`571-272-7822
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` Paper No. 8
` Entered August 3, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`R.J. REYNOLDS VAPOR COMPANY,
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`Petitioner.
`
`v.
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`FONTEM HOLDINGS 1 B.V.,
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`Patent Owner.
`
`______________
`
`Case IPR2018-00631 (Patent 9,339,062 B2)
`Case IPR2018-00632 (Patent 9,326,550 B2)
`Case IPR2018-00633 (Patent 9,326,551 B2)
`Case IPR2018-00634 (Patent 9,456,632 B2)1
` _____________
`
`Before GRACE KARAFFA OBERMANN, DONNA M. PRAISS,
`JO-ANNE M. KOKOSKI, KRISTINA M. KALAN, and KIMBERLY
`McGRAW, Administrative Patent Judges.
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`OBERMANN, Administrative Patent Judge.
`
`ORDER
`Denying Petitioner’s Request for Authorization to File a Reply
`37 C.F.R. § 42.23(a), § 42.100–108
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`1 This order addresses issues common to all cases; therefore, we issue a
`single order to be entered in each case. The parties are authorized to use this
`style heading when filing an identical paper in multiple proceedings,
`provided that such heading includes a footnote attesting that “the word-for-
`word identical paper is filed in each proceeding identified in the heading.”
`
`
`
`IPR2018-00631 (Patent 9,339,062 B2)
`IPR2018-00632 (Patent 9,326,550 B2)
`IPR2018-00633 (Patent 9,326,551 B2)
`IPR2018-00634 (Patent 9,456,632 B2)
`
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`By email dated July 26, 2018, Petitioner requested authorization to
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`file a Reply to the Preliminary Response in each proceeding. See Ex. 3001
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`(copy of email correspondence in IPR2018-006312). A telephone
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`conference was conducted on August 2, 2018, to discuss Petitioner’s request.
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`Judges Obermann, Praiss, Kokoski, Kalan, and McGraw, as well as
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`Mr. Mallin (counsel for Petitioner) and Mr. Hamilton (counsel for Patent
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`Owner), participated in the teleconference. Patent Owner retained a court
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`reporter and agreed to file a copy of the transcript of the call as an exhibit in
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`each proceeding. The transcript shall serve as the record of the call.
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`The parties shall refrain from submitting email correspondence to the
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`Board that includes inappropriate legal or factual arguments. The emails
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`submitted by Petitioner, in this instance, contain extensive attorney
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`argument, and include case law as an attachment, which goes to the merits of
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`the issues sought to be briefed. See, e.g., Ex. 3001 (copy of email
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`correspondence in IPR2018-00631). The emails go beyond the issue at
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`hand; that is, whether “good cause” exists for authorizing a Reply. Id.
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`Petitioner, in essence, submits an unauthorized brief in the form of an email,
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`effectively obviating our requirement that a party must seek prior Board
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`authorization for such a submission. Id. During the call, Petitioner agreed
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`to refrain from presenting improper argument in any future emails submitted
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`to the Board.
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`2 Similar emails were submitted in each proceeding. Ex. 3001 is
`representative.
`
`2
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`
`
`IPR2018-00631 (Patent 9,339,062 B2)
`IPR2018-00632 (Patent 9,326,550 B2)
`IPR2018-00633 (Patent 9,326,551 B2)
`IPR2018-00634 (Patent 9,456,632 B2)
`
`
`We pointed out that, pursuant to our rules, Petitioner is not authorized
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`to file a Reply as of right to the Preliminary Response. 37 C.F.R.
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`§§ 42.100–108 (providing for filing of a Petition and a Preliminary
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`Response, but no Reply, during the pre-institution stage of an inter partes
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`review). Petitioner averred that the Preliminary Response raises issues that
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`could not have been anticipated at the time of filing the Petition and, on that
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`basis, argued that “good cause” exists for granting the unusual remedy of
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`additional briefing at the preliminary stage of these proceedings.
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`Patent Owner, for its part, indicated that it does not oppose entry of
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`the text of the email into the record of each proceeding. Further, Patent
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`Owner twice confirmed that it would not seek an opportunity to present
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`counter briefing, in the event that the text of the email is entered into the
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`record. After conferring, the Board ruled that a copy of the email (Ex. 3001)
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`shall be entered as an exhibit in each proceeding.
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`In light the above facts and circumstances, Petitioner’s request to file
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`a Reply is denied.
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`It is
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`ORDERED that the parties shall refrain from including improper legal
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`or factual arguments in emails to the Board;
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`FURTHER ORDERED that a copy of the representative email
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`correspondence submitted in support of Petitioner’s request for authorization
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`to file a Reply in IPR2018-00631 shall be entered into the record of each
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`proceeding as Exhibit 3001;
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`3
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`
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`IPR2018-00631 (Patent 9,339,062 B2)
`IPR2018-00632 (Patent 9,326,550 B2)
`IPR2018-00633 (Patent 9,326,551 B2)
`IPR2018-00634 (Patent 9,456,632 B2)
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`FURTHER ORDERED that Petitioner’s request to file a Reply is
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`denied in each proceeding; and
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`FURTHER ORDERED that no additional briefing is authorized at this
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`time.
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`
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`PETITIONER:
`
`Ralph Gabric
`rgabric@brinksgilson.com
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`Robert Mallin
`rmallin@brinksgilson.com
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`Scott Timmerman
`stimmerman@brinksgilson.com
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`
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`PATENT OWNER:
`
`Michael Wise
`mwise@perkinscoie.com
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`Joseph Hamilton
`jhamilton@perkinscoie.com
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`Tyler Bowen
`tbowen@perkinscoie.com
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`4
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`