`Tel: 571-272-7822
`
`
`Paper 34
`Entered: December 21, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMERICAN MULTI-CINEMA, INC.; AMC ENTERTAINMENT
`HOLDINGS, INC.; BOSTON MARKET CORPORATION; MOBO
`SYSTEMS, INC.; MCDONALD’S CORPORATION; MCDONALD’S
`USA; PANDA RESTAURANT GROUP, INC.; PANDA EXPRESS INC.;
`PAPA JOHN’S INTERNATIONAL, INC.; STAR PAPA LP; and
`PAPA JOHN’S USA, INC.
`Petitioner,
`
`v.
`
`FALL LINE PATENTS, LLC
`Patent Owner.
`____________
`
`Case IPR2019-00610
`Patent 9,454,748 B2
`____________
`
`
`Before MICHELLE N. WORMMEESTER, SHEILA F. McSHANE, and
`JOHN R. KENNY, Administrative Patent Judges.
`
`KENNY, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`Via email, the parties requested a teleconference regarding the remand
`from the Federal Circuit. Ex. 3004. With their request, the parties submitted
`a joint proposal for additional briefing. Id. On December 17, 2021, we held
`
`
`
`IPR2019-00610
`Patent 9,454,748 B2
`
`the requested teleconference with the parties. Ricardo Bonilla and Robert
`Reckers appeared on behalf of Petitioner. Matthew Antonelli appeared on
`behalf of Patent Owner.
`During the teleconference, the parties disputed the scope of the
`briefing to be authorized. Patent Owner argued the briefing should be
`limited to the prior art teachings related to limitation 7(b). Petitioner argued
`that the briefing should also include issues related to limitation 7(f).
`Patent Owner asserted that there would be no need to address
`limitation 7(f) because the Federal Circuit did not provide guidance on that
`limitation. Further, Patent Owner expressed concern that the new briefing
`would only be used to present new arguments. Petitioner argued that it
`would be helpful to address limitation 7(f) in order to address all issues that
`may later be the subject of appeal to the Federal Circuit and additionally
`asserted that it would not present new arguments on that limitation.
`We will limit the authorized briefing to limitation 7(b). At this time,
`we see no need for further briefing on limitation 7(f) because we have not
`received any guidance from the Federal Circuit on that limitation, other than
`the instruction to address it if we alter our conclusion regarding limitation
`7(b).
`During the teleconference, we addressed briefing of the term
`“executable.” See AMC Multi-Cinema, Inc. v. Fall Line Patents, LLC, 2021-
`1051, 2021 WL 4470062 at *8 (Fed. Cir. Sep. 30, 2021). We noted that the
`parties may want to consider the definitions provided by the Microsoft
`
`2
`
`
`
`IPR2019-00610
`Patent 9,454,748 B2
`
`Computer Dictionary (5th Ed. 2002).1 One party indicated that there may not
`be a disagreement regarding the meaning of that term.
`After considering the parties’ joint proposal and arguments, we set the
`following schedule for additional briefing:
`(i) within two weeks from the issuance of this Order, the parties
`shall meet and confer regarding the meaning of the term “executable”;
`(ii) within three weeks from the issuance of this Order, the parties
`shall submit a joint paper setting forth their proposed definitions for the term
`“executable.” If all parties are in agreement on a definition, the agreed-upon
`definition shall be included. If there is no agreement, the joint paper shall
`set forth each side’s proposed definition, with citations to support for that
`definition. The parties may cite and submit new non-testimonial exhibits to
`support their proposed definitions. Any new exhibits, however, may only be
`submitted for the purpose of defining the term “executable” and will not be
`considered for other purposes. Arguments concerning a disputed definition
`should not be included in the joint paper;
`(iii) within four weeks from the issuance of this Order, each
`side shall file an opening brief of no more than ten pages addressing
`the Federal Circuit’s remand decision regarding limitation 7(b). Each
`opening brief may also address any proposed definition for
`“executable” and the definitions for that term in Exhibit 3005; and
`(iv) within six weeks from the issuance of this Order, each side
`may file a responsive brief of no more than ten pages responding to
`the other side’s opening brief.
`
`
`1 Exhibit 3005 includes these definitions.
`
`3
`
`
`
`IPR2019-00610
`Patent 9,454,748 B2
`
`
`The parties may not submit any new exhibits, other than non-
`testimonial exhibits used to support a definition of the term “executable.”
`Further, the parties may not make any new arguments regarding the
`underlying issues of patentability.
`
`It is so ORDERED.
`
`For PETITIONER:
`Tara Elliott
`Lisa Nguyen
`LATHAM & WATKINS LLP
`tara.elliott@lw.com
`lisa.nguyen@lw.com
`
`Robert Reckers
`SHOOK, HARDY & BACON L.L.P.
`rreckers@shb.com
`
`Ricardo Bonilla
`FISH & RICHARDSON P.C.
`rbonilla@fr.com
`
`For PATENT OWNER:
`Terry Watt
`FELLERS SNIDER, PC
`tlwatt@fellerssnider.com
`
`Matthew Antonelli
`Larry Thompson, Jr.
`ANTONELLI, HARRINGTON & THOMPSON LLP
`matt@ahtlawfirm.com
`larry@ahtlawfirm.com
`
`4
`
`
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