
`brief first, due June 2, 2020. Patent Owner will respond to that brief no later
`than June 9, 2020.
`
`
`1 Petitioner’s Reply (Paper 18) did not address claim 9.
`
`
`
`2
`
`
`
`IPR2017-00626
`Patent 6,363,345 B1
`
`
`As explained during the call, in its brief, Petitioner should focus on
`how the portions of Martin discussed in the Petition meet the “periodically”
`limitation of claim 9. Petitioner’s argument should be directed to the
`teachings from Martin relied upon in the Petition and should not introduce
`any new theory of unpatentability based on other disclosures from Martin.
`Petitioner’s brief should focus on the merits of the challenge, and should
`make clear how the explanation provided in the brief is further explanation
`of the original challenge to claim 9 and not a new argument. If relying on
`portions of the Petition not specially directed to claim 9, Petitioner should
`explain clearly why those portions of the Petition are relevant to its original
`challenge to claim 9.
`Patent Owner’s brief should focus on whether the teachings from
`Martin relied on by Petitioner meet the “periodically” limitation of claim 9,
`and may also address why any portion of Petitioner’s supplemental briefing
`is a change in its theory of unpatentability.
`
`ORDER
`Petitioner is authorized to file a three page supplemental brief, limited
`to the issues outlined above, by June 2, 2020; and
`Patent Owner is authorized to file a three page supplemental brief,
`limited to the issues outlined above and responsive to Petitioner’s
`supplemental brief, by June 9, 2020.
`
`
`
`
`
`
`
`
`
`
`
`3
`
`
`
`IPR2017-00626
`Patent 6,363,345 B1
`
`
`PETITIONER:
`
`Jeffrey P. Kushan
`jkushan@sidley.com
`
`Steven S. Baik
`sbaik@sidley.com
`
`Thomas A. Broughan III
`tbroughan@sidley.com
`
`
`
`PATENT OWNER:
`
`William D. Belanger
`belangerw@pepperlaw.com
`
`Andrew Schultz
`schultza@pepperlaw.com
`
`Griffin Mesmer
`mesmerg@pepperlaw.com
`
`Frank D. Liu
`liuf@pepperlaw.com
`
`Andrew Zappia
`liuf@pepperlaw.com
`
`
`
`
`4
`
`
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