`Tel: 571-272-7822
`
`
`
`
`Paper 26
`Entered: December 7, 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(a)
`
`
`
`1 Case IPR2016-00215 has been consolidated with this proceeding.
`
`
`
`Case IPR2016-00212
`Patent 7,974,339 B2
`
`On December 2, 2016, Patent Owner sent an email to
`Trials@uspto.gov seeking a conference call to request authorization to file a
`motion to strike certain purported new arguments raised in Petitioner’s
`Reply or, in the alternative, to request authorization to file a Sur-Reply of
`five pages. According to Patent Owner, Petitioner’s Reply developed new
`arguments related to the Spriggs reference and introduced a new
`“Supplemental Declaration” from Dr. John R. Grindon. Patent Owner also
`contends that Petitioner’s Reply includes a new “obvious to try” argument.
`On December 6, 2016, a conference call was held with Judges Zecher,
`Arbes, and Hudalla, and respective counsel for the parties. During the call,
`Petitioner argued that its Reply develops no new theories and merely
`responds to arguments contained in Patent Owner’s Response. Similarly,
`Petitioner argues Dr. Grindon’s Supplemental Declaration is keyed to
`respond to arguments in Patent Owner’s Response.
`Generally, “[a] reply may only respond to arguments raised in the
`corresponding . . . patent owner response.” 37 C.F.R. § 42.23(b). In
`accordance with this regulation, we will determine whether Petitioner’s
`Reply contains evidence or argument that is outside the scope of Patent
`Owner’s Response. Specifically, when we review the entire trial record and
`prepare the Final Written Decision, we will determine whether the scope of
`Petitioner’s Reply and accompanying evidence is proper. If there are
`improper arguments and evidence presented with Petitioner’s Reply, we
`may, for example, only consider Petitioner’s arguments and evidence that
`are properly rooted in the Petition. For these reasons, we are unpersuaded
`that a motion to strike is warranted, so we do not authorize Patent Owner to
`file a motion to strike.
`
`2
`
`
`
`Case IPR2016-00212
`Patent 7,974,339 B2
`
`Nevertheless, under the particular circumstances of this case, we
`exercise our discretion under 37 C.F.R. § 42.20(d) and grant Patent Owner’s
`request for authorization to file a five-page Sur-Reply. Our decision to
`authorize a Sur-Reply is heavily influenced by the fact that Petitioner’s
`Reply is accompanied by and cites extensively to Dr. Grindon’s new
`Supplemental Declaration, which spans 125 paragraphs and 41 pages. See
`Ex. 1030. Accordingly, we authorize Patent Owner to file a five-page
`Sur-Reply. During the call, Patent Owner did not present any persuasive
`reason why new evidence would need to be filed with the Sur-Reply.
`Consequently, no new evidence or testimony of any kind is permitted to be
`introduced or filed with the Sur-Reply.
`
`
`Accordingly, it is:
`ORDERED that Patent Owner’s request for authorization to file a
`motion to strike is denied;
`FURTHER ORDERED that Patent Owner’s alternative request for
`authorization to file a Sur-Reply is granted;
`FURTHER ORDERED that Patent Owner’s Sur-Reply is limited to
`five pages;
`FURTHER ORDERED that Patent Owner shall file its Sur-Reply no
`later than Tuesday, December 13, 2016;
`FURTHER ORDERED that no new evidence or testimony of any
`kind shall be introduced or filed with Patent Owner’s Sur-Reply; and
`FURTHER ORDERED that Petitioner is not authorized to file a
`responsive submission.
`
`
`3
`
`
`
`Case 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
`
`Brian Lee
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`blee-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
`
`4
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