`Tel: 571-272-7822
`
`
`
`Paper 53
`Entered: November 17, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`REACTIVE SURFACES LTD., LLP,
`Petitioner,
`
`v.
`
`TOYOTA MOTOR CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-01914
`Patent 8,394,618 B2
`____________
`
`
`Before CHRISTOPHER M. KAISER and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`IPR2016-01914
`Patent 8,394,618 B2
`
`
`Reactive Surfaces Ltd., LLP (“Petitioner”) filed a Petition (Paper 1,
`“Pet.”) requesting inter partes review of claims 1–11 of U.S. Patent No.
`8,394,618 B2 (Ex. 1001, “the ’618 patent”). Toyota Motor Corporation
`(“Patent Owner”) did not file a Preliminary Response. On March 23, 2017,
`we instituted trial to determine whether claims 1–11 are unpatentable as
`obvious. Paper 26 (“Dec.”).
`After we instituted trial, Patent Owner filed a Response to the
`Petition, and Petitioner filed a Reply. Paper 37 (“Resp.”); Paper 41
`(“Reply”). On November 13, 2017, Patent Owner contacted the Board by
`email and requested permission to file a sur-reply addressing three alleged
`pieces of new evidence or new argument introduced by Petitioner in the
`Reply. Patent Owner alternatively requested permission to file a motion to
`strike these portions of the Reply and the evidence cited therein.
`We conducted a telephone conference to discuss Patent Owner’s
`requests. The conference was attended by counsel for Petitioner, counsel for
`Patent Owner, and Judges Ankenbrand and Kaiser. Following discussion
`with counsel for both parties, we denied Patent Owner’s request to move to
`strike any portion of the Reply, but we authorized Patent Owner to file a
`Sur-Reply addressing the following issues:
`1. The discussion of Wang1 at pages 9–11 of the Reply to support
`the argument that “stain removal by catalytic action and
`evaporation were well-known” in the prior art;
`
`
`1 Wang et al., US 2008/0119381 A1, published May 22, 2008 (Ex. 1025,
`“Wang”).
`
`2
`
`
`
`
`
`
`IPR2016-01914
`Patent 8,394,618 B2
`
`
`2. The discussion of allegedly new evidence at pages 24–25 of the
`Reply to support the public accessibility and prior-art status of
`Exhibit 1013; and
`3. The declaration of Eric Ray, introduced along with the Reply,
`and the supporting evidence cited therein.
`As discussed during the conference, Patent Owner’s Sur-Reply shall
`be filed no later than November 27, 2017, shall not exceed six (6) pages of
`argument, shall be limited to those issues described above, and shall not
`introduce any new evidence into the record.
`
`
`It is, therefore,
`ORDERED that Patent Owner is not authorized to file a motion to
`strike any portion of the Reply;
`FURTHER ORDERED that Patent Owner is authorized to file a Sur-
`Reply addressing only the following issues:
`The discussion of Wang at pages 9–11 of the Reply to support the
`argument that “stain removal by catalytic action and evaporation were well-
`known” in the prior art;
`The discussion of allegedly new evidence at pages 24–25 of the Reply
`to support the public accessibility and prior-art status of Exhibit 1013; and
`The declaration of Eric Ray, introduced along with the Reply, and the
`supporting evidence cited therein;
`
`3
`
`
`
`
`
`
`IPR2016-01914
`Patent 8,394,618 B2
`
`
`FURTHER ORDERED that Patent Owner’s Sur-Reply shall not
`exceed six (6) pages of argument;
`FURTHER ORDERED that Patent Owner’s Sur-Reply shall not be
`filed any later than November 27, 2017; and
`FURTHER ORDERED that Patent Owner’s Sur-Reply shall not
`introduce any new evidence into the record of this proceeding.
`
`
`
`
`
`
`4
`
`
`
`
`
`
`IPR2016-01914
`Patent 8,394,618 B2
`
`PETITIONER:
`
`David O. Simmons
`IVC PATENT AGENCY
`dsimmons1@sbcglobal.net
`
`Jonathan D. Hurt
`MCDANIEL & ASSOCIATES, PC
`jhurt@technologylitigators.com
`
`Mark A.J. Fassold
`Jorge Mares
`WATTS GUERRA LLP
`mfassold@wattsguerra.com
`jmares@wattsguerra.com
`ReactiveSurfaces@wattsguerra.com
`
`Rico Reyes
`RICO REYES LAW
`rico@ricoreyeslaw.com
`
`
`PATENT OWNER:
`
`Joshua A. Lorentz
`Richard Schabowsky
`John D. Luken
`Oleg Khariton
`DINSMORE & SHOHL LLP
`joshua.lorentz@dinsmore.com
`richard.schabowsky@dinsmore.com
`john.luken@dinsmore.com
`oleg.khariton@dinsmore.com
`
`5
`
`
`
`
`
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