`571.272.7822
`
`
`
`
`
`Paper 22
`Entered: January 19, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BRIGHT HOUSE NETWORKS, LLC, WIDEOPENWEST
`FINANCE, LLC, KNOLOGY OF FLORIDA, INC., and
`BIRCH COMMUNICATIONS, INC.,
`Petitioner,
`
`v.
`
`FOCAL IP, LLC,
`Patent Owner.
`
`
`Case: IPR2016-01259 (Patent 8,155,298 B2)
`Case: IPR2016-01261 (Patent 8,457,113 B2)
`Case: IPR2016-01262 (Patent 7,764,777 B2) and
`Case: IPR2016-01263 (Patent 8,155,298 B2)1
`
`
`
`
`
`
`
`
`
`
`
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`
`DECISION
`Denying Petitioner’s Request for Authorization to File
`Supplemental Information
`37 C.F.R. § 42.123
`
`
`
`
`1 This Order applies to each of the listed cases. We exercise our discretion
`to issue one Order to be docketed in each case. The parties, however, are
`not authorized to use this caption for any subsequent papers.
`
`
`
`IPR2016-01259 (Patent 8,155,298 B2)
`IPR2016-01261 (Patent 8,457,113 B2)
`IPR2016-01262 (Patent 7,764,777 B2)
`IPR2016-01263 (Patent 8,155,298 B2)
`
`
`On January 18, 2017, Petitioner contacted the Board (by e-mail, Ex.
`3003) to request authorization to file rebuttal opinions by its declarant as
`supplemental information. Prior to institution, Petitioner submitted these
`declarations without authorization and we, therefore, expunged them. See,
`e.g., IPR2016-01259, Paper 21.2 Patent Owner opposes Petitioner’s request.
`We agree with Patent Owner.
`Submission of rebuttal testimonial evidence by Petitioner is premature
`at this juncture of the proceeding. We recently instituted trial in each of the
`instant cases and do not yet have Patent Owner’s Response or Motion to
`Amend, if any, as these submissions are due in April. See, e.g., IPR2016-
`01259, Paper 24.
`In its request, Petitioner referenced our Order (see, e.g., IPR2016-
`01259, Paper 21) on Petitioner’s earlier unauthorized submission of its
`declarations. Petitioner now has the benefit of our analysis in our Decision
`to Institute in each case (see, e.g., IPR2016-01259, Paper 23) as well as each
`of our Scheduling Orders setting forth, for example, times in each case for
`the Patent Owner’s Response and the Petitioner’s Reply, as well as our
`cautionary statement reminding Patent Owner that any arguments for
`patentability not raised in the response will be deemed waived (See, e.g.,
`IPR2016-01259, Paper 24, 3, 6).
`Petitioner’s request to submit rebuttal evidence does not take into
`account that “[a] reply may only respond to arguments raised in the
`corresponding opposition.” See 37 C.F.R. § 42.23 (b). Furthermore,
`
`
`2 Citations herein will be to IPR2016-01259, unless otherwise noted.
`
`
`
`IPR2016-01259 (Patent 8,155,298 B2)
`IPR2016-01261 (Patent 8,457,113 B2)
`IPR2016-01262 (Patent 7,764,777 B2)
`IPR2016-01263 (Patent 8,155,298 B2)
`
`Petitioner’s proposal to submit just its evidence does not take into account
`our requirement that such evidence must be explained. See 37
`C.F.R. §§ 42.22, 42.23 (“Oppositions and replies must comply with the
`content requirements of motions” and “[e]ach . . . motion . . . must include
`. . . [a] full statement of the reasons for the relief requested, including a
`detailed explanation of the significance of the evidence.”).
`Based on the current record before us, we agree with Patent Owner
`that Petitioner’s submission of rebuttal evidence at this juncture should not
`be authorized.
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner’s request (Ex. 3003) to submit rebuttal
`opinions by its declarant as supplemental information is denied.
`
`
`
`
`
`
`
`
`IPR2016-01259 (Patent 8,155,298 B2)
`IPR2016-01261 (Patent 8,457,113 B2)
`IPR2016-01262 (Patent 7,764,777 B2)
`IPR2016-01263 (Patent 8,155,298 B2)
`
`PETITIONER:
`
`Patrick McPherson
`Christopher Tyson
`DUANE MORRIS LLP
`pdmcpherson@duanemorris.com
`cjtyson@duanemorris.com
`
`Wayne Stacy
`BAKER BOTTS L.L.P.
`wayne.stacy@bakerbotts.com
`
`PATENT OWNER:
`
`Brent Bumgardner
`John Murphy
`NELSON BUMGARDNER, P.C.
`bbumgardner@nbclaw.net
`murphy@nelbum.com
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