Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 60
`Filed: September 20, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`1964 EARS, LLC,
`Petitioner,
`
`v.
`
`JERRY HARVEY AUDIO HOLDING, LLC,
`Patent Owner.
`
`
`Case IPR2017-01091 (Patent 8,925,674 B2)
`Case IPR2017-01092 (Patent 9,197,960 B2)
`
`
`
`Before RAMA ELLURU, and JOHN F. HORVATH,
`Administrative Patent Judges.
`
`ELLURU, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5(a)
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`Paper 60
`Filed: September 20, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`1964 EARS, LLC,
`Petitioner,
`
`v.
`
`JERRY HARVEY AUDIO HOLDING, LLC,
`Patent Owner.
`
`
`Case IPR2017-01091 (Patent 8,925,674 B2)
`Case IPR2017-01092 (Patent 9,197,960 B2)
`
`
`
`Before RAMA ELLURU, and JOHN F. HORVATH,
`Administrative Patent Judges.
`
`ELLURU, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5(a)
`
`
`
`
`
`
`
`
`
`Case IPR2017-01091 (Patent 8,925,674 B2)
`Case IPR2017-01092 (Patent 9,197,960 B2)
`
`
`
` A
`
` teleconference was held on September 13, 2018, between counsel
`
`for Petitioner, 1964 Ears, LLC, counsel for Patent Owner, Jerry Harvey
`
`Audio Holding, LLC, and Judges Elluru and Horvath. The parties made the
`
`following requests.
`
`Patent Owner Requests
`
`
`
`Patent Owner initially requests authorization to file a motion to strike
`
`Petitioner’s Supplemental Replies to Patent Owner’s Supplemental
`
`Responses. Paper 58.1 Patent Owner contends that the replies are out of
`
`scope because the Supplemental Responses do not assert any new evidence
`
`or raise any new arguments. See Papers 20, 57. Thus, contends Patent
`
`Owner, there is nothing to which the Supplemental Replies can properly
`
`respond. See 37 C.F.R. 42.23(b) (“A reply may only respond to . . . patent
`
`owner response.”).
`
`
`
`We deny Patent Owner’s requested authorization to file a motion to
`
`strike Petitioner’s Supplemental Replies to Patent Owner’s Supplemental
`
`Responses in each of these proceedings. We can discern whether the
`
`Supplemental Replies are out of scope upon review, and will give proper
`
`weight to the Supplemental Replies based on that determination in our Final
`
`Written Decisions.
`
`In the alternative, Patent Owner requests authorization to file
`
`Supplemental Sur-Replies to Petitioner’s Supplemental Replies to Patent
`
`Owner’s Supplemental Reponses. Petitioner does not generally object to the
`
`
`
`1 We cite to papers in IPR2017-01091 for convenience. Similar papers are
`filed in IPR2017-01092.
`
`2
`
`
`
`Case IPR2017-01091 (Patent 8,925,674 B2)
`Case IPR2017-01092 (Patent 9,197,960 B2)
`
`filing of Sur-Replies but notes that we have the discretion to deny
`
`authorization under the Trial Practice Guide Update.
`
`The August 2018 Update to the Trial Practice Guide2 (“Trial Practice
`
`Guide Update”) states that “[s]ur-replies to principal briefs (i.e., to a reply to
`
`a patent owner response or to a reply to an opposition to a motion to amend)
`
`normally will be authorized by the scheduling order entered at institution.”
`
`Trial Practice Guide Update 14. The Trial Practice Guide Update further
`
`states that its “sur-reply practice essentially replaces the previous practice of
`
`filing observations on cross-examination testimony.” Id. The current
`
`Revised Scheduling Orders set Due Date 11 as October 31, 2018. Paper 53.
`
`DUE DATE 11 is for “[o]bservations[s] regarding cross-examination of
`
`supplemental reply witness.”
`
`We determine Patent Owner’s request is consistent with the Trial
`
`Practice Guide Update, and that request is granted in lieu of the filing of
`
`observations. Patent Owner’s Supplemental Sur-Replies shall be subject to
`
`the limits discussed in the Trial Practice Guide Update, including that the
`
`Supplemental Sur-Replies may only respond to arguments made in
`
`Petitioner’s Supplemental Reply briefs, comment on Supplemental Reply
`
`declaration testimony, or point to cross-examination testimony; and may not
`
`be accompanied by new evidence other than deposition transcripts of the
`
`cross-examination of any reply witness. Trial Practice Guide Update 14–15.
`
`In addition, Patent Owner’s Supplemental Sur-Replies are subject to the
`
`same word limit as Petitioner’s Supplemental Replies. Id. at 6. Patent
`
`3
`
`
`
`Case IPR2017-01091 (Patent 8,925,674 B2)
`Case IPR2017-01092 (Patent 9,197,960 B2)
`
`Owner’s Supplemental Sur-Replies shall be filed by Due Date 11.
`
`Petitioner’s Request
`
`
`
`Petitioner requests expungement of Patent Owner’s Objections to
`
`Admissibility of Evidence submitted by Petitioner. See Paper 60. Petitioner
`
`argues a motion to exclude based on these objections will lack merit.
`
`Petitioner does not identify any authority for the proposition that Patent
`
`Owner requires authorization to file a motion to exclude.
`
`
`
`We deny Petitioner’s request to expunge Patent Owner’s Objections
`
`to Admissibility of Evidence submitted by Petitioner. We will resolve any
`
`motion to exclude based on the merits if any such motion is filed in these
`
`proceedings.
`
`
`
`4
`
`
`
`Case IPR2017-01091 (Patent 8,925,674 B2)
`Case IPR2017-01092 (Patent 9,197,960 B2)
`
`
`
`For the foregoing reasons, it is
`
`ORDERED that Patent Owner’s request for authorization to file a
`
`motion to strike Petitioner’s Supplemental Replies to Patent Owner’s
`
`Supplemental Responses in each of these proceedings is denied;
`
`FURTHER ORDERED that Patent Owner’s request to file
`
`Supplemental Sur-Replies by Due Date 11 in each of these proceedings, in
`
`lieu of the filing of observations, is granted;
`
`FURTHER ORDERED that Due Date 12 is revised to include only
`
`“Opposition to motion to exclude”; and
`
`FURTHER ORDERED that the Revised Scheduling Orders in these
`
`cases are unchanged in all other respects.
`
`
`
`5
`
`
`
`Case IPR2017-01091 (Patent 8,925,674 B2)
`Case IPR2017-01092 (Patent 9,197,960 B2)
`
`For PETITIONER:
`
`Hillary A. Brooks
`Delfina S. Homen
`BROOKS QUINN, LLC
`hillary@brooksquinn.com
`delfina@brooksquinn.com
`
`
`
`
`
`For PATENT OWNER:
`
`Daniel B. Ravicher
`David J. Garrod
`RAVICHER LAW FIRM PLLC
`dan@ravicher.com
`dave@ravicher.com
`
`
`6
`
`
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