Trials@uspto.gov
`571-272-7822
`
`Paper: 44
`Entered: October 17, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CASCADES CANADA ULC and
`TARZANA ENTERPRISES, LLC,
`Petitioner,
`
`v.
`
`ESSITY HYGIENE AND HEALTH AB,
`Patent Owner.
`____________
`
`Case IPR2017-01902 (Patent 8,597,761 B2)
`Case IPR2017-01921 (Patent 9,320,372 B2)1
`____________
`
`
`Before JO-ANNE M. KOKOSKI, KRISTINA M. KALAN, and
`JON B. TORNQUIST, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`1 This Order addresses issues that are the same in both proceedings. The parties
`are not authorized to use this style heading for any subsequent papers.
`
`

`

`IPR2017-01902 (Patent 8,597,761 B2)
`IPR2017-01921 (Patent 9,320,372 B2)
`
`
`On October 15, 2018, Judges Kokoski, Kalan, and Tornquist held a
`conference call with counsel for Petitioner and Patent Owner. Petitioner requested
`the conference to seek authorization to file a motion to strike sur-replies filed by
`Patent Owner in each of the above-named proceedings. See Paper 37; Paper 36. 2
`In particular, Petitioner argued that the Scheduling Order did not authorize Patent
`Owner to file the sur-replies, and Patent Owner did not seek authorization to file
`the sur-replies. See Paper 11, 5–6; Paper 10, 5–6. Patent Owner responded that it
`relied on the August 2018 Update to the Trial Practice Guide (“Trial Practice
`Guide Update”), which provides for sur-replies instead of observations. See Trial
`Practice Guide Update, pages 14–15, Office Patent Trial Practice Guide, August
`2018 Update, 83 Fed. Reg. 39989 (Aug. 13, 2018). Patent Owner explained that,
`although there is no guidance in the Trial Practice Guide Update as to whether
`authorization was needed before filing a sur-reply in pending cases, Patent Owner
`understood the Trial Practice Guide Update to mean that sur-replies simply
`replaced observations on cross-examination in the Scheduling Order.
`We advised Patent Owner that the Trial Practice Guide Update describes
`sur-replies as being provided for in newly-instituted cases, i.e., ones in which sur-
`replies “will be authorized by the scheduling order entered at institution,” where it
`“essentially replaces the previous practice of filing observations on cross-
`examination testimony.” See Trial Practice Guide Update, 14. The Scheduling
`Order in these proceedings, however, was issued prior to the Trial Practice Guide
`Update and does not authorize sur-replies. See Paper 11, Paper 10. Accordingly,
`we determined that Patent Owner’s sur-replies were unauthorized.
`Our rules recognize that there are instances when failure to comply with the
`regulations may be mitigated. See, e.g., 37 C.F.R. §§ 42.5(a) (“The Board may
`
`
`2 We sequentially refer to papers filed in IPR2017-01902 and IPR2017-01921.
`2
`
`
`
`

`

`IPR2017-01902 (Patent 8,597,761 B2)
`IPR2017-01921 (Patent 9,320,372 B2)
`
`determine a proper course of conduct in a proceeding for any situation not
`specifically covered by this part and may enter non-final order to administer the
`proceeding.”); 42.5(b) (“The Board may waive or suspend a requirement of parts 1,
`41, and 42 and may place conditions on the waiver or suspension.”). Allowing
`Patent Owner to file sur-replies in these proceedings is consistent with the Trial
`Practice Guide Update. During the call, Patent Owner represented that its sur-
`replies comply with the limits set forth in the Trial Practice Guide Update, namely,
`that the sur-replies only reply to arguments made in Petitioner’s Replies and are
`not accompanied by new evidence. See Trial Practice Guide Update, 14–15.
`Under the circumstances, we waive the prior authorization requirement in this
`instance.
`The Trial Practice Guide Update states that “[s]ur-replies, if authorized, are
`subject to the same word or page limits as the reply, unless the Board orders
`otherwise.” Trial Practice Guide Update, 6. Replies to patent owner responses are
`limited to 5,600 words. Id. Patent Owner’s sur-replies, however, exceed this
`5,600 word limit. See Paper 37, 29; Paper 36, 29. Accordingly, we directed Patent
`Owner to re-file its sur-replies, limiting each sur-reply to 5,600 words, no later
`than October 22, 2018.
`For the reasons set forth above, it is
`ORDERED that Petitioner’s request for authorization to file a motion to
`strike is denied;
`FURTHER ORDERED that the sur-replies filed by Patent Owner that
`exceed the word count limits (Paper 37, Paper 36) will be expunged; and
`FURTHER ORDERED that Patent Owner is authorized to re-file a sur-reply
`in each proceeding, limiting each sur-reply to 5,600 words, no later than
`October 22, 2018.
`
`
`
`3
`
`

`

`IPR2017-01902 (Patent 8,597,761 B2)
`IPR2017-01921 (Patent 9,320,372 B2)
`
`
`PETITIONER:
`
`Rudolph A. Telscher, Jr.
`Daisy Manning
`Kara R. Fussner
`Michael R. Annis
`HUSCH BLACKWELL LLP
`Ptab-rtelscher@huschblackwell.com
`Ptab-dmanning@huschblackwell.com
`kara.fussner@huschblackwell.com
`mike.annis@huschblackwell.com
`
`
`
`PATENT OWNER:
`
`David A. Mancino
`William F. Smith
`Kevin Flynn
`BAKER & HOSTETLER LLP
`dmancino@bakerlaw.com
`wsmith@bakerlaw.com
`kflynn@bakerlaw.com
`
`
`
`
`
`
`4
`
`