`
`
`
`Paper 8
`Date: April 20, 2017
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VALEO NORTH AMERICA, INC. and VALEO EMBRAYAGES,
`Petitioner,
`
`v.
`
`SCHAEFFLER TECHNOLOGIES AG & CO. KG,
`Patent Owner.
`____________
`
`Case IPR2017-00442
`Patent 8,573,374 B2
`____________
`
`Before JOSIAH C. COCKS, MICHAEL W. KIM, and
`JAMES J. MAYBERRY Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5(a)
`
`
`
`
`
`IPR2017-00442
`Patent 8,573,374 B2
`
`
`
`
`
`1. Introduction
`A conference call was held on April 19, 2017 between counsel for the
`respective parties and judges Cocks, Kim, and Mayberry. Petitioner, Valeo
`North America, Inc. and Valeo Embrayages (“Petitioner”), was represented
`by Lisa Mandrusiak. Patent Owner, Schaeffler Technologies, AG & Co. KG
`(“Patent Owner”), was represented by Cary Kappel. The purpose of the call
`was to discuss Petitioner’s request for leave to file a reply to Patent Owner’s
`Preliminary Response (Paper 7).1
`
`2. Discussion
`Pursuant to 37 C.F.R. § 42.108(c) (revised April 2016), “[a] Petitioner
`may seek leave to file a reply to the preliminary response in accordance with
`§§ 42.23 and 42.24(c). Any such request must make a showing of good
`cause.” During the call, Petitioner urged that good cause exists here for the
`filing of a reply on the theory that the Preliminary Response raised a legal
`argument of first impression. More particularly, Petitioner generally
`characterized the new legal argument as one touching issues surrounding
`interplay between 35 U.S.C. §§ 119(a) and (c). According to Petitioner,
`those issues could not have been anticipated by Petitioner when filing its
`Petition. Thus, Petitioner seeks to file a reply to address particular legal
`issues surrounding Patent Owner’s discussion of 35 U.S.C. §§ 119(a) and
`(c).
`
`Patent Owner opposed Petitioner’s request for leave to file a reply to
`the Preliminary Response. Patent Owner also disagreed with Petitioner’s
`
`
`1 Petitioner had arranged for court reporter to transcribe the call. When the
`transcript becomes available, Petitioner should file it as an exhibit in this
`proceeding.
`
`2
`
`
`
`
`IPR2017-00442
`Patent 8,573,374 B2
`
`
`
`characterization that the Preliminary Response raised any novel legal issues.
`Patent Owner also requested that if the panel does permit Petitioner to file a
`reply, that Patent Owner be given leave to file a sur-reply. Petitioner
`indicated that it did not oppose Patent Owner’s request for a sur-reply should
`a reply be authorized.
`In reviewing the record, we observe that, in connection with this
`proceeding, the core dispute between the parties centers on an issue of a
`claim for priority arising under 35 U.S.C. § 119. That § 119 is at the
`forefront of this proceeding lends a measure of support to permitting
`additional briefing that is focused on legal issues pertaining specifically to
`that section. The panel also observes that the Preliminary Response was
`filed on April 4, 2017, and Petitioner responded quickly in seeking a
`conference call with the panel to obtain leave to file a reply.
`Given the particular circumstances present here, the panel believes
`that short, focused briefing from both sides may aid the panel in resolving
`the conflict between the parties that is at the heart of this proceeding. Thus,
`we conclude that there is good cause to permit additional briefing.
`Accordingly, we authorize Petitioner to file a reply to the Preliminary
`Response no longer than three (3) pages in length and due no later than April
`26, 2017. We also authorize Patent Owner to file a sur-reply no longer than
`three (3) pages in length and due no later than one week from the filing of
`Petitioner’s reply.
`
`3
`
`
`
`
`
`
`IPR2017-00442
`Patent 8,573,374 B2
`
`
`
`3. Order
`
`
`
`It is
`ORDERED that Petitioner is authorized to file a reply to the
`Preliminary Response that is no longer than three (3) pages in length and is
`due no later than April 26, 2017;
`FURTHER ORDERED that Patent Owner is authorized to file a sur-
`reply to Petitioner’s reply that is no longer than three (3) pages in length and
`is due no later than one week from the date that Petitioner files its reply; and
`FURTHER ORDERED that Petitioner should file a transcript of the
`conference call as an exhibit when the transcript becomes available.
`
`
`
`
`
`
`
`
`
`
`
`
`
`4
`
`
`
`
`
`
`
`
`IPR2017-00442
`Patent 8,573,374 B2
`
`For PETITIONER:
`Robert Mattson
`Philippe Signore
`Lisa Mandrusiak
`OBLON LLP
`cpdocketmattson@oblon.com
`cpdocketsignore@oblon.com
`cpdocketmandrusiak@oblon.com
`
`
`
`For PATENT OWNER:
`Cary Kappel
`William Gehris
`David Petroff
`DAVIDSON & KAPPEL, LLC
`ckappel@ddkpatent.com
`wgehris@ddkpatent.com
`dpetroff@ddkpatent.com
`
`
`
`5
`
`
`
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