`571-272-7822
`
`
`
`
`
`Paper 32
`Entered: November 21, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`HYTERA COMMUNICATIONS CORP. LTD.,
`Petitioner,
`
`v.
`
`MOTOROLA SOLUTIONS, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00128
`Patent 8,116,284 B2
`____________
`
`
`
`Before DANIEL N. FISHMAN and PATRICK M. BOUCHER,
`Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5(a)
`
`
`By email correspondence to the Board, the parties request clarification
`of certain issues related to this proceeding. First, the parties “have a dispute
`regarding whether Patent Owner is entitled to a sur-reply in this matter.” In
`
`
`
`IPR2018-00128
`Patent 8,116,284 B2
`
`accordance with the 2018 Revised Trial Practice Guide, 1 Patent Owner is
`hereby authorized to file a sur-reply, in lieu of a motion for observations on
`cross-examination, by Due Date 4, which the parties have modified by
`stipulation to be January 11, 2019. Paper 14. The sur-reply must comply
`with the provisions set forth in the Revised Trial Practice Guide,
`specifically:
`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. . . . [A] sur-reply may address the
`institution decision if necessary to respond to the petitioner’s
`reply.
`
`
`Trial Practice Guide Update, 14. The sur-reply is subject to the same word
`limit as the reply. Id. at 6; see 37 C.F.R. § 42.24(c)(1). The panel does not
`see a need for a conference call on this issue.
`Second, Patent Owner requests authorization to file a stipulated
`protective order that include terms negotiated between the parties regarding
`inspection of Patent Owner’s source code. Such authorization is granted.
`The parties should file a motion (as a paper) for entry of the stipulated
`protective order, accompanied by exhibits of a clean version of the stipulated
`protective order and a redline version showing deviations from the Board’s
`default protective order.
`
`
`1 The Trial Practice Guide Update is available at
`https://www.uspto.gov/sites/default/files/documents/2018_Revised_Trial_Pr
`actice_Guide.pdf
`
`
`2
`
`
`
`IPR2018-00128
`Patent 8,116,284 B2
`
`
`Third, we note, and hereby record for the record of this proceeding,
`that Patent Owner “inform[s] the Board that the initial source code
`inspection [discussed in Exhibit 2029] has taken place on October 15, 2018.”
`We also record Petitioner’s related assertion that “[it] reserves the right to
`further inspect the source code. Petitioner also maintains all evidentiary
`objections, including its objection under FRE 106, and reserves its right to
`move to exclude the evidence.”
`
`It is
`ORDERED that Patent Owner is authorized to file a sur-reply as
`specified above; and
`FURTHER ORDERED that the parties are authorized to file a motion
`for entry of their stipulated protective order as described above.
`
`
`
`3
`
`
`
`IPR2018-00128
`Patent 8,116,284 B2
`
`
`
`PETITIONER:
`
`Todd R. Tucker
`Mark W. McDougall
`Joshua A. Friedman
`Joshua M. Ryland
`Kyle T. Deighan
`Yizhou Liu
`CALFEE, HALTER & GRISWOLD LLP
`ipupdate@calfee.com
`ttucker@calfee.com
`mmcdougall@calfee.com
`jfriedman@calfee.com
`jryland@calfee.com
`kdeighan@calfee.com
`bliu@calfee.com
`
`PATENT OWNER:
`
`Jon R. Carter
`Eugene Goryunov
`Adam R. Alper
`Michael W. De Vries
`KIRKLAND & ELLIS LLP
`carterj@kirkland.com
`egoryunov@kirkland.com
`adam.alper@kirkland.com
`michael.devries@kirkland.com
`
`
`
`
`
`
`4
`
`
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