`571-272-7822
`
`Paper 14
`Date: August 12, 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
`August 10, 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 IPR2021-00734, IPR2021-00739, and IPR2021-
`00741.
`Counsel for Petitioner requests authorization to file a reply in each
`proceeding to address Fintiv factor 2 and Patent Owner’s Preliminary
`Response argument that Petitioner improperly filed its Petition “as an in rem
`proceeding.” See, e.g., IPR2021-00734, Paper 12 at 4. More specifically,
`counsel for Petitioner states that the proceeding in UNM Rainforest
`Innovations v. ZyXEL Communications Corporation, No. 6:20-cv-00522-
`ADA (W.D.Tex.) (“related district court proceeding”) has been stayed and,
`therefore, good cause exists to address Fintiv factor 2 in light of this material
`development. Counsel for Petitioner also states that there is good cause to
`allow Petitioner to file a reply because Patent Owner’s arguments that
`Petitioner filed its Petition as an in rem proceeding could not have been
`foreseen. According to Petitioner, the patent at issue was listed in the
`caption of each Petition because Petitioner was aware of an ownership
`dispute regarding the patents at issue. Counsel for Petitioner requests a
`four-page reply.
`Patent Owner opposes Petitioner’s request. Counsel for Patent Owner
`asserts that a mandatory notice should be sufficient to address the stay of the
`related district court proceeding. Counsel for Patent Owner further asserts
`that because Petitioner introduced the issue by listing the patent at issue in
`the caption of each Petition, Patent Owner’s in rem proceeding arguments
`2
`
`
`
`
`
`IPR2021-00734 (Patent 8,265,096 B2)
`IPR2021-00739 (Patent 8,249,204 B2)
`IPR2021-00741 (Patent 8,565,326 B2)
`
`were foreseeable. Counsel for Patent Owner requested a sur-reply, should
`the Board authorize Petitioner to file a reply.
`After considering the parties’ contentions made during the conference
`call, we conclude that good cause exists for authorizing Petitioner to file a
`reply in each IPR to address Fintiv factor 2 in view of the stay in the related
`district court proceeding and to address Patent Owner’s argument that
`Petitioner filed each Petition improperly as an in rem proceeding.
`Accordingly, Petitioner is authorized to file, no later than August 17, 2021, a
`four (4) page reply to the Preliminary Response limited to the
`aforementioned issues. Patent Owner is authorized to file, no later than
`August 24, 2021, 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 in each of IPR2021-
`00734, IPR2021-00739, and IPR2021-00741 is granted;
`FURTHER ORDERED that Petitioner’s reply is limited to four (4)
`pages and shall be filed no later than August 17, 2021;
`FURTHER ORDERED that Patent Owner is authorized to file a
`sur-reply to Petitioner’s reply in each of IPR2021-00734, IPR2021-00739,
`and IPR2021-00741; and
`FURTHER ORDERED that Patent Owner’s sur-reply is limited to
`four (4) pages and shall be filed no later than August 24, 2021.
`
`
`
`
`
`
`
`
`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
`Peter J. Chassman
`Martha Hopkins
`Victoria Hao
`REED SMITH LLP
`jdetrixhe@reedsmith.com
`pchassman@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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