Paper No. 9
`Trials@uspto.gov
`571-272-7822 Entered: July 10, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GUEST TEK INTERACTIVE ENTERTAINMENT LTD.,
`Petitioner,
`
`v.
`
`NOMADIX, INC.,
`Patent Owner.
`____________
`
`IPR2019-00211
`(Patent 7,953,857 B2)
`IPR2019-00253
`(Patent 8,626,922 B2)1
`____________
`
`
`
`1 This Order addresses the same issues in the inter partes reviews listed
`above. Therefore, we issue one Order to be filed in both cases. The parties,
`however, are not authorized to use this style of filing in subsequent papers.
`
`
`
`Before SALLY C. MEDLEY, DANIEL J. GALLIGAN, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`Trials@uspto.gov
`571-272-7822 Entered: July 10, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GUEST TEK INTERACTIVE ENTERTAINMENT LTD.,
`Petitioner,
`
`v.
`
`NOMADIX, INC.,
`Patent Owner.
`____________
`
`IPR2019-00211
`(Patent 7,953,857 B2)
`IPR2019-00253
`(Patent 8,626,922 B2)1
`____________
`
`
`
`1 This Order addresses the same issues in the inter partes reviews listed
`above. Therefore, we issue one Order to be filed in both cases. The parties,
`however, are not authorized to use this style of filing in subsequent papers.
`
`
`
`Before SALLY C. MEDLEY, DANIEL J. GALLIGAN, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`IPR2019-00211 (Patent 7,953,857 B2)
`IPR2019-00253 (Patent 8,626,922 B2)
`
`
`On July 10, 2019, a conference call was held involving counsel for the
`respective parties and Judges Medley, Galligan, and Melvin. The purpose of
`the conference call was to discuss (1) Patent Owner’s opposed request to
`extend DUE DATES 1–3, and (2) Petitioner’s opposed request to file a
`motion to submit supplemental information pursuant to 37 C.F.R.
`§ 42.123(a)(1).
`
`Adjustment of Dates
`
`Per the Scheduling Order, the parties may stipulate different dates for
`
`at least DUE DATES 1–3. IPR2019-00211, Paper 7, 6; IPR2019-00253,
`Paper 7, 6. During the conference call, Patent Owner represented that Patent
`Owner will not file a Motion to Amend in either proceeding. As such, the
`parties ultimately stipulated to different dates for DUE DATES 1 and 2. The
`new DUE DATES for 1 and 2 are appended to this Order and supersede
`previous DUE DATES 1 and 2. The panel appreciates the parties’
`cooperation in stipulating to new DUE DATES 1 and 2.
`
`Supplemental Information
`
`Petitioner requests leave to file a motion to submit supplemental
`
`information (a supplemental affidavit from Gerard Grenier) pursuant to 37
`C.F.R. § 42.123(a)(1) in response to objections filed by Patent Owner.
`Ex. 3001. As explained during the call, the proper course of curing an
`evidentiary objection is to serve supplemental evidence. See 37 C.F.R.
`§ 42.64(b)(2). Petitioner represented that it has served supplemental
`evidence. Nonetheless, Petitioner maintains that in case Patent Owner
`includes substantive arguments in its Patent Owner Response regarding the
`sufficiency of evidence (e.g., Ex. 1012 (Declaration of Gerard Grenier)) to
`
`2
`
`
`
`IPR2019-00211 (Patent 7,953,857 B2)
`IPR2019-00253 (Patent 8,626,922 B2)
`
`show that Rupp is prior art, Petitioner would like to file the supplemental
`affidavit from Gerard Grenier now. Patent Owner opposes the request,
`arguing that the supplemental evidence should have been filed with the
`Petition. In essence, Patent Owner opposes the submission of the
`supplemental evidence at any stage of these proceedings, as it would be
`prejudicial to Patent Owner.
`As we explained during the call, Petitioner will have opportunity to
`respond to Patent Owner’s Response in its Petitioner Reply and may file
`evidence in support of such arguments. Petitioner may also file the
`supplemental evidence to the extent necessary if Patent Owner files a motion
`to exclude. Based on the facts before us, Petitioner may introduce the
`evidence in the ordinary course of the proceedings without filing a separate
`motion to submit supplemental information and all that that entails (a Patent
`Owner opposition to the motion and a Petitioner reply to the motion). See
`37 C.F.R. § 42.1(b).
`We disagree with Patent Owner that the filing of such evidence in
`connection with Petitioner’s Reply to Patent Owner’s Response or to any
`Opposition to a Patent Owner Motion to Exclude would be prejudicial to
`Patent Owner. Patent Owner already has the supplemental affidavit of
`Gerard Grenier. Therefore, Patent Owner may cross-examine Mr. Grenier
`on his testimony prior to filing its Patent Owner Response. To the extent
`Patent Owner is of the impression that Mr. Grenier’s supplemental affidavit
`fails to cure the objections Patent Owner made, Patent Owner may file a
`motion to exclude such evidence. Patent Owner, therefore, will have many
`opportunities to address the veracity of Mr. Grenier’s testimony and will be
`provided due process. See Hamilton Beach Brands, Inc. v. F’real Foods,
`
`3
`
`
`
`IPR2019-00211 (Patent 7,953,857 B2)
`IPR2019-00253 (Patent 8,626,922 B2)
`
`LLC, 908 F.3d 1328, 1339 (Fed. Cir. 2018) (distinguishing SAS because the
`party asserting the APA violation “had notice of the contested claim
`construction issues and an opportunity to be heard”).
`It is
`ORDERED that new DUE DATES 1 and 2 are appended to this Order
`and shall replace previous DUE DATES 1 and 2; and
`FURTHER ORDERED that Petitioner’s request to file a motion to
`submit supplemental information is dismissed as moot.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`4
`
`
`
`IPR2019-00211 (Patent 7,953,857 B2)
`IPR2019-00253 (Patent 8,626,922 B2)
`
`
`DUE DATE APPENDIX
`
`DUE DATE 1 .................................................................... September 6, 2019
`Patent Owner’s response to the petition2
`
`DUE DATE 2 .................................................................. November 19, 2019
`Petitioner’s reply to Patent Owner’s response to petition
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`2 As represented by Patent Owner, it will not file a Motion to Amend.
`Accordingly, DUE DATES 1 and 2 reflect Patent Owner’s representation
`such that we have removed reference to the filing of a Motion to Amend.
`5
`
`
`
`IPR2019-00211 (Patent 7,953,857 B2)
`IPR2019-00253 (Patent 8,626,922 B2)
`
`
`For PETITIONER:
`Jeffrey W. Lesovitz
`Steven J. Rocci
`Daniel J. Goettle
`BAKER & HOSTETLER LLP
`jlesovitz@bakerlaw.com
`srocci@bakerlaw.com
`dgoettle@bakerlaw.com
`
`For PATENT OWNER:
`Douglas G. Muehlhauser
`William H. Shreve
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2dgm@knobbe.com
`2whs@knobbe.com
`BoxNomadix@knobbe.com
`
`
`6
`
`
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