throbber
Trials@uspto.gov
`571-272-7822
`
`
`Paper 10
` Entered: April 19, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC., LG ELECTRONICS INC.,
`SAMSUNG ELECTRONICS CO., LTD., and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`
` Case IPR2019-00222 (Patent 7,167,487 B2)1
`Case IPR2019-00252 (Patent 7,167,487 B2)
`
`
`
`Before ROBERT J. WEINSCHENK, JOHN F. HORVATH, and
`SEAN P. O’HANLON, Administrative Patent Judges.
`
`HORVATH, Administrative Patent Judge.
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`1 This Order applies to each of the listed cases. We exercise our discretion
`to issue one Order to be docketed in each case. The parties, however, are
`not authorized to use this caption for any subsequent papers absent prior
`authorization from the Board.
`
`

`

`IPR2019-00222 (Patent 7,167,487 B2)
`IPR2019-00252 (Patent 7,167,487 B2)
`
`
`On April 17, 2019, a conference call was conducted among counsel
`for Petitioner (Roberto Devoto and Karl Renner), counsel for Patent Owner
`(Brett Mangrum) and Judges Weinschenk, Horvath, and O’Hanlon. The
`purpose of the call was to address Petitioner’s request to file a Reply to the
`Preliminary Response to the Petition filed in each of these proceedings.
`Our rules permit a petitioner to request a reply to a preliminary
`response, however, the request must make a showing of good cause. 37
`C.F.R. § 42.108(c). During the conference call, Petitioner argued good
`cause exists to file a Reply to the Preliminary Response in each proceeding
`for two reasons.
`First, Petitioner argued the cases cited in each Preliminary Response
`in support of Patent Owner’s argument that Petitioner has failed to establish
`the public availability of the 3GPP R2-010182 document are non-
`precedential, distinguishable, and less relevant than the case cited in each
`Petition in support of Petitioner’s argument that the R2-010182 document
`was publically available at the time of the claimed invention. Thus,
`Petitioner seeks leave to file a Reply setting forth a legal analysis that
`distinguishes the cases cited in the Preliminary Response regarding the
`sufficiency of Petitioner’s showing of public availability.
`Patent Owner countered that mere disagreement with the legal
`analysis set forth in each Preliminary Response does not amount to good
`cause to file a Reply because it is a core function of the Board to assess the
`evidence of record, and to apply the law to the facts in evidence. See Forty
`Seven, Inc. v. Stichting Sanquin Bloedvoorziening, Case IPR2016-01529,
`Paper 8, slip op. at 2 (PTAB, Dec. 9, 2016) (“Assessment of the evidence of
`record, and application of the law to the facts of the case are core functions
`
`
`
`2
`
`

`

`IPR2019-00222 (Patent 7,167,487 B2)
`IPR2019-00252 (Patent 7,167,487 B2)
`
`of the Board, and not unique to this dispute.”); see also Unified Patents, Inc.
`v. Uniloc Luxembourg S.A., Case IPR2017-02148, Paper 8, slip op. at 3
`(PTAB, Mar. 14, 2018) (same).
`We agree with Patent Owner. Mere disagreement with Patent
`Owner’s interpretation of certain cases on the sufficiency of the evidence
`needed to show the public availability of a reference does not demonstrate
`good cause to file a Reply to the Preliminary Response in each of these
`proceedings. See Forty Seven Inc, Paper 8 at 2; Unified Patents, Paper 8 at
`3.
`Second, Petitioner argued that each Preliminary Response construed
`
`the term “a minimum bit rate criteria applicable for the respective logic
`channel” to require a “differential minimum bit rate criteria applicable to the
`respective logic channel,” and this construction was not reasonably
`foreseeable because it is incompatible with the patent’s intrinsic record.
`Patent Owner countered that mere disagreement with the claim
`constructions set forth in each Preliminary Response does not amount to
`good cause to file a Reply because it was reasonably foreseeable that each
`Preliminary Response would construe the challenged claims in a manner that
`distinguished them over the prior art relied upon in each Petition.
`We agree with Patent Owner. Petitioner had an opportunity, when it
`filed each Petition, to propose how the challenged claims should be
`construed and how the prior art reads on the challenged claims when they
`are so construed. See 37 CFR § 42.104(3). It was reasonably foreseeable at
`the time each Petition was filed that Patent Owner would file a Preliminary
`Response that offered alternative claim constructions in support of
`
`
`
`3
`
`

`

`IPR2019-00222 (Patent 7,167,487 B2)
`IPR2019-00252 (Patent 7,167,487 B2)
`
`arguments that the prior art does not read on the challenged claims when
`they are construed under those alternative constructions.
`Accordingly, for the reasons discussed above, Petitioner has failed to
`show good cause exists for filing a Reply to the Preliminary Response to the
`Petition in each of these proceedings.
`
`ORDER
`It is: ORDERED that Petitioner’s request to file a Reply to Patent Owner’s
`Preliminary Response is denied.
`
`
`
`
`
`
`
`
`4
`
`

`

`IPR2019-00222 (Patent 7,167,487 B2)
`IPR2019-00252 (Patent 7,167,487 B2)
`
`PETITIONER:
`
`W. Karl Renner
`Roberto J. Devoto
`Jeremy J. Monaldo
`Ayan RoyChowdhury
`Fish & Richardson P.C
`axf-ptab@fr.com
`devoto@fr.com
`monaldo@fr.com
`IPR39521-0061IP1@fr.com
`
`
`PATENT OWNER:
`Ryan Loveless
`Brett Mangrum
`James Etheridge
`Jeffrey Huang
`Etheridge Law Group
`ryan@etheridgelaw.com
`brett@etheridgelaw.com
`jim@etheridgelaw.com
`jeff@etheridgelaw.com
`
`
`
`
`
`
`
`5
`
`

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