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Trials@uspto.gov Paper 24
`571-272-7822 Entered: April 18, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AGILENT TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`THERMO FISHER SCIENTIFIC INC. and
`THERMO FISHER SCIENTIFIC (BREMEN) GMBH,
`Patent Owner.
`____________
`
`Cases
` IPR2018-00297 (Patent RE45,553 E)
`IPR2018-00298 (Patent RE45,386 E)
` IPR2018-00299 (Patent 7,230,232 B2)
` IPR2018-00313 (Patent RE45,386 E)1
`____________
`
`Before MICHAEL R. ZECHER, JOHN F. HORVATH, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`GALLIGAN, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Denying Leave to File Replies to the Preliminary Responses
`37 C.F.R. § 42.108(c)
`
`
`
`
`1 This Order addresses an issue that is identical in all four cases. We,
`therefore, exercise our discretion to issue one Order to be filed in each case.
`The parties may not use this style heading unless authorized.
`
`
`
`
`
`

`

`IPR2018-00297 (Patent RE45,553 E) IPR2018-00298 (Patent RE45,386 E)
`IPR2018-00299 (Patent 7,230,232 B2) IPR2018-00313 (Patent RE45,386 E)
`
`
`On April 3, 2018, Petitioner contacted us via email to request a call to
`
`seek leave to file a Reply to Patent Owner’s Preliminary Response under 37
`
`C.F.R. § 42.108(c) in each of these proceedings. On April 9, 2018, we held
`
`a conference call with the parties to discuss Petitioner’s request. A transcript
`
`of the call has been entered as an exhibit in each proceeding. IPR2018-
`
`00297, Ex. 1041.2 We reiterate some of the discussion here, but we need not
`
`repeat all of the details because the complete discussion is reflected in the
`
`transcript.
`
`Petitioner explained that it seeks leave to file replies addressing Patent
`
`Owner’s arguments on two issues: (1) reasonable expectation of success in
`
`each proceeding; and (2) discretionary denial in Cases IPR2018-00297,
`
`IPR2018-00298, and IPR2018-00313. With respect to the first issue,
`
`Petitioner argued Patent Owner’s suggestion that an obviousness analysis
`
`must address reasonable expectation of success is legally incorrect, and
`
`Petitioner noted that at least one case cited by Patent Owner issued after the
`
`petitions were filed and, thus, could not have been addressed in the petitions.
`
`Ex. 1041, 6:6–9:7, 19:21–20:14. With respect to the second issue, Petitioner
`
`argued that § 325(d) “does not actually permit discretionary denial of IPRs”
`
`and, therefore, that it could not have anticipated Patent Owner’s arguments
`
`regarding § 325(d). Ex. 1041, 9:16–11:22. On the call, Petitioner also
`
`
`2 For purposes of expediency, we refer to the papers and exhibits filed in
`Case IPR2018-00297. The same papers were filed in Cases IPR2018-00298,
`IPR2018-0299, and IPR2018-00313.
`
`
`
`2
`
`

`

`IPR2018-00297 (Patent RE45,553 E) IPR2018-00298 (Patent RE45,386 E)
`IPR2018-00299 (Patent 7,230,232 B2) IPR2018-00313 (Patent RE45,386 E)
`
`addressed redundancy and the factors set forth in General Plastic3 regarding
`
`discretionary denial. Ex. 1041, 12:1–13:3.
`
`Patent Owner responded that Petitioner has not shown that good cause
`
`exists for a reply. Ex. 1041, 13:6–19:13. In particular, Patent Owner
`
`responded that, although Petitioner’s request shows that there is
`
`disagreement between the parties on various issues, such disagreement is
`
`“not the type of good cause under the regulations that warrants a Reply in
`
`IPR proceedings.” Ex. 1041, 13:6–14:10.
`
`Our Rules governing IPRs provide that “[a] petitioner may seek leave
`
`to file a reply to the preliminary response” but that “[a]ny such request must
`
`make a showing of good cause.” 37 C.F.R. § 42.108(c). Having reviewed
`
`the record and after considering the parties’ positions, we agree with Patent
`
`Owner that Petitioner has not shown that good cause exists for a reply under
`
`these circumstances. Petitioner’s arguments show there is disagreement
`
`between the parties, which is to be expected in adversarial proceedings.
`
`Good cause, however, requires more. We are aware of the legal standards
`
`for obviousness and we are fully capable of assessing Petitioner’s
`
`obviousness contentions to determine whether the threshold for institution
`
`has been satisfied without the need for further briefing. With respect to
`
`discretionary denial, the record adequately reflects Petitioner’s statutory
`
`interpretation of § 325(d) (Ex. 1041, 9:16–11:22), and we determine that no
`
`additional briefing is necessary or warranted on this issue or other issues
`
`regarding discretionary denial.
`
`
`3 Gen. Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha, Case IPR2016-
`01357, (PTAB Sept. 6, 2017) (Paper 19) (precedential). Section II.B.4.i. of
`General Plastic was designated precedential on October 18, 2017.
`
`
`
`3
`
`

`

`IPR2018-00297 (Patent RE45,553 E) IPR2018-00298 (Patent RE45,386 E)
`IPR2018-00299 (Patent 7,230,232 B2) IPR2018-00313 (Patent RE45,386 E)
`
`
`In consideration of the foregoing, it is
`
`ORDERED that Petitioner’s request for leave to file a Reply to Patent
`
`Owner’s Preliminary Response under 37 C.F.R. § 42.108(c) in each
`
`proceeding is denied.
`
`
`
`
`
`For PETITIONER:
`
`Brian Buroker
`bburoker@gibsondunn.com
`
`David Glandorf
`dglandorf@gibsondunn.com
`
`Anne Brody
`abrody@gibsondunn.com
`
`
`
`For PATENT OWNER:
`
`Adam Brausa
`abrausa@durietangri.com
`
`Matthew Becker
`mbecker@axinn.com
`
`David Ludwig
`dludwig@axinn.com
`
`Jeremy Lowe
`jlowe@axinn.com
`
`
`
`
`
`
`
`
`4
`
`

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