`Entered: November 21, 2018
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TOMTOM, INC.,
`Petitioner,
`
`v.
`
`BLACKBIRD TECH, LLC d/b/a BLACKBIRD TECHNOLOGIES, LLC
`Patent Owner.
`____________
`
`Case IPR2017-02023
`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
`
`
`
`
`
`
`
`IPR2017-02023
`Patent 6,434,212 B2
`
`
`
`In an e-mail dated October 11, 2018, Patent Owner (Blackbird Tech,
`LLC) requested the Board authorize filing of a sur-reply in IPR2018-02023
`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 (TomTom, Inc.) opposed the filing of a sur-reply
`because Patent Owner had “not articulated any appropriate reason for
`authorizing a sur-reply.” Alternatively, Petitioner requested that if a sur-
`reply were authorized, the Board should set a word limit of no more than
`3,000 words.
`Patent Owner’s request is granted. As set forth in our e-mails of
`October 15 and 16, 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.
`
`
`
`1 Available at
`https://www.uspto.gov/sites/default/files/documents/2018_Revised_Trial_Pr
`actice_Guide.pdf.
`
`2
`
`
`
`IPR2017-02023
`Patent 6,434,212 B2
`
`
`
`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
`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 Patent Owner is authorized to file a sur-reply not to
`exceed ten pages, in place of observations.
`
`
`PETITIONER:
`Dipu A. Doshi
`Megan R. Wood
`Michael S. Marcus
`BLANK ROME LLP
`ddoshi@blankrome.com
`mwood@blankrome.com
`mmarcus@blankrome.com
`TomTom.Blackbird@blankrome.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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