Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 23
`Entered: November 2, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`BRADIUM TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`Case IPR2018-00952
`Patent 9,253,239 B2
`_____________
`
`
`
`Before BRIAN J. McNAMARA and MINN CHUNG,
`Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5(a)
`
`
`
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`Paper 23
`Entered: November 2, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`BRADIUM TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`Case IPR2018-00952
`Patent 9,253,239 B2
`_____________
`
`
`
`Before BRIAN J. McNAMARA and MINN CHUNG,
`Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5(a)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2018-00952
`Patent 9,253,239 B2
`
`
`
`I. DISCUSSION
`A conference call was held on October 24, 2018, between counsel for
`the respective parties and Judges Chung and McNamara. The parties
`requested the conference call to address several issues, including Petitioner’s
`request for authorization to file a reply to Patent Owner’s Preliminary
`Response.
`
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`Petitioner seeks authorization to file a reply to Patent Owner’s
`Preliminary Response to address factual assertions and legal arguments
`made in the Patent Owner’s Preliminary Response regarding real-parties-in-
`interest in light of the Federal Circuit’s decisions in Applications in Internet
`Time, LLC v. RPX Corp., 897 F.3d 1336 (Fed. Cir. 2018) (“AIT”) and
`Worlds Inc. v. Bungie, Inc., 903 F.3d 1237 (Fed. Cir. 2018). During the
`conference call, Petitioner argued that it could not have addressed these
`issues in the Petition because AIT and related cases were decided after the
`Petition was filed. Patent Owner opposes Petitioner’s request, arguing, inter
`alia, that the underlying standard regarding real-parties-in-interest has not
`changed and that Petitioner had an opportunity to address the issues in
`Petitioner’s pre-institution discovery responses and deposition testimony of
`Petitioner’s CEO.1 If a reply is authorized, Patent Owner seeks
`authorization to file a sur-reply.
`
`
`1 We granted Patent Owner’s Motion to extend the due date for Patent
`Owner’s Preliminary Response to September 24, 2018 in part to allow for
`
`
`2
`
`
`
`
`
`
`IPR2018-00952
`Patent 9,253,239 B2
`
`
`
`Having reviewed the record and considered the parties’ positions, we
`are persuaded that Petitioner has shown good cause justifying the filing of a
`reply. See 37 C.F.R. § 42.108(c). Accordingly, during the conference call,
`we authorized the filing of Petitioner’s reply to Patent Owner’s Preliminary
`Response, not to exceed 12 pages and limited to addressing the factual
`assertions and legal arguments made in the Patent Owner’s Preliminary
`Response regarding real-parties-in-interest, and to be filed no later than
`November 7, 2018.
`We denied Patent Owner’s request for authorization of filing of a sur-
`reply, but noted that Patent Owner may seek authorization again, if
`necessary, after Petitioner’s reply is filed.
`
`Objections to Evidence
`During the conference call, we granted Petitioner’s unopposed request
`for authorization for filing of Petitioner’s notice of withdrawal of
`Petitioner’s Objections to Evidence (Paper 21) in their entirety, as well as
`Patent Owner’s unopposed request for an extension of the deadline to serve
`supplemental evidence under 37 C.F.R. § 42.64(b)(2) until November 1,
`2018.
`Patent Owner requests authorization for filing of the supplemental
`evidence that was served on Petitioner in response to Petitioner’s Objections
`to Evidence (Paper 21). Patent Owner argues good cause exists for filing of
`
`
`pre-institution discovery regarding real-parties-in-interest in light of the AIT
`decision. See Paper 8; Paper 11.
`
`
`
`
`3
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`IPR2018-00952
`Patent 9,253,239 B2
`
`
`the supplemental evidence because we may consider the supplemental
`evidence in determining whether to institute a review and the parties’ may
`refer to the evidence in their pre-institution briefing.
`Under our rules, Patent Owner may respond with supplemental
`evidence that supports the admissibility of the objected-to evidence.
`37 C.F.R. § 42.64(b)(2). Supplemental evidence should not be offered to
`support substantive arguments on the merits. See Handi Quilter, Inc. and
`Tacony Corp. v. Bernina International AG, Case IPR2013-00364, slip op. at
`2–3 (PTAB June 12, 2014) (Paper 30). Accordingly, during the conference
`call, we denied Patent Owner’s request to file the supplemental evidence
`served on Petitioner in response to Petitioner’s Objections to Evidence.
`On October 25, 2018, Petitioner filed a Notice of Withdrawal of
`Objections to Evidence. Paper 22. As there are no outstanding objections to
`evidence, the issue is now moot and there is no need for further
`consideration of Patent Owner’s request for authorization to file the
`supplemental evidence or extension of the deadline to serve supplemental
`evidence.
`
`
`II. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner’s request for authorization to file a reply to
`Patent Owner’s Preliminary Response is granted;
`FURTHER ORDERED that the reply is limited to addressing the
`factual assertions and legal arguments made in the Patent Owner’s
`Preliminary Response regarding real-parties-in-interest;
`4
`
`
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`
`
`IPR2018-00952
`Patent 9,253,239 B2
`
`
`
`FURTHER ORDERED that the reply is not to exceed 12 pages;
`FURTHER ORDERED that the reply is to be filed no later than
`November 7, 2018;
`FURTHER ORDERED that Petitioner may not file new evidence with
`the reply;
`FURTHER ORDERED that no sur-reply is authorized at this time;
`
`and
`
`FURTHER ORDERED that Petitioner’s unopposed request for
`authorization for filing of Petitioner’s notice of withdrawal of Petitioner’s
`Objections to Evidence (Paper 21) in their entirety is granted.
`
`
`
`
`
`
`5
`
`
`
`IPR2018-00952
`Patent 9,253,239 B2
`
`
`PETITIONER:
`Jonathan Stroud
`Roshan Suresh Mansinghani
`David L. Cavanaugh
`Daniel V. Williams
`UNIFIED PATENTS INC.
`jonathan@unifiedpatents.com
`roshan@unifiedpatents.com
`david.cavanaugh@wilmerhale.com
`daniel.williams@wilmerhale.com
`
`Jonathan E. Robe
`WILMER, CUTLER, PICKERING,
`HALE AND DORR, LLP
`jonathan.robe@wilmerhale.com
`
`PATENT OWNER:
`Chris J. Coulson
`Lauren N. Robinson
`BUNSOW DE MORY LLP
`ccoulson@bdiplaw.com
`lrobinson@bdiplaw.com
`
`
`
`
`6
`
`
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