Paper 22
`
`Trials@uspto.gov
`Entered: September 1, 2020
`
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`LENOVO HOLDING COMPANY, INC., LENOVO (UNITED STATES)
`INC., AND MOTOROLA MOBILITY LLC,
`Petitioner,
`
`v.
`
`DODOTS LICENSING SOLUTIONS LLC,
`Patent Owner.
`_______________
`
`IPR2019-01278 (Patent 8,020,083 B1)
`IPR2019-01279 (Patent 8,510,407 B1)1
`_______________
`
`
`Before JAMES A. WORTH, AMBER L. HAGY, and SHARON FENICK,
`Administrative Patent Judges.
`
`FENICK, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`On August 31, 2020, we held a teleconference in the above-captioned
`proceedings. Judges Worth, Hagy, and Fenick participated, along with
`Petitioner’s counsel John Alemanni and Patent Owner’s counsel Perry
`
`
`1 This Order applies to each of the listed cases. The parties are not
`authorized to use this caption for subsequent papers.
`
`
`
`Trials@uspto.gov
`Entered: September 1, 2020
`
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`LENOVO HOLDING COMPANY, INC., LENOVO (UNITED STATES)
`INC., AND MOTOROLA MOBILITY LLC,
`Petitioner,
`
`v.
`
`DODOTS LICENSING SOLUTIONS LLC,
`Patent Owner.
`_______________
`
`IPR2019-01278 (Patent 8,020,083 B1)
`IPR2019-01279 (Patent 8,510,407 B1)1
`_______________
`
`
`Before JAMES A. WORTH, AMBER L. HAGY, and SHARON FENICK,
`Administrative Patent Judges.
`
`FENICK, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`On August 31, 2020, we held a teleconference in the above-captioned
`proceedings. Judges Worth, Hagy, and Fenick participated, along with
`Petitioner’s counsel John Alemanni and Patent Owner’s counsel Perry
`
`
`1 This Order applies to each of the listed cases. The parties are not
`authorized to use this caption for subsequent papers.
`
`
`
`IPR2019-01278 (Patent 8,020,083 B1)
`IPR2019-01279 (Patent 8,510,407 B1)
`
`Goldberg. A court reporter transcribed the teleconference, and Petitioner
`agreed to file the transcript as an exhibit in each proceeding.
`Patent Owner requested authorization to file, in each proceeding, a
`motion to strike allegedly new evidence and argument in Petitioner’s Reply
`relating to the prior art status of Berg2. In our Institution Decision in each
`proceeding, we concluded “based on the indicia on the face of Berg, and in
`light of the additional evidence cited by Petitioner, that there is a reasonable
`likelihood that Berg qualifies as a printed publication.” IPR2019-01278,
`Paper 8, 9; IPR2019-01279, Paper 7, 9 (citing, in each case, Hulu, LLC v.
`Sound View Innovs., LLC, IPR2018-01039, Paper 29 at 13, 17–18 (PTAB
`Dec. 20, 2019) (precedential)). Patent Owner did not address the status of
`Berg as a printed publication in the Patent Owner Response in either
`proceeding. See generally, IPR2019-01278, Paper 20; IPR2019-01279,
`Paper 18. In each proceeding, our Scheduling Order cautioned that any
`arguments for patentability not raised in the Patent Owner Response may be
`deemed waived. IPR2019-01278, Paper 9, 7; IPR2019-01279, Paper 8, 7;
`see also 37 C.F.R. § 42.23(a). Petitioner included in its Reply in each
`proceeding an argument that Berg properly qualifies as a printed publication.
`IPR2019-01278, Paper 22, 12–14; IPR2019-01279, Paper 21, 11–13. In
`each proceeding, Petitioner specifically noted that Patent Owner had not
`addressed this issue in its Patent Owner Response. IPR2019-01278, Paper
`22, 12 n.4; IPR2019-01279, Paper 21, 11 n.5. Patent Owner argued during
`the teleconference that to address this issue in its sur-replies would require
`
`
`2 Berg is an article by Clifford Berg titled “How Do I Create a Signed
`Castanet Channel?”. IPR2019-01278, Ex. 1007; IPR2019-01279, Ex. 1009;
`see IPR2019-01278, Ex. 1005; IPR2019-01279, Ex. 1005.
`
`2
`
`
`
`IPR2019-01278 (Patent 8,020,083 B1)
`IPR2019-01279 (Patent 8,510,407 B1)
`
`additional expense and time, including requiring cross-examination of
`Petitioner’s reply witness.
`Our Trial Practice Guide describes that “[i]n most cases, the Board is
`capable of identifying . . . and disregarding any new issues or belatedly
`presented evidence that exceeds the proper scope of reply or sur-reply,” and
`that therefore “striking the entirety or a portion of a party’s brief is an
`exceptional remedy that the Board expects will be granted rarely.” Patent
`Trial and Appeal Board Consolidated Trial Practice Guide November 20193
`(“Consolidated TPG”), 80. The Trial Practice Guide, however, also
`indicates that in some cases, including where “whether an issue is new or
`evidence is belatedly presented may be beyond dispute” and where the
`prejudice to a party of not striking such material is great, “the facts may
`merit considering a motion to strike.” Id. at 80–81. In light of Patent
`Owner’s arguments of prejudice and in view of the acknowledgement in the
`Petitioner’s Replies that this issue was not addressed by the Patent Owner in
`the Patent Owner Responses, we conclude that this may be one of the rare
`situations in which the remedy of striking a portion of a brief may be
`merited, and we grant authorization, in each proceeding, for the Patent
`Owner to file a motion to strike related to arguments and evidence relating to
`the prior art status of Berg.
`Patent Owner additionally requested leave to depose Petitioner’s
`technical expert (Dr. Madisetti) regarding other allegedly new arguments in
`the Petitioner’s Replies, noting that Patent Owner wishes to have the
`opportunity to discover whether Petitioner’s technical expert would disagree
`
`
`3 Available at
`https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf
`
`3
`
`
`
`IPR2019-01278 (Patent 8,020,083 B1)
`IPR2019-01279 (Patent 8,510,407 B1)
`
`with these arguments. In each proceeding, Petitioner submitted a declaration
`from Dr. Madisetti with its Petition but did not submit a supplemental
`declaration from Dr. Madisetti with its Reply. IPR2019-01278, Ex. 1003;
`IPR2019-01279, Ex. 1003. Our Trial Practice Guide contemplates that
`expert depositions after a Petitioner’s Reply will be cross-examinations
`relating to a new expert declaration submitted with a reply, and states that
`“[t]he sur-reply may not be accompanied by new evidence other than
`deposition transcripts of the cross-examination of any reply witness.”
`Consolidated TPG 73–74 (emphasis added) (citing Belden Inc. v. Berk–Tek,
`LLC, 805 F.3d 1064, 1081–82 (Fed. Cir. 2015)); see also id. at 7–8. While it
`did not chose to do so in either proceeding, Patent Owner could have
`deposed Dr. Madisetti during the time period after institution and before
`filing the Patent Owner’s Response. Id. at 6–7. While Patent Owner alleges
`the Reply in each proceeding contains additional new arguments, Patent
`Owner has not chosen to request authorization for a motion to strike relating
`to these alleged new arguments and related evidence, but only requested
`authorization for a motion to strike relating to the Berg issue. Patent Owner
`may address the merits of any allegedly new arguments in sur-reply. See id.
`at 80. However, as Petitioner’s technical expert is not a reply witness and no
`good cause has been adduced for allowing the requested deposition, we
`decline Patent Owner’s request for leave to cross-examine Petitioner’s
`technical expert in these proceedings.
`Patent Owner additionally has requested authorization to submit, in
`and with the Patent Owner’s sur-replies, new arguments and evidence
`directly responsive to Petitioner’s Replies. The Trial Practice Guide
`describes the scope of a sur-reply and submissions of evidence with a sur-
`
`4
`
`
`
`IPR2019-01278 (Patent 8,020,083 B1)
`IPR2019-01279 (Patent 8,510,407 B1)
`
`reply, and should Patent Owner exceed these, we may disregard such new
`issues or belatedly presented evidence, and, additionally, Petitioner may file
`a motion to exclude per the schedule set forth in our scheduling orders or
`seek authorization to file a motion to strike. Consolidated TPG 79–81.
`Therefore we will not provide any specific authorization regarding such
`submissions.
`While Patent Owner requested authorization to file motions to strike
`within a week of the Reply (see Consolidated TPG 81), due to technical
`issues on the part of the Board, this request was not addressed promptly, and
`any rulings in these proceedings on the motions to strike we authorize herein
`will likely not issue until September 8, 2020. We note that, in IPR2019-
`01278, the due date (DUE DATE 3) for Patent Owner to file a sur-reply is
`currently set by joint stipulation for September 9, 2020. IPR2019-01278,
`Paper 19, 2–3; IPR2019-01278, Paper 21. We additionally note that two
`different dates appear for DUE DATE 3 in the joint stipulation in IPR2019-
`01279. IPR2019-01279, Paper 19, 2 (setting DUE DATE 3 to Saturday,
`September 19, 2020), 3 (setting DUE DATE 3 to September 16, 2020);
`IPR2019-01279, Paper 20. Given the unforeseen delay and this ambiguity,
`we will set DUE DATE 3 in each case to September 18, 2020, and set DUE
`DATE 4 in each case to September 21, 2020.
`
`It is
`ORDERED that, in each proceeding, Patent Owner may file a motion
`to strike arguments in the Petitioner’s Reply relating to the prior art status of
`Berg and evidence filed in support of these arguments, by September 2,
`2020, limited to three pages.
`
`5
`
`
`
`IPR2019-01278 (Patent 8,020,083 B1)
`IPR2019-01279 (Patent 8,510,407 B1)
`
`
`FURTHER ORDERED that, in each proceeding, Petitioner may file
`an opposition to Patent Owner’s motion to strike, by September 4, 2020,
`limited to three pages;
`FURTHER ORDERED that Patent Owner’s request for leave to
`cross-examine Petitioner’s technical expert in these proceedings is DENIED;
`FURTHER ORDERED that Patent Owner’s request to submit new
`evidence and argument in Patent Owner’s sur-replies is neither granted nor
`denied, but that Patent Owner is directed to the Patent Trial and Appeal
`Board Consolidated Trial Practice Guide November 2019 in deciding on the
`scope of sur-reply and submissions of evidence with a sur-reply;
`FURTHER ORDERED that the DUE DATE 3, the due date for Patent
`Owner’s sur-reply to Petitioner’s Reply, in each of IPR2019-01278 and
`IPR2019-01279 is set to September 18, 2020; and
`FURTHER ORDERED that the DUE DATE 4, the due date for
`requests for oral argument, in each of IPR2019-01278 and IPR2019-01279 is
`set to September 21, 2020.
`
`
`
`
`
`6
`
`
`
`IPR2019-01278 (Patent 8,020,083 B1)
`IPR2019-01279 (Patent 8,510,407 B1)
`
`PETITIONER:
`John C. Alemanni
`Matthew J. Meyer
`KILPATRICK TOWNSEND & STOCKTON LLP
`jalemanni@kilpatricktownsend.com
`mmeyer@kilpatricktownsend.com
`
`PATENT OWNER:
`Lewis E. Hudnell, III
`HUDNELL LAW GROUP P.C.
`lewis@hudnelllaw.com
`
`Perry Goldberg
`PROGRESS LLP
`goldberg@progressllp.com
`
`
`7
`
`
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