`571-272-7822
`
`Paper 15
`Date: October 1, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BAYERISCHE MOTOREN WERKE, AKTIENGESELLSCHAFT &
`BMW OF NORTH AMERICA, LLC,
`Petitioner,
`v.
`PAICE LLC & THE ABELL FOUNDATION, INC.,
`Patent Owner.
`
`IPR2020-00994
`Patent 7,104,347 B2
`
`
`
`
`
`
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`ARTHUR M. PESLAK, Administrative Patent Judges.
`PESLAK, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
` 37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`IPR2020-00994
`Patent 7,104,347 B2
`
`A conference call was held on September 30, 2020 between Judges
`Peslak, Medley, and Deshpande and counsel for Petitioner and Patent
`Owner. A court reporter transcribed the call.
`During the call, Petitioner requested leave to file a Reply to the Patent
`Owner Preliminary Response to address arguments raised by Patent Owner
`that we should exercise our discretion to deny institution under 35 U.S.C.
`§ 314(a). Patent Owner opposed the request but requested that, if we grant
`Petitioner’s request, Patent Owner be allowed to file a Sur-Reply.
`
`After consideration of the arguments of the parties and for good cause
`shown,
`
`It is:
`
`ORDERED that Petitioner may file a seven-page Reply brief limited
`to legal argument responding to the discretionary denial issues raised in the
`Patent Owner Response no later than October 7, 2020;
`
`FURTHER ORDERED that Patent Owner may thereafter file a seven-
`page Sur-Reply brief limited to legal argument no later than October 14,
`2020;
`FURTHER ORDERED that neither party is authorized to file any
`
`evidence in connection with the aforementioned briefs; and
`
`FURTHER ORDERED that Petitioner shall file a copy of the court
`reporter’s transcript of the conference call when it becomes available.
`
`
`
`
`
`2
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`
`
`IPR2020-00994
`Patent 7,104,347 B2
`FOR PETITIONER:
`Jeffrey D. Sanok
`Vincent J. Galluzzo
`Scott L. Bittman
`Jacob Z. Zambrzycki
`CROWELL & MORING LLP
`jsanok@crowell.com
`vgalluzzo@crowell.com
`sbittman@crowell.com
`jzambrzycki@crowell.com
`
`FOR PATENT OWNER:
`Ruffin B. Cordell
`Indranil Mukerji
`Brian J. Livedalen
`FISH & RICHARDSON P.C.
`cordell@fr.com
`mukerji@fr.com
`livedalen@fr.com
`IPR36351-0004IP1@fr.com
`PTABInbound@fr.com
`
`3
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`