`Trials@uspto.gov
`571-272-7822 Entered: September 28, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`INTEL CORPORATION,
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`
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`Petitioner,
`
` v.
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`VLSI TECHNOLOGY LLC,
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`Patent Owner.
`____________
`
`Case IPR2018-01038
`Patent 8,566,836 B2
`____________
`
`
`
`
`
`Before BART A. GERSTENBLITH, MINN CHUNG, and
`KIMBERLY McGRAW, Administrative Patent Judges.
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`McGRAW, Administrative Patent Judge.
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`
`
`
`
`ORDER
`Conduct of the Proceedings
` 37 C.F.R. § 42.5
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`
`
`
`
`
`IPR2018-01038
`Patent 8,566,836 B2
`
`
`I.
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`INTRODUCTION
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`On September 26, 2018, Judges McGraw, Gerstenblith, and Chung
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`held a telephone conference call with counsel for Intel Corporation
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`(“Petitioner”) and counsel for VLSI Technology LLC (“Patent Owner”) to
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`address Petitioner’s request for authorization to file a reply brief to Patent
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`Owner’s Preliminary Response. Specifically, Petitioner seeks authorization
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`to file a reply to address assertions in Patent Owner’s Preliminary Response
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`that the Petition contains statements about the Finkelstein reference
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`(Ex. 1004) that are inconsistent with statements Petitioner made about
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`Finkelstein during prosecution of U.S. Patent Application No. 13/830,157
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`(“the ’157 application”).
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`Patent Owner opposes Petitioner’s request, arguing, inter alia, the
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`Petitioner was aware of the alleged inconsistent statements when it filed its
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`Petition and that Petitioner has not shown that such a reply would be
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`beneficial to the Board.
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`Having reviewed the record and considered the parties’ positions, we
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`are persuaded that Petitioner has shown good cause justifying the filing of a
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`reply. See 37 C.F.R. § 42.108(c). While Petitioner may have been aware of
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`statements made during the prosecution of the ’157 application, we disagree
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`that Petitioner should have foreseen the particular arguments made by Patent
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`Owner in its Preliminary Response. We also find that a reply responding to
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`Patent Owner’s Preliminary Response on this issue would be of assistance to
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`the panel. Accordingly, we grant Petitioner’s request for authorization to
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`file a reply limited to responding to Patent Owner’s argument that Petitioner
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`has taken a contrary position and made conflicting statements in its
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`2
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`IPR2018-01038
`Patent 8,566,836 B2
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`discussion of Finkelstein (Ex. 1004) between the Petition and the
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`prosecution history of the ’157 application.
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`II. ORDER
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`In consideration of the foregoing, it is hereby
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`ORDERED that Petitioner’s request for authorization to file a reply to
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`Patent Owner’s Preliminary Response is granted;
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`FURTHER ORDERED that the reply is limited to five pages and may
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`only address Patent Owner’s argument that Petitioner has taken a contrary
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`position and made conflicting statements in its discussion of Finkelstein
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`(Ex. 1004) between the Petition and the prosecution history of U.S. Patent
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`Application No. 13/830,157; and
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`FURTHER ORDERED that no sur-reply is authorized at this time.
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`3
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`IPR2018-01038
`Patent 8,566,836 B2
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`PETITIONER:
`
`Evelyn Mak
`Evelyn.mak@wilmerhale.com
`
`Donald Steinberg
`Don.steinberg@wilmerhale.com
`
`Dominic Massa
`Dominic.massa@wilmerhale.com
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`
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`PATENT OWNER:
`
`Kenneth Weatherwax
`weatherwax@lowensteinweatherwax.com
`
`Edward Hsieh
`hsieh@lowensteinweatherwax.com
`
`Parham Hendifar
`hendifar@lowensteinweatherwax.com
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`4
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