`571-272-7822
`
`
`
`
`
`Paper No. 40
`Filed: July 17, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`
`
`T-MOBILE US, INC. and T-MOBILE USA, INC.,
`Petitioner,
`
`v.
`
`BARKAN WIRELESS ACCESS TECHNOLOGIES, L.P.,
`Patent Owner.
`_______________
`
`Case IPR2017-01099
`Patent 9,042,306 B2
`_______________
`
`
`Before MEREDITH C. PETRAVICK, JOHN A. HUDALLA, and
`SHARON FENICK, Administrative Patent Judges.
`
`FENICK, Administrative Patent Judge.
`
`
`
`
`ORDER
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`IPR2017-01099
`Patent 9,042,306 B2
`
`
`I. INTRODUCTION
`On June 8, 2018, we issued an Order relating to Patent Owner’s contention
`that Petitioner’s Reply to Patent Owner’s Response (Paper 22) and Petitioner’s
`Supplemental Reply (Paper 29) contained new arguments. Paper 30 (“Order”).
`Specifically, the Order pertained to Petitioner’s request for leave to file a motion to
`strike portions of these two papers or, in the alternative, to file a listing of the
`allegedly new arguments. Id. We explained that, with respect to Petitioner’s
`Reply, Patent Owner did not seek relief promptly after the time of that filing, so we
`did not authorize any relief with respect to Petitioner’s Reply. Id. at 2–3 (noting
`that, per 37 C.F.R. § 42.25(b), “[a] party should seek relief promptly after the need
`for relief is identified.”)
`On June 15, 2018, Patent Owner requested rehearing of the Order with
`respect to the Petitioner’s Reply. Paper 34 (“Rehearing Request” or “Reh. Req.”).
`For the reasons set forth below, Patent Owner’s Rehearing Request is
`denied.
`
`II. STANDARD OF REVIEW
`A party requesting rehearing bears the burden of showing the decision
`should be modified. 37 C.F.R. § 42.71(d). In particular, “[t]he request must
`specifically identify all matters the party believes the Board misapprehended or
`overlooked, and the place where each matter was previously addressed in a motion,
`an opposition, or a reply.” Id. When considering a rehearing request, “[t]he
`burden of showing that the decision should be modified lies with the party
`challenging the decision.” Office Patent Trial Practice Guide, 77 Fed. Reg.
`48,756, 48,768 (Aug. 14, 2012).
`
`
`
`
`2
`
`
`
`IPR2017-01099
`Patent 9,042,306 B2
`
`
`III. ANALYSIS
`Patent Owner requests rehearing to “clarify . . . whether the Board will
`enforce 37 C.F.R. § 42.23(b) as to Paper 22 [Petitioner’s Reply to Patent Owner’s
`Response] when it prepares its final written decision.” Reh. Req. 2. We discern no
`need to “clarify” the Order, however, because it specifically stated the following:
`Our Rules explain that “[a] reply may only respond to
`arguments raised in the corresponding . . . patent owner response.”
`37 C.F.R. § 42.23(b). Indeed, “[a] reply that raises a new issue or
`belatedly presents evidence will not be considered and may be
`returned.” See Office Patent Trial Practice Guide, 77 Fed. Reg.
`48,756, 48,767 (Aug. 14, 2012).
`Order 2. As such, we did not overlook this issue.
`Patent Owner additionally requests that we amend the Order “to authorize
`Patent Owner to file a list of improper arguments appearing in Paper 22.” Reh.
`Req. 2. Patent Owner argues it promptly requested relief after it identified the
`need for such relief, even though the need may have arisen earlier. Id. at 1.
`However, 37 C.F.R. § 42.25(b) does not compel us to grant relief based on Patent
`Owner’s unsupported statement that it “quickly contacted the Board after it
`identified the need for relief.” Reh. Req. 1. Indeed, § 42.25(b) additionally states
`that “[d]elay in seeking relief may justify a denial of relief sought.” We denied
`Patent Owner’s request because “Patent Owner did not indicate satisfactorily why
`it could not have identified the alleged issues and sought relief earlier.” Order 3.
`Patent Owner’s rehearing request does not indicate any reasons we overlooked that
`explain Patent Owner’s delay in seeking relief. Nor did we misapprehend
`§ 42.25(b), which gives us discretion to consider delays in seeking relief. Thus, we
`decline to modify the Order to authorize the requested relief.
`
`
`
`
`
`3
`
`
`
`IPR2017-01099
`Patent 9,042,306 B2
`
`
`IV. ORDER
`In consideration of the foregoing, it is hereby
`ORDERED that Patent Owner’s Rehearing Request is denied.
`
`
`
`
`
`
`4
`
`
`
`IPR2017-01099
`Patent 9,042,306 B2
`
`PETITIONER:
`
`Chun M. Ng
`Miguel Bombach
`John Esterhay
`PERKINS COIE LLP
`cng@perkinscoie.com
`mbombach@perkinscoie.com
`jesterhay@perkinscoie.com
`
`
`PATENT OWNER:
`
`Robert D. Katz
`KATZ, PLLC
`rkatz@katzfirm.com
`
`Spencer C. Patterson
`spatterson@gchub.com
`
`
`
`
`
`5
`
`
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