`571-272-7822
`
`
` Paper 50
`
`Entered: January 30, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`ARCTIC CAT, INC.,
`Petitioner,
`
`v.
`
`POLARIS INDUSTRIES INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00433
`Patent 9,217,501 B2
`
`
`
`Before KARL D. EASTHOM, PHILLIP J. KAUFFMAN, and
`MICHAEL W. KIM Administrative Patent Judges.
`
`KAUFFMAN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`IPR2017-00433
`Patent 9,217,501 B2
`
`At Patent Owner’s request, Judges Kauffman and Easthom held a call
`
`with the parties. Although not present on that call, Judge Kim now joins this
`Order.
`
`Schedule
`
`The parties disagree on the remaining schedule. After some
`discussion, the parties agreed to make another attempt to modify the
`remaining due dates by mutual agreement. We permit the parties to address
`Due Date 6, provided it does not impact Due Date 7.
`
`Request for Authorization for a Sur-reply
`Patent Owner requests a seven page sur-reply based on two alleged
`reasons: one, because Patent Owner bears the burden of proof on secondary
`considerations, and two, because portions of Petitioner’s Reply exceed the
`proper scope of a reply. We address these reasons in turn.
`Burden of Proof
`With its Patent Owner Response, Patent Owner submitted Exhibits
`2021–2109, the vast majority of which, in our preliminary and cursory
`review, are directed to secondary considerations. Petitioner contends, and
`we agree, that while Patent Owner has the burden of production for
`secondary considerations, Petitioner still bears the burden of proof, and
`accordingly, Patent Owner’s request should be denied. See generally
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378
`(Fed. Cir. 2015); see also 35 U.S.C. § 316(e) (“[T]he petitioner shall have
`the burden of proving a proposition of unpatentability by a preponderance of
`the evidence.”). Consequently, on this record, we are unpersuaded that the
`
`2
`
`
`
`IPR2017-00433
`Patent 9,217,501 B2
`
`fact that Patent Owner bears the burden of production for secondary
`considerations provides a sufficient basis for a authorizing a sur-reply.
`Scope of Reply
`Patent Owner contends that they have not had adequate time to review
`Petitioner’s Reply, but on first look, it appears to exceed the permissible
`scope of a reply. Accordingly, Patent Owner requested an opportunity to
`bring the relevant portions of the Reply to the Board’s attention, for
`example, in the form of a list. We informed the parties that the Board
`determines whether a reply and the accompanying evidence are outside the
`scope of a proper reply, and a list from the parties is generally not needed.
`Knowing this, if after review, Patent Owner still wishes to request
`authorization to file a list, Patent Owner must first identify and discuss the
`strongest example with Petitioner. Following this, should the desire to file a
`list remain, Patent Owner should jointly request a conference call to discuss
`that example, and should provide the example in that request. Even if a list
`is subsequently authorized, this contention, at most, warrants a list and does
`not warrant a sur-reply.
`
`
`ORDER
`We deny Patent Owner’s request for authorization to file a sur-reply to
`Petitioner’s Reply.
`
`
`
`
`
`
`
`
`
`
`3
`
`
`
`IPR2017-00433
`Patent 9,217,501 B2
`
`PETITIONER:
`
`Michael T. Hawkins
`Conrad Gosen
`Joseph Herriges
`FISH & RICHARDSON P.C.
`hawkins@fr.com
`gosen@fr.com
`herriges@fr.com
`
`
`PATENT OWNER:
`
`Dennis C. Bremer
`Alan G. Carlson
`CARLSON, CASPERS, VANDENBURGH,
`LINDQUIST & SCHUMAN, P.A.
`dbremer@carlsoncaspers.com
`acarlson@carlsoncaspers.com
`
`4
`
`
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