`571-272-7822
`
`
`Paper 51
`Entered: November 6, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`VILOX TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`Case IPR2018-00044
`Patent 7,302,423 B2
`____________
`
`
`Before SALLY C. MEDLEY, ROBERT J. WEINSCHENK, and
`JOHN D. HAMANN, Administrative Patent Judges.
`
`HAMANN, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5(a)
`
`
`
`
`
`
`IPR2018-00044
`Patent 7,302,423 B2
`
`I.
`
`DISCUSSION
`
`
`
`On November 2, 2018, a conference call was conducted among
`
`respective counsel for Unified Patents Inc. (“Petitioner”) and Vilox
`
`Technologies, LLC (“Patent Owner”), and Judges Medley, Weinschenk, and
`
`Hamann. The purpose of the call was twofold.
`
`
`
`First, Petitioner requested our authorization to file a Sur-Reply to
`
`respond to Patent Owner’s Reply (Paper 45) regarding Patent Owner’s
`
`Motion to Amend certain challenged claims (Paper 27). Petitioner submitted
`
`that such a Sur-Reply is provided for in the August 2018 Trial Practice
`
`Guide Update (https://go.usa.gov/xU7GP). Patent Owner does not oppose
`
`Petitioner’s request for a Sur-Reply.
`
`
`
`We find that the panel could benefit from Petitioner’s response to the
`
`arguments raised in Patent Owner’s Reply regarding Patent Owner’s Motion
`
`to Amend in adjudicating the issues in this proceeding. Accordingly, we
`
`grant Petitioner’s request for authorization to file a Sur-Reply to Patent
`
`Owner’s Reply.
`
`
`
`Second, Petitioner requested our authorization to file a motion to have
`
`stricken from Patent Owner’s Sur-Reply to the Petition citations to Patent
`
`Owner’s Exhibit 2027 (Oct. 22, 2018 Declaration of Wesley W. Chu, PH.D)
`
`and Exhibit 2029 (Oct. 22, 2018 Declaration of Lucille Marie De Bellis).
`
`Petitioner argued that the Sur-Reply’s citing to these exhibits was contrary to
`
`our October 2, 2018 Order (Paper 44), which authorized Patent Owner’s
`
`Sur-Reply. Patent Owner argued that to the extent that its Sur-Reply citing
`
`to Exhibits 2027 and 2029 is not proper, Patent Owner should be allowed to
`
`file an amended Sur-Reply, excising the citations to Exhibits 2027 and 2029.
`
`
`
`
`
`2
`
`
`
`IPR2018-00044
`Patent 7,302,423 B2
`
`
`
`We agree with Petitioner that Patent Owner’s Sur-Reply citing to
`
`Exhibits 2027 and 2029 is contrary to our October 2, 2018. The Order
`
`provides that Patent Owner’s “Sur-Reply may not be accompanied by new
`
`evidence other than deposition transcripts of the cross-examination of any
`
`reply witness.” Paper 44, 2. Thus, the portions of Patent Owner’s Sur-
`
`Reply that cite to Exhibits 2027 and 2029 are improper — these exhibits
`
`(i) were filed on October 22, 2018 along with the Sur-Reply and (ii) are not
`
`deposition transcripts. Hence, we find that Patent Owner should amend its
`
`Sur-Reply to comply with our October 2, 2018 Order.
`
`II. ORDER
`
`
`
`It is hereby ORDERED that Petitioner may file a Sur-Reply to Patent
`
`Owner’s Reply regarding the pending Motion to Amend on or before
`
`November 13, 2018;
`
`
`
`FURTHER ORDERED that Petitioner’s Sur-Reply is limited to five
`
`pages;
`
`FURTHER ORDERED that Petitioner’s Sur-Reply is limited to
`
`responding to the Reply;
`
`FURTHER ORDERED that Petitioner’s Sur-Reply may not be
`
`accompanied by new evidence other than deposition transcripts of the cross-
`
`examination of any reply witness; and
`
`FURTHER ORDERED that Patent Owner shall file on or before
`
`November 7, 2018 an Amended Sur-Reply excising the citations to Exhibits
`
`2027 and 2029, and without otherwise changing the Sur-Reply’s substance.
`
`
`
`
`
`
`
`
`
`3
`
`
`
`IPR2018-00044
`Patent 7,302,423 B2
`
`
`PETITIONER:
`
`David M. O’Dell
`David L. McCombs
`Thomas Kelton
`John Russell Emerson
`Scott Cunning
`HAYNES AND BOONE, LLP
`david.odell.ipr@haynesboone.com
`david.mccombs.ipr@haynesboone.com
`thomas.kelton.ipr@haynesboone.com
`russell.emerson.ipr@haynesboone.com
`scott.cunning.ipr@haynesboone.com
`
`
`Jonathan Stroud
`Roshan Mansinghani
`UNIFIED PATENT INC.
`jonathan@unifiedpatents.com
`roshan@unifiedpatents.com
`
`
`PATENT OWNER:
`
`John K. Harrop
`harrop@vapatent.com
`
`
`
`
`
`
`
`4
`
`
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