Trials@uspto.gov
`571-272-7822
`
`Paper 34
`Entered: June 9, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MPH TECHNOLOGIES OY,
`Patent Owner.
`____________
`
`Case IPR2019-00819 (Patent 7,620,810 B2)
`Case IPR2019-00820 (Patent 7,937,581 B2)1
`____________
`
`Before KAMRAN JIVANI, JOHN D. HAMANN, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`HAMANN, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5(a)
`
`1 This Order addresses an issue pertaining to the listed cases. We exercise
`our discretion to issue one Order to be filed in each case. The parties are not
`authorized to use this style heading for any subsequent papers.
`
`
`571-272-7822
`
`Paper 34
`Entered: June 9, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MPH TECHNOLOGIES OY,
`Patent Owner.
`____________
`
`Case IPR2019-00819 (Patent 7,620,810 B2)
`Case IPR2019-00820 (Patent 7,937,581 B2)1
`____________
`
`Before KAMRAN JIVANI, JOHN D. HAMANN, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`HAMANN, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5(a)
`
`1 This Order addresses an issue pertaining to the listed cases. We exercise
`our discretion to issue one Order to be filed in each case. The parties are not
`authorized to use this style heading for any subsequent papers.
`
`
`
`IPR2019-00819 (Patent 7,620,810 B2)
`IPR2019-00820 (Patent 7,937,581 B2)
`
`On May 21, 2020, Petitioner sent an email requesting a call to seek
`
`authorization to file a motion to strike Patent Owner’s Sur-Reply, or, in the
`alternative, to file a Sur-Sur-Reply, in each of the proceedings. Ex. 3002.2
`On May 27, 2020, we held the call with Judges Jivani, Hamann, and
`Margolies and respective counsel for the parties. During the call, the parties
`presented arguments as to Petitioner’s requests, and we took the requests
`under advisement. A transcript of the call was filed as Exhibit 1021 (“Tr.”).
`For the reasons we provide below, we deny Petitioner’s requests at this time.
`
`During the call, Petitioner argued that Patent Owner “rais[es] a brand
`new theory”—the parties also interchangeably refer to this issue as a “new
`argument”—in Section II of its Sur-Replies. Tr. 5:18–21, 7:6–8. According
`to Petitioner, Patent Owner “concedes that it is, in fact, a new theory.” Id. at
`6:1–6 (citing Paper 29 (Patent Owner Sur-Reply), 5 n.1). Petitioner argued
`that our Trial Practice Guide provides for striking a portion of a sur-reply
`that clearly relies on a new theory not included in the reply. See id. at 5:8–
`17 (citing Consolidated Trial Practice Guide 80 (Nov. 2019), available at
`https://www.uspto.gov/TrialPracticeGuideConsolidated) (“TPG”). In the
`alternative, Petitioner requests authorization to file Sur-Sur-Replies to
`address what Petitioner contends is a new argument in Patent Owner’s Sur-
`Replies. Id. at 5:3–7.
`
`As we noted during the call, our Trial Practice Guide explains that
`“[i]n most cases, the Board is capable of identifying new issues or belatedly
`presented evidence when weighing the evidence at the close of trial, and
`disregarding any new issues or belatedly presented evidence that exceeds the
`
`
`2 We cite only to the relevant documents in IPR2019-00819. Substantially
`the same documents, in relevant part, also were filed in IPR2019-00820.
`2
`
`
`
`
`
`IPR2019-00819 (Patent 7,620,810 B2)
`IPR2019-00820 (Patent 7,937,581 B2)
`
`proper scope of reply or sur-reply.” TPG, 80. In response, Petitioner argued
`that the circumstances here are not like most cases. Tr. 7:9–8:8, 8:13–9:20.
`First, Petitioner argued that “this is a brand new technical argument that [it]
`did not have the opportunity to respond to,” and which “cuts to the heart of”
`a fundamental aspect of the Petition. Id. at 7:20–22, 9:4–7. Second,
`Petitioner argued that “[P]atent [O]wner has conceded, in effect, this is an
`argument that[ is] a brand new argument.” Id. at 8:2–5. Third, Petitioner
`argued that being a brand new argument, it is “outside the scope of the
`rules.” Id. at 8:6–8.
`
`Patent Owner argued that it did not admit that its Sur-Replies raise a
`new theory. Id. at 10:5–8. Patent Owner also argued that “the [B]oard is
`perfectly capable of determining if an argument is new or evidence is new,
`and assigning it the proper weight, if any.” Id. at 11:2–5. Patent Owner also
`requested that if the Board grants Petitioner’s request for Sur-Sur-Replies,
`that the Board also grant Patent Owner an additional brief, i.e., Sur-Sur-Sur-
`Replies. Id. at 13:14–20.
`
`We are not persuaded that the circumstances here are different than
`those “in most cases, where the Board is capable of identifying new issues
`. . . when weighing the evidence at the close of trial, and disregarding any
`new issues . . . that exceeds the proper scope of . . . sur-reply.” TPG, 80.
`Petitioner’s arguments, listed above, are not pertinent to whether the
`circumstances here differ from most cases in a relevant way. For example,
`whether a sur-reply argument is “brand new” is the question in all such
`cases, and if the argument is new, it is tautological that there would have
`been no opportunity to respond to it. Moreover, whether an argument cuts to
`
`
`
`3
`
`
`
`IPR2019-00819 (Patent 7,620,810 B2)
`IPR2019-00820 (Patent 7,937,581 B2)
`
`the heart of the Petitions, as Petitioner alleges, is inapposite to the Board’s
`capability of identifying whether the argument is new.
`
`At this time, we determine that the issue of whether the identified
`portion of the Sur-Replies is of proper scope will be addressed, if necessary,
`in our Final Written Decisions. As such, we also deny Petitioner’s
`alternative request for authorization to file Sur-Sur-Replies because if we
`identify a new argument in Patent Owner’s Sur-Replies, it can be
`disregarded. Furthermore, although at this time we do not deem it necessary
`to resolve whether Patent Owner’s Sur-Replies raise a new argument prior to
`the Final Written Decisions or via formal briefing, the parties may address
`the argument and whether it is new during oral argument. To the extent the
`panel determines that this issue warrants additional briefing, an Order will
`be issued, providing such instruction to the parties.
`
`
`In view of the foregoing, for each of the proceedings, it is hereby
`ORDERED that Petitioner’s request for authorization to file a Motion
`to Strike is denied; and
`FURTHER ORDERED that Petitioner’s request for authorization to
`file a Sur-Sur-Reply is denied.
`
`
`
`
`
`
`
`4
`
`
`
`IPR2019-00819 (Patent 7,620,810 B2)
`IPR2019-00820 (Patent 7,937,581 B2)
`
`PETITIONER:
`
`Michael Specht
`Daniel Block
`Timothy Tang
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`mspecht-ptab@sternekessler.com
`dblock-ptab@sternekessler.com
`ttang-ptab@sternekessler.com
`
`
`PATENT OWNER:
`James Carmichael
`Stephen Schreiner
`CARMICHAEL IP LAW, PLLC
`jim@carmichaelip.com
`schreiner@carmichaelip.com
`
`Christopher Lee
`Richard Megley
`Brian Haan
`Ashley LaValley
`LEE SHEIKH MEGLEY & HAAN LLC
`clee@leesheikh.com
`rmegley@leesheikh.com
`bhaan@leesheikh.com
`alavalley@leesheikh.com
`
`Kenneth Weatherwax
`Patrick Maloney
`Jason Linger
`LOWENSTEIN & WEATHERWAX LLP
`weatherwax@lowensteinweatherwax.com
`maloney@lowensteinweatherwax.com
`linger@lowensteinweatherwax.com
`
`
`
`5
`
`
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