Trials@uspto.gov
`571-272-7822
`
`Paper 10
`Date: December 22, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INTEL CORPORATION,
`Petitioner,
`v.
`FG SRC LLC,
`Patent Owner.
`
`Case No. IPR2020-01449
`Patent 7,149,867
`
`
`
`
`
`
`
`
`
`Before KALYAN K. DESHPANDE, GREGG I. ANDERSON, and
`KARA L. SZPONDOWSKI, Administrative Patent Judges.
`SZPONDOWSKI, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 10
`Date: December 22, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INTEL CORPORATION,
`Petitioner,
`v.
`FG SRC LLC,
`Patent Owner.
`
`Case No. IPR2020-01449
`Patent 7,149,867
`
`
`
`
`
`
`
`
`
`Before KALYAN K. DESHPANDE, GREGG I. ANDERSON, and
`KARA L. SZPONDOWSKI, Administrative Patent Judges.
`SZPONDOWSKI, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`
`
`IPR2020-01449
`Patent 7,149,867
`
`
`On December 14, 2020, Petitioner requested authorization to file a 7-
`page Reply to Patent Owner’s Preliminary Response to address the factors
`set out in Apple v. Fintiv, Inc., IPR2020-00019, Paper 11 at 6 (Mar. 20,
`2002), Patent Owner’s testimonial evidence, and Patent Owner’s arguments
`on secondary considerations of non-obviousness. Ex. 3002. Petitioner
`indicated that Patent Owner opposed the request, but if granted, requested to
`file a Sur-reply. Id.
`On December 21, 2020, a conference call was held between respective
`counsel for the parties and Judges Szpondowski, Deshpande, and Anderson.
`During the call, Petitioner raised for the first time that Patent Owner filed its
`Preliminary Response late – on December 5, 2020, rather than on December
`4, 2020. Petitioner indicated that it objects to the consideration of the late
`filing, but requested briefing if the Board considers Patent Owner’s
`Preliminary Response. Specifically, Petitioner requested authorization to
`file a 7-page Reply, and identified four issues it seeks to address: (1)
`response to Patent Owner’s arguments on the Fintiv factors; (2) response to
`certain arguments made by Patent Owner that certain references are not
`printed publications; (3) response to Patent Owner’s characterization of the
`invention and the prior art; and (4) response to Patent Owner’s arguments on
`secondary considerations. Petitioner argued that good cause is present either
`because Patent Owner’s arguments could not have been anticipated, or
`intervening facts have occurred since the Petition was filed, such as changes
`in case law or schedule. Petitioner did not oppose a Sur-reply by Patent
`Owner.
`Patent Owner opposed the Reply for several reasons. Patent Owner
`argued that: (1) Petitioner’s request is inconsistent with its argument
`
`2
`
`
`
`IPR2020-01449
`Patent 7,149,867
`
`opposing Patent Owner’s previous request for an extension of time to file its
`Preliminary Response due to the delay; (2) Petitioner is merely attempting to
`reargue arguments that could have been made in the Petition; and (3)
`Petitioner could have reasonably anticipated or foreseen the arguments that
`it now seeks to address. Patent Owner also expressed concern that Petitioner
`may file hundreds of pages of Declarations or additional evidence in
`connection with the Reply. Patent Owner requested to file a Sur-reply if
`Petitioner’s request is authorized. With regard to the timeliness of the
`Preliminary Response, Patent Owner stated there were some issues that
`occurred during the filing that caused some of the papers, including the
`Preliminary Response, to be filed after midnight.
`As an initial matter, we had extended Patent Owner’s due date for its
`preliminary response to December 4, 2020. See 37 C.F.R. § 42.107(c); 37
`C.F.R. § 42.5(c)(1). We acknowledge Patent Owner’s good faith attempt to
`file its preliminary response on its due date, but incurred difficulties.
`Accordingly, we are going to consider Patent Owner’s Preliminary
`Response.
`We are persuaded that good cause justifies the filing of a reply
`directed to the four aforementioned issues. 37 C.F.R. § 42.108(c).
`Accordingly, we authorize Petitioner to file a Reply to Patent Owner’s
`Preliminary Response limited to addressing the four aforementioned issues
`that were identified during the conference. Petitioner is also authorized to
`submit additional evidence limited to the Fintiv issue. Petitioner’s Reply is
`not to exceed seven (7) pages and must be filed on or before Monday,
`January 4, 2020.
`
`3
`
`
`
`IPR2020-01449
`Patent 7,149,867
`
`
`We, likewise, authorize Patent Owner to file, on or before
`Wednesday, January 13, 2020, a Sur-reply addressing the arguments
`advanced by Petitioner in the Reply. Patent Owner’s Sur-reply is not to
`exceed seven (7) pages and Patent Owner is not authorized to file additional
`evidence with the Sur-reply.
`
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner’s request for authorization to file a Reply
`to Patent Owner’s Preliminary Response is granted;
`FURTHER ORDERED that Petitioner’s Reply is limited to the four
`issues listed above; that Petitioner is authorized to file additional evidence
`limited to the Fintiv issue; that Petitioner’s Reply is not to exceed seven (7)
`pages; and that Petitioner’s Reply shall be filed on or before January 4,
`2020; and
`FURTHER ORDERED that Patent Owner is authorized to file a Sur-
`Reply to Petitioner’s Reply that is limited to responding to arguments
`Petitioner raises in its Reply; that Patent Owner’s Sur-reply is not to exceed
`seven (7) pages; that Patent Owner is not authorized to file additional
`evidence; and that Patent Owner’s Sur-reply shall be filed on or before
`January 13, 2020.
`
`
`
`
`
`
`
`
`
`
`
`4
`
`
`
`IPR2020-01449
`Patent 7,149,867
`
`For PETITIONER:
`
`Brian Nash
`Evan Finkel
`Matthew Hindman
`PILLSBURY WINTHROP SHAW PITTMAN LLP
`Brian.nash@pillsburylaw.com
`Evan.finkel@pillsburylaw.com
`Matthew.hindman@pillsburylaw.com
`
`
`For PATENT OWNER:
`
`Jay Kesan
`DiMURO GINSBERG PC
`jay@jaykesan.com
`
`Ari Rafilson
`SHORE CHAN DEPUMPO LLP
`arafilson@shorechan.com
`
`
`5
`
`
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