`571-272-7822 Entered: April 18, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`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.
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`
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`
`
`ORDER
`Denying Leave to File Replies to the Preliminary Responses
`37 C.F.R. § 42.108(c)
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`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.
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`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)
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`On April 3, 2018, Petitioner contacted us via email to request a call to
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`seek leave to file a Reply to Patent Owner’s Preliminary Response under 37
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`C.F.R. § 42.108(c) in each of these proceedings. On April 9, 2018, we held
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`a conference call with the parties to discuss Petitioner’s request. A transcript
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`of the call has been entered as an exhibit in each proceeding. IPR2018-
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`00297, Ex. 1041.2 We reiterate some of the discussion here, but we need not
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`repeat all of the details because the complete discussion is reflected in the
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`transcript.
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`Petitioner explained that it seeks leave to file replies addressing Patent
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`Owner’s arguments on two issues: (1) reasonable expectation of success in
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`each proceeding; and (2) discretionary denial in Cases IPR2018-00297,
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`IPR2018-00298, and IPR2018-00313. With respect to the first issue,
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`Petitioner argued Patent Owner’s suggestion that an obviousness analysis
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`must address reasonable expectation of success is legally incorrect, and
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`Petitioner noted that at least one case cited by Patent Owner issued after the
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`petitions were filed and, thus, could not have been addressed in the petitions.
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`Ex. 1041, 6:6–9:7, 19:21–20:14. With respect to the second issue, Petitioner
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`argued that § 325(d) “does not actually permit discretionary denial of IPRs”
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`and, therefore, that it could not have anticipated Patent Owner’s arguments
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`regarding § 325(d). Ex. 1041, 9:16–11:22. On the call, Petitioner also
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`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.
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`2
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`
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`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)
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`addressed redundancy and the factors set forth in General Plastic3 regarding
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`discretionary denial. Ex. 1041, 12:1–13:3.
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`Patent Owner responded that Petitioner has not shown that good cause
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`exists for a reply. Ex. 1041, 13:6–19:13. In particular, Patent Owner
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`responded that, although Petitioner’s request shows that there is
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`disagreement between the parties on various issues, such disagreement is
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`“not the type of good cause under the regulations that warrants a Reply in
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`IPR proceedings.” Ex. 1041, 13:6–14:10.
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`Our Rules governing IPRs provide that “[a] petitioner may seek leave
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`to file a reply to the preliminary response” but that “[a]ny such request must
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`make a showing of good cause.” 37 C.F.R. § 42.108(c). Having reviewed
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`the record and after considering the parties’ positions, we agree with Patent
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`Owner that Petitioner has not shown that good cause exists for a reply under
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`these circumstances. Petitioner’s arguments show there is disagreement
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`between the parties, which is to be expected in adversarial proceedings.
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`Good cause, however, requires more. We are aware of the legal standards
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`for obviousness and we are fully capable of assessing Petitioner’s
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`obviousness contentions to determine whether the threshold for institution
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`has been satisfied without the need for further briefing. With respect to
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`discretionary denial, the record adequately reflects Petitioner’s statutory
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`interpretation of § 325(d) (Ex. 1041, 9:16–11:22), and we determine that no
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`additional briefing is necessary or warranted on this issue or other issues
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`regarding discretionary denial.
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`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.
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`3
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`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)
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`In consideration of the foregoing, it is
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`ORDERED that Petitioner’s request for leave to file a Reply to Patent
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`Owner’s Preliminary Response under 37 C.F.R. § 42.108(c) in each
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`proceeding is denied.
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`For PETITIONER:
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`Brian Buroker
`bburoker@gibsondunn.com
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`David Glandorf
`dglandorf@gibsondunn.com
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`Anne Brody
`abrody@gibsondunn.com
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`
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`For PATENT OWNER:
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`Adam Brausa
`abrausa@durietangri.com
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`Matthew Becker
`mbecker@axinn.com
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`David Ludwig
`dludwig@axinn.com
`
`Jeremy Lowe
`jlowe@axinn.com
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`4
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