`Date: January 23, 2014
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS, INC.
`Petitioner
`
`v.
`
`PARALLEL IRON, LLC
`Patent Owner
`____________
`
`Case IPR2013-00639
`Patent 7,197,662 B2
`____________
`
`Before MEREDITH C. PETRAVICK, BRYAN F. MOORE, and
`JENNIFER S. BISK, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`IPR2013-00639
`Patent 7,197,662 B2
`
`
`
`
`
`INTRODUCTION
`A conference call was held on January 21, 2014, between respective counsel
`
`for the parties and Judges Bisk, Moore, and Petravick. Counsel for Petitioner
`initiated the conference call to request authorization to file a reply to Patent
`Owner’s preliminary response, prior to the Board’s deciding whether to institute
`review. The conference call was transcribed by a court reporter arranged by
`Petitioner.
`
`DISCUSSION
`The Patent Owner’s preliminary response asserts that Petitioner failed to
`
`identify NetApp, Inc. as a real party-in-interest. According to Patent Owner,
`because NetApp, Inc. is a real party-in-interest which had been served, on June 21,
`2012, with a complaint alleging infringement of Patent 7,197,662 B2, Petitioner’s
`petition is barred by the one-year time bar under 35 U.S.C. § 315(b). Paper 8 at
`12. Petitioner seeks an opportunity to respond to Patent Owner’s assertion that
`NetApp, Inc. is a real party-in-interest, prior to the Board deciding whether to
`institute review.
`
`No rule automatically provides for a reply to a Patent Owner’s preliminary
`response. Where appropriate, however, the Board may authorize the filing of such
`a reply. See 37 C.F.R. § 42.5(a). Counsel for Petitioner indicated that the
`Petitioner is not without opportunity to address the issue concerning whether the
`petition is barred under 35 U.S.C. § 315(b) and whether NetApp, Inc. is a real
`party-in-interest, if the Board institutes inter partes review. Counsel for Petitioner
`explained that Petitioner’s concern is that based on Patent Owner’s unilateral
`assertion on these issues, the Board would regard NetApp, Inc. as a real party-in-
`interest and treat the petition as barred under 37 C.F.R. § 315(b).
`
`2
`
`
`
`
`IPR2013-00639
`Patent 7,197,662 B2
`
`
`The Board indicated that on the issue of whether the petition is barred under
`
`35 U.S.C. § 315(b), Petitioner does have a right to respond prior to any denial of
`the Petition on the basis of 35 U.S.C. § 315(b), but no such reply is necessary at
`this time.
`
`
`
`
`CONCLUSION
`
`It is
`
`ORDERED that Petitioner is not authorized to file a reply to Patent Owner’s
`
`preliminary response;
`
`FURTHER ORDERED that if the Board deems necessary to consider a
`reply from Petitioner regarding whether the petition is barred under 35 U.S.C.
`§ 315(b), prior to rendering a decision on whether to institute inter partes review,
`the parties will be notified by the Board; and
`
`FURTHER ORDERED that Petitioner shall file a copy of the conference
`call transcript as an exhibit as soon as it is available.
`
`
`
`For Petitioner:
`Michael Kiklis
`Scott McKeown
`CPdocketkiklis@oblon.com
`codocketmckeown@oblon.com
`
`For Patent Owner:
`Tarek Fahmi
`Amy Embert
`tarek.fahmi@fseip.com
`amy.embert@fseip.com
`
`
`3
`
`
`
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