`571.272.7822
`
`
`
`
`
`
`
` Paper No. 21
`
` Filed: November 15, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE INC.,
`Petitioner,
`
`v.
`
`VEDANTI SYSTEMS LIMITED,
`Patent Owner.
`____________
`
`Case IPR2016-002121
`Patent 7,974,339 B2
`____________
`
`
`
`Before MICHAEL R. ZECHER, JUSTIN T. ARBES, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`HUDALLA, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`On November 4, 2016, Petitioner sent an email to Trials@uspto.gov
`
`seeking a conference call to request an increased word count limit of 9,200
`
`words for its Reply. Because this is a consolidated proceeding, we
`
`previously increased, at Patent Owner’s request, the word count limit for
`
`
`1 Case IPR2016-00215 has been consolidated with this proceeding.
`
`
`
`
`
`IPR2016-00212
`Patent 7,974,339 B2
`
`
`Patent Owner’s Response from 14,000 to 23,000 words. See Paper 15, 84
`
`(noting the 23,000 word count limit authorized by the panel in an email
`
`dated June 2, 2016). Petitioner notes this was a 64% increase over the
`
`normal word count limit. See 37 C.F.R. § 42.24(a)(1)(i), (b)(2). Petitioner
`
`further notes that it is requesting a matching increase of 64% for the Reply—
`
`from the regular limit of 5,600 words to 9,200 words. See 37 C.F.R.
`
`§ 42.24(c)(1).
`
`Petitioner represents that Patent Owner would only “agree[] to a word
`
`count . . . of no more than 8000 words based on Patent Owner’s contention
`
`that its Patent Owner Response as filed contained only 19,387 words, an
`
`increase of 39% over the normally allotted 14,000 words.”
`
`Under these circumstances, we find good cause to grant Petitioner’s
`
`request to increase the word count limit for its Reply to 9,200 words. See 37
`
`C.F.R. § 42.5. Petitioner’s request for a proportionate increase in the
`
`number of words for its Reply is reasonable, and we are not persuaded that
`
`Petitioner should be limited just because Patent Owner chose not to use its
`
`entire allotment of words in its Patent Owner Response. See 37 C.F.R.
`
`§ 42.24(c)(1) (specifying the normal word limit for replies regardless of how
`
`many words a patent owner actually uses in a corresponding patent owner
`
`response). No conference call is necessary at this time.
`
`
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that, pursuant to our authority under 37 C.F.R. § 42.5(b),
`
`the word count limit for Petitioner’s Reply is reset to 9,200 words.
`
`
`
`
`
`2
`
`
`
`IPR2016-00212
`Patent 7,974,339 B2
`
`
`PETITIONER:
`
`Michael V. Messinger
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`mikem-PTAB@skgf.com
`
`Michelle K. Holoubek
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`mholoubek-PTAB@skgf.com
`
`
`
`PATENT OWNER:
`
`Robert M. Asher
`SUNSTEIN KANN MURPHY & TIMBERS LLP
`rasher@sunsteinlaw.com
`
`John J. Stickevers
`SUNSTEIN KANN MURPHY & TIMBERS LLP
`jstickevers@sunsteinlaw.com
`
`
`
`3
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