`571-272-7822
`
`
`Paper 11
`Entered: August 20, 2019
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC., INSTAGRAM, LLC and WHATSAPP INC.,
`Petitioner,
`
`v.
`
`BLACKBERRY LIMITED,
`Patent Owner.
`____________
`
`Case IPR2019-00924 (Patent 8,209,634 B2)
`Case IPR2019-00925 (Patent 8,209,634 B2)
`
`____________
`
`
`
`Before, MIRIAM L. QUINN, GREGG I. ANDERSON, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5(a)
`
`
`
`
`
`
`
`IPR2019-00924 (Patent 8,209,634 B2)
`IPR2019-00925 (Patent 8,209,634 B2)
`
`
`Petitioner requested via email authorization to file a Reply to Patent
`Owner’s Preliminary Response to address Patent Owner’s arguments
`regarding discretionary denial under 35 U.S.C. §§ 314(a), 325(d). Patent
`Owner opposes the request. On another matter concerning the same parties
`(IPR2019-00787), the Board received the same email request, and
`authorized further briefing after holding a conference call with the parties.
`This panel is aware that Petitioner filed the Petitions on the captioned
`proceedings on April 4, 2019, which was before NHK Spring v. Intri-Plex
`Technologies1 was made precedential on May 7, 2019. The panel in this
`case is of the view that the discretionary denial issues that Petitioner would
`brief are narrow, and most of the facts have been laid out in Patent Owner’s
`Preliminary Response.
`ORDERED that Petitioner is authorized to file a Reply in each
`proceeding of no more than three pages, due three business days from the
`date of the issuance of this Order. The Reply is limited to the Board’s
`exercise of discretion to deny institution under 35 U.S.C. § 314(a) and/or
`§ 325(d).
`FURTHER ORDERED that Patent Owner is authorized to file in each
`proceeding a Sur-reply of no more than three pages, due three business days
`from the filing of Petitioner’s Reply. The Sur-reply is limited to issues
`raised in the Reply.
`
`
`
` Case IPR2018-00752 (PTAB Sept. 12, 2018) (Paper 8) (precedential).
`
` 1
`
`2
`
`
`
`IPR2019-00924 (Patent 8,209,634 B2)
`IPR2019-00925 (Patent 8,209,634 B2)
`
`PETITIONER:
`
`Heidi Keefe
`hkeefe@cooley.com
`
`Andrew Mace
`amace@cooley.com
`
`PATENT OWNER:
`
`Michael T. Hawkins
`hawkins@fr.com
`
`Ogi Zivojnovic
`ogizivojnovic@quinnemanuel.com
`
`James M. Glass
`jimglass@quinnemanuel.com
`
`Nicholas Stephens
`nstephens@fr.com
`
`Kenneth W. Darby
`kdarby@fr.com
`
`Kim Leung
`kim.leung@fr.com
`
`Craig A. Deutsch
`deutsch@fr.com
`
`3
`
`