Trials@uspto.gov
`571-272-7822
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`Paper No. 77
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` Entered: September 17, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`COASTAL INDUSTRIES, INC.
`Petitioner,
`
`v.
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`SHOWER ENCLOSURES AMERICA, INC.
`Patent Owner.
`_________
`
`Case IPR2017-00573
`Patent 7,174,944
`____________
`
`
`Before MICHAEL W. KIM, CARL M. DEFRANCO, and
`ALYSSA A. FINAMORE, Administrative Patent Judges.
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`KIM, Administrative Patent Judge.
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`
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`ORDER
`Conduct of Proceeding; Motion to Exclude
`37 C.F.R. §§ 42.5, 42.64
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`On September 14, 2018, the Board received an e-mail from Petitioner
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`indicating the following:
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`Following the advice from the Trial Division PTAB E2
`Assistance Line, Petitioner is sending the following time
`sensitive request for guidance.
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`Patent Owner filed 3 separate Motions to Exclude last
`night. Paper 74 (15 pages), Paper 75 (14 pages), and Paper 76
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`

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`IPR2017-00573
`Patent 7,174,944
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`(12 pages). Petitioner understands 37 CFR 42.24 limits each
`party to 15 pages for one motion to exclude and the same applies
`for the opposition. Petitioner’s opposition to PO’s 3 motions to
`exclude is due this upcoming Monday, Sept. 17, 2018. Petitioner
`would like to seek clarification on the number of motions to
`exclude each party is entitled to under the rules. If the PTAB’s
`understanding of the rule is that each party is entitled to one 15
`page motion and opposition, Petitioner will get authorization to
`answer to the first 15 pages (i.e. Paper 74) and seeks
`authorization to file a motion to strike Papers 75–76. Because
`of the expedited nature of the schedule and upcoming deadline,
`an early response from the PTAB is very much appreciated.
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`Petitioner has reached out to Mr. Fountain, PO’s counsel,
`prior to this e-mail to see if PO was amenable to extend Due Date
`12 by one or two business days to enable the parties to get
`guidance from the PTAB. Mr. Fountain was not amenable to the
`change without making changes to the entire schedule.
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`Ex. 3001. On the same day, the Board also received an e-mail from Patent
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`Owner indicating the following:
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`Patent Owner disagrees with Petitioner’s contention that
`only a single Motion to Exclude is permitted for the entire case,
`per side under the rules. There are other facts regarding this
`event that the Board should be aware of. A ruling as requested
`by Petitioner should not be granted without a hearing, and
`probably briefing on the legal issue.
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`Ex. 3001.
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`The relevant portion of 37 C.F.R. § 42.64(c) reads as follows:
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`A motion to exclude evidence must be filed to preserve any
`objection. The motion must identify the objections in the record
`in order and must explain the objections. The motion may be
`filed without prior authorization from the Board.
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`Only one motion to exclude is pre-authorized for a given due date. See also
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14,
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`2012) (article “a” used with “motion to exclude”); Paper 10, 7 (indicating
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`2
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`IPR2017-00573
`Patent 7,174,944
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`the same); Paper 49, 4 (referring to “motions” in plural in the first instance
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`only to indicate the possibility that both parties may file such a motion).
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`Indeed, to hold otherwise would effectively eviscerate the page limits set
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`forth in 37 C.F.R. § 42.24(a)(v). Furthermore, we are unaware of any
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`proceeding where, without prior authorization, the same party has filed
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`multiple motions to exclude on a particular due date. Accordingly, Papers
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`74–76 will not be considered. As such, the rest of Petitioner’s request is
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`moot.
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`To the extent Patent Owner was unclear that only one motion to
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`exclude was authorized for a given due date, and also given that we are a
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`little more than two weeks away from any supplemental oral hearing, Patent
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`Owner is permitted one final opportunity to file a single motion to exclude,
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`of no more than fifteen (15) pages, by Wednesday, September 19, 2018.
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`Petitioner is similarly permitted a final opportunity to file a single opposition
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`to that motion by Monday, September 24, 2018. Patent Owner is free to
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`make any responsive arguments to the Petitioner’s opposition at the
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`supplemental oral hearing.
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`Patent Owner asserts that Petitioner’s request “should not be granted
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`without a hearing, and probably briefing on the legal issue.” As Petitioner’s
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`request is moot, however, no such hearing or legal briefing is necessary.
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`In consideration of the foregoing, it is hereby:
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`ORDERED that Papers 74–76 will not be considered; and
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`FURTHER ORDERED that the Scheduling Order is amended such
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`that Patent Owner is permitted to file a single motion to exclude by
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`Wednesday, September 19, 2018, and Petitioner is permitted to file a single
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`3
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`IPR2017-00573
`Patent 7,174,944
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`opposition to that motion by Monday, September 24, 2018. A reply paper is
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`no longer authorized.
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`IPR2017-00573
`Patent 7,174,944
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`PETITIONER:
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`Joseph P. Kincart
`ROGERS TOWERS P.A.
`jkincart@rtlaw.com
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`Andres F. Arrubla
`COASTAL INDUSTRIES INC.
`aarrubla@coastalind.com
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`PATENT OWNER:
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`Ryan Fountain
`ryanfountain@aol.com
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`J. John O’Banion
`O’BANION & RITCHY, LLP
`docketing@intellectual.com
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`5
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`