`
`Trials@uspto.gov
`Entered: February 7, 2019
`
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`NICHIA CORP.,
`Patent Owner.
`____________
`
`Case IPR2018-00386
`Patent No. 9,490,411 B2
`
`Case IPR2018-00437
`Patent No. 9,537,071 B2
`______________
`
`
`Before SALLY C. MEDLEY, WILLIAM V. SAINDON, and
`NATHAN A. ENGELS, Administrative Patent Judges.
`
`ENGELS, Administrative Patent Judge.
`
`
`
`
`
`
`
`VIZIO, INC.,
`Petitioner,
`
`v.
`
`ORDER
`Conduct of the Proceeding
`Granting Additional Briefing
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`IPR2018-00386 (Patent No. 9,490,411 B2)
`IPR2018-00437 (Patent No. 9,537,071 B2)
`
`
`On February 4, 2019, a telephone conference call was held to discuss
`Petitioner’s request to file sur-sur-replies in each of these proceedings in
`response to Patent Owner’s Sur-Replies, filed January 29, 2019 (IPR2018-
`00386, Paper 28; IPR2018-00437, Paper 39). A transcript of the telephone
`conference has been entered into the record in each proceeding. IPR2018-
`00386, Ex. 1042; IPR2018-00437, Ex. 1042.
`According to Petitioner, good cause for the requested sur-sur-replies
`exists because Patent Owner’s Sur-Replies contain new arguments and
`evidence regarding claim construction. Id. at 5:18–22. Petitioner states that
`Patent Owner’s Sur-Reply in IPR2018-00386 includes new drawings,
`exhibits, and arguments that Petitioner should be permitted to address. Id. at
`5:23–7:5; 13:20–15:5. Regarding IPR2018-00437, Petitioner states that
`Patent Owner’s claim-construction arguments cite a Final Written Decision
`in IPR2018-01608 dated January 9, 2019, which issued after the December
`11, 2018 deadline for Petitioner’s Reply, and Petitioner contends that it
`should be permitted to address Patent Owner’s arguments regarding that
`Decision, among other things. Id. at 7:6–23; 15:6–17.
`Patent Owner contends that its Sur-Replies do not include new
`evidence or new arguments. Id. at 9:24–12:19. According to Patent Owner,
`the purportedly new drawings and exhibits are demonstratives used during
`cross examination of Petitioner’s expert witness, and the purportedly new
`arguments relate to the parties’ original claim-construction positions, not
`newly argued claim terms or improper new arguments that could amount to
`good cause for a sur-sur-reply. See Id.
`At this stage, based on our current understanding of the parties’
`positions and our review of the parties’ briefs, we are not persuaded that
`2
`
`
`
`
`IPR2018-00386 (Patent No. 9,490,411 B2)
`IPR2018-00437 (Patent No. 9,537,071 B2)
`
`Patent Owner’s Sur-Replies include improper new arguments or new
`evidence. Instead, based upon our current review, Patent Owner’s
`arguments are properly responsive to Petitioner’s arguments. Further, the
`allegedly new evidence consists of material illustrating an argument, which
`is particularly apt in this case given that much of the dispute involves the
`relative spatial positions of structures. Notwithstanding, because the parties’
`dispute certain claim interpretations that are central to this proceeding and,
`reviewing the existing briefing, we believe that additional briefing on the
`issues identified above would be beneficial and provide us further
`development of the issues. Therefore, we determine that allowing Petitioner
`to file a sur-sur-reply will be helpful to our decision-making process.
`Petitioner is authorized to file one sur-sur reply common to both
`proceedings, not exceed three pages of argument. Patent Owner is permitted
`one response to Petitioner’s sur-sur-reply subject to the same limitations, to
`be entered in each proceeding. Neither party’s paper may cite evidence not
`already of record as of the mailing date of this order.
`
`
`V. ORDER
`In view of the foregoing, it is hereby:
`ORDERED that Petitioner is authorized to file a single, common sur-
`sur-reply not to exceed three pages in response to Patent Owner’s Sur-
`Replies, with the same sur-sur-reply being filed in each of the proceedings,
`by February 11, 2019
`FURTHER ORDERED that Patent Owner is authorized to file in each
`of these proceedings a single, common response to Petitioner’s sur-sur-reply,
`not to exceed three pages, by February 15, 2019.
`3
`
`
`
`
`IPR2018-00386 (Patent No. 9,490,411 B2)
`IPR2018-00437 (Patent No. 9,537,071 B2)
`
`
`
`PETITIONER:
`Gabrielle E. Higgins
`James L. Davis, Jr.
`Christopher M. Bonny
`James F. Mack
`Scott McKeown
`gabrielle.higgins@ropesgray.com
`James.L.Davis@ropesgray.com
`Christopher.Bonny@ropesgray.com
`James.Mack@ropesgray.com
`Scott.McKeown@ropesgray.com
`VIZIO2NichiaIPRs@ropesgray.com
`
`
`
`PATENT OWNER:
`Martin Zoltick
`Michael Jones
`Mark Rawls
`Robert P. Parker
`Derek F. Dahlgren
`mzoltick@rfem.com
`mjones@rfem.com
`mrawls@rfem.com
`rparker@rfem.com
`ddahlgren@rfem.com
`
`4
`
`
`
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