Trials@uspto.gov
`571-272-7822
`
` Paper No. 23
` Entered: July 17, 2017
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EMC CORPORATION,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01106
`Patent 6,516,442 B1
`____________
`
`
`
`Before BRIAN J. McNAMARA and MINN CHUNG, Administrative Patent
`Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`571-272-7822
`
` Paper No. 23
` Entered: July 17, 2017
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EMC CORPORATION,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01106
`Patent 6,516,442 B1
`____________
`
`
`
`Before BRIAN J. McNAMARA and MINN CHUNG, Administrative Patent
`Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`IPR2016-01106
`Patent 6,516,442 B1
`
`
`
`On June 28, 2017, Patent Owner sent an email to the Board requesting
`authorization to file a motion to strike an argument from Petitioner’s Reply
`(Paper 18, “Pet. Reply”), or, in the alternative, to file a sur-reply in response
`to the Petitioner’s argument. Patent Owner indicates that Petitioner opposes
`Patent Owner’s request. According to Patent Owner, Petitioner’s Reply
`includes arguments and evidence as to why Reschke (Ex. 1003) discloses a
`full-duplex bus, which Patent Owner contends was presented improperly for
`the first time on reply. We deny Patent Owner’s request for the reasons
`explained below.
`With regard to Patent Owner’s request for authorization to file a
`motion to strike an argument from Petitioner’s Reply, upon consideration
`and review of the parties’ papers, we are not persuaded that a motion to
`strike the Reply would be appropriate under the circumstances in this
`proceeding. A motion to strike is not, ordinarily, a proper mechanism for
`raising the issue of whether a reply or reply evidence is beyond the proper
`scope permitted under the rules. In the absence of special circumstance, we
`determine whether a reply and supporting evidence contain material
`exceeding the proper scope when we review all of the pertinent papers and
`prepare the final written decision. We may exclude all or portions of
`Petitioner’s Reply and newly submitted evidence, or decline to consider any
`improper argument and related evidence, at that time. We are not persuaded
`that the propriety of the Reply arguments and evidence should be resolved
`prior to the final written decision and/or via formal briefing of a motion to
`strike, opposition, and reply. Accordingly, Patent Owner’s request for
`authorization to file a motion to strike an argument from Petitioner’s Reply
`
`2
`
`
`
`IPR2016-01106
`Patent 6,516,442 B1
`
`
`is denied. Should either party request a hearing (by DUE DATE 4 in the
`Scheduling Order (Paper 10)), however, the parties may address the issue
`further during oral argument.
`With regard to Patent Owner’s request for authorization to file a
`sur-reply in response to Petitioner’s argument in Petitioner’s Reply, a sur-
`reply is not ordinarily necessary, absent special circumstances, for similar
`reasons. In this proceeding, Patent Owner’s request is denied for additional
`reasons. In our Decision on Institution (Paper 9, “Dec. on Inst.”) instituting
`trial in this proceeding, we preliminarily construed the term “channel” to
`mean “a general-purpose, high-speed, point-to-point, full-duplex, bi-
`directional interconnect bus.” Dec. on Inst. 19. Although Petitioner argued
`in the Petition (Paper 3, “Pet.”) that a “channel” should be interpreted as “a
`communication path” (Pet. 14), Petitioner nonetheless asserted that Reschke
`discloses channels which are “bidirectional, point-to-point, full-duplex
`interconnect buses” (id. at 38). In support of its contention, Petitioner cited
`Figures 1, 2, 4A, and 4B of Reschke and their accompanying text. Id. at 38–
`41. In particular, Petitioner relied upon the disclosures in Figures 4A and 4B
`that purportedly show the “forward” and “reverse” portions of Reschke’s
`channels. Id. at 39–41. The Patent Owner Preliminary Response (Paper 7,
`“Prelim. Resp.”) focused on Figure 2 of Reschke and argued that Figure 2
`shows Reschke’s channels are not full-duplex. Prelim. Resp. 33–36.
`In our Decision on Institution, we noted that Patent Owner did not
`address Petitioner’s argument and evidence regarding Figures 4A and 4B of
`Reschke, and encouraged the parties to discuss further in their papers
`whether the “forward” and “reverse” pathways in the data switching
`
`3
`
`
`
`IPR2016-01106
`Patent 6,516,442 B1
`
`
`circuitry of Reschke identified by Petitioner can operate at the same time to
`provide full-duplex transmission. Dec. on Inst. 29–30.
`Patent Owner in its Patent Owner Response (Paper 15, “PO Resp.”)
`asserted that our Decision on Institution engaged in “improper burden
`shifting” and declined our invitation to discuss the data switching circuitry
`described in Figures 4A and 4B of Reschke. PO Resp. 50–51. Our
`invitation to both parties to discuss the implications of the data switching
`circuitry disclosed in Figures 4A and 4B of Reschke in no way shifts the
`burden of proof, which remains on Petitioner. Having declined to discuss
`the data switching circuitry described in Figures 4A and 4B of Reschke in its
`Patent Owner Response, Patent Owner, instead, addressed Figures 4A, 4B,
`and 4C together in general terms as “Figure 4” and argued that “Figure 4
`only shows communications crossing the buses in one direction at a time,
`not simultaneously.” Id. at 51. Patent Owner also continued to focus on
`Figure 2 of Reschke and argued that Figure 2 shows “Figure 4 does not
`disclose full-duplex communication across the data buses.” Id. at 52–53.
`Petitioner, in contrast, affirmatively responded to our invitation in its
`Reply and provided further discussion of why Figures 4A, 4B, and 4C of
`Reschke allegedly disclose full-duplex channels. Pet. Reply 20–26.
`In view of this record, it is clear that Patent Owner had an ample
`notice and sufficient opportunity to discuss the full-duplex channel issue in
`the Patent Owner Response, and presented arguments and evidence it
`deemed appropriate in the Patent Owner Response, including a general
`discussion of Figure 4 (i.e., Figures 4A–4C) of Reschke. To the extent
`Patent Owner now seeks to address in a sur-reply the details of the
`
`4
`
`
`
`IPR2016-01106
`Patent 6,516,442 B1
`
`
`disclosure in Figures 4A–4C of Reschke relied upon by Petitioner, Patent
`Owner has declined to do so in its Patent Owner Response by pointedly
`rejecting our specific request or invitation in our Decision on Institution to
`discuss whether the circuits depicted in Figures 4A and 4B of Reschke
`disclose a full-duplex bus. Having made its choice not to discuss this
`subject matter in its Patent Owner Response, Patent Owner’s request to file a
`sur-reply to address the same essentially amounts to a request for additional
`pages for the Patent Owner Response. Further, by declining our invitation,
`Patent Owner has specifically waived its argument on the issue we invited
`the parties to discuss in their papers. See also Scheduling Order 5 (“The
`patent owner is cautioned that any arguments for patentability not raised in
`the response will be deemed waived.”).
`Accordingly, Patent Owner’s request for authorization to file a sur-
`reply in response to Petitioner’s argument in Petitioner’s Reply is denied.
`Patent Owner may address Petitioner’s argument at the Oral Hearing if one
`is scheduled in this proceeding.
`
`
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Patent Owner’s request for authorization to file a
`motion to strike an argument from Petitioner’s Reply, or, in the alternative,
`to file a sur-reply in response to the Petitioner’s argument is denied.
`
`5
`
`
`
`IPR2016-01106
`Patent 6,516,442 B1
`
`
`PETITIONER:
`
`Peter M. Dichiara
`Theodoros Konstantakopoulos
`WILMER CUTLER PICKERING HALE AND DORR LLP
`peter.dichiara@wilmerhale.com
`theodoros.konstantakopoulos@wilmerhale.com
`
`PATENT OWNER:
`John R. King
`Ted M. Cannon
`Bridget A. Smith
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`boxpgl39@knobbe.com
`
`
`6
`
`
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