Trials@uspto.gov
`571-272-7822
`
`Paper 41
`Entered: July 26, 2017
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`TV MANAGEMENT, INC., D/B/A GPS NORTH AMERICA,
`Petitioner,
`
`v.
`
`PERDIEMCO LLC,
`Patent Owner.
`
`
`Case IPR2016-01278
`Patent 9,071,931 B2
`__________________________
`
`Before WILLIAM V. SAINDON, CARL M. DEFRANCO, and
`AMBER L. HAGY, Administrative Patent Judges.
`
`HAGY, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 41
`Entered: July 26, 2017
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`TV MANAGEMENT, INC., D/B/A GPS NORTH AMERICA,
`Petitioner,
`
`v.
`
`PERDIEMCO LLC,
`Patent Owner.
`
`
`Case IPR2016-01278
`Patent 9,071,931 B2
`__________________________
`
`Before WILLIAM V. SAINDON, CARL M. DEFRANCO, and
`AMBER L. HAGY, Administrative Patent Judges.
`
`HAGY, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`Case IPR2017-01278
`Patent 9,071,931 B2
`
`
`INTRODUCTION
`A conference call in the above proceeding was held on July 20, 2017,
`
`among respective counsel for the parties and Judges Saindon and Hagy.
`Patent Owner PerdiemCo, LLC (“Patent Owner”), was represented by Alan
`Whitehurst, Marissa Ducca, and Robert Babayi. Petitioner TV Management
`d/b/a/ GPS North America (“GPSNA”) was represented by Vivek Ganti.
`The purpose of the call was to discuss requests by both parties for
`authorization to make filings concerning Patent Owner’s alleged prior
`conception of the invention disclosed in the ’931 patent. The panel took the
`matter under advisement.
`
`
`BACKGROUND
`On July 1, 2016, Petitioner requested an inter partes review of claims
`
`1–7, 12–16, 20, and 22–26 of U.S. Patent No. 9,072,931 B2 (Ex. 1001, “the
`’931 patent”). Paper 5 (“Pet.”). One of the three grounds argued in the
`petition is that the challenged claims are obvious over the combination of the
`Fast (U.S. Patent No. 7,327,258 B2 (“Fast”)), Phillips (U.S. Patent No.
`7,848,765 B2 (“Phillips”)), and Zou (U.S. Patent App. 2005/0156715 A1
`(“Zou”)) references. Pet. 7.
`
`On October 7, 2016, Patent Owner filed a Preliminary Response to the
`Petition. Paper 12 (“Prelim. Resp.”). In its Preliminary Response, Patent
`Owner argued “Phillips is not prior art” because “Phillips was filed on May
`27, 2005” and “Mr. Diem conceived the ’931 claims by no later than May
`13, 2005, as explained in the attached Declaration of Mr. Diem (Ex. 2001)
`and corroborated by the contemporaneous documents attached to Mr.
`Diem’s Declaration.” (Prelim. Resp. 11.)
`
`
`
`
`2
`
`
`
`Case IPR2017-01278
`Patent 9,071,931 B2
`
`Petitioner requested, and we authorized, a Reply to the Preliminary
`
`Response to address Patent Owner’s prior conception argument. In its Reply
`to the Preliminary Response, filed November 18, 2016 (Paper 19 (“Pet. PR
`Reply”)), Petitioner argued (1) Mr. Diem fails to provide evidence of prior
`conception of every limitation of the ’931 patent claims (Pet. PR Reply 2–4);
`(2) Patent Owner’s evidence of conception does not support a specific date
`(id. 7–8); and (3) Patent Owner does not offer any evidence of either an
`actual reduction to practice before the date of the Phillips reference (May 27,
`2005), or reasonable diligence from the alleged date of conception until
`reduction to practice (id. 5–6). See also Decision to Institute, Paper 22
`(“D.I.”), at 17.
`
`In our Decision to Institute, we agreed with Petitioner’s arguments
`(D.I. 19–22), and concluded that we were not persuaded at that stage of the
`proceeding that Patent Owner come forward “with evidence sufficient to
`show that the ’931 claimed invention pre-dates Phillips.” D.I. 22.
`
`In its Response to Petition, filed March 20, 2017 (Paper 30 (“Resp.”)),
`Patent Owner again asserted “Phillips is not prior art,” submitted an
`additional declaration by Mr. Diem (Ex. 2009), and stated:
`PerDiem recognizes that the Board was unpersuaded by an
`earlier Declaration of Mr. Diem’s at the Institution stage, as the
`Board found that this earlier Declaration was insufficiently-
`corroborated and did not sufficiently address all claim elements.
`However, the Diem Declaration submitted with this Response is
`more detailed, attaches new corroborating evidence, and
`addresses the perceived shortcomings from the prior Declaration.
`Based on this new Diem Declaration, PerDiem has shown by a
`preponderance of the evidence that the ’931 claims were
`conceived before the Phillips priority date, and that Phillips is
`therefore not prior art.
`Resp. 29–30.
`
`
`
`3
`
`
`
`Case IPR2017-01278
`Patent 9,071,931 B2
`
`In its Reply, filed June 19, 2017, Petitioner asserted that Patent Owner
`
`“presents no analysis at all” and “only cites to Ex. 2009 in its entirety twice
`and asks the Board to make the case for prior conception.” Petitioner’s
`Reply, Paper 36 (“Pet. Reply”), at 11. Petitioner then urged the Board to
`“give no weight to Ex. 2009 because it has been improperly incorporated by
`reference.” Pet. Reply 11–12 (citing 37 C.F.R. § 42.6(a)(3)). Petitioner
`further argued various deficiencies in Mr. Diem’s second declaration and in
`the evidence accompanying that declaration. Pet. Reply 12–14.
`
`The parties sent an email to the Board on June 26, 2017, in which
`Patent Owner requested authorization to file a sur-reply “to address
`Petitioner’s alleged new allegations concerning Mr. Diem’s conception of
`the invention disclosed in the ’931 patent.” In the same email, Petitioner
`requested authorization to file a “motion to strike Patent Owner’s conception
`argument for improper incorporation by reference under 37 C.F.R.
`§ 42.6(a)(3).”
`
`Judges Saindon and Hagy heard argument by the parties during the
`conference call on July 20, 2017. Patent Owner argued that a sur-reply was
`warranted because Petitioner’s Reply “misrepresented” Mr. Diem’s second
`declaration and his deposition testimony. Petitioner disagreed with Patent
`Owner’s contention, and also argued it would be prejudiced if Patent Owner
`were granted a sur-reply, because Petitioner bears the ultimate burden of
`persuasion on the issue of unpatentability. Petitioner also argued that if
`Patent Owner were granted a sur-reply, Petitioner should be granted a sur-
`sur-reply.
`
`After hearing the respective positions of the parties, the panel took the
`parties’ requests under advisement.
`
`
`
`
`4
`
`
`
`Case IPR2017-01278
`Patent 9,071,931 B2
`
`
`
`ANALYSIS
`As an initial matter, the panel notes that Patent Owner failed to make,
`
`in either its Preliminary Response or in its Response to the Petition, any
`substantive arguments regarding Mr. Diem’s alleged prior conception, and
`instead, as noted by Petitioner, has simply referenced Mr. Diem’s
`declarations and attached evidence. Leaving aside any concerns over
`excessive pages, such incorporation by reference is, at a minimum, not
`helpful to the panel. See 37 C.F.R. § 42.6(a)(3). Moreover, the panel is
`reticent to encourage a party to file a sur-reply so the party may make
`arguments it should have made in an earlier brief. On the other hand, the
`panel wishes to enable both parties to guide the panel regarding alleged new
`arguments and/or misrepresentations of evidence. See 37 C.F.R. § 42.23(b).
`
`Accordingly, the Panel authorizes Patent Owner to file a 3-page sur-
`reply. The scope of the sur-reply is limited to addressing any alleged new
`arguments or misrepresentations made in Petitioner’s Reply regarding Patent
`Owner’s alleged priority of invention. Because Petitioner bears the ultimate
`burden of persuasion to prove unpatentability by a preponderance of the
`evidence, see Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1329
`(Fed. Cir. 2008) (noting that the “ultimate burden never shifts, however
`much the burden of going forward may jump from one party to another as
`the issues in the case are raised and developed”), we also authorize
`Petitioner to file a 3-page sur-sur-reply, limited in scope to responding to the
`arguments made in Patent Owner’s sur-reply.
`
`
`
`
`5
`
`
`
`Case IPR2017-01278
`Patent 9,071,931 B2
`
`The sur-replies may each cite to evidence already of record in this
`
`case, but neither party may submit new evidence with their respective sur-
`reply.
`
`
`ORDER
`
`It is, therefore,
`
`ORDERED that Patent Owner is authorized to file a sur-reply, not to
`exceed 3 pages in length, within 5 business days of the issuance of this
`Order;
`
`FURTHER ORDERED that Petitioner is authorized to file a sur-sur-
`reply, not to exceed 3 pages in length, within 5 business days of the filing of
`Patent Owner’s sur-reply; and
`
`FURTHER ORDERED that Petitioner is not authorized to file a
`motion to strike.
`
`
`
`
`6
`
`
`
`Case IPR2016-01278
`Patent 9,072,931 B2
`
`PETITIONER:
`
`
`Vivek Ganti
`Steven G. Hill
`HILL, KERTSCHER & WHARTON, LLP
`vg@hkw-law.com
`perdiemIPR@hkw-law.com
`
`PATENT OWNER:
`
`Alan Whitehurst
`Marissa R. Ducca
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`alanwhitehurst@quinnemanuel.com
`marissaducca@quinnemanuel.com
`
`Robert Babayi
`VECTOR IP LAW GROUP
`robert@vectoriplaw.com
`
`
`
`
`7
`
`
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