Paper 25
`
`Trials@uspto.gov
`Entered: September 9, 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
`
`
`In each of the two captioned proceedings, Lenovo Holding Company,
`Inc., Lenovo (United States) Inc., and Motorola Mobility LLC (“Petitioner”)
`challenges a patent owned by DoDots Licensing Solutions LLC (“Patent
`
`
`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 9, 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
`
`
`In each of the two captioned proceedings, Lenovo Holding Company,
`Inc., Lenovo (United States) Inc., and Motorola Mobility LLC (“Petitioner”)
`challenges a patent owned by DoDots Licensing Solutions LLC (“Patent
`
`
`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)
`
`Owner”). IPR2019-01278, Paper 2; IPR2019-01279, Paper 2. On January
`9, 2020, we instituted trial in IPR2019-1279, and on January 24, 2020, we
`instituted trial in IPR2019-1278. IPR2019-01279, Paper 7; IPR2019-01278,
`Paper 8 (“Institution Decision”).
`Patent Owner timely filed its Response in each proceeding. IPR2019-
`01278, Paper 20 (“Patent Owner’s Response,” filed May 6, 2020); IPR2019-
`01279, Paper 18 (filed April 27, 2020). On August 5, 2020, Petitioner
`timely filed its Reply in each proceeding. IPR2019-01278, Paper 22;
`IPR2019-01279, Paper 21.
`In each proceeding, on September 2, 2020, after receiving an Order
`authorizing the filing of a motion from the Board, Patent Owner filed a
`Motion to Strike. IPR2019-01278, Paper 24 (“Mot.”); IPR2019-01279,
`Paper 23; see IPR2019-01278, Paper 23 (“Order Authorizing Mot.”);
`IPR2019, Paper 22. On September 4, 2020, in each proceeding, Petitioner
`filed its opposition to the Motion to Strike. IPR2019-01278, Paper 25
`(“Opp.”); IPR2019-01279, Paper 24.
`For the reasons below, we grant Patent Owner’s Motion to Strike.
`
`The Parties’ Positions2
`In the Motion, Patent Owner requests that the Board strike the
`evidence and argument submitted with Petitioners’ Reply relating to the
`
`
`2 In the balance of our discussion, while the facts and analysis are common
`to both proceedings, we refer to the papers and exhibits filed in Case
`IPR2019-01278 for convenience.
`
`2
`
`
`
`IPR2019-01278 (Patent 8,020,083 B1)
`IPR2019-01279 (Patent 8,510,407 B1)
`
`status of Berg3 as prior art4. Mot. 1. According to Patent Owner, the
`argument and evidence relating to this issue is improper as not responsive to
`prior briefing, and “[u]nless the evidence and argument are stricken, Patent
`Owner will be put to the task of submitting rebuttal evidence and argument
`in its sur-reply and also will need to address the issue in its demonstrative
`exhibits and at trial.” Id. at 2. Patent Owner argues that it would therefore
`incur “needless expense” and also be “a waste of the Board’s time given that
`the new evidence and argument is so clearly improper.” Id.
`Petitioner argues that Patent Owner has “repeatedly challenged the
`printed publication status of Berg during communications with the Board
`and in related proceedings.” Opp. 1. Petitioner bases this argument on its
`contention that Patent Owner has raised the issue during two telephone
`conferences with the Board, and also in another related proceeding. Id. at 1–
`2. Petitioner argues that during a first telephone conference, in July 2020,
`Patent Owner “indicated that it planned to depose” a declarant (Catherine
`Vassilkova) whose declaration related to the public accessibility of Berg. Id.
`at 2. Petitioner additionally argues that during an August 31, 2020,
`telephone conference regarding the Patent Owner’s request for authorization
`to file the Motion to Strike, Patent Owner “again argued that Petitioner had
`
`
`3 Berg is an article by Clifford Berg titled “How Do I Create a Signed
`Castanet Channel?”. IPR2019-01278, Ex. 1007; see IPR2019-01278,
`Ex. 1005.
`4 The law governing inter partes review provides that such reviews must be
`based on “a ground that could be raised under section 102 [anticipation] or
`103 [obviousness] and only on the basis of prior art consisting of patents or
`printed publications.” 35 U.S.C. § 311(b).
`
`3
`
`
`
`IPR2019-01278 (Patent 8,020,083 B1)
`IPR2019-01279 (Patent 8,510,407 B1)
`
`not established Berg as a printed publication.” Id.5 Petitioner also argues
`that Patent Owner has challenged the publication status of Berg in another
`inter partes review (IPR2019-00988). Id.
`Petitioner additionally argues that its submission was properly
`responsive to our Institution Decision, in which we made a preliminary
`finding that Berg qualifies as a printed publication. Id. (citing Patent Trial
`and Appeal Board Consolidated Trial Practice Guide November 2019
`(“Consolidated TPG”), 73); Institution Decision 9.
`Lastly, Petitioner argues that this situation does not merit the
`“exceptional remedy” of striking a portion of the brief, casting any prejudice
`to the Patent Owner as minimal. Id. at 3 (quoting Consolidated TPG, 80).
`
`Analysis
`Under the Board’s rules, a petitioner’s reply “may only respond to
`arguments raised in the corresponding . . . patent owner response.” 37 CFR
`§ 42.23(b) (2017); see also Ariosa Diagnostics v. Verinata Health, Inc., 805
`F.3d 1359, 1367 (Fed. Cir. 2015) (describing that under our rules, in inter
`partes review proceedings, a petitioner’s reply is “limited to a true rebuttal
`role” (citing 37 CFR §§ 42.104(b)(5), 42.23(b))). A petitioner’s reply is not
`an opportunity to “raise[] a new issue or belatedly present[] evidence,” but
`rather can “help crystalize issues for decision.” Consolidated TPG, 74.
`We do not agree that Patent Owner’s statements in two telephone
`conferences or contentions in another inter partes review provide Petitioner
`an opportunity to belatedly present new argument or evidence regarding the
`public accessibility of Berg. The proper scope of reply to Patent Owner’s
`
`5 A court reporter transcribed this telephone conference, however the
`transcript has not yet been entered as an exhibit in the proceedings.
`
`4
`
`
`
`IPR2019-01278 (Patent 8,020,083 B1)
`IPR2019-01279 (Patent 8,510,407 B1)
`
`Response was not broadened by the indication in the July 2020 telephone
`conference, which occurred after that Patent Owner’s Response had been
`filed, that Patent Owner would seek to depose Ms. Vassilkova if her
`affidavit was filed by Petitioner. Nor could it have been broadened
`retroactively, by Patent Owner’s discussion of its position in a telephone
`conference, after the Petitioner’s Reply was filed.
`Patent Owner’s position on this issue in a related inter partes review
`also does not raise the issue in these proceedings. We recognize that in
`certain situations evidence and positions in other proceedings may be
`considered in an inter partes proceeding. See, e.g., 37 CFR
`§ 42.51(b)(1)(iii) (requiring a party to serve relevant information
`inconsistent with a position advanced by that party); Consolidated TPG 48
`(describing consideration of statements regarding claim construction made
`in other proceedings). However, Petitioner has not argued, and we do not
`apprehend, any reason why Patent Owner’s argument in the related inter
`partes review should be considered in these proceedings.
`Petitioner quotes a portion of the Consolidated TPG’s provision that,
`“in response to issues arising from the Supreme Court’s decision in SAS
`(138 S. Ct. at 1358), the Board will permit the petitioner, in its reply brief, to
`address issues discussed in the institution decision.” Consolidated TPG, 73
`(quoted in part at Opp. 2). However, after one intermediating sentence, the
`Consolidated TPG provides: “Petitioner may not submit new evidence or
`argument in reply that it could have presented earlier, e.g. to make out a
`prima facie case of unpatentability.” Id. We recognize that this is an
`unusual situation, in that Petitioner does not seek to raise a new issue, but
`rather to buttress a portion of its prima facie case, even though Patent Owner
`
`5
`
`
`
`IPR2019-01278 (Patent 8,020,083 B1)
`IPR2019-01279 (Patent 8,510,407 B1)
`
`has not attacked that portion of Petitioner’s case for unpatentability.
`Nonetheless, Petitioner has not shown or attempted to show that this
`argument and the associated evidence could not have been presented earlier
`in support of its case of unpatentability, and it is obviously not submitted in
`rebuttal, as Patent Owner did not address the issue. We therefore agree with
`Patent Owner that Petitioner’s arguments regarding the prior art status of
`Berg were improperly included in the Reply (Section III.B).
`With respect to the proper remedy in such cases, the Consolidated
`TPG notes that “[t]he Board is not required to attempt to sort proper from
`improper portions of the reply or sur-reply” and that a reply that raises a new
`issue might not be considered. Consolidated TPG 74. As we acknowledged
`in our Order authorizing the motion to strike, “striking the entirety or a
`portion of a party’s brief is an exceptional remedy that the Board expects
`will be granted rarely.” Id. at 80 (quoted at Order Authorizing Mot. 3).
`However, in this case, Petitioner’s characterization of Patent Owner’s time
`and effort in addressing an untimely argument in its Sur-Reply as “minimal”
`and limited to the cost of deposing Ms. Vassilkova does not convince us that
`this is not that rare case. Opp. 3. Rather, depending on whether Patent
`Owner decides to address the prior art status of Berg in sur-reply, the burden
`might also involve filing additional evidence and related argument; this
`burden would be borne mostly by Patent Owner, unnecessarily in this
`situation in which the Patent Owner waived argument on the issue Petitioner
`seeks to buttress. See Mot. 1, Opp. 3. Therefore, we determine that this is a
`case in which an untimely argument and related evidence should be stricken
`from the brief.
`
`6
`
`
`
`IPR2019-01278 (Patent 8,020,083 B1)
`IPR2019-01279 (Patent 8,510,407 B1)
`
`
`The affidavit of Ms. Vassilkova and the exhibit titled “Internet
`Archive Page Showing Library of Congress Catalog as of January 20, 1998”
`are referred to in the Reply only in the section of the Reply relating to the
`prior art status of Berg. Reply, 11–13. While a portion of the deposition of
`Patent Owner’s expert additionally is used in this section, Patent Owner does
`not argue, and we do not determine, that this portion of the deposition relates
`only to the prior art status of Berg and should be stricken.
`Going forward, the panel will not consider, and the parties should not
`present arguments (including in Patent Owner’s Sur-reply and at the oral
`hearing, if requested) relating to (1) the untimely discussion in section III.B
`of the Reply; (2) the affidavit of Ms. Vassilkova; and (3) the exhibit titled
`“Internet Archive Page Showing Library of Congress Catalog as of January
`20, 1998.”
`
`Accordingly, it is:
`ORDERED that Patent Owner’s Motion to Strike in each proceeding
`is granted as discussed above; and
`FURTHER ORDERED that, in each proceeding, the panel will not
`consider, and the parties should not present arguments (including in Patent
`Owner’s Sur-reply and at the oral hearing, if requested) relating to (1) the
`untimely discussion in section III.B of the Reply in each proceeding; (2) the
`affidavit of Ms. Vassilkova (IPR2019-01278, Exhibit 1017; IPR2019-01279,
`Exhibit 1017); and (3) the exhibit titled “Internet Archive Page Showing
`Library of Congress Catalog as of January 20, 1998” (IPR2019-01278,
`Exhibit 1018; IPR2019-01279, Exhibit 1018).
`
`
`
`
`7
`
`
`
`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
`
`
`
`8
`
`
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