`571–272–7822
`
`
`
`
`Paper 9
`Entered: March 29, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`SPEAKWARE, INC.,
`Patent Owner.
`____________
`
`Case IPR2019-00340 (Patent 6,397,186 B1)
`Case IPR2019-00342 (Patent 6,397,186 B1)1
`_______________
`
`
`Before DEBRA K. STEPHENS, DAVID C. MCKONE, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`1 These cases have not been joined or consolidated. Rather, this Order
`governs each case based on common issues. The parties shall not employ
`this heading style.
`
`
`
`
`
`IPR2019-00340 (Patent 6,397,186 B1)
`IPR2019-00342 (Patent 6,397,186 B1)
`
`
`I.
`
`INTRODUCTION
`
`On March 26, 2019, Judges Stephens, McKone, and Weinschenk held
`
`a telephone conference call with counsel for Google LLC (“Petitioner”) and
`
`counsel for SpeakWare, Inc. (“Patent Owner”). This Order summarizes
`
`statements made during the conference call.
`
`II. ANALYSIS
`
`Petitioner requested authorization to file a reply to Patent Owner’s
`
`preliminary response in each of the above-listed proceedings. Specifically,
`
`Petitioner seeks to respond to Patent Owner’s arguments that the petitions
`
`attempt to circumvent the word count and that the petitions raise
`
`substantially the same prior art or arguments previously presented to the
`
`Office. Petitioner argued that good cause exists for the requested reply
`
`because 1) Petitioner could not have foreseen Patent Owner’s arguments; 2)
`
`the requested reply would promote fairness and efficiency; and 3) the
`
`requested reply would not prejudice Patent Owner. Patent Owner opposed
`
`Petitioner’s request. Patent Owner responded that Petitioner could have
`
`foreseen Patent Owner’s arguments and that fairness, efficiency, and
`
`prejudice are not part of the good cause analysis.
`
`After considering the positions of the parties, we authorized Petitioner
`
`to file a 7-page reply in each of the above-listed proceedings by April 2,
`
`2019. The scope of the reply is limited to addressing Patent Owner’s
`
`arguments that the petitions attempt to circumvent the word count and that
`
`the petitions raise substantially the same prior art or arguments previously
`
`presented to the Office. We also authorized Patent Owner to file a 7-page
`
`sur-reply in each of the above-listed proceedings by April 9, 2019. The
`
`scope of the sur-reply is limited to addressing Petitioner’s arguments in the
`
`2
`
`
`
`IPR2019-00340 (Patent 6,397,186 B1)
`IPR2019-00342 (Patent 6,397,186 B1)
`
`reply. The reply and sur-reply may cite to evidence already of record, but
`
`the parties may not submit any new evidence with the reply or sur-reply.
`
`III. ORDER
`
`It is hereby
`
`ORDERED that Petitioner’s request for authorization to file a reply to
`
`the preliminary response in each of the above-listed proceedings is granted;
`
`FURTHER ORDERED that Petitioner may file a 7-page reply to the
`
`preliminary response in each of the above-listed proceedings by April 2,
`
`2019, in accordance with the instructions above; and
`
`FURTHER ORDERED that Patent Owner may file a 7-page sur-reply
`
`to the reply in each of the above-listed proceedings by April 9, 2019, in
`
`accordance with the instructions above.
`
`
`
`
`
`3
`
`
`
`IPR2019-00340 (Patent 6,397,186 B1)
`IPR2019-00342 (Patent 6,397,186 B1)
`
`PETITIONER:
`
`Erika H. Arner
`Daniel C. Tucker
`Alexander M. Boyer
`Jency Mathew
`FINNEGAN, HENDERSON, FARABOW, GARRETT, & DUNNER LLP
`erika.arner@finnegan.com
`daniel.tucker@finnegan.com
`alexander.boyer@finnegan.com
`jency.mathew@finnegan.com
`
`
`
`PATENT OWNER:
`
`Sean A. Luner
`Simon Franzini
`DOVEL & LUNER, LLP
`sean@dovel.com
`simon@dovel.com
`
`
`4
`
`
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