Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 11
`Entered: June 15, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., SAMSUNG ELECTRONICS CO. LTD., and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`ROSETTA-WIRELESS CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-00616 (Patent 7,149,511 B1)
` Case IPR2016-00622 (Patent 7,149,511 B1)1
`____________
`
`Before JUSTIN T. ARBES, PATRICK R. SCANLON, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`HUDALLA, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`1 This Order pertains to both of these cases. Therefore, we exercise our
`discretion to issue a single Order to be filed in each case. The parties are not
`authorized to use this style heading for any subsequent papers.
`
`

`
`IPR2016-00616 (Patent 7,149,511 B1)
`IPR2016-00622 (Patent 7,149,511 B1)
`
`On June 14, 2016, a conference call was conducted between
`
`respective counsel for the parties and Judges Arbes, Scanlon, and Hudalla.
`
`Petitioner was represented by Megan Raymond, Anish Desai, and Brian
`
`Ferguson. Patent Owner was represented by Miranda Jones, Allan
`
`Bullwinkel, and Michael Ng. This call dealt with Petitioner’s request for
`
`authorization to submit a reply in each case to Patent Owner’s Preliminary
`
`Response. Patent Owner opposes Petitioner’s request.
`
`Generally, a petitioner is not authorized to file a reply to a patent
`
`owner preliminary response. See 37 C.F.R. § 42.108(c). In this case,
`
`Petitioner seeks to file a reply in each case in order to respond to certain
`
`claim term constructions proposed by Patent Owner in the Preliminary
`
`Response papers. Petitioner did not propose constructions of these terms in
`
`the Petitions, as it could have under 37 C.F.R. § 42.104(b)(3), and Petitioner
`
`contends that Patent Owner’s proposed constructions were unforeseeable.
`
`Yet patent owners in their preliminary responses commonly seek
`
`construction of terms that were not addressed by a petitioner in a
`
`corresponding petition. We are not persuaded by Petitioner’s arguments that
`
`Patent Owner’s proposed constructions were unforeseeable, and the mere
`
`fact that Patent Owner seeks construction of a different set of claim terms, or
`
`that Petitioner does not agree with the arguments behind Patent Owner’s
`
`proposed constructions of these different terms, does not strike us as worthy
`
`of additional briefing.
`
`Petitioner also seeks to file a reply in Case IPR2016-00622 to respond
`
`to Patent Owner’s arguments on whether the Goggin reference qualifies as
`
`prior art to the challenged patent. Petitioner foresaw that qualifying Goggin
`
`as prior art would be an issue in this case, because Petitioner filed a
`
`2
`
`

`
`IPR2016-00616 (Patent 7,149,511 B1)
`IPR2016-00622 (Patent 7,149,511 B1)
`
`declaration and other exhibits in support of the alleged prior art status of
`
`Goggin (and certain other references). See Case IPR2016-00622, Ex. 1029
`
`¶¶ 10–20.2 In its Preliminary Response, Patent Owner argues that Petitioner
`
`has not made a threshold showing that Goggin qualifies as prior art. See
`
`Case IPR2016-00622, Paper 8, 28–32. Petitioner now seeks to respond to
`
`Patent Owner’s arguments in a reply to the Preliminary Response.
`
`Although the Petition only makes brief mentions of Goggin’s status as
`
`prior art, Petitioner’s supporting declaration indicates Petitioner’s
`
`cognizance of the issue. See Case IPR2016-00622, Ex. 1029. And, in any
`
`event, Petitioner was required to set forth in the Petition the specific
`
`statutory grounds for its challenge under 37 C.F.R. § 42.104(b)(2). In our
`
`view, the fact that Petitioner may now wish to respond to Patent Owner’s
`
`arguments—and to potentially augment the basis of its prior art showing—
`
`does not warrant additional briefing on this issue.3
`
`Based on the record before us, we determine that Petitioner has not
`
`demonstrated good cause for us to deviate from the normal briefing
`
`procedure for these proceedings. See 37 C.F.R. § 42.108(c). Accordingly,
`
`
`2 Petitioner filed Exhibit 1029 with certain lettered “exhibits” as a single
`document. The parties are reminded that individual documents must be filed
`as separate exhibits, numbered sequentially in the appropriate range. See
`37 C.F.R. § 42.63.
`3 Patent Owner argued during the call that Petitioner is seeking, in effect, to
`change its asserted basis for qualifying Goggin as prior art from 35 U.S.C.
`§ 102(b) to 35 U.S.C. § 102(a). See Case IPR2016-00622, Paper 4, 15
`(arguing that Goggin “is prior art under at least pre-AIA § 102(b)”).
`Petitioner, however, did not seek authorization to file a motion to correct the
`Petition as containing a “clerical or typographical mistake” under 37 C.F.R.
`§ 42.104(c).
`
`3
`
`

`
`IPR2016-00616 (Patent 7,149,511 B1)
`IPR2016-00622 (Patent 7,149,511 B1)
`
`Petitioner is not authorized at this time to file replies to Patent Owner’s
`
`Preliminary Response papers in these cases.
`
`
`
`Accordingly, it is
`
`ORDERED that Petitioner’s request for authorization to submit a
`
`reply in each case to Patent Owner’s Preliminary Response is denied.
`
`4
`
`

`
`IPR2016-00616 (Patent 7,149,511 B1)
`IPR2016-00622 (Patent 7,149,511 B1)
`
`
`PETITIONER:
`
`Brian Ferguson
`Brian.ferguson@weil.com
`
`Megan Raymond
`Megan.raymond@ropesgray.com
`
`Anish Desai
`Anish.desai@weil.com
`
`
`
`PATENT OWNER:
`
`Miranda Jones
`mjones@hpcllp.com
`
`Michael Heim
`mheim@hpcllp.com
`
`
`5