`Trials@uspto.gov
`Entered: March 27, 2018
`
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`RIOT GAMES, INC.
`Petitioner,
`
`v.
`
`PALTALK HOLDINGS, INC.,
`Patent Owner.
`_______________
`
`Cases IPR2018-00129 & IPR2018-00130
`(Patent 5,822,523)
`Cases IPR2018-00131 & IPR2018-00132
`(Patent 6,226,686 B1)1
`
`
`Before KARL D. EASTHOM, THU A. DANG, and
`MICHAEL J. FITZPATRICK, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting Authorization to File Preliminary Reply and Sur-Reply
`37 C.F.R. § 42.108(c)
`
`
`
`
`
`
`1 This Order will be filed in each case based on the common issues argued.
`The parties must seek prior authorization to employ this joint heading and
`filing style.
`
`
`
`Cases IPR2018-00129 & IPR2018-00130 (Patent 5,822,523)
`Cases IPR2018-00131 & IPR2018-00132 (Patent 6,226,686 B1)
`I. INTRODUCTION
`On March 26, 2018, Judges Easthom, Dang, and Fitzpatrick held a
`teleconference with Scott M. Border and Samuel A. Dillon, counsel for Riot
`Games, Inc. (“Petitioner”), and Gregory M. Howison, Keith D. Harden, and
`Brian D. Walker, counsel for Paltalk Holdings, Inc. (“Patent Owner”).
`Petitioner requested the teleconference via email to seek leave to file a reply
`to respond to Patent Owner’s claim constructions of three terms
`(“aggregated message,” “aggregated payload,” and “payload portion”),
`which Patent Owner construed in its Preliminary Response (Paper 6).2
`II. ANALYSIS
`During the teleconference, Petitioner contended that good cause exists
`for Petitioner to file a Preliminary Reply because Patent Owner construed
`the above three terms in its Preliminary Response in a different manner than
`Patent Owner construed them in prior district court litigation. Patent Owner
`did not dispute Petitioner’s characterization of a shift in its claim
`constructions of the three terms. Rather, Patent Owner argued that the
`Petition (Paper 1) should have provided a construction for the three claim
`terms in any event, noting also that the Petition states that the “precise
`scope” of any claim term “is irrelevant to this proceeding.” See Pet. 6.
`The Petition generally implies the claim terms should be construed
`“under any interpretation consistent with their plain and ordinary meaning in
`the context of the [challenged patent].”3 Accordingly, where Patent Owner
`shifted its stance from claim constructions advanced in prior litigation,
`
`
`2 Citations refer to IPR2018-00129, but the parties filed similar papers in
`each proceeding.
`3 Both patents expired and include a common specification.
`
`2
`
`
`
`Cases IPR2018-00129 & IPR2018-00130 (Patent 5,822,523)
`Cases IPR2018-00131 & IPR2018-00132 (Patent 6,226,686 B1)
`Petitioner shows good cause to file a Preliminary Reply not to exceed five
`pages on or before March 30, 2018.
`During the teleconference, Patent Owner expressed a concern that a
`Preliminary Reply effectively would grant Petitioner extra pages to its
`Petition and also expressed the related concern that the Preliminary Reply
`may raise new issues. Petitioner’s email indicates it “seeks to reply to Patent
`Owner’s construction and application of the claim terms” noted above, and
`Petitioner made a similar request during the teleconference.
`Nevertheless, Petitioner did not show good cause to file briefing to
`reply to the “application of the claim terms.” Therefore, Petitioner must
`confine its Preliminary Reply to the claim construction of the three terms
`above (i.e., Petitioner must not address the application of the claim
`constructions to the asserted prior art). This confinement to claim
`construction should ameliorate Patent Owner’s stated concern regarding
`surprise and a sufficient number of pages to respond to the Preliminary
`Reply. Accordingly, sufficient cause exists for Patent Owner to file a
`Preliminary Sur-Reply (which responds to the Preliminary Reply) not to
`exceed five pages due on or before April 6, 2018.
`
`
`3
`
`
`
`Cases IPR2018-00129 & IPR2018-00130 (Patent 5,822,523)
`Cases IPR2018-00131 & IPR2018-00132 (Patent 6,226,686 B1)
`III. ORDER
`In consideration of the foregoing, it is hereby
`ORDERED that Petitioner’s request for authorization to file a
`Preliminary Reply, not to exceed five pages, and due on or before March 30,
`2018, is granted as outlined above, and
`FURTHER ORDERED that, in response to the Preliminary Reply,
`Patent Owner is authorized to file a Preliminary Sur-Reply not to exceed
`five pages, due on or before April 6, 2018.
`
`PETITIONER:
`
`Joseph A. Micallef
`Samuel A. Dillon
`SIDLEY AUSTIN
`jmicallef@sidley.com
`samuel.dillon@sidley.com
`
`PATENT OWNER:
`
`Gregory M. Howison
`Keith D. Harden
`Brian D. Walker
`MUNCK, WILSON, MANDALA, LLP
`ghowison@munckwilson.com
`kharden@munckwilson.com
`bwalker@munckwilson.com
`
`
`4
`
`
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