Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper: 15
`Entered: May 25, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BITDEFENDER INC.,
`Petitioner,
`
`v.
`
`UNILOC USA, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01315
`Patent 6,510,466 B1
`____________
`
`
`Before MIRIAM L. QUINN, ROBERT J. WEINSCHENK, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper: 15
`Entered: May 25, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BITDEFENDER INC.,
`Petitioner,
`
`v.
`
`UNILOC USA, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01315
`Patent 6,510,466 B1
`____________
`
`
`Before MIRIAM L. QUINN, ROBERT J. WEINSCHENK, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`IPR2017-01315
`Patent 6,510,466 B1
`
`
`
`On November 1, 2017, the Board instituted an inter partes review in
`this proceeding as to some but not all of the challenged claims. Paper 7
`(“Inst. Dec.”), 2. On November 13, 2017, Petitioner requested rehearing as
`to the claims for which review was not instituted (Paper 9), and we denied
`Petitioner’s rehearing request (Paper 10). Patent Owner then filed its Patent
`Owner Response on December 4, 2017 (Paper 11), and Petitioner filed its
`Reply on February 1, 2018 (Paper 13). An oral hearing (if requested) has
`been scheduled in this proceeding for August 7, 2018. Paper 8, 7.
`On May 7, 2018, we issued an order to include the previously non-
`instituted claims in this proceeding consistent with SAS Institute, Inc. v.
`Iancu, 2018 WL 1914661, at *10 (U.S. Apr. 24, 2018). Paper 14, 2. In
`response to our order that “Petitioner and Patent Owner shall confer to
`determine whether they desire any changes to the schedule or any further
`briefing, and, if so, shall request a conference call with the panel to seek
`authorization for such changes or briefing” (id.), Petitioner requested a
`conference call with the Board.
`On May 17, 2018, we held a conference call with counsel for both
`parties to discuss any requested briefing to address the newly-added claims
`(i.e., claims 15–17, 22–24, 30, and 35–37). Neither party requested any
`changes to the due dates in the Scheduling Order (Paper 8). During the call,
`Petitioner requested authorization to file a ten-page supplemental brief to
`address the newly-added claims, and Patent Owner unequivocally stated that
`it waived any further briefing on the newly-added claims.1 Petitioner
`
`
`1 Patent Owner stated that it may wish to object to Petitioner’s supplemental
`brief or move to strike that brief or portions thereof. At this time, we do not
`2
`
`
`
`IPR2017-01315
`Patent 6,510,466 B1
`
`
`requested ten days in which to file its supplemental brief.
`Upon consideration of Petitioner’s request and Patent Owner’s waiver
`of further briefing, out of an abundance of fairness and as detailed below, we
`authorize Petitioner to file an Institution Response Brief. We note that such
`a brief is not specifically authorized by our rules. See 37 C.F.R. § 42.23.
`We further note that Petitioner retains the burden to prove unpatentability of
`the previously non-instituted claims by a preponderance of the evidence, and
`that burden is unchanged by Patent Owner’s waiver of supplemental briefing
`on the newly-added claims. See 35 U.S.C. § 316(e).
`Petitioner is authorized, but not required, to file no later than June 4,
`2018 an Institution Response Brief of no more than ten pages to address the
`Board’s discussion in the institution decision of the newly-added claims.
`Petitioner’s Institution Response Brief is for identifying matters that
`Petitioner believes the Board misapprehended or overlooked, or otherwise
`erred in its institution decision discussing the newly-added claims. Thus,
`the scope of Petitioner’s Institution Response Brief is somewhat similar in
`scope to a request for rehearing of an institution decision, but broader in that
`the brief is not limited strictly to matters that Petitioner believes the Board
`misapprehended or overlooked. See 37 C.F.R. § 42.71(d).
`Petitioner is not permitted to introduce new arguments or evidence in
`its Institution Response Brief. Petitioner must identify with particularity the
`place where each matter (i.e., argument or evidence) raised in its Institution
`Response Brief was previously addressed in its Petition (Paper 1). This
`Institution Response Brief is not an opportunity for Petitioner to add
`
`grant prospective authorization for such a filing.
`
`3
`
`
`
`IPR2017-01315
`Patent 6,510,466 B1
`
`
`additional arguments, evidence, or otherwise try to improve its Petition.
`Petitioner should be mindful that Board rules prohibit incorporating by
`reference arguments from one document into another document. 37 C.F.R.
`§ 42.6(a)(3); see Cisco Sys., Inc. v. C-Cation Techs., LLC, Case IPR2014-
`00454, slip op. at 7–10 (PTAB August 29, 2014) (Paper 12) (Informative)
`(not considering arguments in declaration that were not made in the Petition
`but only incorporated by reference).
`Petitioner’s Institution Response Brief is not a request for rehearing of
`our institution decision; therefore, we will not decide the issues raised in the
`brief before the conclusion of the trial. We will take the Petitioner’s
`Institution Response Brief into consideration as part of the totality of the
`record we consider in our Final Written Decision.
`
`IT IS SO ORDERED.
`
`4
`
`
`
`IPR2017-01315
`Patent 6,510,466 B1
`
`
`PETITIONER:
`
`Andrei Popovici
`andrei@apatent.com
`
`Mihai Murgulescu
`mihaihm2000@gmail.com
`
`PATENT OWNER:
`Brett Mangrum
`brett@etheridgelaw.com
`
`Sean Burdick
`sean.burdick@unilocusa.com
`
`Ryan Loveless
`ryan@etheridgelaw.com
`
`
`5
`
`
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