From:
`To:
`Cc:
`Subject:
`Date:
`
`Trials
`Trials; Walter D. Davis
`Doshi, Dipu; Wood, Megan; Wayne M. Helge; Aldo Noto; TomTom Blackbird
`RE: IPR2017-02023: Request for sur-reply
`Tuesday, October 16, 2018 5:01:41 PM
`
`Counsel,
`
` I
`
`
`
`Generally, a reply or sur-reply may only respond to arguments raised in the preceding brief. 37
`C.F.R. § 42.23, except as noted above. To the extent that a reply or sur-reply “responds” to the
`institution decision as discussed above, “respond,” in the context of § 42.23(b), does not mean
`embark in a new direction with a new approach as compared to positions taken in a prior filing.
`
`
`(Trial Practice Guide Update (August 2018) 14–15).
`
`
`
`Regards,
`
`Andrew Kellogg,
`Supervisory Paralegal
`Patent Trial and Appeal Board
`USPTO
`andrew.kellogg@uspto.gov
`Direct: 571-272-5366
`
`
`From: Trials
`Sent: Tuesday, October 16, 2018 3:02 PM
`To: Walter D. Davis <wdavis@davidsonberquist.com>; Trials <Trials@USPTO.GOV>
`Cc: Doshi, Dipu <DDoshi@blankrome.com>; Wood, Megan <MWood@blankrome.com>; Wayne M.
`Helge <whelge@davidsonberquist.com>; Aldo Noto <anoto@davidsonberquist.com>; TomTom
`Blackbird <TomTom.Blackbird@BlankRome.com>
`Subject: RE: IPR2017-02023: Request for sur-reply
`
`Counsel,
`
`The sur-reply may not be accompanied by new evidence other than deposition transcripts of the cross-
`examination of any reply witness. Sur-replies should only respond to arguments made in reply briefs,
`comment on reply declaration testimony, or point to cross-examination testimony. As noted above, a sur-
`reply may address the institution decision if necessary to respond to the petitioner’s reply.
`
`
`Patent Owner is authorized to file a sur-reply in IPR2017-02023 in accordance with the PTAB Trial
`Practice Guide Update (August 2018). This sur-reply is limited to 10 pages and must be filed by October
`25th. Patent Owner’s attention is directed to the PTAB Trial Practice Guide Update (August 2018) and
`particularly the portion that discusses the content of sur-replies including:
`
`
` apologize, this e-mail was cut off, a apologize for any confusion. The full message is:
`
`The sur-reply may not be accompanied by new evidence other than deposition transcripts of the
`cross-examination of any reply witness. Sur-replies should only respond to arguments made in
`reply briefs, comment on reply declaration testimony, or point to cross-examination testimony.
`As noted above, a sur-reply may address the institution decision if necessary to respond to the
`petitioner’s reply.
`
`

`

`
`Generally, a reply or sur-reply may only respond to arguments raised in the preceding brief. 37 C.F.R. §
`42.23, except as noted above. To the extent that a reply or sur-reply “responds” to the institution decision
`as discussed above, “respond,” in the context of § 42.23(b), does not mean embark in a new direction with
`a new approach as compared to positions taken in a prior filing.
`
`Regards,
`
`Andrew Kellogg,
`Supervisory Paralegal
`Patent Trial and Appeal Board
`USPTO
`andrew.kellogg@uspto.gov
`Direct: 571-272-5366
`
`
`
`From: Walter D. Davis <wdavis@davidsonberquist.com>
`Sent: Thursday, October 11, 2018 4:05 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Doshi, Dipu <DDoshi@blankrome.com>; Wood, Megan <MWood@blankrome.com>; Wayne M.
`Helge <whelge@davidsonberquist.com>; Aldo Noto <anoto@davidsonberquist.com>; TomTom
`Blackbird <TomTom.Blackbird@BlankRome.com>
`Subject: IPR2017-02023: Request for sur-reply
`
`To the Board,
`
`Patent Owner received Petitioner’s reply in the subject case on October 5, 2018, and no motion to
`amend has been filed. Due Date 4 currently is set for October 26, 2018.
`
`Patent Owner respectfully seeks guidance on whether the Board will allow Patent Owner to file a
`sur-reply in the subject case on Due Date 4, to respond to arguments made in Petitioner’s reply, in
`accordance with the 2018 Revised Trial Practice Guide.
`
`Patent Owner requests that a sur-reply be permitted consistent with page 14 of the 2018 Revised
`Trial Practice Guide:
`
`Sur-replies to principal briefs (i.e., to a reply to a patent owner response or to a reply to an
`opposition to a motion to amend) normally will be authorized by the scheduling order entered at
`institution. The sur-reply may not be accompanied by new evidence other than deposition
`transcripts of the cross-examination of any reply witness. Sur-replies should only respond to
`arguments made in reply briefs, comment on reply declaration testimony, or point to
`crossexamination testimony. As noted above, a sur-reply may address the institution decision if
`necessary to respond to the petitioner’s reply. This sur-reply practice essentially replaces the
`previous practice of filing observations on cross-examination testimony.
`
`Prior to sending this email, Patent Owner contacted Petitioner, who stated its position as follows:
`
`
`

`

`Petitioner opposes Patent Owner’s request because it has not articulated any appropriate reason for
`authorizing a sur-reply. Petitioner’s reply does not include any new evidence or expert testimony
`through a second declaration that could warrant a sur-reply. To the extent that the Board
`authorizes Patent Owner’s request, Petitioner believes it should be limited in length (for example, no
`more than 3000 words).
`
`Respectfully,
`
`Walter Davis
`Counsel for Patent Owner
`
`Walter D. Davis, Jr.
`Partner
`Davidson, Berquist, Jackson & Gowdey, L.L.P.
`8300 Greensboro Drive
`Suite 500
`McLean, VA 22102
`Office: 571-765-7709
`Mobile: 202-285-5230
`Email: wdavis@davidsonberquist.com
`http://www.davidsonberquist.com
`
`
`