`571.272.7822
`
`Paper No. 8
`Entered: December 15, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`UNIFIED PATENTS, INC.,
`Petitioner,
`
`v.
`
`VELOCITY PATENTS LLC,
`Patent Owner.
`_______________
`
`Case IPR2017-01723
`Patent 5,954,781
`_______________
`
`Before JAMESON LEE, RAMA G. ELLURU, and
`CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
`
`KENNEDY, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5(a) and 37 C.F.R. § 42.108(c)
`
`
`
`
`
`IPR2017-01723
`Patent 5,954,781
`
`
`On July 26, 2017, Petitioner Unified Patents filed a Petition
`challenging claims 1, 7, 13, 17, and 60 of U.S. Patent No. 5,954,781.
`Paper 2. On November 8, 2017, Patent Owner Velocity Patents LLC filed a
`Preliminary Response. Paper 7. On December 6, 2017, Petitioner emailed
`the Board to request permission to file a 5-page reply to the Preliminary
`Response. According to Petitioner, the reply would address statements in
`the Preliminary Response alleging that Petitioner had implicitly invoked 35
`U.S.C. § 112, ¶ 6, and failed to comply with 37 C.F.R. § 42.104(b)(3), in
`Petitioner’s discussion of the term “processor subsystem,” which appears in
`each of the claims challenged in the Petition. In the email requesting a
`reply, Petitioner stated that the Petition does not argue that § 112, ¶ 6
`applies; that Patent Owner does not argue that § 112, ¶ 6 applies; and that
`decisions from both the Federal Circuit (e.g., Williamson v. Citrix Online,
`LLC, 792 F.3d 1339 (Fed. Cir. 2015)) and the Board (a family of cases titled
`HTC America, Inc. v. Virginia Innovation Sciences, Inc., IPR2017-00870
`through -00879) confirm that § 112, ¶ 6 does not apply.
`The same day that Petitioner submitted its email, Patent Owner
`submitted a responsive email and requested a 5-page sur-reply if Petitioner’s
`request to file a reply brief is granted. Patent Owner reiterated the position
`in the Preliminary Response that the Petition implicitly invoked § 112, ¶ 6
`with respect to the term “processor subsystem” and failed to comply with 37
`C.F.R. § 42.104(b)(3).
`On December 13, 2017, a conference call was held with Judges Lee,
`Elluru, and Kennedy, and respective counsel for the parties. Petitioner
`maintained that § 112, ¶ 6 does not apply to the term “processor subsystem,”
`and Patent Owner maintained that the Petition implicitly invokes § 112, ¶ 6.
`
`2
`
`
`
`IPR2017-01723
`Patent 5,954,781
`
`Patent Owner also stated that Patent Owner does not believe that § 112, ¶ 6
`applies to the term “processor subsystem.”
`The rules applicable to inter partes review do not, as of right, provide
`an opportunity for a petitioner to file a reply to a preliminary response. See
`37 C.F.R. § 42.108(c). However, a petitioner “may seek leave to file a
`reply,” and “[a]ny such request must make a showing of good cause.” Id.
`Upon consideration of the positions of the parties, we determine that
`Petitioner has not established good cause for further briefing. The parties
`agree that the term “processor subsystem” does not invoke § 112, ¶ 6. The
`Board is familiar with the Federal Circuit and Board decisions referenced by
`Petitioner. The Board can resolve the issues, including the issue of whether
`the Petition implicitly invoked § 112, ¶ 6, without additional briefing.
`For the reasons set forth above, it is:
`ORDERED that Petitioner’s request for permission to file a reply brief
`
`is denied.
`
`
`3
`
`
`
`IPR2017-01723
`Patent 5,954,781
`
`PETITIONER:
`
`C. Eric Schulman
`W. Karl Renner
`David Holt
`FISH & RICHARDSON P.C.
`ces@fr.com
`axf-ptab@fr.com
`holt2@fr.com
`
`Jonathan Stroud
`Ashraf Fawzy
`UNIFIED PATENTS, INC.
`jonathan@unifiedpatents.com
`afawzy@unifiedpatents.com
`
`PATENT OWNER:
`
`Howard Levin
`Thomas King
`HAYNES AND BOONE, LLP
`howard.levin@haynesboone.com
`thomas.king@haynesboone.com
`
`
`
`4
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
