throbber
Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
` Paper No. 8
` Entered August 3, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`R.J. REYNOLDS VAPOR COMPANY,
`
`Petitioner.
`
`v.
`
`FONTEM HOLDINGS 1 B.V.,
`
`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.
`
`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
`
`
`
`
`
`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)
`
`
`By email dated July 26, 2018, Petitioner requested authorization to
`
`file a Reply to the Preliminary Response in each proceeding. See Ex. 3001
`
`(copy of email correspondence in IPR2018-006312). A telephone
`
`conference was conducted on August 2, 2018, to discuss Petitioner’s request.
`
`Judges Obermann, Praiss, Kokoski, Kalan, and McGraw, as well as
`
`Mr. Mallin (counsel for Petitioner) and Mr. Hamilton (counsel for Patent
`
`Owner), participated in the teleconference. Patent Owner retained a court
`
`reporter and agreed to file a copy of the transcript of the call as an exhibit in
`
`each proceeding. The transcript shall serve as the record of the call.
`
`The parties shall refrain from submitting email correspondence to the
`
`Board that includes inappropriate legal or factual arguments. The emails
`
`submitted by Petitioner, in this instance, contain extensive attorney
`
`argument, and include case law as an attachment, which goes to the merits of
`
`the issues sought to be briefed. See, e.g., Ex. 3001 (copy of email
`
`correspondence in IPR2018-00631). The emails go beyond the issue at
`
`hand; that is, whether “good cause” exists for authorizing a Reply. Id.
`
`Petitioner, in essence, submits an unauthorized brief in the form of an email,
`
`effectively obviating our requirement that a party must seek prior Board
`
`authorization for such a submission. Id. During the call, Petitioner agreed
`
`to refrain from presenting improper argument in any future emails submitted
`
`to the Board.
`
`
`
`2 Similar emails were submitted in each proceeding. Ex. 3001 is
`representative.
`
`2
`
`

`

`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
`
`to file a Reply as of right to the Preliminary Response. 37 C.F.R.
`
`§§ 42.100–108 (providing for filing of a Petition and a Preliminary
`
`Response, but no Reply, during the pre-institution stage of an inter partes
`
`review). Petitioner averred that the Preliminary Response raises issues that
`
`could not have been anticipated at the time of filing the Petition and, on that
`
`basis, argued that “good cause” exists for granting the unusual remedy of
`
`additional briefing at the preliminary stage of these proceedings.
`
`Patent Owner, for its part, indicated that it does not oppose entry of
`
`the text of the email into the record of each proceeding. Further, Patent
`
`Owner twice confirmed that it would not seek an opportunity to present
`
`counter briefing, in the event that the text of the email is entered into the
`
`record. After conferring, the Board ruled that a copy of the email (Ex. 3001)
`
`shall be entered as an exhibit in each proceeding.
`
`In light the above facts and circumstances, Petitioner’s request to file
`
`a Reply is denied.
`
`
`
`
`
`It is
`
`ORDERED that the parties shall refrain from including improper legal
`
`or factual arguments in emails to the Board;
`
`FURTHER ORDERED that a copy of the representative email
`
`correspondence submitted in support of Petitioner’s request for authorization
`
`to file a Reply in IPR2018-00631 shall be entered into the record of each
`
`proceeding as Exhibit 3001;
`
`3
`
`

`

`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)
`
`
`FURTHER ORDERED that Petitioner’s request to file a Reply is
`
`denied in each proceeding; and
`
`FURTHER ORDERED that no additional briefing is authorized at this
`
`time.
`
`
`
`
`
`PETITIONER:
`
`Ralph Gabric
`rgabric@brinksgilson.com
`
`Robert Mallin
`rmallin@brinksgilson.com
`
`Scott Timmerman
`stimmerman@brinksgilson.com
`
`
`
`PATENT OWNER:
`
`Michael Wise
`mwise@perkinscoie.com
`
`Joseph Hamilton
`jhamilton@perkinscoie.com
`
`Tyler Bowen
`tbowen@perkinscoie.com
`
`
`
`
`
`
`4
`
`

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket