`Tel: 571-272-7822
`
`
`
`
`Paper 39
`Entered: February 25, 2020
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`SIRIUS XM RADIO INC.,
`Petitioner,
`v.
`FRAUNHOFER-GESELLSCHAFT ZUR FORDERNUNG DER
`ANGEWANDTEN E.V.,
`Patent Owner.
`_______________
`
`Case IPR2018-00690
`Patent 6,314,289 B1
`_______________
`
`
`Before JEFFREY S. SMITH, STACEY G. WHITE, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`SMITH, Administrative Patent Judge.
`
`
`
`
`DECISION
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2018-00690
`Patent 6,314,289 B1
`
`
`On February 21, 2020, Patent Owner contacted the Board by e-mail
`requesting authorization to file a motion to strike Petitioner’s Reply in this
`proceeding, because, according to Patent Owner, Petitioner’s Reply includes
`improper arguments. Patent Owner also requested to increase the word count for
`its Sur-Reply to 8,000 words in order to address the allegedly improper arguments.
`The panel does not authorize the filing of a Motion to Strike. As explained
`in the Board’s Trial Practice Guide, “[i]n most cases, the Board is capable of
`identifying new issues or belatedly presented evidence when weighing the
`evidence at the close of trial, and disregarding any new issues or belatedly
`presented evidence that exceeds the proper scope of reply or sur-reply.” See
`Consolidated Trial Practice Guide 80 (November 2019), available at
`https://www.uspto.gov/TrialPracticeGuideConsolidated. The Trial Practice Guide
`instructs that “striking the entirety or a portion of a party’s brief is an exceptional
`remedy that the Board expects will be granted rarely.” Id. We decline at this time
`to exclude the reply submissions.
`The panel also does not authorize Patent Owner to increase the word count
`for its Sur-Reply to address the allegedly improper arguments. Instead, Patent
`Owner may file, as an appendix to its Sur-Reply, a list identifying, by page and
`line number, those arguments and evidence in the Reply that Patent Owner asserts
`go beyond the proper scope of a reply. Patent Owner’s list may not exceed three
`pages, and will not be included in the word count of the Sur-Reply. Patent
`Owner’s list shall not contain any argument.
`If such a list is filed, Petitioner may file a responsive list identifying, by page
`and line number, where each reply argument identified in Patent Owner’s list is
`supported by a theory of unpatentability expressed in the Petition and/or is
`responsive to an argument raised in the Patent Owner Response. Petitioner’s list
`
` 2
`
`
`
`
`
`
`
`IPR2018-00690
`Patent 6,314,289 B1
`
`may not exceed three pages, excluding the cover page, signature block, and
`certificate of service. Petitioner’s list must be filed within five business days of the
`filing of Patent Owner’s Sur-Reply. Petitioner’s list shall not contain any
`argument.
`The propriety or impropriety of the identified portions of the reply will be
`addressed, if necessary, in our Final Written Decision. To the extent the panel
`determines that any item identified by Patent Owner warrants additional briefing,
`an Order will be issued, providing such instruction to the parties.
`Furthermore, although at this time we do not deem it necessary to resolve
`this issue prior to the Final Written Decision or via formal briefing, should either
`party request a hearing, the parties may address this issue during oral argument.
`In view of the foregoing, it is hereby:
`ORDERED that Patent Owner is authorized to file, as an appendix to its Sur-
`Reply, a list identifying by page and line number each instance of improper
`argument or evidence submitted in Petitioner’s Reply, such list not to exceed three
`pages;
`FURTHER ORDERED that if Patent Owner files the above authorized
`appendix to its Sur-Reply then Petitioner is authorized to file, within five business
`days of the filing of Patent Owner’s Sur-Reply, a responsive list identifying, by
`page and line number, where each reply argument identified in Patent Owner’s list
`is supported by a theory of unpatentability expressed in the Petition and/or is
`responsive to an argument raised in the Patent Owner Response, such list not to
`exceed three pages; and
`FURTHER ORDERED that neither list shall contain any argument.
`
` 3
`
`
`
`
`
`
`
`
`
`
`
`IPR2018-00690
`Patent 6,314,289 B1
`
`For PETITIONER:
`
`Jonathan Caplan
`Shannon Hedvat
`Jeffrey Price
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`jcaplan@kramerlevin.com
`shedvat@kramerlevin.com
`jprice@kramerlevin.com
`
`
`
`
`For PATENT OWNER:
`
`Ben Yorks
`Babak Redjaian
`David McPhie
`Kamran Vakili
`IRELL & MANELLA LLP
`byorks@irell.com
`bredjaian@irell.com
`dmcphie@irell.com
`kvakili@irell.com
`
`
`
`
` 4
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
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.
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.
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
