Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 7
`Entered: March 23, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`v.
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`IPR2020-00115
`Patent 8,407,609 B2
`____________
`
`
`Before CHARLES J. BOUDREAU, DANIEL J. GALLIGAN, and
`JULIET MITCHELL DIRBA, Administrative Patent Judges.
`
`DIRBA, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. §§ 42.5, 42.108(c)
`
`Petitioner filed its Petition on October 31, 2019 (Paper 1), and Patent
`Owner filed its Preliminary Response on February 10, 2020 (Paper 6). On
`the evening of March 18, 2020, Petitioner requested a conference call to
`request permission to file a reply to Patent Owner’s Preliminary Response.
`
`
`Tel: 571-272-7822
`
`
`Paper 7
`Entered: March 23, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`v.
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`IPR2020-00115
`Patent 8,407,609 B2
`____________
`
`
`Before CHARLES J. BOUDREAU, DANIEL J. GALLIGAN, and
`JULIET MITCHELL DIRBA, Administrative Patent Judges.
`
`DIRBA, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. §§ 42.5, 42.108(c)
`
`Petitioner filed its Petition on October 31, 2019 (Paper 1), and Patent
`Owner filed its Preliminary Response on February 10, 2020 (Paper 6). On
`the evening of March 18, 2020, Petitioner requested a conference call to
`request permission to file a reply to Patent Owner’s Preliminary Response.
`
`
`
`IPR2020-00115
`Patent 8,407,609 B2
`A conference call was held on March 19, 2020, and the participants included
`Judges Boudreau, Galligan, and Dirba and respective counsel for the parties.
`Petitioner seeks leave to file a reply to address Patent Owner’s
`argument that the Board should exercise its discretion to deny the Petition
`under 35 U.S.C. § 314(a). See Prelim. Resp. 10–13 (citing NHK Spring Co.
`v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018)
`(precedential)). Petitioner contends that the record does not accurately
`reflect the relationship between a parallel district court litigation and the
`present inter partes review proceeding. Specifically, Petitioner submits that
`dependent claims 2 and 3 are not presently asserted in the district court
`litigation, and Petitioner argues that the schedule of the district court
`litigation is likely to be impacted by the present COVID-19 pandemic.
`Patent Owner opposes Petitioner’s request and argues Petitioner has
`not shown good cause. Patent Owner submits that Petitioner failed to
`address the district court litigation in its Petition, despite the fact that the
`pending district court case is nearing trial. Patent Owner contends that the
`arguments made in the Preliminary Response were reasonably foreseeable.
`With respect to COVID-19, Patent Owner argues that Petitioner is using the
`uncertainties of the situation to attempt to show good cause, and that the
`Board has been advised of the situation, so further briefing is unnecessary.
`The rules governing inter partes review do not provide petitioners a
`right to file a reply to a preliminary response. See 37 C.F.R. § 42.108(c).
`Thus, the filing of a reply must be based on a showing of good cause. Id.
`We determine that Petitioner has not shown good cause.
`The Board’s Trial Practice Guide identifies considerations that will be
`taken into account by the Board in determining whether to exercise
`
`2
`
`
`
`IPR2020-00115
`Patent 8,407,609 B2
`discretion to decline to institute review. The July 2019 update to the Trial
`Practice Guide, available when the Petition was filed, states that “events in
`other proceedings related to the same patent, either at the Office, in district
`courts, or the ITC” may favor discretionary denial, and it invites parties “to
`address in their submissions whether any other such reasons exist in their
`case . . . and whether and how such factors should be considered.” July
`2019 Office Trial Practice Guide Update (“July 2019 TPG”), 25–26,
`available at https://www.uspto.gov/sites/default/files/documents/trial-
`practice-guide-update3.pdf; see 84 Fed. Reg. 33,925 (July 16, 2019)
`(providing notice and link). 1 The July 2019 TPG cites to the Board’s
`precedential decision in NHK Spring, Paper 8 at 19–20, as an example.
`Petitioner did not address the status of the parallel district court
`litigation in its Petition, and Patent Owner’s arguments relying on NHK
`Spring were reasonably foreseeable in view of the guidance provided by the
`July 2019 TPG several months before the Petition was filed. As a result,
`Petitioner does not show good cause to respond to these arguments or to
`address the parties’ respective positions in the district court litigation.
`The COVID-19 pandemic itself was unforeseeable at the time the
`Petition was filed, but we are not persuaded that it provides Petitioner with
`good cause for its requested reply. Petitioner contends that COVID-19 is
`relevant because: (1) Patent Owner moved to extend discovery deadlines by
`two months in the district court litigation and (2) it is likely that the district
`
`
`1 The Trial Practice Guide has since been further updated; the current
`version also includes this guidance. Consolidated Trial Practice Guide
`(Nov. 2019), 58, available at https://www.uspto.gov/TrialPracticeGuide
`Consolidated.
`
`3
`
`
`
`IPR2020-00115
`Patent 8,407,609 B2
`court trial will be delayed. Thus, the salient question is not whether a reply
`is justified in light of COVID-19, but rather whether a reply is justified in
`light of these potential changes to the schedule. We determine that it is not.
`First, at this point, we can only speculate whether the schedule will
`change—indeed, Petitioner has opposed Patent Owner’s requested extension
`(which decreases the likelihood of a delay). Second, even if Patent Owner’s
`request results in a two month delay to the schedule, we do not perceive such
`a modest change to the schedule to be sufficiently material as to warrant a
`reply brief in this case.
`
`ORDER
`
`Accordingly, it is:
`ORDERED that Petitioner’s request to file a reply is denied.
`
`
`4
`
`
`
`IPR2020-00115
`Patent 8,407,609 B2
`PETITIONER:
`
`Erika H. Arner
`Joshua L. Goldberg
`A. Grace Klock Mills
`FINNEGAN, HENDERSON, FARABOW, GARRETT, & DUNNER LLP
`erika.arner@finnegan.com
`joshua.goldberg@finnegan.com
`gracie.mills@finnegan.com
`
`
`PATENT OWNER:
`
`Ryan Loveless
`Brett Mangrum
`James Etheridge
`Jeffrey Huang
`ETHERIDGE LAW GROUP
`ryan@etheridgelaw.com
`brett@etheridgelaw.com
`jim@etheridgelaw.com
`jeff@etheridgelaw.com
`
`
`
`5
`
`
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