`571-272-7822
`
`
`
`
`
`
` Paper 10
` Entered: January 25, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DYNAENERGETICS US, INC. and
`DYNAENERGETICS GMBH & CO. KG,
`Petitioner,
`
`v.
`
`GEODYNAMICS, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-02008
`Patent 8,220,394 B2
`____________
`
`
`Before BEVERLY M. BUNTING, TIMOTHY J. GOODSON, and
`ROBERT J. SILVERMAN, Administrative Patent Judges.
`
`SILVERMAN, Administrative Patent Judge.
`
`ORDER
`Denying Leave to File Reply to Preliminary Response
`37 C.F.R. §§ 42.5, 42.108(c)
`
`
`
`IPR2017-02008
`Patent 8,220,394 B2
`On January 23, 2018, a conference call was held between counsel for
`both parties and Judges Bunting, Goodson, and Silverman. The purpose of
`the call was to discuss Petitioner’s request for leave to file a reply brief to
`respond to certain aspects of Patent Owner’s Preliminary Response.
`Specifically, Petitioner contends that two arguments in the
`Preliminary Response unforeseeably contradict Patent Owner’s positions in
`other proceedings. First, Petitioner contends that the Preliminary Response
`at pages 22–24 relies upon purported evidence of advantageous and
`unexpected results submitted during the prosecution of the patent challenged
`in this proceeding (US 8,220,394 B2, hereinafter “the ’394 patent”), but that
`Patent Owner has elsewhere relied upon the same evidence to support the
`nonobviousness of a different patent (US 8,544,563 B2, hereinafter “the
`’563 patent,” which is the subject of pending IPR2016-01850) and to
`support the position that the ’563 patent is patentably distinct from the ’394
`patent. Second, Petitioner contends that the Preliminary Response at page
`47 relies upon purported evidence of secondary considerations of
`nonobviousness of the ’394 patent, but that Patent Owner has relied upon the
`same evidence, in other proceedings, to support the nonobviousness of the
`’563 patent and US 9,080,431 B2.
`In response, Patent Owner submits that in view of the evidence of
`record in the cited proceedings, it has not relied upon any of the evidence
`addressed in Petitioner’s request in this proceeding in an inconsistent
`manner, and that Petitioner knew of the identified evidence prior to filing the
`Petition.
`Pursuant to 37 C.F.R. § 42.108(c), a petitioner’s request for leave to
`file a reply to the preliminary response must be supported by a showing of
`good cause. Here, after considering the arguments presented during the
`
`2
`
`
`
`
`IPR2017-02008
`Patent 8,220,394 B2
`
`conference call, Petitioner has not demonstrated good cause for filing such a
`reply in this proceeding. The proposed evidence of unexpected results,
`identified by Petitioner, is part of the intrinsic record of the ’394 patent.
`Although the Preliminary Response presents the aforementioned proposed
`evidence of secondary considerations in new declarations, Petitioner
`indicates that it was previously aware of the substance thereof. Thus, the
`particular arguments in the Preliminary Response on which Petitioner bases
`its request for leave appear to raise issues that Petitioner could have
`anticipated in advance of filing the Petition.
`An additional consideration weighing against Petitioner’s request for
`additional briefing is its delay in seeking that relief. The Board has three
`months after the filing of a preliminary response to study the parties’
`submissions and render a decision on institution. See 35 U.S.C. § 314(b)(1);
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,757 (Aug. 14,
`2012). Patent Owner filed its Preliminary Response on December 13, 2017,
`and Petitioner sent its email request for a conference call to seek
`authorization for additional briefing more than a month later, on January 17,
`2018. In the present circumstances, we tend to agree with Patent Owner’s
`comment during the conference call that Petitioner could and should have
`acted with greater dispatch in seeking additional briefing.
`Therefore, Petitioner has not shown good cause for filing a reply to
`the Preliminary Response in advance of a Decision on Institution.
`Furthermore, should the Board institute trial in the instant matter, Petitioner
`will have the opportunity to investigate and address the issues discussed
`herein.
`
`
`
`
`3
`
`
`
`IPR2017-02008
`Patent 8,220,394 B2
`
`
`Accordingly, it is
`ORDERED that Petitioner’s request for leave to file a Reply to the
`Preliminary Response is denied.
`
`PETITIONER:
`
`Barry J. Herman
`Preston H. Heard
`WOMBLE CARLYLE SANDRIDGE & RICE LLP
`dyna394IPR@wcsr.com
`bherman@wcsr.com
`pheard@wcsr.com
`
`Lisa J. Moyles
`Jason M. Rockman
`MOYLES IP
`lmoyles@moylesip.com
`jrockman@moylesip.com
`
`PATENT OWNER:
`
`Theodore G. Baroody
`Shaukat Karjeker
`CARSTENS & CAHON LLP
`baroody@cclaw.com
`karjeker@cclaw.com
`
`Scott W. Hejny
`MCKOOL SMITH, P.C.
`shejny@mckoolsmith.com
`
`
`
`
`
`4
`
`
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