`571-272-7822
`
`
`
`
`Paper 34
`Entered: April 24, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NAVISTAR, INC.,
`Petitioner,
`
`v.
`
`FATIGUE FRACTURE TECHNOLOGY, LLC,
`Patent Owner.
`____________
`
`Case IPR2018-00853
`Patent 7,143,915 B2
`____________
`
`Before LINDA E. HORNER, BENJAMIN D. M. WOOD, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`HORNER, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`IPR2018-00853
`
`Patent 7,143,915 B2
`Petitioner Navistar, Inc. contacted the Board to request authorization
`to file a motion to strike portions of Patent Owner Fatigue Fracture
`Technology, LLC’s sur-reply and exhibits accompanying the sur-reply.
`Exhibit 3001. Petitioner asserts that portions of the sur-reply and the
`accompanying exhibits contain new, untimely arguments. We hereby
`authorize Petitioner to file a five-page motion to strike on or before May 2,
`2019. We further authorize Patent Owner to file a five-page opposition to
`the motion to strike on or before May 9, 2019.
`We direct the parties’ attention to the guidance provided in the Office
`Patent Trial Practice Guide, August 2018 Update. The Guide explains, “The
`sur-reply may not be accompanied by new evidence other than deposition
`transcripts of the cross-examination of any reply witness. Sur-replies should
`only respond to arguments made in reply briefs, comment on reply
`declaration testimony, or point to cross-examination testimony.” See Office
`Patent Trial Practice Guide, August 2018 Update, at 14 (August 13, 2018),
`available at https://go.usa.gov/xU7GP (“Guide Update”); see also 37 C.F.R.
`§ 42.23(b) (“[a] reply may only respond to arguments raised in the
`[preceding brief]”). The Guide Update explains that “‘respond,’ in the
`context of § 42.23(b), does not mean embark in a new direction with a new
`approach as compared to positions taken in a prior filing.” Id. at 15. A “sur-
`reply that raises a new issue or belatedly presents evidence may not be
`considered.” Id.
`In each motion to strike, Petitioner should identify by page and line
`numbers of the sur-reply or by exhibit number those portions of the sur-reply
`or accompanying exhibits Petitioner believes exceed the proper scope set
`forth in 37 C.F.R. § 42.23(b), identify exactly which arguments in those
`
`2
`
`
`
`
`
`
`IPR2018-00853
`
`Patent 7,143,915 B2
`identified portions the sur-reply and exhibits exceed the proper scope, and
`explain specifically why those arguments exceed the proper scope. Petitioner
`must also explain why their request to strike the entirety or a portion of
`Patent Owner’s sur-reply warrants such an exceptional remedy.
`Patent Owner may then file an opposition to the motion to strike in
`which Patent Owner responds to each item set forth by Petitioner, citing by
`paper or exhibit, page, and line number, to the issue the sur-reply argument
`is addressing.
`The parties are not permitted to submit any additional arguments
`regarding the patentability of the challenged claims in the motion to strike or
`the opposition and no additional evidence may be submitted. If we
`determine that any issue identified by Petitioner in its motion warrants
`additional briefing, we will issue an additional order providing instructions
`for such briefing. Absent such an order, no further briefing is authorized.
`That is, the parties shall not submit any proposed replies and sur-replies to
`the motion and opposition.
`It is hereby:
`ORDERED that Petitioner’s request for authorization to file a motion
`to strike is granted;
`FURTHER ORDERED that Petitioner may file a five-page motion to
`strike by May 2, 2019 in accordance with the instructions above;
`FURTHER ORDERED that Patent Owner may file a five-page
`opposition to the motion to strike by May 9, 2019 in accordance with the
`instructions above; and
`FURTHER ORDERED that no additional briefing is authorized.
`
`
`
`
`3
`
`
`
`
`
`
`
`
`IPR2018-00853
`Patent 7,143,915 B2
`For PETITIONER:
`
`Craig D. Leavell
`Richard M. Marsh, Jr
`Matthew M. Kamps
`FAEGRE BAKER DANIELS LLP
`craig.leavell@faegrebd.com
`matt.kamps@faegrebd.com
`richard.marsh@faegrebd.com
`
`For PATENT OWNER:
`
`Meredith Martin Addy
`Robert P. Hart
`ADDYHART P.C.
`meredith@addyhart.com
`robert@addyhart.com
`
`Sandeep Seth
`SETH LAW
`ss@sethlaw.com
`
`Corey S. Tumey
`Tumey L.L.P.
`ctumey@tumeyllp.com
`
`
`
`4
`
`
`
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