`571-272-7822
`
`
`Paper No. 21
`Entered: August 30, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KINGSTON TECHNOLOGY COMPANY, INC.,
`Petitioner,
`
`v.
`
`POLARIS INNOVATIONS LTD.,
`Patent Owner.
`____________
`
`IPR2016-01621 (Patent 6,438,057 B1)
`IPR2016-01622 (Patent 6,850,414 B2)
`IPR2016-01623 (Patent 7,315,454 B2)1
`____________
`
`
`Before SALLY C. MEDLEY, JEAN R. HOMERE, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`1 This Order addresses issues identical in all three cases. We, therefore,
`exercise our discretion to issue one Order to be filed in each case. The
`parties are not authorized to use this style heading for any subsequent papers
`
`
`
`IPR2016-01621 (Patent 6,438,057 B1)
`IPR2016-01622 (Patent 6,850,414 B2)
`IPR2016-01623 (Patent 7,315,454 B2)
`
`
`On August 29, 2017, counsel for Polaris Innovations Ltd. (“Patent
`Owner”) requested a conference call to seek the panel’s guidance on how to
`address portions of each Reply filed by Kingston Technology Company Inc.
`(“Petitioner”) that, in its view, are outside the proper scope of a reply.
`We will determine whether the allegedly new arguments and evidence
`are outside the proper scope of a reply in the final written decision. To
`preserve the issue in the words of the parties, we authorize Patent Owner to
`file, in each proceeding, a brief paper, limited to two pages, that only
`identifies the new and improper arguments and evidence introduced in
`Petitioner’s Reply, generally by exhibit, page, and/or line number(s) only,
`and does not present any arguments. Petitioner is authorized to file, in each
`proceeding, a brief response, limited to two pages, that identifies the
`portions of the Patent Owner Response to which the new arguments and
`evidence identified by Patent Owner are a proper response or that identifies
`where this argument or evidence is presented in the Petition, also generally
`by exhibit, page, and/or line number(s) only. The deadlines for the
`respective papers are set forth below.
`Either party may bring up the subject at the time of oral hearing.
`However, our guidance at oral hearings will be the same—if we determine
`Petitioner’s arguments or evidence are outside the proper scope of a reply,
`we will not consider those arguments or evidence, and if we determine that
`Petitioner’s arguments and evidence is responsive to the Patent Owner
`Response, we will consider Petitioner’s arguments and evidence.
`
`
`2
`
`
`
`IPR2016-01621 (Patent 6,438,057 B1)
`IPR2016-01622 (Patent 6,850,414 B2)
`IPR2016-01623 (Patent 7,315,454 B2)
`
`
`ORDER
`
`Accordingly, it is
`ORDERED that Patent Owner is authorized to file, in each
`proceeding, on or before September 6, 2017, a paper not exceeding two
`pages to identify the new arguments and evidence relied upon in Petitioner’s
`Reply that it believes to be beyond the proper scope of a reply; and
`FURTHER ORDERED that Petitioner is authorized to file, in each
`proceeding, on or before September 13, 2017, a paper not exceeding two
`pages to identify either the portions of the Patent Owner Response to which
`the new arguments and evidence identified by Patent Owner is a proper
`response, or the portions of the Petition where the arguments and evidence
`were made initially.
`
`
`
`
`
`
`
`
`3
`
`
`
`IPR2016-01621 (Patent 6,438,057 B1)
`IPR2016-01622 (Patent 6,850,414 B2)
`IPR2016-01623 (Patent 7,315,454 B2)
`
`For PETITIONER:
`
`David Hoffman
`FISH & RICHARDSON P.C.
`IPR37307-0007IP1@fr.com
`hoffman@fr.com
`
`Martha Hopkins
`LAW OFFICES OF S.J. CHRISTINE YANG
`IPR@sjclawpc.com
`mhopkins@sjclawpc.com
`
`
`For PATENT OWNER:
`
`Kenneth Weatherwax
`Nathan Lowenstein
`LOWENSTEIN & WEATHERWAX LLP
`weatherwax@lowensteinweatherwax.com
`lowenstein@lowensteinweatherwax.com
`
`4
`
`