Trials@uspto.gov
`571.272.7822
`
`
`
`Paper No. 83
`Entered: January 16, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PROPPANT EXPRESS INVESTMENTS, LLC,
`PROPPANT EXPRESS SOLUTIONS, LLC,
`Petitioner,
`
`v.
`
`OREN TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01917 (Patent 9,296,518)
`Case IPR2017-01918 (Patent 9,403,626)
` Case IPR2017-02103 (Patent 9,403,626)1
`
`____________
`
`
`Before MITCHELL G. WEATHERLY, KEVIN W. CHERRY, and
`MICHAEL L. WOODS, Administrative Patent Judges.
`
`WOODS, Administrative Patent Judge.
`
`
`ORDER
`Denying Motion to Strike
`37 C.F.R. § 42.5
`
`
`
`
`1 We issue one Order and enter it in each proceeding.
`
`
`
`
`
`571.272.7822
`
`
`
`Paper No. 83
`Entered: January 16, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PROPPANT EXPRESS INVESTMENTS, LLC,
`PROPPANT EXPRESS SOLUTIONS, LLC,
`Petitioner,
`
`v.
`
`OREN TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01917 (Patent 9,296,518)
`Case IPR2017-01918 (Patent 9,403,626)
` Case IPR2017-02103 (Patent 9,403,626)1
`
`____________
`
`
`Before MITCHELL G. WEATHERLY, KEVIN W. CHERRY, and
`MICHAEL L. WOODS, Administrative Patent Judges.
`
`WOODS, Administrative Patent Judge.
`
`
`ORDER
`Denying Motion to Strike
`37 C.F.R. § 42.5
`
`
`
`
`1 We issue one Order and enter it in each proceeding.
`
`
`
`
`
`
`IPR2017-01917 (Patent 9,296,518)
`IPR2017-01918 (Patent 9,403,626)
`IPR2017-02103 (Patent 9,403,626)
`
`
`
`I.
`INTRODUCTION
`With our authorization (Paper 68), Petitioner filed a Motion to Strike
`(Paper 71, “Motion”) in each proceeding.2 Patent Owner filed an Opposition
`(Paper 73, “Opposition”) to Petitioner’s Motion.
`We deny Petitioner’s Motion in each proceeding.
`
`
`II. ANALYSIS
`The issue is whether we should strike certain statements made by
`Patent Owner in its Sur-Reply (Paper 66). As the moving party, Petitioner
`bears the burden of proof to establish that it is entitled to the requested relief.
`37 C.F.R. § 42.22(c).
`The Board’s updated Trial Practice Guide provides that motions to
`strike may be filed “[i]f a party believes that a brief filed by the opposing
`party raises new issues, is accompanied by belatedly presented evidence, or
`otherwise exceeds the proper scope of reply or sur-reply.” See TRIAL
`PRACTICE GUIDE UPDATE, 83 Fed. Reg. 38,989, 17 (Aug. 13, 2018)
`(“Practice Guide”). The Practice Guide further provides that a “striking the
`entirety or a portion of a party’s brief is an exceptional remedy that the
`Board expects will be granted rarely.” Id. at 17–18 (emphasis added).
`Petitioner moves to strike from Patent Owner’s Sur-Reply allegedly
`false and misleading statements. Motion 1. In particular, Petitioner seeks to
`strike statements that Petitioner asserts misrepresents Patent Owner’s
`revenue evidence to support Patent Owner’s commercial success arguments.
`
`2 Unless otherwise indicated, our citations will be to the record of IPR2017-
`01917.
`
`
`
`2
`
`
`
`IPR2017-01917 (Patent 9,296,518)
`IPR2017-01918 (Patent 9,403,626)
`IPR2017-02103 (Patent 9,403,626)
`
`
`See id. at 4 (“[Patent Owner’s] Relied-on Revenue cannot be for just
`containers and conveyors, as the Cummings, Carusona, and Salters evidence
`show”); see also id. at 5 (“The Board should exercise its authority under
`Rule 5(a) to strike the statement identified above. This is appropriate given
`the false or misleading nature of the statements [and] the improper harm
`they would otherwise cause Petitioners given the alleged significance of
`PO’s alleged commercial success.”).
`Patent Owner opposes Petitioner’s Motion, disputing Petitioner’s
`assertion that the statements are false or misleading. See Opposition 1 (“The
`portions of Patent Owner’s sur-reply that Petitioners seek to strike are not
`false or misleading.”). Patent Owner argues that Petitioner’s assertion is
`based on its own incorrect, subjective interpretation. See id. at 2
`(“Petitioners’ contention that the statements are false or misleading is based
`exclusively on Petitioners’ subjective, incorrect interpretation.”). Patent
`Owner argues that Petitioner’s Motion is merely an attempt to submit
`additional briefing into these proceedings. Id. at 2.
`We agree with Patent Owner and Petitioner has failed to persuade us
`that it is entitled to the requested relief. 37 C.F.R. § 42.22(c). Specifically,
`we are not persuaded that Patent Owner makes false or misleading
`statements in its Sur-Reply. Rather, the identified statements are simply
`Patent Owner’s characterization of the evidence to best advance its
`commercial success argument, and Petitioner’s differing interpretation of
`that evidence does not provide a basis for granting the exceptional remedy of
`striking Patent Owner’s arguments from the record.
`For the foregoing reasons, we deny Petitioner’s Motion in its entirety.
`
`
`
`3
`
`
`
`IPR2017-01917 (Patent 9,296,518)
`IPR2017-01918 (Patent 9,403,626)
`IPR2017-02103 (Patent 9,403,626)
`
`
`
`III. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner’s Motion to Strike (Paper 71 in IPR2017-
`01917; Paper 67 in IPR2017-01918; and Paper 72 in IPR2017-02103) is
`denied.
`
`
`
`
`
`
`
`
`4
`
`
`
`IPR2017-01917 (Patent 9,296,518)
`IPR2017-01918 (Patent 9,403,626)
`IPR2017-02103 (Patent 9,403,626)
`
`
`For PETITIONER:
`Mark Garrett
`W. Andrew Liddell
`Jeffrey Kitchen
`Jeremy Albright
`Charles Walker
`Catherine Garza
`NORTON ROSE FULBRIGHT US LLP
`mark.garrett@nortonrosefulbright.com
`andrew.liddell@nortonrosefulbright.com
`jeff.kitchen@nortonrosefulbright.com
`jeremy.albright@nortonrosefulbright.com
`charles.walker@nortonrosefulbright.com
`cat.garza@nortonrosefulbright.com
`
`
`For PATENT OWNER:
`Gianni Cutri
`Eugene Goryunov
`Adam Kaufmann
`Kyle Kantarek
`KIRKLAND & ELLIS LLP
`gianni.cutri@kirkland.com
`egoryunov@kirkland.com
`adam.kaufmann@kirkland.com
`kyle.kantarek@kirkland.com
`
`
`
`
`
`5
`
`
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