`Tel: 571-272-7822
`
`Paper 9
`Date: January 13, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BLOOMREACH, INC.,
`Petitioner,
`
`v.
`
`GUADA TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`IPR2019-01304
`Patent 7,231,379
`____________
`
`
`Before MIRIAM L. QUINN, KIMBERLY McGRAW, and
`MATTHEW J. McNEILL, Administrative Patent Judges.
`
`McNEILL, Administrative Patent Judge.
`
`
`
`
`ORDER
`Denying Petitioner’s Request for Rehearing of Decision Denying Leave to
`File Reply to Patent Owner’s Preliminary Response
`37 C.F.R. § 42.71
`On November 4, 2019, the Board received an email from Petitioner
`requesting authorization to file a reply to Patent Owner’s Preliminary
`Response (Paper 6, “Prelim. Resp.”). Petitioner requested authorization to
`respond to Patent Owner’s proposed constructions and related arguments
`regarding the phrases “jumping to the at least one node,” “jumping to the
`vertex,” and “jumping.” Patent Owner opposed Petitioner’s request.
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`IPR2019-01304
`Patent 7,231,379
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`On November 18, 2019, Judges McNeill, McGraw, and Quinn
`initiated a scheduled telephonic conference to discuss Petitioner’s request.
`Isaac Rabicoff, counsel for Patent Owner, was present. Petitioner failed to
`attend.
`Although Board rules do not specifically authorize a reply to a Patent
`Owner’s Preliminary Response, a Petitioner may seek leave to file such a
`reply, and any such request must make a showing of good cause. 37 C.F.R.
`§ 42.108(c). In a November 25, 2019 Order (the “Order”), the Board denied
`Petitioner’s request, finding that Petitioner had failed to show good cause
`based on the totality of the circumstances.
`Petitioner filed a Request for Rehearing (Paper 8, “Request”), arguing
`that good cause exists for leave to file a Reply.
`Petitioner argues that in the Preliminary Response, Patent Owner
`proposed new constructions for the terms “jumping to the node” and
`“jumping to the vertex” and falsely represented that Petitioner had adopted
`these proposed constructions. Request 2. Petitioner argues that absent a
`reply, Petitioner will suffer prejudice from a one-sided record reflecting
`Patent Owner’s proposed constructions and false representations without an
`opportunity to reply. Id. According to Petitioner, it was unforeseeable that
`Patent Owner would propose constructions for “jumping to the node” and
`“jumping to the vertex.” Id. at 3. Petitioner also argues that it was
`unforeseeable that Patent Owner would falsely represent that Petitioner
`agreed to these constructions. Id. at 4.
`Petitioner also argues that Patent Owner’s proposed constructions are
`incorrect because Patent Owner’s constructions are nonsensical, unsupported
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`Patent 7,231,379
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`by the intrinsic record, and contradicted by Patent Owner’s district court
`infringement positions. Id. at 4.
`Under 37 C.F.R. § 42.71(d), a party dissatisfied with a decision may
`file a request for rehearing. The request “must specifically identify all
`matters the party believes the Board misapprehended or overlooked, and the
`place where each matter was previously addressed in a motion, an
`opposition, or a reply.” Id.
`Petitioner has not persuaded us that we misapprehended or overlooked
`any argument or evidence showing good cause for leave for Petitioner to file
`a Reply. As an initial matter, Petitioner has not identified any argument or
`evidence that was overlooked or misapprehended in the Order.
`However, even considering Petitioner’s arguments in the Request in
`favor of leave for a reply brief, we are not persuaded that Petitioner has
`shown good cause. Petitioner’s argument that it was unforeseeable that
`Patent Owner would propose construing “jumping to the [at least one
`node/vertex]” is unpersuasive because Petitioner was on notice of Patent
`Owner’s claim construction position regarding these claim terms. In
`particular, as noted in the Order, Petitioner proposed a construction for the
`term “jumping” in the Petition (Paper 1, “Pet.”), citing Patent Owner’s
`Opposition to Defendant’s Motion to Dismiss in related District Court
`litigation. Pet. 14‒15 (citing Ex. 1003 at 18). Petitioner did not propose
`explicit constructions for “jumping to the at least one node” or “jumping to
`the vertex.” See Pet. 10‒15. But Petitioner was aware of Patent Owner’s
`positions regarding the constructions of “jumping to the [at least one
`node/vertex]” because Patent Owner proposed construing these terms in the
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`same Opposition that Petitioner cited, and indeed on the same page of that
`Opposition. See Ex. 1003 at 18.
`Petitioner also argues that absent a reply, the record is left “one-
`sided,” resulting in prejudice to Petitioner. Request 2. We disagree. In Patent
`Owner’s Preliminary Response, Patent Owner proposed construing
`“jumping to the [at least one node/vertex]” to mean “the system jumping to
`the [at least one node/vertex].” Id. Patent Owner stated that “[p]resumably,
`[Petitioner] thereby also adopts the construction of ‘Jumping to the At Least
`One Node’ and ‘Jumping to the Vertex.’” Id. However, Patent Owner
`provides no analysis or explanation in the Preliminary Response why the
`Board should adopt Patent Owner’s proposed construction of the term
`“jumping to the [at least one node/vertex]” beyond its presumption that
`Petitioner agrees with its construction. See Prelim. Resp. 2 n.1.
`Patent Owner’s proposed construction regarding Petitioner’s claim
`construction position does not create a “one-sided record” resulting in
`prejudice to Petitioner because Patent Owner presented no arguments to
`which Petitioner needs additional briefing for a response. Patent Owner’s
`presumption that Petitioner agrees with its proposed claim construction is at
`odds with Petitioner’s analysis in the Petition, which implicitly construed
`“jumping to the [at least one node/vertex]” to not require “the system”
`limitation proposed by Patent Owner. See, e.g., Pet. 26‒29. Thus,
`Petitioner’s position regarding Patent Owner’s presumption is clear from the
`Petition.
`At this stage of the proceeding and on this record, both parties have
`provided argument regarding these limitations under competing
`constructions (implicit or explicit). Accordingly, at this stage of the
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`proceeding, we are not persuaded that good cause has been shown to justify
`additional briefing. If inter partes review is instituted in this case, both
`Petitioner and Patent Owner will have the opportunity to address these issues
`further.
`For these reasons and based on the totality of the circumstances,
`Petitioner has not persuaded us that we misapprehended or overlooked any
`matters that were previously addressed in a motion, an opposition, or a reply.
`
`
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner’s Request for Rehearing of Petitioner’s
`Request for Authorization to File a Reply to Patent Owner’s Preliminary
`Response is denied.
`
`
`
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`IPR2019-01304
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`PETITIONER:
`
`Dion Bregman
`Michael Lyons
`Ahren Hsu-Hoffman
`MORGAN LEWIS
`dion.bregman@morganlewis.com
`michael.lyons@morganlewis.com
`ahren.hsu-hoffman@morganlewis.com
`
`
`PATENT OWNER:
`
`Isaac Rabicoff
`RABICOFF LAW
`isaac@rabilaw.com
`
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