Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
` Paper 7
`Entered: May 27, 2020
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MAXELL, LTD.,
`Patent Owner.
`
`
`IPR2020-00407 (Patent 6,748,317 B2)
`IPR2020-00408 (Patent 6,430,498 B1)
` IPR2020-00409 (Patent 6,580,999 B2)1
`
`
`
`Before LYNNE E. PETTIGREW, MINN CHUNG, JOHN A. HUDALLA,
`and JASON W. MELVIN, Administrative Patent Judges.2
`
`PETTIGREW, Administrative Patent Judge.
`
`
`
`ORDER
`Authorizing Reply and Sur-reply
`37 C.F.R. §§ 42.5(a), 42.20(d), 42.108(c)
`
`
`
`1 This order will be entered in each case. The parties are not authorized to
`use this caption.
`2 This is not an order from an expanded panel of the Board. Administrative
`Patent Judges comprising the three-judge panels in all three proceedings are
`listed.
`
`
`Tel: 571-272-7822
`
`
`
`
` Paper 7
`Entered: May 27, 2020
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MAXELL, LTD.,
`Patent Owner.
`
`
`IPR2020-00407 (Patent 6,748,317 B2)
`IPR2020-00408 (Patent 6,430,498 B1)
` IPR2020-00409 (Patent 6,580,999 B2)1
`
`
`
`Before LYNNE E. PETTIGREW, MINN CHUNG, JOHN A. HUDALLA,
`and JASON W. MELVIN, Administrative Patent Judges.2
`
`PETTIGREW, Administrative Patent Judge.
`
`
`
`ORDER
`Authorizing Reply and Sur-reply
`37 C.F.R. §§ 42.5(a), 42.20(d), 42.108(c)
`
`
`
`1 This order will be entered in each case. The parties are not authorized to
`use this caption.
`2 This is not an order from an expanded panel of the Board. Administrative
`Patent Judges comprising the three-judge panels in all three proceedings are
`listed.
`
`
`
`IPR2020-00407 (Patent 6,748,317 B2)
`IPR2020-00408 (Patent 6,430,498 B1)
`IPR2020-00409 (Patent 6,580,999 B2)
`
`
`On May 27, 2020, a conference call was held among counsel for
`Apple Inc. (Petitioner), counsel for Maxell, Ltd. (Patent Owner), and Judges
`Pettigrew, Chung, and Melvin. This order memorializes the rulings made on
`the call. The purpose of the call was to address Petitioner’s request for
`authorization to file a reply to Patent Owner’s Preliminary Response in each
`of these proceedings. Petitioner seeks leave to address two issues in a reply:
`(1) the Board’s discretion under 35 U.S.C. § 314(a), and (2) the public
`accessibility of the Abowd reference. We address these issues in turn.
`Discretion Under 35 U.S.C. § 314(a)
`Petitioner seeks a 10-page reply in each of these proceedings to
`address factors considered by the Board in determining whether to exercise
`its discretion to deny institution under 35 U.S.C. § 314(a) when there is a
`related, parallel district court action involving the challenged patent. These
`factors are set forth in a recent precedential Board order, Apple Inc. v. Fintiv,
`Inc., IPR2020-00019, Paper 11 at 5–16 (PTAB Mar. 20, 2020) (precedential,
`designated May 5, 2020) (“Fintiv”). Petitioner also requests authorization
`for Patent Owner to file a 10-page sur-reply addressing the Fintiv factors.
`Patent Owner does not oppose Petitioner’s request for supplemental briefing
`by the parties to address the Fintiv factors.
`We authorize the requested supplemental briefing by the parties to
`address the Fintiv factors. The briefing may be accompanied by
`documentary evidence in support of any facts asserted in the supplemental
`briefing but may not be accompanied by declaratory evidence.
`Public Accessibility of Abowd
`In the Preliminary Response in each of these proceedings, Patent
`Owner argues that a “DO NOT CIRCULATE” stamp on the sleeve of a
`
`2
`
`
`
`IPR2020-00407 (Patent 6,748,317 B2)
`IPR2020-00408 (Patent 6,430,498 B1)
`IPR2020-00409 (Patent 6,580,999 B2)
`
`book containing a copy of Abowd, one of Petitioner’s asserted references,
`indicates the reference was not publicly accessible. See, e.g., IPR2020-
`00407, Paper 6 at 47 (citing Ex. 1009, 38 (Munford Decl.)). Petitioner seeks
`leave to file a one-page supplemental declaration from its library expert,
`Mr. Jacob Munford, addressing the meaning of the “DO NOT
`CIRCULATE” stamp. Petitioner also seeks leave to include one additional
`page in its reply directed to this issue.
`Petitioner asserted on the conference call that Patent Owner’s
`argument in the Preliminary Response was unforeseeable because the “DO
`NOT CIRCULATE” stamp has no bearing on the public accessibility of
`Abowd, and therefore Mr. Munford’s Declaration (Ex. 1009) did not address
`the issue. Accordingly, Petitioner argued there is good cause to grant its
`request to address this issue in its reply. In response, Patent Owner argued,
`among other things, that Petitioner failed to meet its burden in the Petition to
`show with particularity that the reference was a publicly accessible printed
`publication.
`After considering both parties’ positions, we determine that good
`cause exists to authorize Petitioner’s request for one additional page in its
`reply to respond to Patent Owner’s argument regarding the “DO NOT
`CIRCULATE” stamp. See 37 C.F.R. § 42.108(c). We also authorize
`Petitioner to submit a one-page supplemental declaration from Mr. Munford
`directed to this narrow issue. See 37 C.F.R. § 42.5(a). Patent Owner is
`authorized to include one additional page in its sur-reply to respond to the
`arguments in Petitioner’s reply.
`
`3
`
`
`
`IPR2020-00407 (Patent 6,748,317 B2)
`IPR2020-00408 (Patent 6,430,498 B1)
`IPR2020-00409 (Patent 6,580,999 B2)
`
`
`Accordingly, it is
`ORDERED that Petitioner is authorized to file a reply to Patent
`Owner’s Preliminary Response in each of these proceedings, due by June 4,
`2020;
`FURTHER ORDERED that Patent Owner is authorized to file a
`sur-reply to Petitioner’s reply in each of these proceedings, due by June 12,
`2020;
`FURTHER ORDERED that Petitioner’s reply in each proceeding may
`include up to 10 pages addressing the Fintiv factors relating to discretionary
`denial under 35 U.S.C. § 314(a);
`FURTHER ORDERED that Patent Owner’s sur-reply in each
`proceeding may include up to 10 pages addressing the Fintiv factors;
`FURTHER ORDERED that the reply and sur-reply in each
`proceeding may be accompanied by documentary evidence in support of any
`facts asserted with regard to the Fintiv factors;
`FURTHER ORDERED that Petitioner’s reply in each proceeding may
`include up to one page addressing the relevance of the “DO NOT
`CIRCULATE” stamp on the sleeve of a book containing a copy of the
`Abowd reference in Exhibit 1009, and Petitioner’s reply may be
`accompanied by a one-page declaration from Mr. Munford addressing this
`issue; and
`FURTHER ORDERED that Patent Owner’s sur-reply in each
`proceeding may include up to one page responding to Petitioner’s reply
`arguments and evidence on the relevance of the “DO NOT CIRCULATE”
`stamp.
`
`
`
`
`4
`
`
`
`IPR2020-00407 (Patent 6,748,317 B2)
`IPR2020-00408 (Patent 6,430,498 B1)
`IPR2020-00409 (Patent 6,580,999 B2)
`
`PETITIONER:
`
`Adam P. Seitz
`Paul R. Hart
`Jennifer C. Bailey
`ERISE IP, P.A.
`adam.seitz@eriseip.com
`paul.hart@eriseip.com
`jennifer.bailey@eriseip.com
`
`
`PATENT OWNER:
`
`Robert G. Pluta
`Amanda S. Bonner
`Luiz Miranda
`James A. Fussell
`Saqib J. Siddiqui
`rpluta@mayerbrown.com
`astreff@mayerbrown.com
`lmiranda@mayerbrown.com
`jfussell@mayerbrown.com
`ssiddiqui@mayerbrown.com
`
`
`5
`
`
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