`571-272-7822
`
`
`
`
`Paper 22
`Entered: April 24, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`BLACKBERRY LTD.,
`Patent Owner.
`_______________
`
`Case IPR2017-00912 (Patent 8,745,149 B2)
`Case IPR2017-00913 (Patent 8,402,384 B2)1
`_______________
`
`
`Before ROBERT J. WEINSCHENK and RICHARD H. MARSCHALL,
`Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`1 This Order pertains to both of these cases. Therefore, we exercise our
`discretion to issue a single Order to be filed in each case. The parties are not
`authorized to use this style heading for any subsequent papers.
`
`
`
`IPR2017-00912 (Patent 8,745,149 B2)
`IPR2017-00913 (Patent 8,402,384 B2)
`
`
`INTRODUCTION
`I.
`On April 23, 2018, Judges Weinschenk and Marschall held a
`telephone conference call with counsel for Google LLC (“Petitioner”) and
`counsel for BlackBerry Limited (“Patent Owner”). A court reporter was
`present on the conference call. This order summarizes statements made
`during the conference call. A more complete record may be found in the
`court reporter’s transcript, which is to be filed by Patent Owner as an
`exhibit.
`
`II. ANALYSIS
`Patent Owner requested authorization to file a sur-reply in response to
`Petitioner’s Reply (IPR2017-00912, Paper 20; IPR2017-00913, Paper 20) in
`each of the above-listed proceedings. Specifically, Patent Owner argued that
`Petitioner’s Reply in each of the above-listed proceedings contains a new
`argument. For IPR2017-00912, Patent Owner identified Petitioner’s
`argument on pages 20–22 of the Reply, which relates to statements made
`during prosecution of a related application before the European Patent
`Office (“EPO”), as a new argument. For IPR2017-00913, Patent Owner
`identified Petitioner’s argument on pages 17–23 of the Reply, which relates
`to the disclosure of a reference known as Cadiz, as a new argument. Patent
`Owner requested a 3-page sur-reply for IPR2017-00912 and a 5-page sur-
`reply for IPR2017-00913. Patent Owner stated that it did not need to submit
`any new evidence with a sur-reply in either proceeding. Patent Owner also
`stated it could file a sur-reply in both proceedings within one (1) week of an
`order authorizing a sur-reply.
`Petitioner opposed Patent Owner’s request to file a sur-reply in each
`of the above-listed proceedings. Specifically, Petitioner asserted that the
`
`2
`
`
`
`IPR2017-00912 (Patent 8,745,149 B2)
`IPR2017-00913 (Patent 8,402,384 B2)
`
`arguments in the Reply in each of the above-listed proceedings properly
`respond to arguments made in Patent Owner’s Response (IPR2017-00912,
`Paper 17; IPR2017-00913, Paper 17). Petitioner also requested that, to the
`extent we authorize Patent Owner to file a sur-reply, we also authorize
`Petitioner to file a sur-sur-reply.
`After considering the respective positions of the parties, we authorize
`Patent Owner to file a 3-page sur-reply in each of the above-listed
`proceedings by May 8, 2018. The scope of the sur-reply for IPR2017-00912
`is limited to addressing Petitioner’s argument on pages 20–22 of the Reply.
`The scope of the sur-reply for IPR2017-00913 is limited to addressing
`Petitioner’s argument on pages 17–23 of the Reply. The sur-reply in each
`proceeding may cite to evidence already of record, but Patent Owner may
`not submit any new evidence with either sur-reply. Because Patent Owner is
`not authorized to submit any new evidence with either sur-reply, we
`determine that no sur-sur-reply is necessary at this time.
`III. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Patent Owner’s request for authorization to file a sur-
`reply in each of the above-listed proceedings is granted;
`FURTHER ORDERED that Patent Owner may file a 3-page sur-reply
`in each of the above-listed proceedings by May 8, 2018, in accordance with
`the instructions above; and
`FURTHER ORDERED that no sur-sur-reply is authorized.
`
`
`
`
`3
`
`
`
`IPR2017-00912 (Patent 8,745,149 B2)
`IPR2017-00913 (Patent 8,402,384 B2)
`
`PETITIONER:
`
`Naveen Modi
`Joseph E. Palys
`Phillip W. Citroën
`John S. Holley
`Arvind Jairam
`PAUL HASTINGS LLP
`naveenmodi@paulhastings.com
`josephpalys@paulhastings.com
`phillipcitroen@ paulhastings.com
`johnholley@paulhastings.com
`arvindjairam@paulhastings.com
`
`
`PATENT OWNER:
`
`Ching-Lee Fukuda
`Samuel A. Dillon
`SIDLEY AUSTIN LLP
`clfukuda@sidley.com
`samuel.dillon@sidley.com
`
`4
`
`
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