`
` Paper 22
`Trials@uspto.gov
`571-272-7822 Entered: August 13, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`GOOGLE LLC,
`Petitioner
`
`v.
`
`BLACKBERRY LTD.,
`Patent Owner.
`____________
`
`Case IPR2017-01619
`Case IPR2017-01620
` (Patent 8,489,868 B2)1
`____________
`
`
`
`Before SALLY C. MEDLEY, ROBERT J. WEINSCHENK, and
`AARON W. MOORE, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5(a)
`
`
`
`1 This order addresses an issue that is identical in both cases. We exercise
`discretion to issue one order to be filed in both cases. The parties, however,
`are not authorized to use this style heading.
`
`
`
`IPR2017-01619; IPR2017-001620
`(Patent 8,489,868 B2)
`On August 1, 2018, Patent Owner requested a conference call to seek
`authorization to file motions to strike. A conference call was held on
`August 9, 2018, attended by counsel for the parties and Judges Medley,
`Weinschenk, and Moore. A court reporter was also present, and the parties
`agreed to file the transcript as an exhibit in both cases in due course.
`Patent Owner alleges that the following material from Petitioner’s
`Replies is improper because it is not responsive to Patent Owner’s argument
`that Petitioner failed to carry its burden to show the Gong reference was a
`printed publication: (1) pages 24–25 of Petitioner’s Reply in IPR2017-
`01619 (starting “Additional evidence . . .”), (2) pages 24–25 of Petitioner’s
`Reply in IPR2017-01620 (starting “Additional evidence . . .”), and (3)
`Exhibits 1038–45 in both proceedings. Petitioner disagrees, and observes
`that Patent Owner was aware of this material by virtue of it having been
`served in January of this year, in response to Patent Owner’s Objections to
`Evidence.
`Under the particular circumstances of these cases, we deny Patent
`Owner’s request for a motion to strike and, instead, exercising our discretion
`under 37 C.F.R. § 42.20(d), authorize Patent Owner to file a single, five
`page Sur-Reply in both cases. The Sur-Reply may only address (1) pages
`24–25 of Petitioner’s Reply in IPR2017-01619 (starting “Additional
`evidence . . .”), (2) pages 24–25 of Petitioner’s Reply in IPR2017-01620
`(starting “Additional evidence . . .”), and (3) Exhibits 1038–45 in both
`proceedings. The Sur-Reply may not present or argue new evidence or
`testimony, except as relates to deposition testimony of declarants Jodi L.
`Gregory and Dr. Li Gong.
`
`
`
`2
`
`
`
`IPR2017-01619; IPR2017-001620
`(Patent 8,489,868 B2)
`Accordingly, it is:
`ORDERED that Patent Owner is authorized to file a Sur-Reply in
`both cases, the two documents to be substantively identical, limited to
`addressing (1) pages 24–25 of Petitioner’s Reply in IPR2017-01619 (starting
`“Additional evidence . . .”), (2) pages 24–25 of Petitioner’s Reply in
`IPR2017-01620 (starting “Additional evidence . . .”), and (3) Exhibits 1038–
`45 in both proceedings;
`FURTHER ORDERED that the Sur-Reply may not exceed five pages;
`FURTHER ORDERED that no new evidence other than deposition
`testimony of Jodi L. Gregory and/or Dr. Li Gong shall be submitted with or
`addressed in the Sur-Reply;
`FURTHER ORDERED that the Sur-Reply shall be filed by
`August 24, 2018, or, in the event that Jodi L. Gregory and/or Dr. Li Gong
`are deposed, five business days after completion of the deposition(s); and
`FURTHER ORDERED that Petitioner is not authorized to file
`responsive submissions.
`
`
`
`
`
`
`3
`
`
`
`IPR2017-01619; IPR2017-001620
`(Patent 8,489,868 B2)
`FOR PETITIONER:
`
`Naveen Modi
`Joseph E. Palys
`Phillip Citroën
`John Holley
`PAUL HASTINGS LLP
`PH-Google-BBIPR@paulhastings.com
`
`FOR PATENT OWNER:
`
`Ching-Lee Fukuda
`Samuel A. Dillon
`SIDLEY AUSTIN LLP
`clfukuda@sidley.com
`samuel.dillon@sidley.com
`
`
`
`
`
`
`
`
`4
`
`
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