Trials@uspto.gov
`571-272-7822
`
`
`
`Paper No. 17
`Entered: April 27, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`OPENTV, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00969
`Patent 5,884,033
`____________
`
`Before JAMES B. ARPIN, DAVID C. MCKONE, and
`SCOTT C. MOORE, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`571-272-7822
`
`
`
`Paper No. 17
`Entered: April 27, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`OPENTV, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00969
`Patent 5,884,033
`____________
`
`Before JAMES B. ARPIN, DAVID C. MCKONE, and
`SCOTT C. MOORE, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`IPR2015-00969
`Patent 5,884,033
`
`A conference call for IPR2015-00969 was held on April 26, 2016,
`among Judges Arpin, McKone, and Moore; counsel for Petitioner (Mark
`Miller); and counsel for Patent Owner (Daniel Tucker). Patent Owner
`requested authorization to file a sur-reply to respond to what it characterizes
`as new arguments raised in Petitioner’s Reply. For the reasons set forth
`below, we deny Patent Owner’s request.
` In the Petition, Petitioner requested construction of, inter alia, two
`claim terms, “filters specifying immediate action” and “filters specifying
`deferred action.” Paper 1 (“Pet.”), 15–20. As part of its argument,
`Petitioner discussed the prosecution history of the ’033 patent. Id. at 17
`(quoting Ex. 1007)). In the Preliminary Response, Patent Owner offered
`competing constructions and argument. Paper 6 (“Prelim. Resp.”), 4–9. We
`considered the parties’ respective positions as well as constructions of the
`terms given by a district court in a related matter. Paper 8 (“Dec.”), 7–11.
`We preliminarily concluded that the district court construction was largely
`appropriate and construed the terms consistently therewith, but declined to
`adopt a requirement that the filters “operate between the presentation and
`application levels of the seven-level OSI protocol model.” Id. at 11 & n.2.
`In its Response, Patent Owner again proposed constructions of “filters
`specifying immediate action” and “filters specifying deferred action,”
`advancing the portion of the district court construction that we did not adopt.
`Paper 14 (“PO Resp.”), 14–15. In its argument, Patent Owner contends that
`prosecution history disclaimer support its constructions. Id. at 15–21. In its
`Reply, Petitioner argues that prosecution history disclaimer does not support
`Patent Owner’s construction. Paper 16 (“Reply”), 2–6.
`
` 2
`
`
`
`
`
`
`
`IPR2015-00969
`Patent 5,884,033
`
`Patent Owner contends that certain arguments in the Reply exceed the
`proper scope of a reply and requests that it be authorized to file a sur-reply to
`respond to those allegedly new arguments. During the teleconference,
`Patent Owner identified the following allegedly new arguments: (1) the
`record does not indicate how the limitation arising from the disclaimer
`would be implemented in the claims; (2) the limitation Patent Owner seeks
`to add to the constructions from the Decision would improperly introduce
`new matter under 35 U.S.C. § 132; and (3) the limitation Patent Owner seeks
`to add would render the claims invalid for failing to comply with the written
`description requirement.
`Our Rules state that “[a] reply may only respond to arguments raised
`in the corresponding opposition or patent owner response.” 37 C.F.R.
`§ 42.23(b). During the teleconference, we reminded the parties that we have
`the discretion to consider whether an argument exceeds the proper scope of a
`reply and, if so, to disregard such an argument. See Office Trial Practice
`Guide, 77 Fed. Reg. 48,756, 48,767 (August 14, 2012).1 We informed the
`parties that, as part of our deliberation process, we would consider the scope
`of Petitioner’s Reply and, consistent with our Rules and our Trial Practice
`
`
`1 “A reply may only respond to arguments raised in the corresponding
`opposition. § 42.23. While replies can help crystalize issues for decision, a
`reply that raises a new issue or belatedly presents evidence will not be
`considered and may be returned. The Board will not attempt to sort proper
`from improper portions of the reply. Examples of indications that a new
`issue has been raised in a reply include new evidence necessary to make out
`a prima facie case for the patentability or unpatentability of an original or
`proposed substitute claim, and new evidence that could have been presented
`in a prior filing.”
`
` 3
`
`
`
`
`
`
`
`IPR2015-00969
`Patent 5,884,033
`
`Guide, exercise our discretion to consider or disregard Petitioner’s Reply
`arguments as appropriate. The parties agreed to this course of action.
`Accordingly, there is no need for a sur-reply at this time.
`
`
`I. ORDER
`Patent Owner’s request for authorization to file a sur-reply is denied.
`
` 4
`
`
`
`
`
`
`
`
`
`IPR2015-00969
`Patent 5,884,033
`
`PETITIONER:
`Mark Miller
`markmiller@omm.com
`
`
`Ryan Yagura
`ryagura@omm.com
`
`Brian Cook
`bcook@omm.com
`
`Xin-Yi
`vzhou@omm.com
`
`J. Kevin Murray
`kmurray@omm.com
`
`Anne Huffsmith
`ahuffsmith@omm.com
`
`
`PATENT OWNER:
`Erika Arner
`Erika.arner@finnegan.com
`
`
`Joshua Goldberg
`Joshua.goldberg@finnegan.com
`
`Alyssa Holtslander
`Alyssa.holtslander@finnegan.com
`
`
`Daniel Tucker
`Daniel.tucker@finnegan.com
`
`
` 5
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
