`Date: December 3, 2015
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`US ENDODONTICS, LLC,
`Petitioner,
`
`v.
`
`GOLD STANDARD INSTRUMENTS, LLC
`Patent Owner.
`____________
`
`Case PGR2015-00019
`Patent 8,876,991 B2
`____________
`
`Before JOSIAH C. COCKS, HYUN J. JUNG, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`GOODSON, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 CFR § 42.5
`
`
`
`
`
`PGR2015-00019
`Patent 8,876,991 B2
`
`
`
`In a conference call on December 3, 2015, Petitioner requested authorization
`
`to file a Reply to Patent Owner’s Preliminary Response (Paper 14).
`Petitioner contends in its Petition (Paper 1) that the Notice of Allowance for
`the ’991 patent shows that the Examiner had mistakenly reviewed the wrong
`claims. See Paper 1, 2–4, 6–11. In the Preliminary Response, Patent Owner
`argues that that the Notice of Allowance contained a mere clerical error. See Paper
`14, 10. Petitioner’s proposed Reply would respond to Patent Owner’s argument by
`discussing a rejection from the prosecution of another pending application, which
`Petitioner asserts contradicts Patent Owner’s argument in the Preliminary
`Response. Patent Owner opposes Petitioner’s request to file a reply brief, but
`requests authorization to file a sur-reply if Petitioner is permitted to file a reply
`brief.
`
`Reply and sur-reply briefing before a decision on institution is not standard
`procedure. The Board has three months after the filing of a preliminary response
`to study the parties’ submissions and render a decision on institution. See Office
`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,757 (Aug. 14, 2002) (“The
`Board acting on behalf of the Director will determine whether to institute a trial
`within three months of the date the patent owner’s preliminary response was due or
`was filed, whichever is first.”). Permitting additional briefing following the
`preliminary response compresses the amount of time that the Board has to consider
`all the briefing in rendering its decision on institution. While there are situations in
`which additional briefing between the preliminary response and a decision on
`institution is helpful, this is not such a case. Specifically, we are not persuaded, at
`this time, that further briefing on the nature of the error the Examiner made in the
`Notice of Allowance (i.e., was it a mere clerical error or does it reveal a
`
`2
`
`
`
`
`
`
`PGR2015-00019
`Patent 8,876,991 B2
`
`
`misunderstanding of the claims being allowed?) would aid our analysis in
`rendering a decision on institution in this case.
`
`Accordingly, it is hereby:
`
`ORDERED that Petitioner’s request to file a Reply to the Preliminary
`Response is denied.
`
`For PETITIONER:
`
`Jeffrey Ginsberg
`Abhishek Bapna
`Patterson Belknap Webb & Tyler LLP
`jginsberg@pbwt.com
`abapna@pbwt.com
`
`
`
`
`
`For PATENT OWNER:
`Joseph A. Hynds
`R. Elizabeth Brenner-Leifer
`Steven Lieberman
`Jason M. Nolan
`Derek F. Dahlgren
`Rothwell, Figg, Ernst & Manbeck, P.C.
`jhynds@rothwellfigg.com
`ebrenner@rothwellfigg.com
`slieberman@rothwellfigg.com
`jnolan@rothwellfigg.com
`ddahlgren@rothwellfigg.com
`
`3
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