A conference call in these proceedings was held on September 24, 2019, among respective counsel for the parties and Judges Chang, Pothier, and Zecher.
The call was requested by the panel to discuss the privy and real party in interest issues raised by Patent Owner, PersonalWeb Technologies, LLC (“PersonalWeb”), in the Preliminary Responses filed in each proceeding.
3 As we indicated during the conference call, the panel underscores that filing PersonalWeb’s counterclaims, dated May 25, 2018, as an exhibit in these proceedings will be helpful to analyze the issues of privy and real party in interest and their applicability to 35 U.S.C. §§ 315(a)(1) and/or 315(b).
Based on the specific facts of these proceedings, the panel determined that it would benefit from additional briefing on the issues identified above.
FURTHER ORDERED that Petitioner entities are authorized to file new evidence with each reply, but the evidence must be pertinent to the issues identified above; FURTHER ORDERED that PersonalWeb is authorized to file a five page sur-reply in each proceeding no later than Tuesday, October 8, 2019, that is responsive to the issues addressed by Petitioner entities in each reply; and FURTHER ORDERED that PersonalWeb is authorized to file new evidence with each sur-reply, but it must be responsive to the issues addressed by Petitioner entities in each reply.