`571-272-7822
`
`
`
`
`Paper: 25
`Entered: November 21, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FITBIT, INC.,
`Petitioner,
`
`v.
`
`BLACKBIRD TECH, LLC d/b/a BLACKBIRD TECHNOLOGIES, LLC
`Patent Owner.
`____________
`
`Case IPR2017-02012
`Patent 6,434,212 B2
`____________
`
`
`
`Before DEBRA K. STEPHENS, THOMAS L. GIANNETTI, and
`CHRISTA P. ZADO, Administrative Patent Judges.
`
`Per Curiam.
`
`
`ORDER
`Granting Patent Owner’s Request for Authorization to File Sur-Reply
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`IPR2017-02012
`Patent 6,434,212
`
`
`
`In an e-mail dated October 11, 2018, Patent Owner (Blackbird Tech,
`LLC) requested the Board authorize filing of a sur-reply in IPR2018-02012
`in conformance with the Trial Practice Guide Update, 83 Fed. Reg. 39,989
`(Aug. 13, 2018) (“Practice Guide”)1. In that same e-mail, Patent Owner set
`forth that Petitioner (FitBit, Inc.) opposed the filing of a sur-reply because
`Patent Owner had “failed to explain why it needed a Sur-Reply in this
`proceeding.” Alternatively, Petitioner requested that if a sur-reply were
`authorized, the Board should set a word limit of no more than 3,500 words.
`Patent Owner’s request is granted. As set forth in our e-mail of
`October 15, 2018, we authorized Patent Owner to file a sur-reply of no more
`than ten pages, in accordance with the Practice Guide. We additionally set
`forth that the sur-reply had to be filed by October 25, 2018. We further
`noted Patent Owner’s sur-reply should conform with the guidance in the
`Practice Guide and particularly, the portions that discuss the content of sur-
`replies including:
`The sur-reply may not be accompanied by new evidence other
`than deposition transcripts of the cross-examination of any reply
`witness. Sur-replies should only respond to arguments made in
`reply briefs, comment on reply declaration testimony, or point to
`cross-examination testimony. As noted above, a sur-reply may
`address the institution decision if necessary to respond to the
`petitioner’s reply.
`
`Generally, a reply or sur-reply may only respond to arguments
`raised in the preceding brief. 37 C.F.R. § 42.23, except as noted
`above. To the extent that a reply or sur-reply “responds” to the
`
`1 Available at
`https://www.uspto.gov/sites/default/files/documents/2018_Revised_Trial_Pr
`actice_Guide.pdf.
`
`2
`
`
`
`IPR2017-02012
`Patent 6,434,212
`
`
`
`institution decision as discussed above, “respond,” in the context
`of § 42.23(b), does not mean embark in a new direction with a
`new approach as compared to positions taken in a prior filing.
`
`(Practice Guide, 14–15).
`
`In consideration of the foregoing, it is hereby:
`ORDERED that, in each case, Patent Owner is authorized to file a sur-
`reply not to exceed ten pages, in place of observations.
`
`
`PETITIONER:
`Harper Batts
`Christopher Ponder
`SHEPPARD, MULLIN, RICHTER & HAMPTON, LLP
`hbatts@sheppardmullin.com
`cponder@sheppardmullin.com
`LegalTM-Fitbit-BB-IPRs@sheppardmullin.com
`
`
`PATENT OWNER:
`
`Walter D. Davis, Jr.
`Wayne M. Helge
`Aldo Noto
`DAVIDSON BERQUIST JACKSON & GOWDEY, LLP
`wdavis@dbjg.com
`whelge@dbjg.com
`anoto@dbjg.com
`
`
`
`
`
`
`3
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`