`Trials@uspto.gov
`Date: June 18, 2020
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`HP INC., MICROSOFT CORPORATION, DELL INC.,
`DELL PRODUCTS LP, LENOVO (UNITED STATES) INC.,
`and MOTOROLA MOBILITY LLC,
`Petitioner,
`v.
`NEODRON LTD.,
`Patent Owner.
`
`IPR2020-00459
`Patent 8,946,574 B2
`
`Before MIRIAM L. QUINN, PATRICK M. BOUCHER, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`HOWARD, Administrative Patent Judge.
`
`ORDER
`Authorizing Reply and Sur-reply
`37 C.F.R. § 42.5
`
`HP Inc., Microsoft Corporation, Dell Inc., Dell Products LP, Lenovo
`(United States) Inc., and Motorola Mobility LLC. (collectively,
`“Petitioner”), filed a Petition for inter partes review of U.S. Patent No.
`Patent 8,946,574 B2. Neodron Ltd. (“Patent Owner”) filed a Preliminary
`Response arguing that “[u]nder the PTAB’s precedential orders in NHK
`
`
`
`
`
`IPR2020-00459
`Patent 8,946,574 B2
`Spring and Fintiv, the Board should exercise its discretion to deny institution
`under § 314(a).” Paper 10, 1.
`On May 5, 2020, the Board made precedential an order in Apple v.
`Fintiv Inc., IPR2020-00019, Paper 11 (March 20, 2020), which identifies the
`factors to be considered when a patent owner raises an argument for
`discretionary denial of petition based on an earlier trial date in a parallel
`proceeding in another forum, under NHK Spring Co. v. Intri-Plex Techs.,
`Inc., IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) (precedential). The
`Fintiv order was made precedential after the filing of the Petition here. It is
`appropriate to provide Petitioner an opportunity to address Fintiv, and we
`provide such an opportunity in a Reply, as set forth below.
`The parties are further instructed to notify the Board of any decision
`by the district court that significantly impacts the litigation schedule. The
`parties shall file such notice within two business days of the issuance of the
`decision.
`The parties should, to the extent possible, provide factual, non-
`speculative information in their submissions. A decision regarding a
`discretionary denial should not rest on incomplete, inconsistent, or
`speculative information.
`Accordingly, it is
`ORDERED that Petitioner may file a reply brief of no more than 7
`pages by June 25, 2020, addressing the Fintiv factors;
`FURTHER ORDERED that Patent Owner may file a sur-reply of no
`more than 7 pages by July 2, 2020, addressing only the issues raised in
`Petitioner’s reply and the Fintiv factors; and
`
`2
`
`
`
`IPR2020-00459
`Patent 8,946,574 B2
`FURTHER ORDERED that, as specified above, the parties shall
`notify the Board of any decision by the district court that significantly
`affects the litigation schedule.
`
`3
`
`
`
`IPR2020-00459
`Patent 8,946,574 B2
`FOR PETITIONER:
`
`James Heintz
`Jim.heintz@dlapiper.com
`
`Robert Buergi
`Robert.buergi@dlapiper.com
`
`Robert High
`Robert.high@finnegan.com
`
`Philip Eklem
`Philip.eklem@finnegan.com
`
`Aliza Carrano
`Aliza.carrano@finnegan.com
`
`Christopher Douglas
`Christopher.douglas@alston.com
`
`Caleb Bean
`Caleb.bean@alston.com
`
`
`FOR PATENT OWNER:
`
`Kent Shum
`kshum@raklaw.com
`
`Neil Rubin
`nrubin@raklaw.com
`
`
`
`
`
`
`
`
`
`
`
`4
`
`
`
`IPR2020-00459
`
`IPR2020-00459
`Patent 8,946,574 B2
`Patent 8,946,574 B2
`
`
`5
`
`
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