`571-272-7822
`
`Paper: 16
`Entered: February 19, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`MICROSOFT CORPORATION,
`Petitioner,
`v.
`SAINT REGIS MOHAWK TRIBE,
`Patent Owner.
`____________
`
`Case IPR2018-01594 (Patent 6,434,687 B1)
`Case IPR2018-01599 (Patent 6,076,152)
`Case IPR2018-01600 (Patent 6,247,110 B1)
`Case IPR2018-01601, IPR2018-01602, and IPR2018-01603
`(Patent 7,225,324 B2)
`Case IPR2018-01604 (Patent 7,421,524 B2)
`Case IPR2018-01605, IPR2018-01606, and IPR2018-01607
`(Patent 7,620,800 B2)1
`____________
`
`Before KALYAN K. DESHPANDE, JUSTIN T. ARBES, and
`CHRISTA P. ZADO, Administrative Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`1 This Order addresses an issue pertaining to all ten cases. Therefore, we
`exercise our discretion to issue a single Order to be filed in each case. The
`parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`
`IPR2018-01594 (Patent 6,434,687 B1)
`IPR2018-01599 (Patent 6,076,152)
`IPR2018-01600 (Patent 6,247,110 B1)
`IPR2018-01601, IPR2018-01602, IPR2018-01603 (Patent 7,225,324 B2)
`IPR2018-01604 (Patent 7,421,524 B2)
`IPR2018-01605, IPR2018-01606, IPR2018-01607 (Patent 7,620,800 B2)
`
`
`On February 15, 2019, a conference call was held between the Board,
`Microsoft Corporation (“Petitioner”), and Saint Regis Mohawk Tribe
`(“Patent Owner”). Petitioner requested the conference call to request
`authorization to file a reply addressing three issues raised in Patent Owner’s
`Preliminary Responses: (1) Patent Owner’s arguments that the Board should
`deny institution under 35 U.S.C. § 314(a) because SRC Labs, LLC (“SRC”)
`is a sole-source supplier for a U.S. Army program; (2) Patent Owner’s
`argument that the Board should deny institution under 35 U.S.C. § 314(a)
`because Petitioner asserts the same prior art in these proceedings and the
`parallel district court case; and (3) Patent Owner’s proposed constructions
`and application of the claim terms “systolic” and “systolically” for IPR2018-
`01601, -01602, and -01603, and “internet site” for IPR2018-01594.
`Petitioner argued that it was unable to foresee these issues as being raised by
`Patent Owner, and, therefore, should be afforded an opportunity to address
`these issues. Patent Owner opposed, arguing that Petitioner was aware of
`the facts underlying these issues prior to filing the Petitions.
`Upon further consideration, we are persuaded that Petitioner has
`established good cause to file a reply only with respect to the first issue
`listed above. See 37 C.F.R. § 42.108(c). We authorize Petitioner to file a
`reply to Patent Owner’s Preliminary Response, limited to addressing Patent
`Owner’s arguments that we should exercise our discretion under 35 U.S.C.
`§ 314(a) based on the activities and status of SRC. See, e.g., IPR2018-
`
`2
`
`
`
`IPR2018-01594 (Patent 6,434,687 B1)
`IPR2018-01599 (Patent 6,076,152)
`IPR2018-01600 (Patent 6,247,110 B1)
`IPR2018-01601, IPR2018-01602, IPR2018-01603 (Patent 7,225,324 B2)
`IPR2018-01604 (Patent 7,421,524 B2)
`IPR2018-01605, IPR2018-01606, IPR2018-01607 (Patent 7,620,800 B2)
`
`01594, Paper 15, 2–9. Petitioner must file the same reply2 in each of the
`proceedings, and the reply is limited to 5 pages. Petitioner’s reply is due no
`later than February 28, 2019. Patent Owner may also file a sur-reply to
`Petitioner’s reply, limited to the same issue, which must be the same in each
`of the proceedings, and may not exceed 5 pages. Patent Owner’s sur-reply is
`due no later than March 7, 2019. We have determined that all other issues
`raised by Petitioner have been sufficiently briefed on the record.
`
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner is authorized to file a reply to Patent
`Owner’s Preliminary Response, limited to the issue raised by Patent Owner
`of a discretionary denial of institution of inter partes review under 35 U.S.C.
`§ 314(a) based on the activities and status of SRC, of no more than 5 pages,
`due on February 28, 2019, and the same reply must be filed in each of the
`proceedings listed above; and
`FURTHER ORDERED that Patent Owner is authorized to file a
`sur-reply responsive to arguments raised by Petitioner in its authorized reply,
`of no more than 5 pages, due on March 7, 2019, and the same sur-reply must
`be filed in each of the proceedings listed above.
`
`
`
`2 The case heading may differ, because we have not authorized use of a
`single heading for all ten cases.
`
`3
`
`
`
`IPR2018-01594 (Patent 6,434,687 B1)
`IPR2018-01599 (Patent 6,076,152)
`IPR2018-01600 (Patent 6,247,110 B1)
`IPR2018-01601, IPR2018-01602, IPR2018-01603 (Patent 7,225,324 B2)
`IPR2018-01604 (Patent 7,421,524 B2)
`IPR2018-01605, IPR2018-01606, IPR2018-01607 (Patent 7,620,800 B2)
`
`PETITIONER:
`Joseph A. Micallef
`Jason P. Greenhut
`SIDLEY AUSTIN LLP
`jmicallef@sidley.com
`jgreenhut@sidley.com
`sidleysrclabsipr@sidley.com
`
`PATENT OWNER:
`Alfonso Chan
`Joseph DePumpo
`SHORE CHAN DEPUMPO LLP
`achan@shorechan.com
`jdepumpo@shorechan.com
`
`
`4
`
`
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