Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 27
`Entered: February 8, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`NETAPP, INC.,
`Petitioner,
`v.
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`_______________
`
`Case IPR2017-00276
`Patent 6,633,945
`_______________
`
`
`Before JEFFREY S. SMITH, JENNIFER S. BISK, and BEVERLY M. BUNTING,
`Administrative Patent Judges.
`
`SMITH, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Conduct of the Proceeding
`37 C.F.R. § 42.5
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`Case IPR2017-00276
`Patent 6,633,945
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`On February 6, 2018, Patent Owner contacted the Board by e-mail
`requesting authorization to file a motion to strike Petitioner’s Reply. Patent Owner
`asserted that Petitioner’s reply included new evidence and a new ground of
`unpatentability, in violation of 37 C.F.R. § 42.23(b).
`Our Rules explain that “[a] reply may only respond to arguments raised in
`the corresponding . . . patent owner response.” 37 C.F.R. § 42.23(b). Indeed, “a
`reply that raises a new issue or belatedly presents evidence will not be considered
`and may be returned.” See Office Patent Trial Practice Guide, 77 Fed. Reg.
`48,756, 48,767 (Aug. 14, 2012). For example, our Trial Practice Guide explains
`that “[e]xamples of indications that a new issue has been raised in a reply include
`new evidence necessary to make out a prima facie case for the patentability or
`unpatentability of an original or proposed substitute claim, and new evidence that
`could have been presented in a prior filing.” Id.
`We decline at this time to exclude the reply submissions or to authorize
`Patent Owner to file sur-replies. Instead, on these facts, we determine that the
`following procedure serves the just, speedy, and inexpensive resolution of this
`issue. First, Patent Owner may file a paper titled “Patent Owner’s List of Improper
`Reply Arguments,” which shall include a numbered list of citations to those
`passages of the reply that Patent Owner believes exceed the scope of a proper
`reply.1 This list must include page and line numbers, and may include a brief
`
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`1 For purposes of this Order, an improper argument is an argument made by
`Petitioner in its Reply where (1) it is beyond the scope of a reply under 37 C.F.R.
`§ 42.23(b) or (2) if we were to rely on it in finding the challenged claims
`unpatentable, Patent Owner would not have had sufficient notice and opportunity
`to respond (see, e.g., Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir.
`2015)). Because arguments are supported by evidence, and evidence not argued is
`not considered, we purposely omit a separate class of “improper evidence.”
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`Case IPR2017-00276
`Patent 6,633,945
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`explanation (akin to that in a motion for observation, see Paper 15, 4).
`Then, Petitioner may file a paper titled “Petitioner’s Response to Patent
`Owner’s List of Improper Reply Arguments,” responding to each item in Patent
`Owner’s list and citing to where the reply argument is supported by a theory of
`unpatentability expressed in the Petition and/or is responsive to an argument raised
`in the Patent Owner Response. Again, this response must include page and line
`numbers, and may include a brief explanation (again, akin to that in a motion for
`observation).
`The propriety or impropriety of the identified portions of the reply will be
`addressed, to the extent necessary, in our Final Written Decision. To the extent the
`panel determines that any item identified by Patent Owner warrants additional
`briefing, an additional Order will be issued, providing such instruction to the
`parties.
`Furthermore, although at this time we do not deem it necessary to resolve
`this issue prior to the Final Written Decision or via formal briefing, should either
`party request a hearing, the parties may address this issue during oral argument.
`In view of the foregoing, it is hereby:
`ORDERED that Patent Owner is authorized to file a List of Improper Reply
`Arguments, and Petitioner is authorized to file, in each captioned proceeding, a
`Response, as outlined above;
`FURTHER ORDERED that Patent Owner’s List is to be filed no later than
`February 13, 2018, and that Petitioner’s Response is to be filed no later than
`February 20, 2018; and
`FURTHER ORDERED that neither paper is to be more than two pages,
`excluding the cover page, signature block, and certificate of service.
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`Case IPR2017-00276
`Patent 6,633,945
`
`PETITIONER:
`
`Benjamin Weed
`Erik Halverson
`K&L Gates LLP
`benjamin.weed.ptab@klgates.com
`erik.halverson@klgates.com
`
`
`PATENT OWNER:
`
`Lori Gordon
`Steven Peters
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`lgordon-ptab@skgf.com
`speters@skgf.com
`
`James Hietala
`Tim Seeley
`INTELLECTUAL VENTURES
`jhietala@intven.com
`tims@intven.com
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