`Trials@uspto.gov
`571-272-7822 Entered: November 20, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`EXOCAD GMBH AND EXOCAD AMERICA, INC.,
`Petitioner,
`v.
`3SHAPE A/S,
`Patent Owner.
`
`Case IPR2018-00788
`Patent 9,336,336 B2
`
`
`
`
`Before IRVIN E. BRANCH, and FRANCES L. IPPOLITO, Administrative
`Patent Judges.
`
`
`
`
`
`
`
`
`
`BRANCH, Administrative Patent Judge.
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`Case IPR2018-00788
`Patent 9,336,336 B2
`
`
`On November 2, 2018, the Board received an email message from
`Petitioner’s counsel requesting a conference call and an authorization to file
`a motion to submit supplemental information in this proceeding. A
`telephone conference to discuss Petitioner’s request was held on November
`6, 2018, among counsel for Petitioner, counsel for Patent Owner, and Judges
`Branch and Ippolito. A court reporter was present and a transcript of the call
`has been entered as Exhibit 1021.
`On the call, Petitioner asserted that the November 2, 2018 emailed
`request satisfies the requirements of 37 C.F.R. § 42.123(a) because (1) it was
`made within one month of the date trial was instituted (October 3, 2018),
`and (2) the supplemental information is relevant to a claim for which trial
`was instituted because it relates to a reference involved in the proceeding.
`Petitioner described the proposed supplemental information as
`approximately three pages plus attachments such as a declaration.
`Patent Owner opposed the authorization for the motion on various
`grounds. Among these, Patent Owner argued that the request is late because
`the November 6, 2018 conference call requesting authorization to file the
`motion is being held more than one month after the institution decision.
`Patent Owner also indicated that if Petitioner’s motion is authorized, Patent
`Owner requests authorization to file an opposition to the motion.
`After consideration of the parties’ arguments, we granted Petitioner’s
`request for authorization to file a motion to submit supplemental information
`under 37 C.F.R. § 42.123(a) and authorized Patent Owner to file an
`opposition to Petitioner’s motion. Petitioner’s motion and Patent Owner’s
`opposition shall be limited to five (5) pages. Petitioner’s motion shall be
`filed no later than November 16, 2018, and Patent Owner’s opposition shall
`
`2
`
`
`
`Case IPR2018-00788
`Patent 9,336,336 B2
`
`be filed no later than November 30, 2018. We also authorized Petitioner to
`submit with its motion the proposed supplemental information. Such
`exhibits will not be considered part of the record unless later entered as
`evidence by explicit order of the Board and will be expunged otherwise.
`
`ORDER
`
`Accordingly, it is:
`
`ORDERED that Petitioner’s request for authorization to file a motion
`
`to submit supplemental information is granted;
`
`FURTHER ORDERED that Petitioner shall file its motion, limited to
`five (5) pages, no later than November 16, 2018;
`
`FURTHER ORDERED that Patent Owner shall file its opposition,
`limited to five (5) pages, no later than November 30, 2018;
`
`FURTHER ORDERED that any proposed supplemental information
`submitted as exhibits is provided merely for consideration of the motion for
`supplemental information, will not be entered as evidence of record, and
`shall not be cited in any paper, other than papers filed in accordance with
`this Order, unless later entered by explicit order of the Board; and
`
`FURTHER ORDERED that no reply by Petitioner is authorized at this
`time.
`
`
`
`
`
`
`
`3
`
`
`
`Case IPR2018-00788
`Patent 9,336,336 B2
`
`PETITIONER:
`
`Matthew B. Lowrie
`Christopher J. McKenna
`FOLEY & LARDNER LLP
`mlowrie@foley.com
`cmckenna@foley.com
`
`
`PATENT OWNER:
`
`Todd R. Walters, Esq.
`Roger H. Lee, Esq.
`BUCHANAN INGERSOLL & ROONEY PC
`todd.walters@bipc.com
`roger.lee@bipc.com
`
`
`4
`
`
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