Paper No. 18___
`Trials@uspto.gov
` Filed: September 14, 2018
`571.272.7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-01993
`Patent 9,414,199 B2
`____________
`
`
`
`Before MIRIAM L. QUINN, KERRY BEGLEY, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`
`Trials@uspto.gov
` Filed: September 14, 2018
`571.272.7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-01993
`Patent 9,414,199 B2
`____________
`
`
`
`Before MIRIAM L. QUINN, KERRY BEGLEY, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`
`
`IPR2017-01993
`Patent 9,414,199 B2
`The Board received from the parties an email in which Patent Owner
`requested authorization to file: (1) a motion to strike portions of Petitioner’s
`Reply and (2) a sur-reply to respond to arguments raised in Petitioner’s
`Reply. In a responsive email, Petitioner indicated that it opposes Patent
`Owner’s requests.
`The Board recently issued guidance in the form of a “Trial Practice
`Guide Update,” dated August 2018 (“Practice Guide”). See 83 Fed. Reg.
`38,989 (Aug. 13, 2018) (notifying the public of the updated “Practice
`Guide” and its accessibility through the USPTO website:
`https://go.usa.gov/xU7GP). With regard to motions to strike, the Practice
`Guide provides the option to request authorization to file a motion “[i]f the
`party believes that a brief filed by the opposing party raises new issues, is
`accompanied by belatedly presented evidence, or otherwise exceeds the
`proper scope of reply or sur-reply.” Practice Guide 17. Concerning sur-
`replies the Practice Guide provides the option for patent owners to file a Sur-
`Reply to Petitioner’s Reply stating that the “sur-reply practice essentially
`replaced the previous practice of filing observations on cross-examination
`testimony.” Id. at 14. The Practice Guide states that the sur-reply is an
`alternative to a motion to strike. Id. at 17.
`The Practice Guide addresses the distinct applicability of these two
`alternatives:
`A motion to strike may be appropriate when a party
`believes the Board should disregard arguments or late-filed
`evidence in its entirety, whereas further briefing may be
`more appropriate when the party wishes to address the
`proper weight the Board should give to the arguments or
`evidence. In most cases, the Board is capable of
`identifying new issues or belatedly presented evidence
`when weighing the evidence at the close of trial, and
`
`
`
`2
`
`
`
`IPR2017-01993
`Patent 9,414,199 B2
`issues or belatedly presented
`disregarding any new
`evidence that exceeds the proper scope of reply or
`sur-reply.
`Id. Here, Patent Owner contends that Petitioner’s Reply relies on a new
`reference and argues an issue of prosecution disclaimer for the first time. To
`address these matters, Patent Owner seeks both a sur-reply and a motion to
`strike. We are not persuaded that granting both requests would be in the
`interest of justice.
`First, not every “new argument” is improper and suitable for a motion
`to strike. See Ericsson Inc., v. Intellectual Ventures I LLC, Case No. 2017-
`1521, slip op. at 13 (Fed. Cir. Aug. 27, 2018) (finding that an argument
`presented in the reply is not improper when it expands on the same argument
`made in the petition). Patent Owner has identified two exhibits (Exhibits
`1018 and 1019) and footnote 3 of the Reply as allegedly providing “new”
`arguments and evidence. Petitioner’s position, however, is that footnote 3
`and the exhibits rebut Patent Owner’s arguments regarding the claim scope
`of the term “predetermined maximum amount of time.” Indeed, upon
`review of the cited exhibits, we note that footnote 3 relates to the portion of
`the Reply that addresses the prosecution history arguments made by Patent
`Owner during an appeal to the Board and discusses the reference (Tseng,
`Exhibit 1018) that Patent Owner allegedly distinguished during the appeal.
`Reply 8−10. These are arguments and evidence on claim construction that
`address not only Patent Owner’s Response arguments, but also respond to
`our Decision on Institution. See Decision on Institution 8−9 (discussing
`Patent Owner’s proposed interpretation of “predetermined maximum amount
`of time”); PO Resp. 6−12 (arguing the scope of the claim term and positing
`that Petitioner should not provide a claim construction in the Reply); see
`
`
`
`3
`
`
`
`IPR2017-01993
`Patent 9,414,199 B2
`also Practice Guide 14 (“[T]he Board will permit the petitioner, in its reply
`brief, to address issues discussed in the institution decision.”). Accordingly,
`we find that, on the present record, neither footnote 3 of the Reply nor
`Exhibits 1018 and 1019 are improper new arguments and evidence. In light
`of this finding, and because striking portions of a party’s brief is an
`exceptional remedy (Practice Guide 18), Patent Owner’s request to file a
`motion to strike is denied.
`Second, a sur-reply is the proper vehicle to address the merits of the
`arguments raised in Petitioner’s Reply. Petitioner contends that Patent
`Owner has no need for a sur-reply because (a) Petitioner did not submit a
`Reply declaration and (b) Petitioner has not submitted any arguments or
`evidence in the Reply that exceed the scope of Patent Owner’s Response.
`We do not agree with Petitioner’s contention. The Practice Guide does not
`expressly limit the sur-reply to responding to declaration evidence filed with
`a petitioner’s reply. Nor is a sur-reply only available to respond to
`arguments that allegedly exceed the scope of a previous brief. The sur-reply
`is useful to respond to arguments raised in the preceding brief, to point to
`cross-examination testimony, and to crystalize issues for decision. Practice
`Guide 14−15.
`We find here that a sur-reply would be an appropriate vehicle to
`respond to the arguments regarding prosecution disclaimer and the Tseng
`reference as requested by Patent Owner. The sur-reply should not raise new
`issues. Nor, in the absence of any reply witness testimony, should the
`sur-reply present any new evidence. Id. at 14–15.
`
`
`
`4
`
`
`
`IPR2017-01993
`Patent 9,414,199 B2
`
`ORDER
`
`
`
`Accordingly, it is:
`ORDERED that Patent Owner is authorized to file a Sur-Reply to
`Petitioner’s Reply by DUE DATE 4 (date for motion for observation) in lieu
`of a motion for observation;
`FURTHER ORDERED that the Sur-Reply is limited to 10 pages;
`FURTHER ORDERED that the Scheduling Order (Paper 11) is
`hereby modified to remove from DUE DATE 5 the option for a “response to
`observation”; and
`FURTHER ORDERED that Patent Owner’s request for authorization
`to file a motion to strike is denied.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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`
`
`5
`
`
`
`IPR2017-01993
`Patent 9,414,199 B2
`
`For PETITIONER:
`
`Xin-Yi Zhou
`Sina S. Aria
`Laura A. Bayne
`Luann L. Simmons
`O’MELVENY & MYERS LLP
`APPLEUNILOCIPR@OMM.COM
`
`For PATENT OWNER:
`
`Brett Mangrum
`James Etheridge
`Jeffrey Huang
`Ryan Loveless
`ETHERIDGE LAW GROUP
`brett@etheridgelaw.com
`jim@etheridgelaw.com
`jeff@etheridgelaw.com
`ryan@etheridgelaw.com
`
`Sean D. Burdick
`UNILOC USA, INC.
`sean.burdick@unilocusa.com
`
`
`
`6
`
`
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