Trials@uspto.gov
`571-272-7822
`
`
`
`
`
` Paper 31
`Date: September 27, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`INTEL CORPORATION,
`Petitioner,
`v.
`
`PARKERVISION, INC.,
`Patent Owner.
`____________
`
`IPR2020-01265
`Patent 7,110,444 B1
`____________
`
`
`Before MICHAEL R. ZECHER, BART A. GERSTENBLITH, and
`IFTIKHAR AHMED, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`DECISION
`Conduct of the Proceeding
`37 C.F.R. § 42.5(a)
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
` Paper 31
`Date: September 27, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`INTEL CORPORATION,
`Petitioner,
`v.
`
`PARKERVISION, INC.,
`Patent Owner.
`____________
`
`IPR2020-01265
`Patent 7,110,444 B1
`____________
`
`
`Before MICHAEL R. ZECHER, BART A. GERSTENBLITH, and
`IFTIKHAR AHMED, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`DECISION
`Conduct of the Proceeding
`37 C.F.R. § 42.5(a)
`
`
`
`
`
`
`
`IPR2020-01265
`Patent 7,110,444 B1
`
`
`I.
`DISCUSSION
`A conference call was held on September 24, 2021, between
`respective counsel for the parties and Judges Zecher, Gerstenblith, and
`Ahmed in response to a request by Intel Corporation (“Petitioner”) for
`authorization to file a motion to strike Exhibit 2022 filed by ParkerVision,
`Inc. (“Patent Owner”) as well as portions of Patent Owner’s Sur-reply
`(Paper 26) that Petitioner contends raise arguments that are improper for a
`sur-reply. During the call, the parties raised their respective positions
`regarding the merits of Petitioner’s request.
`With respect to Exhibit 2022, Petitioner filed Objections to Evidence
`Submitted with Patent Owner’s Sur-reply (Paper 27), arguing, inter alia, that
`the timing of Patent Owner’s filing was improper because 37 C.F.R.
`§ 42.23(b) limits new evidence filed with a sur-reply to deposition
`transcripts of the cross-examination of any reply witness. See id. at 1.
`During the conference call, we authorized Petitioner to raise its arguments
`regarding the filing of Exhibit 2022 in a motion to exclude in accordance
`with the schedule for motions to exclude, oppositions thereto, and replies in
`support thereof.
`With respect to Patent Owner’s Sur-reply, a determination of which
`arguments may exceed the proper scope for a sur-reply often requires
`consideration of the entire record. We are capable of making that
`determination, in most instances, without additional briefing by the parties.
`Nonetheless, it is helpful when the complaining party is given an
`opportunity to identify the precise arguments complained of and the
`opposing party is given an opportunity to respond. Accordingly, although
`we did not authorize a motion to strike, we authorized Petitioner to identify
`
`2
`
`
`
`IPR2020-01265
`Patent 7,110,444 B1
`
`the arguments that it contends exceed the scope for a sur-reply brief and we
`authorized Patent Owner to respond, as set forth in detail below.
`As examples of the scope of papers we authorized pertaining to
`allegedly improper arguments in Patent Owner’s Sur-reply, the parties are
`directed to Papers 35 and 38 from Netflix, Inc. v. DivX, LLC, IPR2020-
`00511. Those papers provide useful examples of how the charts, authorized
`during our conference and in the Order below, should appear.
`In preparing their papers, the parties shall bear in mind the following
`guidance from the Patent Trial and Appeal Board Consolidated Trial
`Practice Guide:
`Sur-replies should only respond to arguments made in reply
`briefs, comment on reply declaration testimony, or point to
`cross-examination testimony. . . . [A] sur-reply may address the
`institution decision if necessary to respond to the petitioner’s
`reply. This sur-reply practice essentially replaces the previous
`practice of filing observations on cross-examination testimony.
`Generally, a . . . sur-reply may only respond to arguments
`raised in the preceding brief. 37 C.F.R. § 42.23, except as noted
`above. “Respond,” in the context of 37 C.F.R. § 42.34(b), does
`not mean proceed in a new direction with a new approach as
`compared to the positions taken in a prior filing. While . . .
`sur-replies can help crystalize issues for decision, a . . .
`sur-reply that raises a new issue or belatedly presents evidence
`may not be considered.
`Patent Trial and Appeal Board Consolidated Trial Practice Guide
`(Nov. 2019), 73–74, available at https://www.uspto.gov/sites/default/
`files/documents/tpgnov.pdf.
`
`3
`
`
`
`IPR2020-01265
`Patent 7,110,444 B1
`
`
`II. ORDER
`
`It is:
`ORDERED that Petitioner may file, as a paper, a document that
`identifies arguments in Patent Owner’s Sur-reply that Petitioner contends
`exceed the proper scope of a sur-reply. Petitioner’s submission shall be in
`the form of a chart containing no more information than the paper/exhibit
`number and page/line range, as appropriate, of the material that Petitioner
`alleges exceed the proper scope of a sur-reply. Other than a brief
`introductory sentence immediately after the caption identifying the
`submission as being response to this Order, no explanation, elaboration, or
`discussion shall be included in the submission. Petitioner’s submission is
`due by October 1, 2021. In addition to filing, Petitioner shall provide an
`electronic version of its submission to Patent Owner in a format that enables
`Patent Owner to add material, as discussed in the following paragraph,
`thereto; and
`FURTHER ORDERED that Patent Owner may file, as a paper, a
`document responding to Petitioner’s submission. Patent Owner’s filing shall
`consist of a chart containing the items identified by Petitioner, as explained
`in the immediately preceding paragraph, and Patent Owner’s response to
`said items in one-to-one correspondence (by row), in a column next to
`Petitioner’s list. Patent Owner may state “none” for any items for which
`Patent Owner chooses not to provide a response. Other than a brief,
`introductory sentence immediately after the caption identifying the
`submission as being responsive to this Order and Petitioner’s submission,
`Patent Owner’s response shall not include arguments or explanations. Each
`listed item in Patent Owner’s responsive paper should identify, by
`
`4
`
`
`
`IPR2020-01265
`Patent 7,110,444 B1
`
`paper/exhibit number and page/line range, as appropriate, where Patent
`Owner initially raised the issue and/or the specific argument or evidence to
`which Patent Owner’s Sur-reply is responsive that justifies the inclusion of
`the material in the Sur-reply. Patent Owner’s submission shall be filed by
`October 8, 2021.
`
`
`
`
`
`5
`
`
`
`IPR2020-01265
`Patent 7,110,444 B1
`
`For PETITIONER:
`
`Grant K. Rowan
`Haixia Lin
`Brian Lambson
`Michael J. Summersgill
`Todd C. Zubler
`WILMER CUTLER PICKERING HALE AND DORR LLP
`grant.rowan@wilmerhale.com
`haixia.lin@wilmerhale.com
`brian.lambson@wilmerhale.com
`michael.summersgill@wilmerhale.com
`todd.zubler@wilmerhale.com
`WH-ParkerVision-IPRs@wilmerhale.com
`
`
`For PATENT OWNER:
`
`Jason S. Charkow
`Chandran B. Iyer
`Stephanie R. Mandir
`GOLDBERG SEGALLA LLP
`jcharkow@goldbergsegalla.com
`ciyer@goldbergsegalla.com
`smandir@goldbergsegalla.com
`
`6
`
`
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