`Tel: 571-272-7822
`
`Paper 34
`Entered: December 22, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`WALGREEN CO., AHOLD USA, INC., DELHAIZE AMERICA, LLC,
`AND PUBLIX SUPER MARKETS, INC.,
`Petitioner,
`
`v.
`
`ADVANCED MARKETING SYSTEMS, LLC,
`Patent Owner.
`
`Cases CBM2016-00012
`CBM2016-00013
`CBM2016-00014
`CBM2016-00015
`Patents 8,219,445 B2
`8,370,199 B2
`8,538,805 B2
`
`Before THOMAS L. GIANNETTI, TREVOR M. JEFFERSON, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`WEATHERLY, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R § 42.5
`
`
`
`
`
`
`
`
`
`
`
`CBM2016-00012, -00013, -00014, and -00015
`Patent 8,219,445 B2; 8,370,199 B2; and 8,538,805 B2
`
`INTRODUCTION
`I.
`On December 21, 2016, pursuant to Patent Owner’s request, we
`conducted a telephone conference to determine whether to authorize Patent
`Owner (1) to file a surreply in response to Petitioner’s Reply, Paper 321 (“the
`Reply”), and (2) to move to strike the Declaration of Dr. Michael Lewis,
`Ex. 10092 (“the Lewis Declaration”). Attorneys for both parties and Judges
`Giannetti, Jefferson, and Weatherly attended the conference.
`A. REQUEST TO FILE A SURREPLY
`Patent Owner requests authorization to file a surreply in response to
`arguments raised in Petitioner’s Reply. Patent Owner was asked to identify
`arguments in the Reply that Patent Owner believed to be new and
`nonresponsive to arguments raised in Patent Owner’s Response, Paper 233
`(“the PO Resp.”). Patent Owner identified none.
`Nevertheless, Patent Owner contends that a surreply is warranted to
`address Petitioner’s arguments relating to claim interpretation based upon
`portions of the file history of the patents-at-issue. In response, Petitioner
`contends that its arguments were responsive to positions on claim
`interpretation that Patent Owner advanced in the Patent Owner Response.
`We agree. Moreover, because the prosecution history is evidence that
`existed prior to the institution of these proceedings, both parties have had
`ample opportunity in the papers already filed to rely upon such evidence to
`support their respective positions.
`
`
`1 Paper 31 in each of CBM2016-00013, -00014, and -00015.
`2 Exhibit 1008 in CBM2016-00013.
`3 Paper 22 in each of CBM2016-00013, -00014, and -00015.
`
`2
`
`
`
`CBM2016-00012, -00013, -00014, and -00015
`Patent 8,219,445 B2; 8,370,199 B2; and 8,538,805 B2
`
`Patent Owner also contends that a surreply will allow it to introduce
`evidence relating to the parties’ positions on claim interpretation that were
`advanced in the related district court proceedings. Both parties agree that
`such evidence existed before Patent Owner filed its Patent Owner Response.
`Accordingly, such evidence could have been raised by either party in
`connection with their respective filings of the Patent Owner Response or the
`Reply. If Patent Owner had wished to proffer such evidence, it could have
`done so in connection with its Patent Owner Response, and Petitioner would
`have had an opportunity to respond in its Reply.
`In its e-mail to the Board of December 14, 2016, Patent Owner also
`identified other reasons that it contends justify its need for a surreply. Those
`reasons include contentions that Petitioner “distorts” facts or testimony and
`“inaccurately asserts lack of written description.” We are not persuaded that
`any of these reasons warrant the filing of a surreply. Distortions and
`inaccuracies in the parties’ respective positions are discernable from the
`evidence and argument already of record.
`A surreply is not a vehicle for Patent Owner simply to have the last
`word. Based upon our consideration of the arguments presented during the
`conference call and the record of the proceedings to date, we are
`unpersuaded that a surreply is justified and do not authorize Patent Owner to
`file such a surreply.
`B. REQUEST FOR AUTHORIZATION TO MOVE TO STRIKE THE LEWIS
`DECLARATION
`Patent Owner seeks authorization to move to strike the Lewis
`Declaration in its entirety, based upon the principles set forth in Daubert v.
`Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993). We informed
`Patent Owner that a motion to strike the Lewis Declaration is not the
`
`3
`
`
`
`CBM2016-00012, -00013, -00014, and -00015
`Patent 8,219,445 B2; 8,370,199 B2; and 8,538,805 B2
`
`appropriate vehicle for seeking such relief. Rather, such relief may be given,
`if at all, in response to a motion to exclude evidence filed pursuant to the
`procedures set forth in 37 C.F.R. § 42.64, the filing of which does not
`require prior authorization from the Board. We also reminded Patent Owner
`that, for the Board to consider the merits of a motion to exclude the Lewis
`Declaration, the motion must meet the procedural requirements set forth in
`37 C.F.R. § 42.64(b), (c). Accordingly, we deny Patent Owner’s request for
`authorization to move to strike the Lewis Declaration.
`II. ORDER
`For the reasons expressed above, it is:
`ORDERED that Patent Owner’s request for authorization to file a
`surreply is denied; and
`FURTHER ORDERED that Patent Owner’s request for authorization
`to move to strike the Lewis Declaration is denied.
`
`4
`
`
`
`CBM2016-00012, -00013, -00014, and -00015
`Patent 8,219,445 B2; 8,370,199 B2; and 8,538,805 B2
`
`PETITIONER:
`
`Joseph E. Palys
`Naveen Modi
`Phillip Citroën
`PAUL HASTINGS LLP
`AMS-Walgreens-PH@paulhasting.com
`
`Holly Hawkins Saporito
`Joshua Weeks
`ALSTON & BIRD LLP
`holly.saporito@alston.com
`joshua.weeks@alston.com
`
`PATENT OWNER:
`
`Michael A. Messina
`Ajay A. Jagtiani
`Mae Hong
`MILES & STOCKBRIDGE P.C.
`Messina-PTAB@milesstockbridge.com
`ajagtiani@milesstockbridge.com
`mhong@milesstockbridge.com
`
`5