`Tel: 571-272-7822
`
`
`Paper 11
`Entered: August 3, 2020
`
`
`
`
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APEX TOOL GROUP, LLC,
`Petitioner,
`v.
`
`MILWAIKEE ELECTRIC TOOL CORPORATION,
`Patent Owner.
`____________
`
`PGR2020-00056
`Patent 10,422,617 B1
`____________
`
`Before GRACE KARAFFA OBERMANN, JOHN A. HUDALLA, and
`AARON W. MOORE, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`
`
`ORDER
`Authorizing Petitioner to File a Reply and
`Authorizing Patent Owner to File a Sur-Reply
`37 C.F.R. §§ 42.5; 42.108(c)
`
`
`
`
`
`
`PGR2020-00056
`Patent 10,422,617 B1
`
`Petitioner challenges the patentability of Patent No. 10,422,617 B1
`
`(“the ’617 patent”). See generally Paper 1 (“Petition”). On July 30, 2020,
`Petitioner submitted an email to the Board requesting authorization to file a
`five-page Reply to Patent Owner’s Preliminary Response (Paper 9) to the
`Petition. Ex. 3001, 2 (copy of email correspondence). On July 31, 2020,
`Patent Owner submitted an email opposing Petitioner’s request. Id. at 1–2.
`That same day, the Board granted Petitioner’s request via email. Id. at 1.
`This Order memorializes the terms and conditions of that grant. See id.
`(Board’s responsive email of July 31, 2020).
`The stated purpose of the requested Reply is to respond to a solitary
`argument raised in Patent Owner’s Preliminary Response, namely, “that the
`‘conventional tape measure blade design’ identified as ‘Prior Art 2’ in the
`[’617] patent’s specification is not prior art.” Id. at 2. The Board did not
`hold a telephonic conference call, but instead advised the parties that the
`panel, having considered Petitioner’s opposed request, determined that
`additional briefing “may be helpful to the Board.” Id. at 1. On that basis,
`we authorized Petitioner’s request. Id. We mitigated any concerns of
`fairness or prejudice by providing Patent Owner an opportunity to file a Sur-
`Reply commensurate in scope and length with the Reply. Id.
`The Reply shall be strictly limited to responding to the solitary issue
`identified above. The Sur-Reply shall be limited to responding to issues
`raised in the Reply. No new evidence shall be filed in support of the Reply
`or Sur-Reply. We previously placed the parties on notice of the timing and
`length of the additional briefs (id.), the details of which we set forth below
`for the record.
`
`
`2
`
`
`
`PGR2020-00056
`Patent 10,422,617 B1
`
`
`It is
`ORDERED that we grant Petitioner’s request for authorization to file
`a Reply to Patent Owner’s Preliminary Response to the Petition;
`FURTHER ORDERED that any Reply must be filed no later than
`August 7, 2020, may be up to five pages in length, and shall be strictly
`limited to responding to the solitary argument identified in Exhibit 3001;
`namely, that the “conventional tape measure blade design” identified as
`“Prior Art 2” in the ’617 patent’s specification is not prior art;
`FURTHER ORDERED that Patent Owner is authorized to file a Sur-
`Reply if Petitioner files a Reply pursuant to the above authorization;
`FURTHER ORDERED that, should Patent Owner elect to file a Sur-
`Reply pursuant to this grant of authorization, the Sur-Reply must be filed no
`later than August 14, 2020, may be up to five pages in length, and shall be
`limited to responding to issues raised in the Reply;
`FURTHER ORDERED that no new evidence shall accompany the
`Reply and Sur-Reply; and
`
`FURTHER ORDERED that no other briefing or relief is authorized at
`this time.
`
`
`
`
`
`3
`
`
`
`PGR2020-00056
`Patent 10,422,617 B1
`
`PETITIONER:
`Bradley W. Micsky
`Nathan D. Louwagie
`CARLSON, CASPERS, VANDENBURGH, & LINDQUIST, P.A.
`apex617pgr@carlsoncaspers.com
`
`PATENT OWNER:
`
`Jason C. White
`Alexander B. Stein
`MORGAN, LEWIS & BOCKIUS LLP
`Metco-617Patent-PGR@morganlewis.com
`
`4
`
`
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