Strang, Jonathan (DC)
`From:
`Sent:
`To:
`Cc:
`Subject:
`
`Counsel,
`
`Trials <Trials@USPTO.GOV>
`Thursday, December 05, 2019 11:59 AM
`Murphy, Brian P.; Trials
`Strang, Jonathan (DC); Naples, Clement (NY); BentleyIPR
`RE: Bentley Motors v. Jaguar Land Rover IPR2019-01502
`
`No call is necessary. The Board authorizes Petitioner to file a reply on the two points and to introduce the declarations as
`requested. The reply shall not exceed 8 pages and is due December 12. Patent Owner is authorized to file an 8-page sur-
`reply in response to Petitioner’s reply. The sur-reply is due December 19. No further briefing is authorized.
`
`Regards,
`
`Andrew Kellogg,
`Supervisory Paralegal
`Patent Trial and Appeal Board
`USPTO
`andrew.kellogg@uspto.gov
`Direct: 571-272-5366
`
`From: Murphy, Brian P. <BMurphy@haugpartners.com>
`Sent: Wednesday, December 4, 2019 4:05 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: 'jonathan.strang@lw.com' <jonathan.strang@lw.com>; 'clement.naples@lw.com' <clement.naples@lw.com>;
`BentleyIPR <BentleyIPR@haugpartners.com>
`Subject: Bentley Motors v. Jaguar Land Rover IPR2019-01502
`
`Dear Board:
`
`Petitioner Bentley Motors, having conferred with opposing counsel, requests authorization under 37 CFR §
`42.108(c) to file an 8-page Reply in IPR2019-01502, including new exhibits, to address two issues in Patent
`Owner’s Preliminary Response (POPR):
`
`1) public accessibility of prior art Porsche ATZ articles Exhibits 1002A-D (POPR, 38-42); and
`2) requested discretionary denial under 35 U.S.C. § 314(a) (POPR, 48-51).
`
`Patent Owner opposes Petitioner’s requests on issue number 1. Patent Owner does not oppose Petitioner’s
`requests on issue number 2, provided Patent Owner may file a 4-page Sur-Reply, which Petitioner does not
`oppose. Petitioner submits there is good cause to authorize the requests.
`
`Issue No. 1. After contacting the British Library at the end of July 2019, we received a British Library
`Research Service letter dated August 7, 2019. Ex. 1002E. The letter confirmed the “British Library Public
`Availability Date (PAD)” for each of the Porsche ATZ articles (Exs. 1002A-D) and attached British Library date-
`stamped pages for each article. Id. The Petition was filed on August 16, 2019 with Exhibits 1002A-E. We did
`not receive formal British Library Statutory Declarations until August 20, 2019, but we served them on Patent
`Owner on August 23, 2019 as new Exs. 1002A-D in related IPR2019-01539. We later raised the issue with
`Patent Owner’s counsel by email on November 27, 2019, after noting the POPR in IPR2019-01502 did not
`mention the British Library Statutory Declarations. Petitioner has been diligent on this issue. See Power
`
`1
`
`Ex. 2028-0001
`
`Jaguar Land Rover Ltd.
`Exhibit 2028
`Bentley v. Jaguar
`IPR2019-01502
`
`

`

`Integrations, Inc. v. Semiconductor Components Indus., LLC, IPR2018-00379 Paper 8, 7 (PTAB June 19,
`2018) (authorization of 4-page reply and introduction of diligently obtained affidavit evidence regarding public
`accessibility). Petitioner requests a 4-page Reply and authorization to file new Exhibits 1002A-D that include
`British Library Statutory Declarations of public accessibility. Petitioner does not oppose a 4-page Sur-Reply by
`Patent Owner.
`
`Issue No. 2. Patent Owner cites Next Caller Inc. v. TRUSTID, IPR2019-00961 Paper 10, 15-16 (PTAB
`October 16, 2019) in support of its discretionary denial argument under § 314(a). POPR, 49-50. The Next
`Caller decision issued two months after Petitioner filed its Petition. Therefore, Petitioner submits there is good
`cause for a 4-page Reply to address Patent Owner’s discretionary denial argument and reliance on an
`intervening Board decision. See Samsung Electronics Co. v. M&K Holdings Inc., IPR2018-00696 Paper 7
`(PTAB June 29, 2018) (patent owner’s reliance on “intervening decisions by this Board … establishes good
`cause for us to grant leave to file a reply”). Petitioner also requests authorization to file the September 17,
`2019 status conference transcript from the related litigation proceeding pending in the Eastern District of
`Virginia.
`
` If the Board would like to convene a conference call, counsel for the parties are available as follows:
`
`Thursday 12/5, after 3pm (ET)
`Friday 12/6, 9-5 pm
`Monday 12/9 9-5 pm
`Tuesday 12/17, 9-5 pm
`
`Respectfully submitted,
`
`Brian Murphy
`
`Brian Murphy
`Partner
`
`Haug Partners LLP
`745 Fifth Avenue, 10th Floor
`New York, NY 10151
`+1 212.588.0800 Main
`+1 212.863.2040 Direct
`
`bmurphy@haugpartners.com
`www.haugpartners.com
`
`2
`
`Ex. 2028-0002
`
`