`Tel: 571-272-7822
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`Paper 39
`Entered: February 25, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`SIRIUS XM RADIO INC.,
`Petitioner,
`v.
`FRAUNHOFER-GESELLSCHAFT ZUR FORDERNUNG DER
`ANGEWANDTEN E.V.,
`Patent Owner.
`_______________
`
`Case IPR2018-00690
`Patent 6,314,289 B1
`_______________
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`Before JEFFREY S. SMITH, STACEY G. WHITE, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
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`SMITH, Administrative Patent Judge.
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`DECISION
`Conduct of the Proceeding
`37 C.F.R. § 42.5
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`IPR2018-00690
`Patent 6,314,289 B1
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`On February 21, 2020, Patent Owner contacted the Board by e-mail
`requesting authorization to file a motion to strike Petitioner’s Reply in this
`proceeding, because, according to Patent Owner, Petitioner’s Reply includes
`improper arguments. Patent Owner also requested to increase the word count for
`its Sur-Reply to 8,000 words in order to address the allegedly improper arguments.
`The panel does not authorize the filing of a Motion to Strike. As explained
`in the Board’s Trial Practice Guide, “[i]n most cases, the Board is capable of
`identifying new issues or belatedly presented evidence when weighing the
`evidence at the close of trial, and disregarding any new issues or belatedly
`presented evidence that exceeds the proper scope of reply or sur-reply.” See
`Consolidated Trial Practice Guide 80 (November 2019), available at
`https://www.uspto.gov/TrialPracticeGuideConsolidated. The Trial Practice Guide
`instructs that “striking the entirety or a portion of a party’s brief is an exceptional
`remedy that the Board expects will be granted rarely.” Id. We decline at this time
`to exclude the reply submissions.
`The panel also does not authorize Patent Owner to increase the word count
`for its Sur-Reply to address the allegedly improper arguments. Instead, Patent
`Owner may file, as an appendix to its Sur-Reply, a list identifying, by page and
`line number, those arguments and evidence in the Reply that Patent Owner asserts
`go beyond the proper scope of a reply. Patent Owner’s list may not exceed three
`pages, and will not be included in the word count of the Sur-Reply. Patent
`Owner’s list shall not contain any argument.
`If such a list is filed, Petitioner may file a responsive list identifying, by page
`and line number, where each reply argument identified in Patent Owner’s list is
`supported by a theory of unpatentability expressed in the Petition and/or is
`responsive to an argument raised in the Patent Owner Response. Petitioner’s list
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`IPR2018-00690
`Patent 6,314,289 B1
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`may not exceed three pages, excluding the cover page, signature block, and
`certificate of service. Petitioner’s list must be filed within five business days of the
`filing of Patent Owner’s Sur-Reply. Petitioner’s list shall not contain any
`argument.
`The propriety or impropriety of the identified portions of the reply will be
`addressed, if necessary, in our Final Written Decision. To the extent the panel
`determines that any item identified by Patent Owner warrants additional briefing,
`an Order will be issued, providing such instruction to the parties.
`Furthermore, although at this time we do not deem it necessary to resolve
`this issue prior to the Final Written Decision or via formal briefing, should either
`party request a hearing, the parties may address this issue during oral argument.
`In view of the foregoing, it is hereby:
`ORDERED that Patent Owner is authorized to file, as an appendix to its Sur-
`Reply, a list identifying by page and line number each instance of improper
`argument or evidence submitted in Petitioner’s Reply, such list not to exceed three
`pages;
`FURTHER ORDERED that if Patent Owner files the above authorized
`appendix to its Sur-Reply then Petitioner is authorized to file, within five business
`days of the filing of Patent Owner’s Sur-Reply, a responsive list identifying, by
`page and line number, where each reply argument identified in Patent Owner’s list
`is supported by a theory of unpatentability expressed in the Petition and/or is
`responsive to an argument raised in the Patent Owner Response, such list not to
`exceed three pages; and
`FURTHER ORDERED that neither list shall contain any argument.
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`IPR2018-00690
`Patent 6,314,289 B1
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`For PETITIONER:
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`Jonathan Caplan
`Shannon Hedvat
`Jeffrey Price
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`jcaplan@kramerlevin.com
`shedvat@kramerlevin.com
`jprice@kramerlevin.com
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`For PATENT OWNER:
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`Ben Yorks
`Babak Redjaian
`David McPhie
`Kamran Vakili
`IRELL & MANELLA LLP
`byorks@irell.com
`bredjaian@irell.com
`dmcphie@irell.com
`kvakili@irell.com
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