`571.272.7822
`
`
`Paper 7
`Entered: August 23, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`PUMA NORTH AMERICA, INC.,
`Petitioner,
`
`v.
`
`NIKE, INC.,
`Patent Owner.
`____________
`
`Case IPR2019-01042
`Patent 9,314,065 B2
`____________
`
`
`
`Before MITCHELL G. WEATHERLY, AMANDA F. WIEKER, and
`STEPHEN E. BELISLE, Administrative Patent Judges.
`
`WIEKER, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`IPR2019-01042
`Patent 9,314,065 B2
`
`
`Petitioner Puma North America, Inc. (“Petitioner”) filed a Petition
`
`requesting inter partes review of claims 1–6 of U.S. Patent No. 9,314,065
`
`B2 (“the ’065 patent”). Paper 1 (“Pet.”). Nike, Inc. (“Patent Owner”) filed a
`
`Preliminary Response. Paper 6 (“Prelim. Resp.”). In its Preliminary
`
`Response, Patent Owner argues, inter alia, that the Board should exercise its
`
`discretion to deny institution of inter partes review under 35 U.S.C. § 314(a)
`
`and 35 U.S.C. § 325(d). Prelim. Resp. 26–41.
`
`In this instance, the panel has determined that it would be helpful for
`
`the parties to provide additional briefing on the applicability of 35 U.S.C.
`
`§ 314(a) and 35 U.S.C. § 325(d) to this case. Accordingly, Petitioner is
`
`authorized to file a five-page Reply, responding to Patent Owner’s
`
`arguments regarding 35 U.S.C. § 314(a) and 35 U.S.C. § 325(d), as set forth
`
`in pages 26–41 of the Preliminary Response. If Petitioner elects to file a
`
`Reply, it shall be filed no later than 5:00 PM Eastern Time, one week from
`
`the date of this Order.
`
`In the event that Petitioner files a Reply, Patent Owner is authorized
`
`to file a five-page Sur-Reply, responding solely to Petitioner’s Reply
`
`arguments. If Patent Owner elects to file a Sur-Reply, it shall be filed no
`
`later than 5:00 PM Eastern Time, one week from the date of Petitioner’s
`
`Reply.
`
`No additional briefing is authorized. Any portion of this briefing that
`
`is not responsive to arguments made regarding 35 U.S.C. §§ 314(a), 325(d)
`
`will not be considered. Additionally, no new evidence is permitted, without
`
`prior authorization, which may be sought by email to the Board, no later
`
`than two business days prior to the paper’s filing.
`
`
`
`2
`
`
`
`IPR2019-01042
`Patent 9,314,065 B2
`
`
`ORDER
`
`Accordingly, in consideration of the foregoing, it is hereby:
`
`ORDERED that Petitioner is authorized to file a Reply of no more
`
`than five pages, addressing Patent Owner’s arguments regarding 35 U.S.C.
`
`§§ 314(a), 325(d);
`
`FURTHER ORDERED that Petitioner shall file any such Reply by
`
`5:00 PM Eastern Time, one week from the date of this Order;
`
`FURTHER ORDERED that, if Petitioner files a Reply, Patent Owner
`
`is authorized to file a Sur-Reply of no more than five pages in length,
`
`addressing Petitioner’s Reply arguments;
`
`FURTHER ORDERED that Patent Owner shall file any such Sur-
`
`Reply by 5:00 PM Eastern Time, one week from the date of the Reply; and
`
`FURTHER ORDERED that no additional briefing is authorized at this
`
`time.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`3
`
`
`
`IPR2019-01042
`Patent 9,314,065 B2
`
`PETITIONER:
`
`Vincent Rubino
`Timothy Rousseau
`Jacob Ostling
`Mark Leonardo
`Michael Vongaramvilai
`vrubino@brownrudnick.com
`trousseau@brownrudnick.com
`jostling@brownrudnick.com
`mleonardo@brownrudnick.com
`mvongaramvilai@brownrudnick.com
`
`
`
`
`
`PATENT OWNER:
`
`Christopher Renk
`Michael Harris
`Janice Mitrius
`Matthew Becker
`Kurt Riester
`Kevin Dam
`crenk@bannerwitcoff.com
`mharris@bannerwitcoff.com
`jmitrius@bannerwitcoff.com
`mbecker@bannerwitcoff.com
`kriester@bannerwitcoff.com
`kdam@bannerwitcoff.com
`
`
`
`
`
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`
`4
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`
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