`571-272-7822
`
`
`
` Paper No. 22
` Entered: April 5, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`COMCAST CABLE COMMUNICATIONS, LLC,
`Petitioner,
`
`v.
`
`ROVI GUIDES, INC.,
`Patent Owner.
`____________
`
`Cases IPR2017-00742 and IPR2017-00744
`Patent 8,621,512 B2
`____________
`
`
`Before BARBARA A. BENOIT and TERRENCE W. McMILLIN,
`Administrative Patent Judges.
`
`
`McMILLIN, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`IPR2017-00742; IPR2017-00744
`Patent 8,621,512 B2
`
`
`On March 26, 2018, the Board received an email from Patent Owner’s
`counsel, Mark D. Rowland, which said:
`In connection with the two proceedings identified above,
`Patent Owner respectfully requests permission to file an
`identification of Petitioner’s evidence exceeding the proper
`scope of a reply, under Rule 42.23(b). Patent Owner further
`requests a conference call with the Board to discuss this
`submission.
`
`
`Patent Owner seeks permission to file an itemized list in
`each proceeding that identifies new expert testimony that
`Petitioner submitted with its Replies, constituting new opinions
`that should have been included with the Petitions. Petitioner
`opposes this request.
`
`
`Generally, we determine whether a reply and supporting evidence contain
`material exceeding the proper scope when we review all of the pertinent
`papers and prepare the final written decision. We may exclude all or
`portions of Petitioner’s Reply and newly submitted evidence, or decline to
`consider any improper argument and related evidence, at that time.
`After consideration and review of the parties’ papers, we grant Patent
`Owner’s request. Patent Owner may file a numbered list of citations to
`Petitioner’s Reply, with brief explanations (akin to a motion for
`observation), to those portions of Petitioner’s Reply citing new expert
`testimony submitted with Petitioner’s Reply that Patent Owner believes
`exceed the proper scope of a reply under 37 C.F.R. § 42.23(b). If Patent
`Owner chooses to file such a list, Patent Owner must do so no later than
`April 11, 2018.
`We also authorize Petitioner to file a list in response explaining briefly
`(akin to a motion for observation) why the passages identified by the Patent
`
`
`
`2
`
`
`
`IPR2017-00742; IPR2017-00744
`Patent 8,621,512 B2
`
`Owner are within the proposer scope of a reply under 37 C.F.R.
`§ 42.23(b). If Petitioner chooses to file such a list in response, Petitioner
`must do so no later than April 18, 2018.
`Neither party is permitted to submit additional evidence or additional
`arguments regarding patentability of the challenged claims.
`The parties may address the issue further during oral argument.
` Accordingly, it is
`ORDERED that the parties shall proceed in accordance with this
`Order.
`
`
`
`
`
`
`3
`
`
`
`
`
`IPR2017-00742; IPR2017-00744
`Patent 8,621,512 B2
`
`PETITIONER:
`
`Frederic M. Meeker
`Bradley C. Wright
`Charles W. Shifley
`Timothy C. Meece
`Christopher J. Galfano
`Scott M. Kelly
`BANNER AND WITCOFF, LTD
`fmeeker@bannerwitcoff.com
`bwright@bannerwitcoff.com
`cshifley@bannerwitcoff.com
`tmeece@bannerwitcoff.com
`cgalfano@bannerwitcoff.com
`skelly@bannerwitcoff.com
`
`
`
`PATENT OWNER:
`
`Mark D. Rowland
`Gabrielle E. Higgins
`ROPES & GRAY LLP
`Mark.Rowland@ropesgray.com
`Gabrielle.Higgins@ropesgray.com
`
`
`
`
`
`
`4
`
`
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