`571-272-7822
`
` Paper 8
` Entered: January 9, 2019
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC. AND ZTE (USA) INC.,
`Petitioners,
`v.
`INVT SPE LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01474
`Patent 7,206,587 B2
`____________
`
`
`
`Before THU A. DANG, KEVIN F. TURNER, and BARBARA A. BENOIT,
`Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`IPR2018-01474
`Patent 7,206,587 B2
`
`
`Apple Inc. and ZTE (USA) Inc. (collectively, “Petitioner”) filed a
`petition (Paper 3) seeking inter partes review of claims 3 and 4 of U.S.
`Patent No. 7,206,587 B2 (“the ’587 patent”). Patent Owner, INVT SPE
`LLC, filed a Preliminary Response (Paper 7) on December 13, 2018.
`On January 4, 2019, Petitioner contacted the Board to request
`authorization to file a five-page reply to Patent Owner’s argument that
`institution should be denied for efficiency reasons because the challenged
`patents are at issue in a parallel investigation before the International Trade
`Commission (“ITC”). Petitioner represented that Patent Owner opposed
`Petitioner’s request unless Patent Owner would be permitted a sur-reply.
`We authorize Petitioner to file a reply to Patent Owner’s Preliminary
`Response limited to addressing Patent Owner’s argument in Section IX that
`institution should be denied for efficiency reasons because the challenged
`patents are at issue in a parallel investigation before the ITC (Paper 7, 49–
`51). Petitioner’s reply is limited to five (5) pages and is to be filed no later
`than Wednesday, January 16, 2019. No new evidence is permitted to be
`filed with Petitioner’s reply. Patent Owner is authorized to file a sur-reply
`no later than Wednesday, January 23, 2019, and is also limited to five (5)
`pages.
`The parties may wish to address differences in remedies available in
`each forum and differences in claim construction standards applied in the
`
`2
`
`
`
`IPR2018-01474
`Patent 7,206,587 B2
`
`proceedings in each forum.1 The parties also may wish to address with
`particularity the extent that issues—such as the prior art and statutory basis
`for unpatentability or invalidity asserted in each proceeding and claim
`constructions proposed by the parties in each case—overlap in the two
`proceedings.
`It is so ORDERED.
`
`
`1 The Petition was filed on August 21, 2018. Paper 6 (Notice of Filing Date
`Accorded). See Changes to the Claim Construction Standard for Interpreting
`Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83
`Fed. Reg. 51,340 (Oct. 11, 2018)(final rule) (“This rule is effective on
`November 13, 2018 and applies to all IPR, PGR and CBM petitions filed on
`or after the effective date.”).
`
`3
`
`
`
`IPR2018-01474
`Patent 7,206,587 B2
`
`FOR PETITIONERS:
`Adam P. Seitz
`Adam.Seitz@eriseip.com
`
`Paul R. Hart
`Paul.Hart@eriseip.com
`
`Bing Ai
`Ai-ptab@perkinscoie.com
`
`Vinay P. Sathe
`VSathe@perkinscoie.com
`
`Babak Tehranchi
`BTehranchi@perkinscoie.com
`
`Kevin J. Patariu
`KPatariu@perkinscoie.com
`
`John P. Schnurer
`JSchnurer@perkinscoie.com
`
`FOR PATENT OWNER:
`Cyrus A. Morton
`CMorton@RobinsKaplan.com
`
`Bryan J. Vogel
`BVogel@RobinsKaplan.com
`
`Derrick J. Carman
`DCarman@RobinsKaplan.com
`
`Stephanie A. Diehl
`SDiehl@RobinsKaplan.com
`
`Christopher A. Seidl
`CSeidl@RobinsKaplan.com
`
`4
`
`
`
`IPR2018-01474
`Patent 7,206,587 B2
`
`
`John K. Harting
`JHarting@RobinsKaplan.com
`
`Shui Li
`SLi@RobinsKaplan.com
`
`Mary Pheng
`MPheng@RobinsKaplan.com
`
`Li Zhu
`LZhu@RobinsKaplan.com
`
`5
`
`
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