Trials@uspto.gov
`571-272-7822
`
`Paper 33
`Entered: March 8, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FLIR SYSTEMS, INC. and
`FLIR MARITIME US, INC. (F/K/A RAYMARINE, INC.),
`Petitioner,
`
`v.
`
`GARMIN SWITZERLAND GmbH,
`Patent Owner.
`____________
`
`Case IPR2017-00946
`Patent 7,268,703 B1
`____________
`
`Before JUSTIN T. ARBES, THOMAS L. GIANNETTI, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`HOWARD, Administrative Patent Judge.
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`571-272-7822
`
`Paper 33
`Entered: March 8, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FLIR SYSTEMS, INC. and
`FLIR MARITIME US, INC. (F/K/A RAYMARINE, INC.),
`Petitioner,
`
`v.
`
`GARMIN SWITZERLAND GmbH,
`Patent Owner.
`____________
`
`Case IPR2017-00946
`Patent 7,268,703 B1
`____________
`
`Before JUSTIN T. ARBES, THOMAS L. GIANNETTI, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`HOWARD, Administrative Patent Judge.
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`IPR2017-00946
`Patent 7,268,703 B1
`
`
`BACKGROUND
`A conference call was held on March 6, 2018, among counsel for the
`parties and Judges Arbes, Giannetti, and Howard. Patent Owner requested
`the conference on February 28, 2018 to request authorization to file a motion
`to strike a portion (Section III, pages 16–20) of Petitioner’s Reply (Paper
`22). During the conference, Patent Owner requested, in the alternative,
`authorization to file a sur-reply. Petitioner opposed Patent Owner’s
`requests.
`According to Patent Owner, Petitioner’s Reply included an argument
`and evidence as to why de Jong (Ex. 1005) allegedly discloses re-routing a
`course. Patent Owner contends this argument was improper because it was
`presented for the first time in a reply. More specifically, Patent Owner
`argues that although Petitioner relied on de Jong as an anticipatory reference
`in the Petition, the Reply relies on a different portion of de Jong—describing
`test cases 1_1 and 1_4—along with new testimonial evidence on de Jong
`from Petitioner’s declarant. According to Patent Owner, Federal Circuit
`precedent prohibits such new arguments, citing Wasica Finance GmbH v.
`Continental Automative, Systems, Inc., 853 F.3d 1272, 1287 (Fed. Cir. 2017)
`(“Shifting arguments in this fashion is foreclosed by statute, our precedent,
`and Board guidelines.”). Alternatively, Patent Owner seeks authorization to
`file a sur-reply to address the allegedly new evidence and argument.
`Petitioner responds that it pointed to test cases 1_1 and 1_4 in the
`Petition. See Paper 1, 23. Additionally, Petitioner contends that it always
`relied on the test cases to demonstrate that de Jong discloses the re-routing
`limitation. Petitioner cites Idemitsu Kosan Co. v. SFC Co., 870 F.3d 1376,
`1381 (Fed. Cir. 2017), and asserts that the argument was appropriate because
`
`
`
`2
`
`
`
`IPR2017-00946
`Patent 7,268,703 B1
`
`of an unexpected claim construction argument made by Patent Owner in its
`Response. Petitioner also argues Patent Owner has delayed in presenting its
`request, waiting nearly a month after the filing of the Reply, when the
`hearing is in approximately one month, before raising the issue. At the
`conclusion of the conference call, we denied Patent Owner’s requests. Our
`reasons are explained below.
`
`DISCUSSION
`
`1. Motion to Strike
`A motion to strike is not, ordinarily, a proper mechanism for raising
`the issue of whether a reply or reply evidence is beyond the proper scope
`permitted under the rules. In the absence of special circumstances, we will
`determine whether a reply and supporting evidence contain material
`exceeding the proper scope when we review all of the pertinent papers and
`prepare the final written decision. We are not persuaded that the propriety
`of Petitioner’s arguments and evidence should be resolved prior to the final
`written decision and/or via formal briefing of a motion to strike, opposition,
`and reply, especially given the timing of the request. Accordingly, Patent
`Owner’s request for authorization to file a motion to strike Section III of
`Petitioner’s Reply is denied. The parties may address the issue further
`during oral argument.
`2. Sur-Reply
`
`A sur-reply is not ordinarily authorized, absent special circumstances.
`During the conference, Patent Owner stated an argument by Petitioner
`similar to that to which it objects was presented in Petitioner’s Opposition to
`the Motion to Amend (Paper 23). Patent Owner has addressed the argument
`with respect to the proposed substitute claims in Patent Owner’s Reply to
`
`
`
`3
`
`
`
`IPR2017-00946
`Patent 7,268,703 B1
`
`Petitioner’s Opposition to the Motion to Amend (Paper 28). Thus, the
`record already includes Patent Owner’s response to the argument to which it
`objects.
`Additionally, as we stated during the conference call, Patent Owner
`may address this argument during the oral hearing scheduled for April 11,
`2018. Because we will decide whether Petitioner has proven the
`unpatentability of the claims on the entire record, we will have before us the
`arguments presented in Patent Owner’s Reply and during the hearing. Thus,
`we conclude that Patent Owner will have sufficient opportunity to set forth
`why Patent Owner contends the portions of de Jong relied upon by Petitioner
`do not disclose re-routing a course as recited in the claims. Accordingly,
`Patent Owner’s request for authorization to file a sur-reply in response to
`Petitioner’s argument in Petitioner’s Reply is denied.
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Patent Owner’s request for authorization to file a
`motion to strike Section III of Petitioner’s Reply, or, in the alternative, to file
`a sur-reply in response to Petitioner’s argument in that section is denied.
`
`
`
`
`4
`
`
`
`IPR2017-00946
`Patent 7,268,703 B1
`
`PETITIONER:
`
`Brian Ferguson
`Brian.ferguson@weil.com
`
`Anish Desai
`Anish.desai@weil.com
`
`Christopher Pepe
`Christopher.pepe@weil.com
`
`PATENT OWNER:
`
`Jennifer Bailey
`Jennifer.bailey@eriseip.com
`
`Adam Seitz
`Adam.seitz@eriseip.com
`
`
`
`
`
`5
`
`
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