`571-272-7822
`
`Paper 8
` Entered: January 30, 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 IPR2018-01478
`Patent 6,760,590 B2
`____________
`
`
`
`Before THU A. DANG, BARBARA A. BENOIT, and J. JOHN LEE,
`Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`IPR2018-01478
`Patent 6,760,590 B2
`
`
`Apple Inc. and ZTE (USA) Inc. (collectively, “Petitioner”) filed a
`petition (Paper 1) seeking inter partes review of claims 1–8 of U.S. Patent
`No. 6,760,590 B2. Patent Owner, INVT SPE LLC, filed a Preliminary
`Response (Paper 7) on November 29, 2018.
`On Saturday, January 26, 2019, Petitioner contacted the Board by
`e-mail (Ex. 3001) to request authorization to file a reply to Patent Owner’s
`argument that institution should be denied for efficiency reasons because the
`challenged patent is at issue in a parallel investigation before the
`International Trade Commission (“ITC”). Petitioner correctly noted that the
`Board had granted Petitioner’s similar request in IPR2018-01474 and
`IPR2018-01477, authorizing Petitioner to file a five page reply and Patent
`Owner to file a five page sur-reply in each proceeding. Petitioner requests
`the same here. Petitioner also represented that Patent Owner had not
`responded to Petitioner’s January 21 and January 24 inquiries regarding
`Patent Owner’s position on this request.
`The timing of Petitioner’s request is problematic. Petitioner made its
`request two months after Patent Owner filed its Preliminary Response
`(November 29, 2018) and only one month before the non-extendable
`statutory deadline for issuing a decision whether to institute an inter partes
`review (February 28, 2019). In many situations, such timing alone may
`dictate denial of a petitioner’s request for additional briefing.
`Here, we recognize that the requested briefing has been completed by
`both parties in other concurrent proceedings—IPR2018-01474 (as of
`January 23, 2019) and IPR2018-01477 (as of January 23, 2019). Allowing
`the parties to brief the identical issue here may facilitate the Board’s ability
`to maintain consistency in addressing this identical issue across these
`
`2
`
`
`
`IPR2018-01478
`Patent 6,760,590 B2
`
`proceedings, each of which is to be decided separately on its own record.
`This factor is not dispositive, however.
`Critically important here is the ability of the panel to consider the
`authorized briefing requested by Petitioner at such a late point during this
`preliminary proceeding to decide whether to institute inter partes review.
`Despite the problematic timing of Petitioner’s request, in view of the
`particular facts and circumstances of this case, we have determined that we
`would be able to consider the requested reply and sur-reply, but only if
`briefing is completed and filed on an expedited basis.
`Accordingly, we authorize Petitioner to file a reply to Patent Owner’s
`Preliminary Response limited to addressing Patent Owner’s argument in
`Section VII that institution should be denied for efficiency reasons because
`the challenged patent is at issue in a parallel investigation before the ITC
`(Paper 7, 52–54). Petitioner’s reply is limited to five (5) pages and to be
`filed no later than Friday, February 1, 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, February 6, 2019. Patent Owner’s sur-reply
`is limited to five (5) pages.
`It is so ORDERED.
`
`
`3
`
`
`
`IPR2018-01478
`Patent 6,760,590 B2
`
`
`FOR PETITIONERS:
`Adam P. Seitz
`Paul R. Hart
`ERISE IP, P.A.
`Adam.Seitz@eriseip.com
`Paul.Hart@eriseip.com
`
`Bing Ai
`Vinay P. Sathe
`Babak Tehranchi
`Kevin J. Patariu
`John P. Schnurer
`PERKINS COIE LLP
`Ai-ptab@perkinscoie.com
`VSathe@perkinscoie.com
`BTehranchi@perkinscoie.com
`KPatariu@perkinscoie.com
`JSchnurer@perkinscoie.com
`
`FOR PATENT OWNER:
`Cyrus A. Morton
`Bryan J. Vogel
`Derrick J. Carman
`Stephanie A. Diehl
`Li Zhu
`ROBINS KAPLAN LLP
`CMorton@RobinsKaplan.com
`BVogel@RobinsKaplan.com
`DCarman@RobinsKaplan.com
`SDiehl@RobinsKaplan.com
`LZhu@RobinsKaplan.com
`
`4
`
`
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