`571-272-7822
`
`Paper 18
`Entered: December 7, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`CRADLEPOINT, INC., DELL INC., HONEYWELL INTERNATIONAL,
`INC., SIERRA WIRELESS, INC., TCL COMMUNICATION
`TECHNOLOGYHOLDINGS LIMITED, TCT MOBILE
`INTERNATIONAL LIMITED, TCT MOBILE, INC., TCT MOBILE (US)
`INC., TCT MOBILE (US) HOLDINGS INC., THALES DIS AIS
`DEUTSCHLAND GMBH, ZTE CORPORATION, AND ZTE (USA) INC.,
`Petitioner,
`v.
`3G LICENSING S.A.,
`Patent Owner.
`
`IPR2021-01141
`Patent 7,215,653 B2
`
`
`
`
`
`Before MIRIAM L. QUINN, MONICA S. ULLAGADDI, and
`RUSSELL E. CASS, Administrative Patent Judges.
`CASS, Administrative Patent Judge.
`
`ORDER
`Granting Patent Owner’s Request to Strike Reply Declaration
`37 C.F.R. § 42.20
`
`
`
`
`
`
`
`
`
`IPR2021-01141
`Patent 7,215,653 B2
`
`
`On November 15, 2021, Petitioner requested “leave to file a short
`(less than 10 page) reply to address the invention data/priority arguments
`raised in the Preliminary Response for IPR No. IPR2021-01141.” Ex. 3001.
`Petitioner did not request leave to file a further declaration in support of a
`reply. On November 17, 2021, we authorized Petitioner to file a six-page
`Reply limited to responding to Patent Owner’s argument (on pages 13–19 of
`the Preliminary Response) that the challenged claims of the ’653 patent are
`entitled to the priority date of the first Korean application. Id. We also
`authorized Patent Owner to file a six-page Sur-reply. Id.
`On November 29, 2021, Petitioner filed its Reply, but also filed a ten-
`page Second Declaration of James Proctor in Support of Inter Partes Review
`of U.S. Patent No. 7,215,653. Paper 17; Ex. 1017. On December 3, 2021,
`Patent Owner requested that we strike Mr. Proctor’s Second Declaration
`because Petitioner never requested permission to file an expert declaration
`with their pre-institution Reply. Ex. 3002.
`We agree with Patent Owner. Petitioner never requested permission
`to file a declaration with its Reply, despite the opportunity to do so. We
`therefore find that the Second Proctor Declaration was unauthorized, and
`should be stricken on that basis.
`
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that, the Second Declaration of James Proctor in Support
`of Inter Partes Review of U.S. Patent No. 7,215,653 (Ex. 1017) is stricken,
`and shall be expunged from the record.
`
`
`
`
`2
`
`
`
`IPR2021-01141
`Patent 7,215,653 B2
`
`For PETITIONER:
`
`Daniel T. Keese
`Amanda Tessar
`PERKINS COIE LLP
`keese-ptab@perkinscoie.com
`tessar-ptab@perkinscoie.com
`
`John R. Hutchins
`C. Andy Mu
`Wesley W. Jones
`Craig W. Kronenthal
`BANNER & WITCOFF, LTD.
`jhutchins@bannerwitcoff.com
`amu@bannerwitcoff.com
`wjones@bannerwitcoff.com
`ckronenthal@bannerwitcoff.com
`
`Brian M. Buroker
`Paul Torchia
`Nathan R. Curtis
`GIBSON, DUNN & CRUTCHER
`bburoker@gibsondunn.com
`ptorchia@gibsondunn.com
`ncurtis@gibsondunn.com
`
`Meredith Martin Addy
`Robert P. Hart
`Gregory B. Gulliver
`ADDYHART P.C.
`meredith@addyhart.com
`robert@addyhart.com
`gbgulliver65@gmail.com
`
`Benjamin E. Weed
`Erik J. Halverson
`Brian Paul Bozzo
`K & L GATES LLP
`benjamin.weed.ptab@klgates.com
`
`3
`
`
`
`IPR2021-01141
`Patent 7,215,653 B2
`
`erik.halverson@klgates.com
`brian.bozzo@klgates.com
`
`Jeremy D. Peterson
`Bradford A. Cangro
`PV LAW LLP
`jeremy.pewterson@pvuslaw.com
`bradford.cangro@pvuslaw.com
`
`Jacob K. Baron
`Allison M. Lucier
`HOLLAND & KNIGHT LLP
`jacob.baron&hklaw.com
`allison.lucier@hklaw.com
`
`For PATENT OWNER:
`
`Timothy Devlin
`DEVLIN LAW FIRM LLC
`TD-PTAB@devlinlawfirm.com
`
`
`4
`
`
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