Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 39
`Entered: January 9, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`COOLER MASTER CO., LTD.,
`Petitioner,
`
`v.
`
`AAVID THERMALLOY LLC,
`Patent Owner.
`____________
`
`Cases IPR2019-00144 and IPR2019-00337 (Patent 7,066,240 B2);
`Case IPR2019-00146 (Patent 7,100,679 B2);
`Cases IPR2019-00334 and IPR2019-00338 (Patent 7,100,680 B2)1
`____________
`
`Before LINDA E. HORNER, KEN B. BARRETT, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`HORNER, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5(a)
`
`
`
`
`
`
`
`1 This Decision will be entered in each case. The parties are not authorized
`to use this caption style.
`
`
`571-272-7822
`
`
`
`
`Paper 39
`Entered: January 9, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`COOLER MASTER CO., LTD.,
`Petitioner,
`
`v.
`
`AAVID THERMALLOY LLC,
`Patent Owner.
`____________
`
`Cases IPR2019-00144 and IPR2019-00337 (Patent 7,066,240 B2);
`Case IPR2019-00146 (Patent 7,100,679 B2);
`Cases IPR2019-00334 and IPR2019-00338 (Patent 7,100,680 B2)1
`____________
`
`Before LINDA E. HORNER, KEN B. BARRETT, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`HORNER, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5(a)
`
`
`
`
`
`
`
`1 This Decision will be entered in each case. The parties are not authorized
`to use this caption style.
`
`
`
`
`
`Cases IPR2019-00144 and IPR2019-00337 (Patent 7,066,240 B2)
`Case IPR2019-00146 (Patent 7,100,679 B2)
`Cases IPR2019-00334 and IPR2019-00338 (Patent 7,100,680 B2)
`
`Patent Owner Aavid Thermalloy LLC filed a Patent Owner Response
`
`on September 13, 2019 in each of the above-identified inter partes review
`proceedings. Petitioner Cooler Master, Inc. filed a Reply to Patent Owner’s
`Response on December 13, 2019. Patent Owner’s Sur-Reply in each
`proceeding is due January 24, 2020.
`After filing of Petitioner’s Reply, Patent Owner contacted the Board
`to request a conference call to discuss the scope of Petitioner’s Reply.
`Patent Owner believes that Petitioner’s Reply includes new evidence and
`argument beyond the scope of a proper reply, and requested a call with the
`panel to seek authorization to file a listing identifying by page and line
`number each instance of improper argument or evidence submitted in reply,
`or alternatively, authorization to file a motion to strike. The panel held a call
`with the parties’ counsel on January 8, 2020.
`
`During the call, Patent Owner explained that Petitioner’s Reply
`included a submission of over 1,300 pages of argument and new evidence,
`including three new declarations. Patent Owner argued that some of the
`argument and evidence presented in the Reply is new and should have been
`presented in the Petition. Patent Owner asserted that due to the volume of
`the filing, Patent Owner should not be required to use the limited space in its
`Sur-Reply to present information about the improper scope of the Reply.
`
`Petitioner contested Patent Owner’s assertion that the Reply went
`beyond the scope of a proper reply. Petitioner asserted that the arguments
`and evidence presented in the Reply are directly responsive to arguments
`raised in Patent Owner’s Response. Petitioner requested that should the
`Board authorize Patent Owner to submit a filing to address the scope of the
`
`2
`
`
`
`
`
`
`Cases IPR2019-00144 and IPR2019-00337 (Patent 7,066,240 B2)
`Case IPR2019-00146 (Patent 7,100,679 B2)
`Cases IPR2019-00334 and IPR2019-00338 (Patent 7,100,680 B2)
`
`Reply, then Petitioner should be authorized to submit a commensurate
`responsive filing.
`
`Having considered the parties’ respective arguments, and due to the
`voluminous nature of the documents associated with Petitioner’s Reply, the
`panel feels that it would be helpful to have Patent Owner identify, by page
`and line number, in a listing accompanying its Sur-Reply, those arguments
`and evidence in the Reply that Patent Owner asserts go beyond the proper
`scope of a reply. The panel also feels that it would be helpful to receive a
`responsive filing from Petitioner identifying the arguments made in Patent
`Owner’s Response, to which the portions of the Reply identified in Patent
`Owner’s listing respond.
`
`The panel does not authorize the filing of a Motion to Strike. Patent
`Owner indicated that although it preferred authorization for a Motion to
`Strike, it also would be amenable to filing the above-described listing. As
`explained in the Board’s Trial Practice Guide, “[i]n most cases, the Board is
`capable of identifying new issues or belatedly presented evidence when
`weighing the evidence at the close of trial, and disregarding any new issues
`or belatedly presented evidence that exceeds the proper scope of reply or
`sur-reply.” See Consolidated Trial Practice Guide 80 (November 2019),
`available at https://www.uspto.gov/TrialPracticeGuideConsolidated. The
`Trial Practice Guide instructs that “striking the entirety or a portion of a
`party’s brief is an exceptional remedy that the Board expects will be granted
`rarely.” Id. In this case, the panel does not discern, nor did Patent Owner
`present arguments during the call with the Board sufficient to show, that
`Patent Owner, in having to respond to the arguments and evidence raised in
`
`3
`
`
`
`
`
`
`Cases IPR2019-00144 and IPR2019-00337 (Patent 7,066,240 B2)
`Case IPR2019-00146 (Patent 7,100,679 B2)
`Cases IPR2019-00334 and IPR2019-00338 (Patent 7,100,680 B2)
`
`the Petitioner’s Reply, will suffer prejudice so great as to warrant the filing
`of a Motion to Strike.
`
`In consideration of the foregoing, it is hereby
`ORDERED that Patent Owner is authorized to file, as an appendix to
`its Sur-Reply, a listing identifying by page and line number each instance of
`improper argument or evidence submitted in Petitioner’s Reply, such listing
`not to exceed three pages; and
`FURTHER ORDERED that Petitioner is authorized to file, within
`three business days of the filing of Patent Owner’s Sur-Reply, a responsive
`listing identifying by page and line number the portion of the Patent
`Owner’s Response, to which each instance identified in Patent Owner’s
`listing responds, such responsive listing not to exceed three pages; and
`FURTHER ORDERED that the listings shall not contain any
`argument.
`
`
`
`
`
`
`
`
`4
`
`
`
`
`
`
`Cases IPR2019-00144 and IPR2019-00337 (Patent 7,066,240 B2)
`Case IPR2019-00146 (Patent 7,100,679 B2)
`Cases IPR2019-00334 and IPR2019-00338 (Patent 7,100,680 B2)
`
`For PETITIONER:
`
`Erik B. Milch
`Andrew C. Mace
`Reuben Chen
`COOLEY LLP
`emilch@cooley.com
`cm-aavid@cooley.com
`zpatdcdocketing@cooley.com
`amace@cooley.com
`rchen@cooley.com
`
`Kyle Chen
`Heath J. Briggs
`GREENBERG TRAURIG, LLP
`kchen@gtlaw.com
`briggsh@gtlaw.com
`
`For PATENT OWNER:
`
`Kenneth M. Albridge, III
`Kevin P. Moran
`Brian J. N. Marstall
`J. Donald Best
`MICHAEL BEST & FRIEDRICH LLP
`kmalbridge@michaelbest.com
`kpmoran@michaelbest.com
`bjmarstall@michaelbest.com
`jdbest@michaelbest.com
`
`
`5
`
`
`
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