Trials@uspto.gov
`571-272-7822
`
`Paper 43
`Date: February 20, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`_______________
`
`Cases IPR2017-00210 and IPR2017-00219 (Patent 7,116,710 B1);
`Case IPR2017-00297 (Patent 7,916,781 B2);
`Cases IPR2017-00700, IPR2017-00701, and
`IPR2017-00728 (Patent 7,421,032 B2)1
`_______________
`
`Before KEN B. BARRETT, TREVOR M. JEFFERSON, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`1 This order addresses issues that are the same in the identified cases. We
`exercise our discretion to issue one order to be filed in each case. The
`parties are not authorized to use this style of heading.
`
`
`571-272-7822
`
`Paper 43
`Date: February 20, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`_______________
`
`Cases IPR2017-00210 and IPR2017-00219 (Patent 7,116,710 B1);
`Case IPR2017-00297 (Patent 7,916,781 B2);
`Cases IPR2017-00700, IPR2017-00701, and
`IPR2017-00728 (Patent 7,421,032 B2)1
`_______________
`
`Before KEN B. BARRETT, TREVOR M. JEFFERSON, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`1 This order addresses issues that are the same in the identified cases. We
`exercise our discretion to issue one order to be filed in each case. The
`parties are not authorized to use this style of heading.
`
`
`
`IPR2017-00210, IPR2017-00219 (Patent 7,116,710 B1)
`IPR2017-00297 (Patent 7,916,781 B2)
`IPR2017-00700, IPR2017-00701, and
`IPR2017-00728 (Patent 7,421,032 B2)
`
`
`
`On February 13, 2018, Patent Owner requested a conference call with
`
`respect to IPR2017-00210, IPR2017-00219, and IPR2017-00297 to request
`
`authorization to file a motion to strike certain purported new arguments
`
`raised in Petitioner’s Reply or, in the alternative, to request authorization to
`
`file a Sur-Reply. According to Patent Owner, Petitioner’s replies in
`
`IPR2017-00210, IPR2017-00219, and IPR2017-00297 included extensive
`
`new arguments and evidence, including testimony from a new declarant,
`
`Brendan Frey, Ph.D.,2 and experimental data and simulations.
`
`On February 15, 2018, a conference call with counsel for Petitioner,
`
`Apple, Inc., and counsel for Patent Owner, California Institute of
`
`Technology, was held with Judges Barrett, Jefferson, and Hudalla. During
`
`the call, Petitioner stated that it had not previously apprised Patent Owner of
`
`its intention to proffer Dr. Frey’s testimony before the filing of its Replies.
`
`Nevertheless, Petitioner maintained that all arguments and evidence in the
`
`Replies are responsive to Patent Owner’s Responses. Petitioner also stated
`
`that additional declarations from Dr. Frey would be submitted with its
`
`Replies in the following related cases: IPR2017-00700, IPR2017-00701,
`
`and IPR2017-00728.
`
`Generally, “[a] reply may only respond to arguments raised in the
`
`corresponding . . . patent owner response.” 37 C.F.R. § 42.23(b). In
`
`accordance with this regulation, we will determine whether Petitioner’s
`
`Reply, in each of the cases, contains evidence or argument that is outside the
`
`scope of Patent Owner’s Response. Specifically, when we review the entire
`
`
`2 Petitioner had previously relied on the testimony of James A. Davis, Ph.D.
`
`2
`
`
`
`IPR2017-00210, IPR2017-00219 (Patent 7,116,710 B1)
`IPR2017-00297 (Patent 7,916,781 B2)
`IPR2017-00700, IPR2017-00701, and
`IPR2017-00728 (Patent 7,421,032 B2)
`
`trial record and prepare the Final Written Decision, we will determine
`
`whether the scope of Petitioner’s Replies and accompanying evidence is
`
`proper. If there are improper arguments and evidence presented with
`
`Petitioner’s Replies, we will, for example, only consider Petitioner’s
`
`arguments and evidence that are properly rooted in the Petition. For these
`
`reasons, we are unpersuaded that a motion to strike is warranted, so we do
`
`not authorize Patent Owner to file a motion to strike.
`
`Nevertheless, under the particular circumstances of this case, we
`
`exercise our discretion under 37 C.F.R. § 42.20(d) and grant Patent Owner’s
`
`request for authorization to file a seven-page Sur-Reply in each of the instant
`
`cases. Our decision to authorize Sur-Replies is heavily influenced by the
`
`fact that Petitioner’s Replies are accompanied by and cite extensively to the
`
`testimony of a new declarant, Dr. Frey. See, e.g., Ex. 1065 (declaration in
`
`IPR2017-00210). Because Petitioner indicates that new declarations from
`
`Dr. Frey will be filed in each of the pending cases, we authorize Patent
`
`Owner to file a seven-page Sur-Reply in IPR2017-00210, IPR2017-00219,
`
`IPR2017-00297, IPR2017-00700, IPR2017-00701, and IPR2017-00728.
`
`During the call, we were not persuaded that Patent Owner required its own
`
`new evidence to address the alleged new arguments and evidence in
`
`Petitioner’s Replies. Consequently, in each of the cases, Patent Owner shall
`
`not introduce or file any new evidence or testimony with its Sur-Reply.
`
` The parties are instructed to meet and confer regarding a discovery
`
`and a Sur-Reply briefing schedule in each of the aforementioned cases. The
`
`parties are to provide a joint proposed schedule for each of the cases by
`
`3
`
`
`
`IPR2017-00210, IPR2017-00219 (Patent 7,116,710 B1)
`IPR2017-00297 (Patent 7,916,781 B2)
`IPR2017-00700, IPR2017-00701, and
`IPR2017-00728 (Patent 7,421,032 B2)
`
`email to Trials@uspto.gov and may propose moving DUE DATE 6, if
`
`necessary, as part of their proposed Sur-Reply briefing schedule.
`
`Accordingly, it is:
`
`ORDERED that Patent Owner’s request for authorization to file a
`
`motion to strike is denied;
`
`FURTHER ORDERED that Patent Owner’s alternative request for
`
`authorization to file a Sur-Reply in each of the cases is granted;
`
`FURTHER ORDERED that Patent Owner’s Sur-Reply in each of the
`
`cases is limited to seven pages;
`
`FURTHER ORDERED that Patent Owner and Petitioner shall
`
`propose a schedule for Patent Owner’s Sur-Reply briefing by
`
`February 23, 2018;
`
`FURTHER ORDERED that no new evidence or testimony of any
`
`kind shall be introduced or filed with Patent Owner’s Sur-Reply in each of
`
`the cases; and
`
`FURTHER ORDERED that Petitioner is not authorized to file a
`
`responsive submission.
`
`
`
`
`
`
`
`
`
`4
`
`
`
`IPR2017-00210, IPR2017-00219 (Patent 7,116,710 B1)
`IPR2017-00297 (Patent 7,916,781 B2)
`IPR2017-00700, IPR2017-00701, and
`IPR2017-00728 (Patent 7,421,032 B2)
`
`For PETITIONER:
`
`Richard Goldenberg
`Brian M. Seeve
`Dominic E. Massa
`WILMER CUTLER PICKERING HALE AND DORR LLP
`richard.goldenberg@wilmerhale.com
`brian.seeve@wilmerhale.com
`dominic.massa@wilmerhale.com
`
`For PATENT OWNER:
`
`Michael T. Rosato
`Matthew A. Argenti
`Richard Torczon
`WILSON SONSINI GOODRICH & ROSATI
`mrosato@wsgr.com
`margenti@wsgr.com
`rtorczon@wsgr.com
`
`Todd M. Briggs
`Kevin P.B. Johnson
`QUINN EMANUEL URQUHART & SULLIVAN LLP
`toddbriggs@quinnemanuel.com
`kevinjohnson@quinnemanuel.com
`
`
`
`
`
`
`5
`
`
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