Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper 10
`Entered: September 6, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`QUEST USA CORP.,
`Petitioner,
`
`v.
`
`POPSOCKETS LLC,
`Patent Owner.
`____________
`
`Case IPR2019-01067
`Patent 9,958,107 B1
`____________
`
`
`Before JESSICA C. KAISER and STACY B. MARGOLIES,
`Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 10
`Entered: September 6, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`QUEST USA CORP.,
`Petitioner,
`
`v.
`
`POPSOCKETS LLC,
`Patent Owner.
`____________
`
`Case IPR2019-01067
`Patent 9,958,107 B1
`____________
`
`
`Before JESSICA C. KAISER and STACY B. MARGOLIES,
`Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`IPR2019-01067
`Patent 9,958,107 B1
`
`
`
`A conference call in the above proceeding was held on September 5,
`2019, among respective counsel for Petitioner and Patent Owner, and Judges
`Kaiser and Margolies.1 The call was requested by Petitioner to seek leave to
`file a reply to Patent Owner’s Preliminary Response (Paper 8, “Prelim.
`Resp.”) to address three issues: (1) Patent Owner’s proposed constructions
`of “lock” and “secure,” (2) Patent Owner’s argument that the Board should
`exercise its discretion to deny institution under 35 U.S.C. 325(d), and (3)
`Patent Owner’s argument that the preamble of the challenged claims is not
`limiting. Ex. 3001. Petitioner contends it could not reasonably have
`anticipated the need to address these issues in its Petition, and therefore has
`good cause for the requested reply. Patent Owner opposed Petitioner’s
`request, arguing that Petitioner could have reasonably anticipated the need to
`address these issues in the Petition. We took the matter under advisement.
`Upon further consideration and review of the materials cited by the
`parties, we determine that Petitioner has demonstrated good cause for a reply
`on the first issue, but not on the other two. See 37 C.F.R. § 42.108(c). We
`address each issue in turn.
`First, Petitioner seeks to address in its reply Patent Owner’s proposed
`constructions of the claim terms “lock” and “secure.” Ex. 3001. In the
`Petition (Paper 2, “Pet.”), Petitioner stated that the parties have fully briefed
`claim construction issues in a co-pending litigation, but that a hearing in the
`co-pending litigation was not scheduled until after the Petition was filed.
`
`
`1 A court reporter, retained by Petitioner, was present on the call. Petitioner
`agreed to file the transcript of the call as an exhibit in this proceeding once
`the transcript is available.
`
`2
`
`
`
`IPR2019-01067
`Patent 9,958,107 B1
`
`
`Pet. 23. Petitioner requested “that the plain and ordinary meaning be applied
`to all terms for the purposes of inter partes review.” Id. Petitioner also
`proposed constructions of four claim terms based on positions Patent Owner
`had taken in the co-pending litigation. Id. at 23–25 (citing Exs. 1016, 1017,
`1018, 1019). The briefs from the co-pending litigation on which Petitioner
`relied here addressed only the four terms for which Petitioner proposed
`explicit constructions in the Petition, and did not address explicit
`constructions for “lock” and “secure.” See Exs. 1016, 1017, 1018, 1019.
`In its Preliminary Response, Patent Owner proposed explicit
`constructions for “lock” and “secure,” in addition to addressing the four
`terms Petitioner raised in the Petition. Prelim. Resp. 7–11. In support of its
`proposed constructions of “lock” and “secure,” Patent Owner relies on the
`specification of the challenged patent as well as a dictionary definition of
`“secure.” Id. at 11 (citing Exs. 1001, 2007). Patent Owner did not point to
`prior positions in the co-pending litigation or other information suggesting
`that Petitioner should have been aware that Patent Owner would raise the
`construction of these terms in the Preliminary Response. See id.
`Taking into account the arguments of the parties as well as the
`evidence of record, we determine Petitioner has shown good cause for us to
`authorize Petitioner to file a reply on the constructions of the terms “lock”
`and “secure.” Petitioner’s argument and evidence in its reply shall be
`limited to those in support of Petitioner’s proposed constructions of those
`terms as well as counter-arguments to Patent Owner’s proposed
`constructions. Petitioner may not present new argument or evidence in
`support of its unpatentability grounds in its reply. In other words,
`
`3
`
`
`
`IPR2019-01067
`Patent 9,958,107 B1
`
`
`Petitioner’s reply on the constructions of “lock” and “secure” is not an
`opportunity to supplement the unpatentability grounds in the Petition, but
`rather an opportunity to explain further the “plain and ordinary meaning” of
`those terms as advocated in the Petition. See Pet. 23.
`Second, we determine there is not good cause to authorize a reply as
`to Patent Owner’s § 325(d) argument. Specifically, the prosecution history
`of the challenged patent is in the record (Ex. 1002). At this stage of the
`proceeding, we are able to determine whether Patent Owner has properly
`characterized the prior art and arguments that were previously before the
`Office and whether we should exercise our discretion under § 325(d) without
`further briefing by the parties.
`Finally, on the issue of the preamble, Petitioner asserts it “wishes to
`note in the preliminary reply that it agrees the preamble may be treated as
`non-limiting for the purpose of inter partes review and the term ‘expandable
`socket’ does not require construction by the Board.” Ex. 3001. We
`determine no briefing is necessary for a claim construction issue that is not
`in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999) (holding that “only those terms need be construed that
`are in controversy, and only to the extent necessary to resolve the
`controversy”).
`For the reasons discussed above, Petitioner’s request is granted-in-part
`and denied-in-part. During the conference call, Petitioner requested that if
`the authorized reply was confined to the claim construction issues, the reply
`be due within two weeks and be limited to ten pages. Patent Owner
`requested the same amount of time and pages for a sur-reply.
`
`4
`
`
`
`IPR2019-01067
`Patent 9,958,107 B1
`
`
`
`
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner’s request to file a reply to Patent Owner’s
`Preliminary Response is granted-in-part and denied-in-part;
`FURTHER ORDERED that Petitioner’s reply shall be limited to
`Petitioner’s proposed constructions of the claim terms “lock” and “secure,”
`shall be filed no later than September 20, 2019, and shall not exceed ten
`pages; and
`FURTHER ORDERED that Patent Owner is authorized to file a sur-
`reply limited to the scope of Petitioner’s reply, no later than October 4,
`2019, and not to exceed ten pages.
`
`
`
`5
`
`
`
`IPR2019-01067
`Patent 9,958,107 B1
`
`
`PETITIONER:
`Steven M. Auvil
`Bryan J. Jaketic
`SQUIRE PATTON BOGGS (US) LLP
`steven.auvil@squirepb.com
`bryan.jaketic@squirepb.com
`
`PATENT OWNER:
`Michael R. Fleming
`Kamran Vakili
`IRELL & MANELLA LLP
`mfleming@irell.com
`kvakili@irell.com
`
`
`
`6
`
`
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