`571-272-7822
`
`Paper 69
`Entered: September 14, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`YITA LLC,
`Petitioner,
`v.
`MACNEIL IP LLC,
`Patent Owner.
`
`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)1
`
`
`
`
`
`
`
`
`
`Before MITCHELL G. WEATHERLY, JAMES A. WORTH,
`MICHAEL L. WOODS, and ARTHUR M. PESLAK,
`Administrative Patent Judges.
`PESLAK, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`1 This Order applies to both proceedings. The parties are not authorized to
`use this caption.
`
`
`
`
`
`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)
`A conference call was held on September 13, 2021, between Judges
`Peslak, Weatherly, Woods, and Worth and counsel for the parties to discuss
`Patent Owner’s email to the Board dated September 9, 2021. Ex. 3001. In
`that email, Patent Owner requested authorization to:
`1) File the Second Supplemental Declaration of Mr. Ray Sherman,
`the Second Supplemental Declaration of Dr. Tim A. Osswald, and
`Stipulations attached to the email;
`2) File new evidence with its Sur-reply in each referenced case
`including new expert testimony; and
`3) File a Motion to Strike portions of Petitioner’s Reply in each case
`and the Declarations of Dr. Paul Koch (Ex. 1041), Mr. Mark
`Strachan (Ex. 1042), and Mr. Dan Perreault (Ex. 1044).2
`Ex. 3001. Patent Owner represented in its email that the parties met and
`conferred and were unable to reach agreement on items 2 and 3. Id. Patent
`Owner further represented that Petitioner did not oppose the request in item
`1.
`During the telephone conference, Patent Owner made two additional
`
`requests. First, Patent Owner sought authorization to file certain documents
`introduced during the cross-examination depositions of Petitioner’s
`declarants as exhibits. Second, Patent Owner sought authorization to file
`errata sheets executed by Patent Owner’s witnesses after review of their
`deposition testimony. Petitioner did not object to the first request but
`objected to the filing of the errata sheets.
`
`
`2 We refer to the papers and exhibits filed in IPR2020-01139. We
`understand that similar documents were filed in IPR2020-01142.
`
`2
`
`
`
`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)
`
`After considering the arguments of counsel, it is hereby:
`ORDERED that Patent Owner’s request to file the Second
`Supplemental Declaration of Ray Sherman, the Second Supplemental
`Declaration of Tim A. Osswald, and the Stipulations attached to the email of
`September 9, 2021, is granted;
`FURTHER ORDERED that Patent Owner’s request to file new
`evidence including expert testimony with its Sur-reply is denied;
`FURTHER ORDERED that Patent Owner’s request to file a Motion
`to Strike is granted;
`FURTHER ORDERED that Patent Owner may file the Motion to
`Strike, limited to 15 pages, no later than September 22, 2021;
`FURTHER ORDERED that Petitioner may file an Opposition to the
`Motion to Strike, limited to 15 pages, no later than September 29, 2021;
`FURTHER ORDERED that Patent Owner may file a Reply to
`Petitioner’s Opposition, limited to 10 pages, no later than October 6, 2021;
`FURTHER ORDERED that no further briefing is authorized;
`FURTHER ORDERED that Patent Owner is authorized to file the
`exhibits introduced during the cross-examination of Petitioner’s witnesses as
`exhibits enumerated in the 2000 series; and
`FURTHER ORDERED that the parties are directed to meet and
`confer with respect to the deposition errata sheets and make a good faith
`attempt to resolve the question of whether the errata sheets should be filed
`pursuant to the Board’s rules and practices.
`
`
`3
`
`
`
`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)
`For PETITIONER:
`
`Mark Walters
`LOWE GRAHAM JONES PLLC
`walters@lowegrahamjones.com
`
`Ralph Powers
`Jason Fitzsimmons
`Stephen Merrill
`STERNE KESSLER GOLDSTEIN & FOX PLLC
`Tpowers-ptab@sternekessler.com
`Jfitzsimmons-ptab@sternekessler.com
`Smerrill-ptab@sternekessler.com
`
`
`For PATENT OWNER:
`
`Jefferson Perkins
`PERKINS IP LAW GROUP LLC
`jperkins@perkinsip.com
`
`David Wille
`Chad Walters
`Clarke Stavinhoa
`BAKER BOTTS LLP
`David.wille@bakerbotts.com
`chad.walters@bakerbotts.com
`Clarke.stavinhoa@bakerbotts.com
`
`
`
`
`
`
`4
`
`
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