`571-272-7822
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`Paper: 18
`Entered: May 25, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UBISOFT, INC. and SQUARE ENIX, INC.,
`Petitioner,
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-01291
`Patent 6,728,766 B1
`____________
`
`
`Before SALLY C. MEDLEY, MIRIAM L. QUINN, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`IPR2017-01291
`Patent 6,728,766 B1
`
`
`
`On November 1, 2017, the Board instituted an inter partes review in
`this proceeding as to some but not all of the challenged claims. Paper 9
`(“Inst. Dec.”), 2. On November 15, 2017, Petitioner requested rehearing as
`to the claims for which review was not instituted (Paper 11), and we denied
`Petitioner’s rehearing request (Paper 12). Patent Owner then filed its Patent
`Owner Response on December 4, 2017 (Paper 13), and Petitioner filed its
`Reply on February 2, 2018 (Paper 15). An oral hearing (if requested) has
`been scheduled in this proceeding for August 7, 2018. Paper 10, 7.
`On May 7, 2018, we issued an order to include the previously non-
`instituted claims in this proceeding consistent with SAS Institute, Inc. v.
`Iancu, 138 S. Ct. 1348, 1355 (2018). Paper 16, 2. In response to our order
`that “Petitioner and Patent Owner shall confer to determine whether they
`desire any changes to the schedule or any further briefing, and, if so, shall
`request a conference call with the panel to seek authorization for such
`changes or briefing” (id.), Petitioner requested a conference call with the
`Board.
`On May 24, 2018, we held a conference call with counsel for both
`parties to discuss any requested briefing to address the newly-added claims
`(i.e., claims 7, 9, 13, and 15). Neither party requested any changes to the
`due dates in the Scheduling Order (Paper 10). During the call, Petitioner
`requested authorization to file a fifteen-page supplemental brief to address
`the newly-added claims (with a proposed schedule to allow for responsive
`briefing by Patent Owner and a sur-reply by Petitioner), but Patent Owner
`unequivocally stated that it waived any further briefing on the newly-added
`
`2
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`IPR2017-01291
`Patent 6,728,766 B1
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`claims.1 Petitioner requested three weeks in which to file the supplemental
`brief.
`Upon consideration of Petitioner’s request and Patent Owner’s waiver
`of further briefing, out of an abundance of fairness and as detailed below, we
`authorize Petitioner to file an Institution Response Brief. We note that such
`a brief is not specifically authorized by our rules. See 37 C.F.R. § 42.23.
`We further note that Petitioner retains the burden to prove unpatentability of
`the previously non-instituted claims by a preponderance of the evidence, and
`that burden is unchanged by Patent Owner’s waiver of supplemental briefing
`on the newly-added claims. See 35 U.S.C. § 316(e).
`Petitioner is authorized, but not required, to file no later than June 4,
`2018, an Institution Response Brief of no more than ten pages to address the
`Board’s discussion in the institution decision of the newly-added claims.
`Petitioner’s Institution Response Brief is for identifying matters that
`Petitioner believes the Board misapprehended or overlooked, or otherwise
`erred in its institution decision discussing the newly-added claims. Thus,
`the scope of Petitioner’s Institution Response Brief is somewhat similar in
`scope to a request for rehearing of an institution decision, but broader in that
`the brief is not limited strictly to matters that Petitioner believes the Board
`misapprehended or overlooked. See 37 C.F.R. § 42.71(d).
`Petitioner is not permitted to introduce new arguments or evidence in
`its Institution Response Brief. Petitioner must identify with particularity the
`
`
`1 Patent Owner stated that it may wish to object to Petitioner’s brief or move
`to strike that brief or portions thereof. At this time, we do not grant
`prospective authorization for such a filing.
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`3
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`IPR2017-01291
`Patent 6,728,766 B1
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`place where each matter (i.e., argument or evidence) raised in its Institution
`Response Brief was previously addressed in its Petition (Paper 1). This
`Institution Response Brief is not an opportunity for Petitioner to add
`additional arguments, evidence, or otherwise try to improve its Petition.
`Petitioner should be mindful that Board rules prohibit incorporating by
`reference arguments from one document into another document. 37 C.F.R.
`§ 42.6(a)(3); see Cisco Sys., Inc. v. C-Cation Techs., LLC, Case IPR2014-
`00454, slip op. at 7–10 (PTAB August 29, 2014) (Paper 12) (Informative)
`(not considering arguments in declaration that were not made in the Petition
`but only incorporated by reference).
`Petitioner’s Institution Response Brief is not a request for rehearing of
`our institution decision; therefore, we will not decide the issues raised in the
`brief before the conclusion of the trial. We will take the Petitioner’s
`Institution Response Brief into consideration as part of the totality of the
`record we consider in our Final Written Decision.
`
`IT IS SO ORDERED.
`
`
`
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`4
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`IPR2017-01291
`Patent 6,728,766 B1
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`PETITIONER:
`
`Eric Buresh
`Mark Lang
`Kathleen Fitterling
`ERISE IP
`eric.buresh@eriseip.com
`mark.lang@eriseip.com
`kathleen.fitterling@eriseip.com
`
`
`PATENT OWNER:
`
`Brett Mangrum
`Ryan Loveless
`ETHERIDGE LAW GROUP
`brett@etheridgelaw.com
`ryan@etheridgelaw.com
`
`Sean Burdick
`UNILOC USA, INC.
`sean.burdick@unilocusa.com
`
`5
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`