`Tel: 571-272-7822
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`Paper 29
`Entered: April 24, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`EXOCAD GMBH AND EXOCAD AMERICA, INC.,
`Petitioner,
`v.
`3SHAPE A/S,
`Patent Owner.
`
`Case IPR2018-00788
`Patent 9,336,336 B2
`
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`
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`Before SALLY C. MEDLEY, IRVIN E. BRANCH, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`BRANCH, Administrative Patent Judge.
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`ORDER
` Conduct of the Proceeding
`37 C.F.R. § 42.5
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`
`
`Case IPR2018-00788
`Patent 9,336,336 B2
`
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`On April 18, 2019, the Board received an email message from Patent
`Owner’s counsel requesting a conference call and an authorization to file a
`motion to strike portions of Petitioners’ Reply and of Exhibit 1023, Second
`Declaration of Joseph L. Mundy, Ph.D. A telephone conference to discuss
`Patent Owner’s request was held on April 23, 2019, among counsel for
`Patent Owner, counsel for Petitioner, and Judges Branch, Ippolito, and
`Medley.
`On the call, Patent Owner asserted that Petitioner’s Reply to Patent
`Owner’s Response contains new theories or arguments that were not
`presented in the Petition, and thus are improperly raised for the first time in
`Petitioners’ Reply. Patent Owner sought authorization to file a Motion to
`Strike sections IV.D.3. and IV.A.1. of Petitioners’ Reply and sections VI.C.
`and III.A. of Exhibit 1023.
`Petitioner opposed the request.
`After consideration of the parties’ arguments, we granted Patent
`Owner’s request to file a motion to strike and authorized Petitioner to file an
`opposition to Patent Owner’s motion. Patent Owner’s motion and
`Petitioner’s opposition shall be limited to seven (7) pages each. Patent
`Owner’s motion shall be filed no later than May 7, 2019, and Petitioner’s
`opposition shall be filed no later than May 21, 2019.
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`ORDER
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`Accordingly, it is
`ORDERED that Patent Owner’s request for authorization to file a
`motion to strike is granted;
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`2
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`Case IPR2018-00788
`Patent 9,336,336 B2
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`FURTHER ORDERED that Patent Owner shall file its motion,
`limited to seven (7) pages, no later than May 7, 2019;
`FURTHER ORDERED that Petitioner shall file its opposition, limited
`to seven (7) pages, no later than May 21, 2018; and
`FURTHER ORDERED that no reply by Patent Owner is authorized at
`this time.
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`3
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`Case IPR2018-00788
`Patent 9,336,336 B2
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`PETITIONER:
`
`Matthew B. Lowrie
`Christopher J. McKenne
`FOLEY & LARDNER LLP
`mlowrie@foley.com
`cmckenna@foley.com
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`PATENT OWNER:
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`Todd R. Walters
`Roger H. Lee
`BUCHANAN INGERSOLL & ROONEY PC
`todd.walters@bipc.com
`roger.lee@bipc.com
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`4
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