`Tel: 571-272-7822
`
`Paper No. 21
`Entered: September 26, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`CISCO SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`TQ DELTA, LLC,
`Patent Owner.
`____________
`
`Cases
`IPR2016-01466 (Patent 8,611,404 B2)
`IPR2016-01760 (Patent 9,094,268 B2)1
`_______________
`
`Before SALLY C. MEDLEY, TREVOR M. JEFFERSON, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`
`1 This Order addresses the same issues in the above listed proceedings.
`Therefore, we issue one Order to be filed in all of the above listed
`proceedings. The parties, however, are not authorized to use this style of
`filing in subsequent papers.
`
`
`
`IPR2016-01466 (Patent 8,611,404 B2)
`IPR2016-01760 (Patent 9,094,268 B2)
`
`
`On September 13 and 22, 2017, counsel for Patent Owner requested a
`call to raise instances of improper new arguments or new evidence contained
`in Petitioner’s Replies (IPR2016-01466, Paper 14; IPR2016-01760, Paper
`15), filed August 23 and 25, respectively. Patent Owner seeks authorization
`to file a motion to strike and/or a sur-reply.
`Patent Owner previously made a similar request in related
`proceedings involving the same parties. See, e.g., Cisco Systems, Inc., et al.
`v. TQ Delta, LLC, Case IPR2016-01020, Paper 21 (PTAB June 22, 2017);
`Arris Group, Inc. v. TQ Delta, LLC, Case IPR2016-01160, Paper 22 (PTAB
`August 1, 2017). In those cases, we denied Patent Owner authorization to
`file a motion to strike or a sur-reply, but we authorized Patent Owner to file
`an itemized listing of the arguments and evidence alleged by Patent Owner
`to be beyond the proper scope of a reply. Id. at 2. We do the same again
`here.
`
`Patent Owner’s request for authorization to file a motion to strike
`and/or a sur-reply is denied. Patent Owner is authorized, however, to file a
`paper, limited to two pages, which provides an itemized listing, by page and
`line number, of what statements and evidence in the Petitioner’s Reply are
`deemed by Patent Owner to be beyond the proper scope of a reply. No
`argument is to be included in the contents of the submission.
`Petitioner is authorized to file a responsive paper, limited to two
`pages, which provides an item-by-item response to the items listed in Patent
`Owner’s submission. Each item in Petitioner’s responsive paper should
`identify the part of Patent Owner’s Response, by page and line number, to
`which the corresponding item enumerated by Patent Owner is provided as a
`
`2
`
`
`
`IPR2016-01466 (Patent 8,611,404 B2)
`IPR2016-01760 (Patent 9,094,268 B2)
`
`response, if indeed that is the case. No argument is to be listed in the
`contents of the submission.
`In its request for a call, Patent Owner argued that our recent practice
`of having the Patent Owner submit a list of sections of the reply that contain
`new arguments in lieu of having a call is not sufficient here, and cited
`Ultratec, Inc. v. Captioncall, LLC, 2017 WL 3687453 (Fed. Cir. Aug. 28,
`2017) (“Ultratec”). As we explained in denying Patent Owner’s request for
`a call, Ultratec is distinguishable from these proceedings. In Ultratec, the
`patent owner was denied an opportunity to submit evidence. Here, even if
`we authorized the requested motion to strike, Patent Owner would not have
`an opportunity to submit new evidence. Thus, authorizing Patent Owner to
`file a short paper in lieu of a motion to strike does not deprive Patent Owner
`of an opportunity it would otherwise have had. Moreover, the panel is
`capable of determining whether new argument/evidence is outside the proper
`scope of a reply when writing the final written decision and, even without a
`call, the short paper authorized in this Order affords Patent Owner adequate
`opportunity to identify those portions it contends are outside the proper
`scope so that its concerns are entered into the record.
`
`
`ORDER
`
`Accordingly, it is
`ORDERED that Patent Owner is authorized to submit a listing, as
`described above, no later than September 29, 2017; and
`FURTHER ORDERED that Petitioner is authorized to submit a
`responsive paper, as described above, no later than October 6, 2017.
`
`
`
`3
`
`
`
`IPR2016-01466 (Patent 8,611,404 B2)
`IPR2016-01760 (Patent 9,094,268 B2)
`
`FOR PETITIONER:
`David L. McCombs
`Theodore M. Foster
`Michael S. Parsons
`HAYNES AND BOONE LLP
`david.mccombs.ipr@haynesboone.com
`ipr.theo.foster@haynesboone.com
`michael.parsons.ipr@haynesboone.com
`
`PATENT OWNER:
`Peter J. McAndrews
`Thomas J. Wimbiscus
`Scott P. McBride
`Christopher M. Scharff
`MCANDREWS, HELD & MALLOY, LTD.
`pmcandrews@mcandrews-ip.com
`twimbiscus@mcandrews-ip.com
`smcbride@mcandrews-ip.com
`cscharff@mcandrews-ip.com
`
`4
`
`
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