` Entered: July 20, 2020
`
`Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`QUALCOMM INCORPORATED,
`Petitioner,
`
`v.
`
`REMBRANDT WIRELESS TECHNOLOGIES, LP,
`Patent Owner.
`____________
`
`IPR2020-00510
`Patent 8,023,580
`____________
`
`
`
`Before JEFFREY S. SMITH, DAVID C. McKONE, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`SMITH, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.05
`
`
`
`
`
`IPR2020-00510
`Patent 8,023,580
`
`In a July 13, 2020, email to the Board, Petitioner requested a
`
`conference call to request leave to file a limited Reply to Patent Owner’s
`Preliminary Response, narrowly focused on construction of the term
`“addressed for an intended destination,” because, according to Petitioner,
`this term “does not appear to have previously been interpreted (implicitly or
`explicitly) more narrowly than its plain language, as Patent Owner now
`seeks to do.” On July 16, 2020, we held a conference call with the parties to
`discuss Petitioner’s request. During the conference call, Patent Owner
`objected to the request, contending that this term had been previously
`construed in Patent Owner’s Appeal Brief filed in the corresponding
`reexamination proceeding of this patent. A court reporter was present on the
`conference call and the parties will submit the transcript as an exhibit.
`
`In the Patent Owner Preliminary Response (“POPR”), Patent Owner
`proposes construing “addressed for an intended destination” as “the address
`of the slave/trib transceiver that the master seeks to communicate with.”
`POPR 26–29. During the reexamination, Patent Owner contended that the
`Office did not give claims 2 and 59 their broadest reasonable construction
`because it failed to give weight to the multiple master/slave limitations.
`Ex. 1027, 1138–47. Patent Owner then argued that the Office’s failure to
`give weight to the claimed destination address limitations of claims 2 and 59
`was unreasonable, and that the prior art did not disclose a packet that
`includes a destination address. Ex. 1027, 1209–14. During the
`reexamination, Patent Owner did not propose construing “addressed for an
`intended destination” as “the address of the slave/trib transceiver that the
`master seeks to communicate with.”
`
`
`
`2
`
`
`
`IPR2020-00510
`Patent 8,023,580
`
`As we stated on the conference call, having considered the positions
`
`of the parties, we conclude that Petitioner has established good cause for
`further briefing. On the conference call, we authorized a reply and sur-reply
`directed to the construction of the term “addressed for an intended
`destination,” each limited to five pages and due, respectively, July 23, 2020,
`and July 30, 2020.
`
`For the reasons set forth above, it is:
`ORDERED that Petitioner is authorized to file a Reply to Patent
`Owner’s Preliminary Response, limited to five pages and narrowly focused
`on the construction of the term “addressed for an intended destination,” on
`or before July 23, 2020; and
`FURTHER ORDERED that Patent Owner is authorized to file a Sur-
`reply thereto, limited to five pages and narrowly focused on the issues
`presented in the Reply, on or before July 30, 2020.
`
`
`
`
`
`3
`
`
`
`IPR2020-00510
`Patent 8,023,580
`
`PETITIONER:
`
`Eagle Robinson
`Richard Zembek
`James Warriner
`Eric Green
`eagle.robinson@nortonrosefulbright.com
`richard.zembek@nortonrosefulbright.com
`jim.warriner@nortonrosefulbright.com
`eric.green@nortonrosefulbright.com
`
`PATENT OWNER:
`
`Jill M. Browning
`Michael J. Fink
`jbrowning@gbpatent.com
`mfink@gbpatent.com
`
`
`
`
`
`4
`
`
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