Paper No. 63
`
`
`
`
`
`Trials@uspto.gov
` Date: May 19, 2022
`
`
`
`571.272.7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`QUALCOM INCORPORATED and ZYXEL COMMUNICATIONS
`CORPORATION1
`Petitioner,
`
`v.
`
`UNM RAINFOREST INNOVATIONS,
`Patent Owner.
`____________
`
`IPR2021-00375 (Patent 8,265,096 B2)
`IPR2021-00377 (Patent 8,249,204 B2)
`IPR2021-00582 (Patent 8,565,326 B2)2
`____________
`
`
`Before KRISTEN L. DROESCH, BARBARA A. PARVIS, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`
`ORDER
`Expunging Unauthorized Papers, Authorizing Patent Owner to File a Reply
`to the Opposition to Motion to Amend and Preliminary Guidance, and
`Authorizing Petitioner to File a Sur-reply to Patent Owner’s Reply
`37 C.F.R. § 42.5
`
`
`1 ZyXEL Communications Corporation was joined as a petitioner in these
`proceedings based on petitions and motions for joinder filed in IPR2021-
`00734, IPR2021-00739, and IPR2021-00741, respectively.
`2 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.
`
`
`
`
`
`
`
`
`
`
`Trials@uspto.gov
` Date: May 19, 2022
`
`
`
`571.272.7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`QUALCOM INCORPORATED and ZYXEL COMMUNICATIONS
`CORPORATION1
`Petitioner,
`
`v.
`
`UNM RAINFOREST INNOVATIONS,
`Patent Owner.
`____________
`
`IPR2021-00375 (Patent 8,265,096 B2)
`IPR2021-00377 (Patent 8,249,204 B2)
`IPR2021-00582 (Patent 8,565,326 B2)2
`____________
`
`
`Before KRISTEN L. DROESCH, BARBARA A. PARVIS, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`
`ORDER
`Expunging Unauthorized Papers, Authorizing Patent Owner to File a Reply
`to the Opposition to Motion to Amend and Preliminary Guidance, and
`Authorizing Petitioner to File a Sur-reply to Patent Owner’s Reply
`37 C.F.R. § 42.5
`
`
`1 ZyXEL Communications Corporation was joined as a petitioner in these
`proceedings based on petitions and motions for joinder filed in IPR2021-
`00734, IPR2021-00739, and IPR2021-00741, respectively.
`2 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)
`IPR2021-00582 (Patent 8,565,326 B2)
`
`On April 11, 2022, Patent Owner filed a paper styled “Patent Owner’s
`Revised Motion to Amend” in IPR2021-00375, IPR2021-00377, and
`IPR2021-00582. Paper 44.3 Patent Owner’s Revised Motion to Amend
`addressed the statutory requirements indicated as deficient in the
`corresponding Preliminary Guidance (see, e.g., Paper 42), but did not
`provide new proposed substitute claims, contrary to the requirements set
`forth for a revised motion to amend in the Office’s Motion to Amend Pilot
`Program Notice.4 Paper 44. Patent Owner’s Revised Motion to Amend
`was 25 pages in length. See id. In response, Petitioner filed a paper styled
`“Petitioner’s Opposition to Patent Owner’s Revised Motion to Amend,”
`also 25 pages in length. Paper 49. Thereafter, the parties respectively filed a
`“Reply in Support of Patent Owner’s Revised Motion to Amend” and a
`“Petitioner’s Sur-reply in Opposition to Patent Owner’s Revised Motion to
`Amend.” Papers 52, 54.
`During oral argument on May 12, 2022, counsel for Patent Owner
`indicated that prior to filing, it was not clear whether Patent Owner should
`file a revised motion to amend or a reply to Petitioner’s Opposition to the
`Motion to Amend and Preliminary Guidance. Likewise, counsel for
`Petitioner indicated that prior to filing, it was not clear whether Patent
`
`
`3 All references are to the papers filed in IPR2021-00375. Similar papers
`were filed in IPR2021-00377 and IPR2021-00582.
`4 See Notice Regarding a New Pilot Program Concerning Motion to Amend
`Practice and Procedures in Trial Proceedings Under the America Invents Act
`Before the Patent Trial and Appeal Board, 84 Fed. Reg. 9497, 9499
`(Mar. 15, 2019) (“A revised MTA includes one or more new proposed
`substitute claims in place of previously presented substitute claims to
`address issues identified in the preliminary guidance and/or the petitioner’s
`opposition.”).
`
`2
`
`
`
`IPR2021-00375 (Patent 8,265,096 B2)
`IPR2021-00377 (Patent 8,249,204 B2)
`IPR2021-00582 (Patent 8,565,326 B2)
`
`Owner’s Revised Motion to Amend was, in effect, a reply and whether
`Petitioner should file an Opposition to Patent Owner’s Revised Motion to
`Amend or a sur-reply. Counsel for Patent Owner did not seek guidance or
`clarification from the Board before filing its Revised Motion to Amend.
`Similarly, counsel for Petitioner did not seek guidance or clarification from
`the Board before filing its Opposition to Patent Owner’s Revised Motion to
`Amend.
`Patent Owner’s Revised Motion to Amend does not comply with the
`requirement that it include one or more new proposed substitute claims. See
`Motion to Amend Pilot Program Notice, 84 Fed. Reg. at 9499. Because it
`does not include one or more new proposed substitute claims, Patent
`Owner’s Revised Motion to Amend is, in effect, a reply that fails to comply
`with the 12 pages limit for a reply to an opposition to a motion to amend.
`See Consolidated Trial Practice Guide5 at 38; see also 84 Fed. Reg. 64,280
`(Nov. 21, 2019). Similarly, because Patent Owner’s Revised Motion to
`Amend does not include one or more new proposed substitute claims,
`Petitioner’s Opposition to Patent Owner’s Revised Motion to Amend is, in
`effect, a sur-reply that fails to comply with the 12 pages limit for a sur-reply.
`See id. In the absence of presenting one or more new proposed substitute
`claims in a revised motion to amend, the parties are not authorized to file
`briefing beyond a reply to an opposition to a motion to amend and a
`corresponding sur-reply. See generally Motion to Amend Pilot Program
`Notice.
`
`
`5 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`3
`
`
`
`IPR2021-00375 (Patent 8,265,096 B2)
`IPR2021-00377 (Patent 8,249,204 B2)
`IPR2021-00582 (Patent 8,565,326 B2)
`
`In view of the unauthorized papers filed in IPR2021-00375,
`IPR2021-00377, and IPR2021-00582, we determine it is necessary to
`expunge these papers from the record of each of these proceedings. See 37
`C.F.R. § 42.7. Accordingly, we expunge: IPR2021-00375, Paper 44 (Patent
`Owner’s Revised Motion to Amend), Paper 49 (Petitioner’s Opposition to
`Patent Owner’s Revised Motion to Amend), Paper 54 (Reply in Support of
`Patent Owner’s Motion to Amend), and Paper 56 (Petitioner’s Sur-reply in
`Opposition to Patent Owner’s Motion to Amend); IPR2021-00377, Paper 42
`(Patent Owner’s Revised Motion to Amend), Paper 47 (Petitioner’s
`Opposition to Patent Owner’s Revised Motion to Amend), Paper 52 (Reply
`in Support of Patent Owner’s Motion to Amend), and Paper 54 (Petitioner’s
`Sur-reply in Opposition to Patent Owner’s Motion to Amend); and IPR2021-
`00582, Paper 40 (Patent Owner’s Revised Motion to Amend), Paper 45
`(Petitioner’s Opposition to Patent Owner’s Revised Motion to Amend),
`Paper 50 (Reply in Support of Patent Owner’s Motion to Amend), and
`Paper 52 (Petitioner’s Sur-reply in Opposition to Patent Owner’s Motion to
`Amend).
`To proceed in a manner consistent with the Board’s policy of securing
`the just resolution of every proceeding, we authorize Patent Owner to refile
`its response to the Petitioner’s Opposition and the Preliminary Guidance in
`IPR2021-00375, IPR2021-00377, and IPR2021-00582 as a paper styled as a
`“Reply to Petitioner’s Opposition to Patent Owner’s Motion to Amend,” and
`further authorize Petitioner to file in in IPR2021-00375, IPR2021-00377,
`and IPR2021-00582 a sur-reply responsive to the “Reply to Petitioner’s
`Opposition to Patent Owner’s Motion to Amend.”
`
`4
`
`
`
`IPR2021-00375 (Patent 8,265,096 B2)
`IPR2021-00377 (Patent 8,249,204 B2)
`IPR2021-00582 (Patent 8,565,326 B2)
`
`More specifically, Patent Owner its authorized to file in IPR2021-
`00375, IPR2021-00377, and IPR2021-00582, no later than May 23, 2022, a
`paper styled as a “Reply to Petitioner’s Opposition to Patent Owner’s
`Motion to Amend.” The Reply to Petitioner’s Opposition to Patent Owner’s
`Motion to Amend must be substantively identical to the corresponding
`previously filed Patent Owner’s Revised Motion to Amend. Patent Owner is
`not authorized to present new or augmented arguments compared to the
`arguments presented in its corresponding previously filed Patent Owner’s
`Revised Motion to Amend. Patent Owner, however, may omit the claim
`appendix. Accompanying the Reply to Petitioner’s Opposition to Patent
`Owner’s Motion to Amend, Patent Owner must file as an exhibit a redline
`copy of its Reply to Petitioner’s Opposition to Patent Owner’s Motion to
`Amend highlighting the differences between it and the corresponding
`previously filed Patent Owner’s Revised Motion to Amend. Because the
`previously filed Patent Owner’s Revised Motion to Amend was 25 pages in
`length, we waive the page limit for Patent Owner’s Reply to Petitioner’s
`Opposition to Patent Owner’s Motion to Amend. Accordingly, Patent
`Owner is authorized 25 pages for its Reply to Petitioner’s Opposition to
`Patent Owner’s Motion to Amend.
`Petitioner is authorized to file IPR2021-00375, IPR2021-00377, and
`IPR2021-00582, no later than June 2, 2002, a sur-reply that is responsive to
`the Reply to Petitioner’s Opposition to Patent Owner’s Motion to Amend.
`[P]etitioner’s sur-reply in this context may not be accompanied
`by new evidence other than deposition transcripts of the cross-
`examination of any reply witness. The sur-reply may respond
`only to the preliminary guidance . . . and arguments made in the
`patent owner’s reply brief, comment on reply declaration
`testimony, and/or point to cross examination testimony.
`
`5
`
`
`
`IPR2021-00375 (Patent 8,265,096 B2)
`IPR2021-00377 (Patent 8,249,204 B2)
`IPR2021-00582 (Patent 8,565,326 B2)
`
`Motion to Amend Pilot Program Notice, 84 Fed. Reg. at 9501. Consistent
`with the waiver of the page requirements for Patent Owner’s Reply to
`Petitioner’s Opposition to Patent Owner’s Motion to Amend, we waive the
`page limit for Petitioner’s sur-reply. Petitioner is authorized 25 pages for its
`sur-reply.
`It is, therefore,
`ORDERED that the following papers are expunged:
`IPR2021-00375, Paper 44
`IPR2021-00375, Paper 49
`IPR2021-00375, Paper 54
`IPR2021-00375, Paper 56
`IPR2021-00377, Paper 42
`IPR2021-00377, Paper 47
`IPR2021-00377, Paper 52
`IPR2021-00377, Paper 54
`IPR2021-00582, Paper 40
`IPR2021-00582, Paper 45
`IPR2021-00582, Paper 50
`IPR2021-00582, Paper 52
`FURTHER ORDERED that Patent Owner is authorized to file in
`IPR2021-00375, IPR2021-00377, and IPR2021-00582, no later than
`May 23, 2022, a paper styled as a “Reply to Petitioner’s Opposition to Patent
`Owner’s Motion to Amend,” limited to 25 pages;
`FURTHER ORDERED that the “Reply to Petitioner’s Opposition to
`Patent Owner’s Motion to Amend” filed in IPR2021-00375, IPR2021-
`00377, and IPR2021-00582 must be substantively identical to the
`corresponding previously filed Patent Owner’s Revised Motion to Amend;
`FURTHER ORDERED that, accompanying the Reply to Petitioner’s
`Opposition to Patent Owner’s Motion to Amend filed in IPR2021-00375,
`IPR2021-00377, and IPR2021-00582 Patent Owner must file as an exhibit a
`
`6
`
`
`
`IPR2021-00375 (Patent 8,265,096 B2)
`IPR2021-00377 (Patent 8,249,204 B2)
`IPR2021-00582 (Patent 8,565,326 B2)
`
`redline copy of its Reply to Petitioner’s Opposition to Patent Owner’s
`Motion to Amend which highlights the differences between it and the
`corresponding previously filed Patent Owner’s Revised Motion to Amend;
`and
`
`FURTHER ORDERED that Petitioner is authorized to file in
`IPR2021-00375, IPR2021-00377, and IPR2021-00582, no later than June 2,
`2022, a sur-reply responsive to the Reply to Petitioner’s Opposition to Patent
`Owner’s Motion to Amend, limited to 25 pages.
`
`
`
`7
`
`
`
`IPR2021-00375 (Patent 8,265,096 B2)
`IPR2021-00377 (Patent 8,249,204 B2)
`IPR2021-00582 (Patent 8,565,326 B2)
`
`For PETITIONER:
`Jonathan Detrixhe
`Peter Chassman
`REED SMITH LLP
`jdetrixhe@reedsmith.com
`pchassman@reedsmith.com
`
`Martha Hopkins
`Victoria Hao
`LAW OFFICES OF S.J. CHRISTINE YANG
`mhopkins@sjclawpc.com
`vhao@sjclawpc.com
`
`For PATENT OWNER:
`Jay Kesan
`DIMUROGINSBERG, P.C.
`DGKEYIP GROUP
`jay@jaykesan.com
`
`Alfonso Chan
`SHORE CHAN LLP
`achan@shorechan.com
`
`
`8
`
`
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