`571-272-7822
`
`Paper 9
`Date: May 19, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`QUALCOMM INCORPORATED,
`Petitioner,
`
`v.
`
`UNM RAINFOREST INNOVATIONS,
`Patent Owner.
`
`
`IPR2021-00375 (Patent 8,265,096 B2)
`IPR2021-00377 (Patent 8,249,204 B2)1
`
`
`
`Before KRISTEN L. DROESCH, BARBARA A. PARVIS, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`1 This Order addresses overlapping issues in the cases listed above.
`Therefore, we issue one Order to be filed in each case. The parties, however,
`are not authorized to use this style of filing
`
`
`
`IPR2021-00375 (Patent 8,265,096 B2)
`IPR2021-00377 (Patent 8,249,204 B2)
`Judges Droesch, Parvis, and Boudreau held a conference call on
`May 18, 2021, with counsel for the parties. Counsel for Petitioner requested
`the call seeking authorization to file a reply to the Preliminary Response
`filed in each of IPR2021-00375 and IPR2021-00377.
`Counsel for Petitioner requests authorization to file a reply to the
`Preliminary Response in each of IPR2021-00375 and IPR2021-00377 to
`address certain arguments by Patent Owner that the Board should exercise
`its discretion to deny institution under 35 U.S.C. § 314(a) based on the
`factors set forth in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11
`(PTAB March 20, 2020) (precedential, designated May, 5, 2020) (“Fintiv”).
`More specifically, counsel for Petitioner asserts there is good cause for
`authorizing a reply to address the issue of real party-in-interest raised by
`Patent Owner as part of its analysis of the sixth Fintiv factor. Counsel for
`Petitioner also contends there is good cause for authorizing a reply to
`address the currently scheduled trial date in the related district court
`litigation in the context of the second Fintiv factor because there are multiple
`trials scheduled for the same date. Counsel for Patent Owner opposes
`Petitioner’s request, arguing there is not good cause for granting the request
`because Petitioner could have foreseen the real party-in-interest and trial
`date issues. Counsel for Patent Owner asserts that additional briefing will
`not resolve the real party-in-interest issue. Counsel for Patent Owner further
`contends that the scheduled trial date in the related district court litigation
`has not changed since the Petition was filed, and that it is common practice
`to schedule multiple trials for the same date with the expectation that some
`cases will settle.
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`
`2
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`
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`IPR2021-00375 (Patent 8,265,096 B2)
`IPR2021-00377 (Patent 8,249,204 B2)
`Specific to IPR2021-00375, Petitioner also requests authorization to
`address Patent Owner’s arguments that the challenged claims are entitled to
`the benefit of the earlier filing date of Provisional Application 60/929,798.
`Patent Owner opposes Petitioner’s request, arguing that this issue was
`foreseeable and that Petitioner already addressed this issue in its Petition.
`Patent Owner contends that Petitioner seeks a second bite at the apple.
`Specific to IPR2021-00377, Petitioner requests authorization to
`address Patent Owner’s claim construction arguments that the meaning of
`“compress” excludes quantization. Petitioner contends that this claim
`construction issue was not foreseeable because it is not addressed in the
`related district court litigation. Patent Owner opposes Petitioner’s request,
`asserting this claim construction issue was foreseeable because the Patent
`Specification in numerous instances makes a distinction between the terms
`compress and quantization.
`After considering the parties’ contentions made during the conference
`call, we conclude that good cause exists for authorizing Petitioner’s request
`to file a reply to address the real party-in-interest issue in the context of the
`sixth Fintiv factor and the scheduled trial date of the related district court
`litigation in the context of the second Fintiv factor. We, however, do not
`conclude that good cause exists for authorizing Petitioner to file a reply to
`address the entitlement of the challenged claims to the benefit of an earlier
`filing date and to address the claim construction issue. See 37 C.F.R.
`§ 42.108. We note that a reply is not an opportunity to supplement the
`Petition on the merits.
`Accordingly, we authorize Petitioner to file a four (4) page reply to
`the Preliminary Response to address the real party-in-interest issue in the
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`3
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`IPR2021-00375 (Patent 8,265,096 B2)
`IPR2021-00377 (Patent 8,249,204 B2)
`context of the sixth Fintiv factor and the scheduled trial date of the related
`district court litigation in the context of the second Fintiv factor. We further
`authorize Patent Owner to file a four (4) page sur-reply.
`
`ORDER
`
`Accordingly, it is:
`ORDERED that Petitioner’s request for authorization to file a reply to
`the Preliminary Response is granted;
`FURTHER ORDERED that Petitioner’s reply is limited to four (4)
`pages and shall be filed no later than May 25, 2021; and
`FURTHER ORDERED that Patent Owner is authorized to file a sur-
`reply, limited to four (4) pages, no later than June 1, 2021.
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`4
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`IPR2021-00375 (Patent 8,265,096 B2)
`IPR2021-00377 (Patent 8,249,204 B2)
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`PETITIONER:
`Jonathan I. Detrixhe
`Peter J. Chassman
`REED SMITH LLP
`jdetrixhe@reedsmith.com
`pchassman@reedsmith.com
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`PATENT OWNER:
`
`Jay P. Kesan
`DIMUROGINSBERG, PC
`jkesan@dimuro.com
`
`Alfonso Chan
`SHORE CHAN LLP
`achan@shorechan.com
`
`
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`5
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`