`571-272-7822
`
`Paper 11
`Date: June 10, 2021
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`ZYXEL COMMUNCIATIONS CORPORATION,
`Petitioner,
`
`v.
`
`UNM RAINFOREST INNOVATIONS,
`Patent Owner.
`
`
`IPR2021-00734 (Patent 8,265,096 B2)
`IPR2021-00739 (Patent 8,249,204 B2)
`IPR2021-00741 (Paten 8,565,326 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
`
`
`
`IPR2021-00734 (Patent 8,265,096 B2)
`IPR2021-00739 (Patent 8,249,204 B2)
`IPR2021-00741 (Patent 8,565,326 B2)
`
`
`Judges Droesch, Parvis, and Boudreau held a conference call on
`June 8, 2021, with counsel for the parties. Counsel for Patent Owner
`requested the call seeking authorization to file a sur-reply to Petitioner’s
`Reply to Patent Owner’s Opposition to the Motion for Joinder filed in each
`of IPR2021-00734, IPR2021-00739, and IPR2021-00741.
`Counsel for Patent Owner requests authorization to file a sur-reply to
`the Motion for Joinder filed in each IPR to address certain Reply arguments
`that Patent Owner asserts are new. More specifically, counsel for Patent
`Owner asserts that it would like to address the ownership challenge raised by
`Petitioner based on Petitioner’s listing of the challenged patent in the case
`caption for papers filed in each IPR. Counsel for Patent Owner also asserts
`that it would like the opportunity to respond to the case law cited by
`Petitioner in its Reply related to the timeliness of the Motion for Joinder.
`Petitioner opposes Patent Owner’s request. Counsel for Petitioner
`reaffirmed its representation from the Reply filed in each IPR that Petitioner
`does not raise an ownership issue to be decided by the Board. See, e.g.,
`IPR2021-00734, Paper 8, 1.2 Counsel for Petitioner argues that each
`Petition filed in IPR2021-00734, IPR2021-00739, and IPR2021-00741 is
`substantively identical to the petition filed in each corresponding IPR to
`which joinder is sought. Counsel for Petitioner further argues that
`Petitioner’s requested sur-reply would address the same issues that were
`raised in the Opposition filed in each IPR. Counsel for Petitioner asserts that
`
`
`2 Identical statements are made in the Reply filed in each of IPR2021-00739
`and IPR2021-00741.
`
`2
`
`
`
`
`
`IPR2021-00734 (Patent 8,265,096 B2)
`IPR2021-00739 (Patent 8,249,204 B2)
`IPR2021-00741 (Patent 8,565,326 B2)
`
`the Reply filed in each IPR included citations to Central Security Group –
`Nationwide, Inc. v. Ubiquitous Connectivity, LP, IPR2019-01609, Paper 11
`at 8–9 (PTAB Feb. 26, 2020) and Dell Inc. v. Neodron Ltd., IPR2020-00731,
`Paper 9 at 5 (PTAB July 31, 2020), neither of which is new or precedential.
`Petitioner asserts that Patent Owner had the opportunity to present case law
`to support its Opposition arguments that the Motion for Joinder filed in each
`IPR is untimely.
`After considering the parties’ contentions made during the conference
`call, we conclude that good cause does not exist for authorizing Patent
`Owner’s request to file a sur-reply in each IPR to address an asserted
`ownership issue and the timeliness of the Motion for Joinder, issues already
`addressed in the Opposition filed in each IPR.
`
`ORDER
`
`Accordingly, it is:
`ORDERED that Patent Owner’s request for authorization to file a sur-
`reply to the Motion for Joinder in each of IPR2021-00734, IPR2021-00739,
`and IPR2021-00741 is denied.
`
`
`
`
`
`
`
`
`3
`
`
`
`IPR2021-00734 (Patent 8,265,096 B2)
`IPR2021-00739 (Patent 8,249,204 B2)
`IPR2021-00741 (Patent 8,565,326 B2)
`
`PETITIONER:
`Jonathan I. Detrixhe
`Jonah D. Mitchell
`Christine M. Morgan
`Peter J. Chassman
`Ismail C. Kuru
`Martha Hopkins
`Victoria Hao
`REED SMITH LLP
`jdetrixhe@reedsmith.com
`jmitchell@reedsmith.com
`cmorgan@reedsmith.com
`pchassman@reedsmith.com
`ikuru@reedsmith.com
`mhopkins@sjclawpc.com
`vhao@sjclawpc.com
`
`
`PATENT OWNER:
`
`Jay P. Kesan
`DIMUROGINSBERG, PC
`DGKEYIP GROUP
`jkesan@dimuro.com
`
`Alfonso Chan
`SHORE CHAN LLP
`achan@shorechan.com
`
`
`
`4
`
`
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