`571-272-7822
`
`
`
`
`Paper 7
`
`Entered: August 8, 2018
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`AGIS SOFTWARE DEVELOPMENT, LLC,
`Patent Owner.
`_______________
`
`Case IPR2018-00817 (Patent 9,445,251 B2)
`Case IPR2018-00818 (Patent 9,408,055 B2)
`Case IPR2018-00821 (Patent 8,213,970 B2)1
`
`
`
`_______________
`
`
`Before TREVOR M. JEFFERSON, CHRISTA P. ZADO,
`and KEVIN C. TROCK, Administrative Patent Judges.
`
`ZADO, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`37 C.F.R. § 42.108(c)
`
`
`
`
`1 The parties are not authorized to use this style of caption without prior
`authorization.
`
`
`
`IPR2018-00817 (Patent 9,445,251 B2)
`IPR2018-00818 (Patent 9,408,055 B2)
`IPR2018-00821 (Patent 8,213,970 B2)
`
`
`On July 26, 2018, Apple, Inc. (“Petitioner”) sent an e-mail to the
`
`Board requesting a conference call to discuss its request to file a reply, in
`
`each of the three above-captioned proceedings (“Instant Proceedings”), to
`
`AGIS Software Development, LLC’s (“Patent Owner”) Preliminary
`
`Response.
`
`During the conference call on August 3, 2018, Petitioner requested
`
`authorization to file a reply addressing the allocation of burdens of proof
`
`with regard to the effective priority dates of the patents challenged in
`
`IPR2018-00817 and IPR2018-00818. However, during the conference call,
`
`Petitioner withdrew its request with regard to this issue in light of the case
`
`law cited in the Petitions in those proceedings.
`
`During the conference call, Petitioner also requested authorization to
`
`file a reply in each of the Instant Proceedings to address the applicable legal
`
`standard to satisfy the requirements under 37 C.F.R. § 42.104(b)(3) to set
`
`forth how the challenged claims are to be construed. See 37 C.F.R.
`
`§ 42.104(b)(3). Patent Owner asserts in the Preliminary Response in each of
`
`the Instant Proceedings that Petitioner must have a subjective belief that the
`
`construction set forth in the Petition is correct under applicable law.
`
`Petitioner asserts that Patent Owner is using an incorrect legal standard.
`
`Patent Owner objects to Petitioner’s request for a reply.
`
`We determine that under the circumstances presented here, Petitioner
`
`has made a showing of good cause, and we, therefore, authorize Petitioner’s
`
`request to file a reply in each of the Instant Proceedings. See 37 C.F.R.
`
`§ 42.108(c). The Preliminary Responses raise the issue of whether a
`
`Petitioner must have a subjective belief that the claim constructions
`
`2
`
`
`
`IPR2018-00817 (Patent 9,445,251 B2)
`IPR2018-00818 (Patent 9,408,055 B2)
`IPR2018-00821 (Patent 8,213,970 B2)
`
`presented in the Petition are correct. See, e.g., IPR2018-00821, Paper 6, 17,
`
`22. The Board finds it may be helpful if Petitioner provides legal authority
`
`on this issue. Petitioner’s reply is limited to two (2) pages, and is limited to
`
`providing the Board with legal authority relevant to the standard to satisfy
`
`the requirements under 37 C.F.R. § 42.104(b)(3). The reply may not include
`
`evidence or argument, other than citation to legal authority, and may not
`
`address any factual issues.
`
`It is
`
`ORDERED that Petitioner’s request to file a reply under 37 C.F.R.
`
`§ 42.108(c), in each of the Instant Proceedings, to Patent Owner’s
`
`Preliminary Response, is granted;
`
`FURTHER ORDERED that the reply is not to exceed two (2) pages,
`
`and must be filed no later than August 10, 2018; and
`
`FURTHER ORDERED that the reply is limited to providing the
`
`Board with legal authority relevant to the legal standard to satisfy the
`
`requirements under 37 C.F.R. § 42.104(b)(3). The reply may not include
`
`evidence or argument, other than citation to legal authority, and may not
`
`address any factual issues.
`
`3
`
`
`
`IPR2018-00817 (Patent 9,445,251 B2)
`IPR2018-00818 (Patent 9,408,055 B2)
`IPR2018-00821 (Patent 8,213,970 B2)
`
`FOR PETITIONER:
`
`Matthew Moore
`matthew.moore@lw.com
`
`Bob Steinberg
`bob.steinberg@lw.com
`
`Jon Strang
`jonathan.strang@lw.com
`
`Lisa Nguyen
`lisa.nguyen@lw.com
`
`
`
`
`
`
`FOR PATENT OWNER:
`
`Vincent Rubino
`vrubino@brownrudnick.com
`
`Peter Lambrianakos
`plambrianakos@brownrudnick.com
`
`Enrique Iturralde
`eiturralde@brownrudnick.com
`
`
`
`
`
`
`4
`
`
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