Trials@uspto.gov
`571.272.7822
`
`
`
`
`
` Paper 9
` Entered: March 11, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLIED MATERIALS, INC.,
`Petitioner,
`
`v.
`
`DEMARAY LLC,
`Patent Owner.
`____________
`
`IPR2021-00103, IPR2021-00105 (Patent 7,544,276 B2)
` IPR2021-00104, IPR2021-00106 (Patent 7,738,657 B2)1
`____________
`
`Before CHRISTOPHER B. CRUMBLEY, KRISTINA M. KALAN, and
`KIMBERLY MCGRAW, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`1 This Order applies to all captioned proceedings. We exercise our
`discretion to issue one Order to be filed in each case. The parties are not
`authorized to use this style heading for any subsequent papers.
`
`
`
`

`

`IPR2021-00103, IPR2021-00105 (Patent 7,544,276 B2)
`IPR2021-00104, IPR2021-00106 (Patent 7,738,657 B2)
`
`
`On March 4, 2021, Petitioner’s counsel contacted the Board via email
`
`(Exhibit A), copying Patent Owner’s counsel, and requesting authorization
`
`to file a reply in each of the above-captioned cases to address issues raised in
`
`Patent Owner’s Preliminary Responses. Petitioner represents that good
`
`cause exists for a reply because the Preliminary Responses in the above-
`
`captioned cases raise issues that Petitioner “did not have an opportunity to
`
`address at the time it filed its petitions.” Exhibit A.
`
`More particularly, Petitioner requests leave to file replies to address
`
`the Fintiv-related issues pertaining to discretionary denial raised in the
`
`Patent Owner Preliminary Responses in the above-captioned cases.
`
`Petitioner represents that it should be able to address all Fintiv factors,
`
`including factor 6, in a 5-page reply.
`
`Patent Owner does not oppose Petitioner’s request to file replies but
`
`does oppose “any attempt by Petitioner to address the merits of the case in
`
`its reply (including by responding to arguments raised in the Preliminary
`
`Response as part of the Fintiv Factor 6 analysis).” Exhibit A. Patent Owner
`
`also requests authorization to file sur-replies to respond to Petitioner’s
`
`replies and to address the Fintiv factors. Id.
`
`Although Board rules do not specifically authorize a reply to a Patent
`
`Owner’s Preliminary Response, a Petitioner may seek leave to file such a
`
`reply, and any such request must make a showing of good cause. 37 C.F.R.
`
`§ 42.108(c).
`
`Having considered Petitioner’s and Patent Owner’s contentions, and
`
`accepting the parties’ representations to the Board, we determine good cause
`
`exists supporting Petitioner’s request to file a reply to Patent Owner’s
`
`Preliminary Response in each of the above-captioned cases, limited to
`
`addressing the Fintiv factors. Petitioner may address Fintiv Factor 6 in its
`
`2
`
`

`

`IPR2021-00103, IPR2021-00105 (Patent 7,544,276 B2)
`IPR2021-00104, IPR2021-00106 (Patent 7,738,657 B2)
`
`replies, but should focus its analysis on the factor itself, not reargue the
`
`merits of the challenges in the Petition or seek to bolster its proposed
`
`grounds of unpatentability. We also determine good cause exists for Patent
`
`Owner to file a sur-reply to Petitioner’s reply in each case. Such reply and
`
`sur-reply may ultimately prove helpful to the panel in determining whether
`
`or not to institute an inter partes review. The parties have not requested
`
`leave to submit any additional evidence, and no additional evidence is
`
`permitted to be filed with the replies or sur-replies.
`
`
`
`Accordingly, it is:
`
`ORDERED that Petitioner’s request for leave to file a reply, limited to
`
`five (5) pages, in each case is granted;
`
`FURTHER ORDERED that Patent Owner may file a five (5) page
`
`sur-reply to Petitioner’s reply in each case;
`
`FURTHER ORDERED that the reply in each case shall be filed
`
`within seven (7) business days of the date of this Order; and
`
`FURTHER ORDERED that the sur-reply in each case shall be filed
`
`no later than seven (7) business days from the date the reply is filed.
`
`
`
`
`
`3
`
`

`

`IPR2021-00103, IPR2021-00105 (Patent 7,544,276 B2)
`IPR2021-00104, IPR2021-00106 (Patent 7,738,657 B2)
`
`
`For PETITIONER:
`
`Naveen Modi
`Joseph E. Palys
`PAUL HASTINGS LLP
`naveenmodi@paulhastings.com
`josephpalys@paulhastings.com
`
`For PATENT OWNER:
`
`H. Annita Zhong
`Benjamin Hattenbach
`C. Maclain Wells
`IRELL & MANELLA LLP
`hzhong@irell.com
`bhattenbach@irell.com
`mwells@irell.com
`
`
`
`4
`
`

`

`IPR2021-00103, IPR2021-00105 (Patent 7,544,276 B2)
`IPR2021-00104, IPR2021-00106 (Patent 7,738,657 B2)
`
`
`
`EXHIBIT A
`
`
`From: Palys, Joseph E. <josephpalys@paulhastings.com>
`Sent: Thursday, March 4, 2021 1:46 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: 'Zhong, Annita' <HZhong@irell.com>; #DemarayIPRs [Int]
`<DemarayIPRs@irell.com>; Hattenbach, Ben <BHattenbach@irell.com>;
`Applied_Materials-Demaray-IPR <PH-Applied_Materials-Demaray-
`IPR@paulhastings.com>
`Subject: IPR2021-00103; IPR2021-00104; IPR2021-00105; IPR2021-00106
`
`Re: IPR2021-00103; -00104; -00105; and -00106
`
`Petitioner seeks leave to file replies in each of the above-identified cases to respond to
`and address Patent Owner’s Fintiv-related arguments pertaining to discretionary denial
`submitted in Patent Owner’s preliminary responses filed February 16, 2021. Good cause
`exists for such replies given Patent Owner raised several issues that Petitioner did not
`have an opportunity to address at the time it filed its petitions. Moreover, Petitioner
`believes additional briefing on the discretionary denial issue will help the Board in its
`determination whether to institute review in these cases. Petitioner agrees to limit its
`preliminary replies to five pages and can commit to file the replies within seven business
`days after the Board grants such leave. Although Patent Owner argues below that the
`replies should be limited, Petitioner should be able to address all Fintiv factors, including
`factor 6 in the five pages Petitioner is seeking for the replies.
`
`Petitioner has conferred with Patent Owner, who does not oppose Petitioner’s request in
`accordance with its position provided below. Petitioner does not oppose Patent Owner’s
`request for a five-page sur-reply to be filed within seven business days of Petitioner filing
`its replies.
`
`Petitioner does not believe a call is necessary with the Board, but to the extent the Board
`would like to discuss Petitioner’s request, the parties are available after 11:00 a.m. ET on
`Tuesday 3/9 and Wednesday 3/10.
`
`Patent Owner requested that the following be included in this email to the Board:
`
`
`Patent Owner does not object to Petitioner’s request to file a reply in each
`proceeding to address how events that have occurred since the filing of the
`petition may affect the Board’s decision on whether to exercise its discretion to
`institute review when there is a related proceeding pending in district
`court. Patent Owner, however, objects to any attempt by Petitioner to address the
`
`5
`
`

`

`IPR2021-00103, IPR2021-00105 (Patent 7,544,276 B2)
`IPR2021-00104, IPR2021-00106 (Patent 7,738,657 B2)
`
`
`merits of the case in its reply (including by responding to arguments raised in the
`Preliminary Response as part of the Finitv Factor 6 analysis). It respectfully
`requests that the Board make clear that such arguments may not be raised as part
`of the reply.
`
`
`With the understanding that Petitioner is seeking a 5-page reply in each
`proceeding, Patent Owner also requests a 5-page sur-reply in each proceeding to
`respond to arguments raised in Petitioner’s reply and to address the Fintiv factors.
`The sur-reply is to be filed within 7 business days of the filing of the reply.
`
`
`Should the Board deem a conference call necessary, Patent Owner is available
`any time after 11 a.m. ET on Tuesday 3/9 and Wednesday 3/10.
`
`
`Regards,
`
`Joseph Palys
`Counsel for Petitioner
`
`
`___________________________________________________________
`_________________
`
`Joseph Palys | Partner Litigation Group
`Paul Hastings LLP | 2050 M Street, N.W., Washington, DC 20036 | Direct:
`+1.202.551.1996 | Main: +1.202.551.1700 | Fax: +1.202.551.1705 |
`josephpalys@paulhastings.com | www.paulhastings.com
`
`
`
`
`
`
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