`Tel: 571-272-7822
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`Paper 48
`Entered: April 10, 2020
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`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.
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`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
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`
`IPR2018-00690
`Patent 6,314,289 B1
`
`
`On April 8, 2020, Petitioner contacted the Board by e-mail requesting
`authorization to file a motion to strike portions of Patent Owner’s Sur-Reply in this
`proceeding, because, according to Petitioner, Patent Owner’s Sur-Reply is
`accompanied by new evidence that was not previously submitted as evidence in
`this proceeding. In the same e-mail, Petitioner requested that the Board disregard
`Patent Owner’s Appendix to the Sur-Reply, which was filed on April 2, 2020, one
`day after the Sur-Reply due date of April 1, 2020.
`The panel does not authorize the requested 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 sur-reply submissions.
`The issue of whether the identified portions of the Sur-Reply are proper will
`be addressed, if necessary, in our Final Written Decision. Also, the issue of
`whether the Appendix to the Sur-Reply was timely filed will be addressed, if
`necessary, in our Final Written Decision. To the extent the panel determines that
`one or both of these issues warrant 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 these issues prior to the Final Written Decision or
`via formal briefing, should either party want a hearing on these issues, the parties
`may address these issues during oral argument.
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` 2
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`IPR2018-00690
`Patent 6,314,289 B1
`
`
`In view of the foregoing, it is hereby:
`ORDERED that Petitioner is not authorized to file a motion to strike.
`
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`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
`
` 3
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