`571-272-7822
`
`
`Paper 9
`Entered: August 8, 2019
`
`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); 42.108(c)
`
`
`
`
`
`
`
`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 July 22, 2019, Petitioner sent an email requesting a call to seek
`
`authorization to file a Reply to Patent Owner’s Preliminary Response. On
`July 31, 2019, 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 request. We were unpersuaded by Petitioner’s
`arguments, and we denied Petitioner’s request on the call. This Order
`memorializes our decision, and provides our reasoning.
`
`Petitioner sought a Reply to address Patent Owner’s alleged
`mischaracterizations of the asserted art and prosecution history made in the
`Preliminary Response in the context of § 325(d). Petitioner argued that it
`could not have anticipated these alleged mischaracterizations. Petitioner
`argued, for example, that it could not have anticipated that Patent Owner
`would characterize Murakawa (which was not before the Office) as being
`duplicative of Ahonen (which was before the Office). Patent Owner argued
`that Petitioner could have anticipated Patent Owner’s arguments, and that
`Petitioner failed to show good cause to warrant a Reply.
`
`In requesting a Reply to a Preliminary Response, a Petitioner must
`show good cause. 37 C.F.R. § 42.108(c). We found that Petitioner failed to
`show good cause. In particular, Petitioner failed to show that it could not
`have anticipated Patent Owner’s arguments. For example, we find it
`foreseeable that Patent Owner would argue that new art (Murakawa) is
`duplicative of art (Ahonen) that was before the Office during prosecution,
`especially here where Petitioner asserts that Ishiyama (which also was
`before the Office), combined with Murakawa, renders challenged claims
`unpatentable. Furthermore, at this stage of the proceeding, we are able to
`
`
`
`2
`
`
`
`IPR2019-00819 (Patent 7,620,810 B2)
`IPR2019-00820 (Patent 7,937,581 B2)
`
`determine whether the parties have properly characterized the asserted art
`and prosecution history without additional briefing.
`
`Accordingly, we deny Petitioner’s request.
`
`It is hereby ORDERED that Petitioner’s request for authorization to
`file a Reply to Patent Owner’s Preliminary Response is denied.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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`
`
`
`
`
`
`
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`
`
`
`
`
`
`3
`
`
`
`IPR2019-00819 (Patent 7,620,810 B2)
`IPR2019-00820 (Patent 7,937,581 B2)
`
`PETITIONER:
`
`Michael D. Specht
`Daniel S. Block
`Timothy L. Tang
`STERNE, KESSLER, GOLDSTEIN & FOX
`mspecht-ptab@sternekessler.com
`dblock-ptab@sternekessler.com
`ttang-ptab@sternekessler.com
`
`
`PATENT OWNER:
`
`James T. Carmichael
`CARMICHAEL IP LAW, PLLC
`jim@carmichaelip.com
`
`Christopher J. Lee
`Richard B. Megley
`Brian E. Haan
`Ashley E. LaValley
`LEE SHEIKH MEGLEY & HAAN LLC
`clee@leesheikh.com
`rmegley@leesheikh.com
`bhaan@leesheikh.com
`alavalley@leesheikh.com
`
`Kenneth J. Weatherwax
`Patrick Maloney
`Jason C. Linger
`LOWENSTEIN & WEATHERWAX LLP
`weatherwax@lowensteinweatherwax.com
`maloney@lowensteinweatherwax.com
`linger@lowensteinweatherwax.com
`
`
`
`4
`
`
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