Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 11
`Entered: June 12, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`ARRIS GROUP, INC., ARUBA NETWORKS, INC.,
`HEWLETT PACKARD ENTERPRISE COMPANY, and HP, INC.,
`Petitioner,
`
`JUNIPER NETWORKS, INC., BROCADE COMMUNICATIONS
`SYSTEMS, INC., and RUCKUS WIRELESS, INC.,
`Petitioner,
`v.
`
`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC,
`Patent Owner.
`
`
`Cases IPR2016-00768,1 IPR2017-00640 (Patent 5,659,891)
`IPR2017-00637 (Patent 5,915,210)
`IPR2017-00642 (Patent 5,590,403)
`
`
`
`Before MEREDITH C. PETRAVICK and SCOTT A. DANIELS,
`Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`ORDER2
`Filing of Documents and Evidence
`37 C.F.R. §§ 42.24, 42.6 and 42.63
`
`1 Case IPR2016-00766 has been joined with IPR2016-00768.
`2 This Order addresses the same or similar issue in the proceedings listed
`above. Therefore, we issue one Order to be filed in each proceeding. The
`parties, however, are not authorized to use this style of filing.
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 11
`Entered: June 12, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`ARRIS GROUP, INC., ARUBA NETWORKS, INC.,
`HEWLETT PACKARD ENTERPRISE COMPANY, and HP, INC.,
`Petitioner,
`
`JUNIPER NETWORKS, INC., BROCADE COMMUNICATIONS
`SYSTEMS, INC., and RUCKUS WIRELESS, INC.,
`Petitioner,
`v.
`
`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC,
`Patent Owner.
`
`
`Cases IPR2016-00768,1 IPR2017-00640 (Patent 5,659,891)
`IPR2017-00637 (Patent 5,915,210)
`IPR2017-00642 (Patent 5,590,403)
`
`
`
`Before MEREDITH C. PETRAVICK and SCOTT A. DANIELS,
`Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`ORDER2
`Filing of Documents and Evidence
`37 C.F.R. §§ 42.24, 42.6 and 42.63
`
`1 Case IPR2016-00766 has been joined with IPR2016-00768.
`2 This Order addresses the same or similar issue in the proceedings listed
`above. Therefore, we issue one Order to be filed in each proceeding. The
`parties, however, are not authorized to use this style of filing.
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-00766, IPR2017-00640 (Patent 5,659,891)
`IPR2017-00637 (Patent 5,915,210)
`IPR2017-00642 (Patent 5,590,403)
`
`
`
`A conference call was held on June 9, 2017 between counsel for the
`parties and Judges Petravick and Daniels. The purpose of the call was to
`discuss non-compliance of certain papers and evidence with the Board’s
`Rules.
`A court reporter was present to transcribe the conference call. The
`transcript should be filed in each of these proceedings as soon as it is
`available.
`
`
`Petitioner’s Reply in IPR2016-00768
`A petitioner’s reply in an inter partes review is limited to 5,600
`words. 37 C.F.R. § 42.24(c)(1). “Any paper whose length is specified by
`type-volume limits must include a certification stating the number of words
`in the paper. A party may rely on the word count of the word-processing
`system used to prepare the paper.” 37 C.F.R. § 42.24(d).
`In IPR2016-00768, the petitioner’s reply states “[a]ccording to the
`word-processing system’s word count, the brief contains 5590 words,
`excluding the parts of the brief exempted by 37 C.F.R. 42.24(c).” IPR2016-
`00768, Paper 36, 39 (“Pet. Reply”). It appears, however, that Petitioner
`failed to use normal spacing for numerous citations and, thus, reduced the
`word count. For example, Petitioner did not use conventional spacing in
`many of its citations, for example: “Pap.13” (Pet. Reply 1); “Inst.12” (id.);
`“Ex.1018¶¶9-10” (id. at 2); “POR6–7” (id. at 5); “47 C.F.R. §22.106” (id. at
`11) and “emph.orig.” (id. at 14). See The Blue Book, Twentieth Ed., Rules
`3.3, 5.1; Pi-Net Int’l, Inc. v. JPMorgan Chase & Co., 600 F. App’x 774, 775
`
`
`
`
`2
`
`
`
`IPR2016-00766, IPR2017-00640 (Patent 5,659,891)
`IPR2017-00637 (Patent 5,915,210)
`IPR2017-00642 (Patent 5,590,403)
`
`(Fed. Cir. 2015) (determining deletion of required spacing circumvents rule
`on word count). If normal spacing were used, the petitioner’s reply would
`exceed the 5,600 word limit. We note that, in contrast to the petitioner’s
`reply, Petitioner uses normal spacing for citations in other papers of record.
`For example, Petitioner uses “Paper 14 at 16” or “Paper 32–34” in other
`papers, as opposed to “Pap.13” in the petitioner’s reply. See IPR2016-
`00768, Paper 35, 2, Paper 39, 2, Pet. Reply 1.
`Petitioner must review the petitioner’s reply and correct each instance
`of abnormal spacing. A corrected petitioner’s reply should be filed no later
`than June 13, 2017. The corrected petitioner’s reply must include the word
`count certification required by 37 C.F.R. § 42.24(d) and must not exceed the
`5,600 word limit. Petitioner may only correct spacing and delete material.
`Blank space should replace the deleted material, in order for the pagination
`of the petitioner’s reply to remain the same. No other alterations or
`additions should be made.
`
`
`Patent Owner Response in IPR2016-00768
`A patent owner response in an inter partes review is limited to 14,000
`words. 37 C.F.R. §§ 42.24(a)(1)(i), (b)(2). In IPR2016-00768, the patent
`owner response does not include the certification required by Rule 42.24(d).
`During the conference call, Patent Owner indicated that the patent owner
`response exceeds the 14,000 word limit. The patent owner response does
`not comply with Rules 42.24 (b)(2) and (d).
`
`3
`
`
`
`IPR2016-00766, IPR2017-00640 (Patent 5,659,891)
`IPR2017-00637 (Patent 5,915,210)
`IPR2017-00642 (Patent 5,590,403)
`
`
`Patent Owner reproduces a number of passages of text from other
`documents as images in the patent owner response. IPR2016-00768, Paper
`28, 18, 34, 39, 41, 42, 43, 66–67. An example is reproduced below.
`
`
`
`Id. at 43 (reproducing text from Ex. 2013 at 187:17–22). The Board’s Rules
`are specific regarding font, typeface, and spacing of block quotations. In
`documents, created for the proceeding 14-point, Times New Roman
`proportional font, with normal spacing, must be used. 37 C.F.R. §
`42.6(a)(2)(ii). Block quotation may be 1.5 spaced, but must be indented
`from both the left and the right margin. 37 C.F.R. § 42.6(a)(2)(iii). The font
`within the images is not 14-point, Times New Roman proportional font, and
`the quotations are not 1.5 spaced. The patent owner response does not
`comply with Rules 42.6(a)(2)(ii) and (iii).
`Patent Owner must review the patent owner response and correct each
`instance of non-compliance. No later than June 13, 2017, Patent Owner
`must file a corrected patent owner response. The corrected patent owner
`response must include the word count certification required by 37 C.F.R. §
`42.24(d). The corrected patent owner response must not exceed the 14,000
`word limit, and the text of the images must be included in the word limit.
`Patent Owner may only correct the deficiencies discussed above and delete
`material. No other alterations or additions should be made.
`
`4
`
`
`
`IPR2016-00766, IPR2017-00640 (Patent 5,659,891)
`IPR2017-00637 (Patent 5,915,210)
`IPR2017-00642 (Patent 5,590,403)
`
`
`A redline version of the patent owner response, indicating the
`corrections, must accompany the corrected patent owner response and
`should be filed as an exhibit.
`A paper indicating the following also must accompany the corrected
`patent owner response. The petitioner’s reply includes citations to the patent
`owner response, and the corrections to the patent owner response likely
`change its pagination. Along with the corrected patent owner response,
`Patent Owner must filed a paper, listing: each citation to the patent owner
`response in the petitioner’s reply; where the citation occurs in the
`petitioner’s reply, by page and line number; and the corresponding page and
`line number of the corrected patent owner response. The paper should be
`filed as an exhibit.
`
`
`Patent Owner’s Preliminary response
`in IPR2017-00637, IPR2017-00640, and IPR2017-00642
`
`
`
`
`Patent Owner filed a Preliminary response in each of IPR2017-00637,
`IPR2017-00640, and IPR2017-00642. The Preliminary responses do not
`comply with the Board’s Rules.
`First, the Preliminary responses reproduce numerous and lengthy
`passages of text from other documents as images. These images appear on
`pages 12, 34, and 49 of the Preliminary response in IPR2017-00637; pages
`12, 15, 16, 23, 24, 28, 29, 34, 44, 47, 48, and 53–55 of the Preliminary
`response in IPR2017-00640; and pages 42–44, 47, and 55 of the Preliminary
`response of IPR2017-00642. An example is reproduced below.
`
`5
`
`
`
`IPR2016-00766, IPR2017-00640 (Patent 5,659,891)
`IPR2017-00637 (Patent 5,915,210)
`IPR2017-00642 (Patent 5,590,403)
`
`
`
`
`IPR2017-00637, Paper 19, 34 (reproducing text from Ex. 1004, 9).
`As stated above, our Rules are specific regarding font, typeface, and
`spacing of block quotations. The font within the images is not 14-point,
`Times New Roman proportional font, and the quotations are not 1.5 spaced.
`37 C.F.R. §§ 42.6(a)(2)(ii), (iii). The Preliminary responses do not comply
`with Rules 42.6(a)(2)(ii) and (iii).
`Second, like a patent owner response, a preliminary response in an
`inter partes review is limited to 14,000 words. 37 C.F.R. §§ 42.24(a)(1)(i),
`(b)(1). In each preliminary response, Petitioner include a certification
`stating the number of words in the paper was less than the 14,000 word
`limit. E.g., IPR2017-00637, Paper 19, 55. Whether the words in the images
`were counted as part of the word limit is not apparent. During the conference
`call, Patent Owner indicated that the words may not have been counted. The
`preliminary responses may not comply with Rules 42.24(b)(1).
`
`6
`
`
`
`IPR2016-00766, IPR2017-00640 (Patent 5,659,891)
`IPR2017-00637 (Patent 5,915,210)
`IPR2017-00642 (Patent 5,590,403)
`
`
`Third, the preliminary responses appear to include citations to
`evidence that was not filed as exhibits in the records of the proceedings. For
`example, in IPR2017-00637, the Preliminary response contains the
`following citation to a website located at
`http://www.merriamwebster.com/dictionary/simulcast. IPR2017-00637,
`Paper 19, 13. A copy of the website, however, was not filed as an exhibit.
`Pursuant to 37 C.F.R. §§ 42.63(a) and 42.6(c), “[a]ll evidence must be filed
`in the form of an exhibit” and “[e]ach exhibit must be filed with the first
`document in which it is cited.” The preliminary responses are deficient
`because they cite to evidence not filed in the form of an exhibit. Evidence
`should be cited by exhibit number.
`In each of IPR2017-00637, IPR2017-00640, and IPR2017-00642,
`Patent Owner must review each preliminary response and correct each
`instance of the deficiencies above. No later than June 16, 2017, Patent
`Owner must file corrected preliminary responses and redline versions of the
`preliminary responses, indicating the corrections. The redline versions of
`the preliminary responses should be filed as an exhibit. The corrected
`preliminary responses must include the word count certification required by
`37 C.F.R. § 42.24(d). The corrected preliminary responses must not exceed
`the 14,000 word limit.
`
`Patent Owner must only correct the deficiencies above or remove
`material to comply with the 14,000 word limit. No other alterations or
`additions should be made.
`
`7
`
`
`
`IPR2016-00766, IPR2017-00640 (Patent 5,659,891)
`IPR2017-00637 (Patent 5,915,210)
`IPR2017-00642 (Patent 5,590,403)
`
`
`Future Filings
`
`The parties are cautioned that all future filings must comply with the
`Board’s Rules and use normal and ordinary spacing in phrases and citations.
`The parties should give strict attention to the Rules related to word limits,
`especially as they require an attorney certification. Failure to comply with
`the Board’s Rules may result in sanctions. 37 C.F.R. §§ 42.11, 42.12. See
`Axon Enterprise, Inc. v. Digital Ally, Inc., Case No. IPR2017-00375, slip op.
`at 2, n. 2 (PTAB, June 6, 2017) (Paper 9) (cautioning petitioner that the
`failure to use normal citations in order to reduce the word count may result
`in sanctions); Google Inc., v. Ji-Soo Lee, IPR2016-00022, Paper 25 (PTAB,
`Nov. 23, 2016) (pursuant to 37 C.F.R. § 42.12(b)(2), expunging petitioner’s
`reply for improperly attempting to circumvent word count limits by inserting
`block quotations as images).
`
`It is so ORDERED.
`
`
`
`
`
`
`8
`
`
`
`
`
`
`
`IPR2016-00766, IPR2017-00640 (Patent 5,659,891)
`IPR2017-00637 (Patent 5,915,210)
`IPR2017-00642 (Patent 5,590,403)
`
`PETITIONER:
`Gabrielle E. Higgins
`Kathryn N. Hong
`ROPES & GRAY LLP
`gabrielle.higgins@ropesgray.com
`kathryn.hong@ropesgray.com
`
`Nima Hefazi
`Rebecca Carson
`Jonathan Kagan
`IRELL & MANELLA, LLP
`nhefazi@irell.com
`rcarson@irell.com
`jkagan@irell.com
`
`Ronald Wielkopolski
`Don F. Livornese
`Korula T. Cherian
`RUYAK CHERIAN LLP
`ronw@ruyakcherian.com
`donl@ruyakcherian.com
`sunnyc@ruyakcherian.com
`
`Patrick D. McPherson
`Joseph A. Powers
`Patrick Muldoon
`DUANE MORRIS LLP
`PDMcPherson@duanemorris.com
`JAPowers@duanemorris.com
`PCMuldoon@duanemorris.com
`
`PATENT OWNER:
`John R. Kasha
`Kelly L. Kasha
`KASHA LAW LLC
`john.kasha@kashalaw.com
`kelly.kasha@kashalaw.com
`
`9
`
`
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