Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper 6
`Entered: November 6, 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.
`_______________
`
`Case IPR2019-01191
`Patent 8,606,917 B2
`_______________
`
`
`
`
`Before SALLY C. MEDLEY, AMBER L. HAGY, and
`MATTHEW J. McNEILL, Administrative Patent Judges.
`
`HAGY, Administrative Patent Judge.
`
`
`
`
`ORDER
`
`Granting Petitioner’s Request to File a Reply and
`Sua Sponte Granting Patent Owner Authorization to File a Sur-Reply
`37 C.F.R. §§ 42.5; 42.20(d)
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 6
`Entered: November 6, 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.
`_______________
`
`Case IPR2019-01191
`Patent 8,606,917 B2
`_______________
`
`
`
`
`Before SALLY C. MEDLEY, AMBER L. HAGY, and
`MATTHEW J. McNEILL, Administrative Patent Judges.
`
`HAGY, Administrative Patent Judge.
`
`
`
`
`ORDER
`
`Granting Petitioner’s Request to File a Reply and
`Sua Sponte Granting Patent Owner Authorization to File a Sur-Reply
`37 C.F.R. §§ 42.5; 42.20(d)
`
`
`
`Case IPR2019-01191
`Patent 8,606,917 B2
`
`On October 31, 2019, Petitioner requested authorization to file a reply
`to the Preliminary Response (Paper 5), for the purpose of addressing “Patent
`Owner’s newly raised arguments as to the priority date of the challenged
`claims and Patent Owner’s backup argument under 35 U.S.C. § 314(a).” See
`Ex. 3001 (email correspondence).1 Upon receiving Petitioner’s request, the
`Board scheduled a conference call with the parties.
`On November 5, 2019, Judges Hagy, Medley, and McNeill
`participated in a conference call with counsel for the parties. On the line for
`Petitioner was Jeffrey Lesovitz. On the line for Patent Owner was Doug
`Muehlhauser. No court reporter was present on the call.
`The panel requested the parties to first address the status of the
`following co-pending district court litigation: Nomadix, Inc. v. Guest Tek
`Interactive Entertainment Ltd., Case No. 2:16-CV-08033-AB-FFM, which is
`pending in the U.S. District Court for the Central District of California (“the
`Litigation”). Both parties have identified the Litigation as a “related matter”
`pursuant to 37 C.F.R. § 42.8. Paper 1, 3; Paper 3, 1. Counsel for both
`parties discussed the status of the Litigation on the call. Based on counsel’s
`statements, it appears the parties agree that the Litigation is an action for
`breach of a license agreement (but is not an action for infringement), is
`currently set for trial in April 2020, and involves, inter alia, Petitioner’s
`allegations of invalidity of the same claims of U.S. Patent No. 8,606,917
`(“the ’917 patent”) based on the same references as Petitioner has raised in
`
`
`1 Petitioner’s email contained substantial arguments. On the call, counsel
`was reminded that emails to the Board seeking leave for additional briefing
`are not themselves an opportunity for briefing, and such emails should be
`kept short and non-argumentative.
`
`2
`
`
`
`Case IPR2019-01191
`Patent 8,606,917 B2
`
`its Petition. It is apparent from the discussion during the call that the parties
`disagree, however, as to a number of relevant underlying facts, including
`whether the Litigation will actually be tried in April 2020 or will be
`rescheduled for a later date (as Petitioner represented it plans to seek as part
`of consolidation with another matter). The parties also disagree whether
`Petitioner’s invalidity defense will be part of the actual trial in the Litigation.
`Counsel for Petitioner then addressed its request for additional
`briefing on Patent Owner’s argument that the ’917 patent should be entitled
`to a priority date that would antedate the references asserted in two of
`Petitioner’s grounds for review. Counsel for Petitioner acknowledged that it
`had predicted and briefed in the Petition some of Patent Owner’s priority
`arguments. Petitioner noted, however, that it could not have predicted all of
`Patent Owner’s arguments for priority, as Patent Owner had not yet raised
`those arguments in the Litigation as of the filing date of the Petition.
`Petitioner then stated that it seeks additional briefing to respond to
`arguments and evidence presented by Patent Owner that Petitioner has not
`yet addressed. Counsel for Patent Owner stated that it opposes additional
`briefing, noting that Petitioner submitted with its Petition a declaration by an
`expert who has already studied the priority issue, and suggesting that
`Petitioner has therefore had sufficient opportunity to address this issue.
`Although Board rules do not specifically authorize a reply to a Patent
`Owner’s Preliminary Response, a Petitioner may seek leave to file such a
`reply, and any such request must make a showing of good cause. 37 C.F.R.
`§ 42.108(c). After hearing the parties’ arguments on these two issues and
`based on the totality of the circumstances presented, we are persuaded that
`permitting further briefing addressing (1) whether the Board should exercise
`
`3
`
`
`
`Case IPR2019-01191
`Patent 8,606,917 B2
`
`its discretion under 35 U.S.C. § 314(a) to deny institution in light of the
`Litigation, and (2) Patent Owner’s arguments as to the priority date of the
`’917 patent, is supported by good cause, will not unduly burden either party,
`and will not disturb the schedule in this proceeding. Further, we determine
`that permitting the briefing by both parties may facilitate the Board’s goal of
`securing the speedy, efficient, and fair resolution of the parties’ dispute.
`Accordingly, pursuant to our authority to “order briefing on any issue
`involved in the trial” (37 C.F.R. § 42.20(d)) and to “set times by order” (37
`C.F.R. § 42.5(c)), we authorize additional briefing as set forth below.
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner’s request for additional briefing is granted
`subject to the conditions and schedule set forth herein;
`FURTHER ORDERED that Petitioner is authorized to file a Reply
`Brief limited to addressing the arguments identified by Petitioner in
`Ex. 3001, and Petitioner is specifically requested to address the impact on
`this proceeding, if any, of the Board’s precedential decision in NHK Spring
`Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 (PTAB Sept. 12,
`2018);
`FURTHER ORDERED that Petitioner’s Reply Brief shall be limited
`to ten (10) pages and shall be filed no later than seven (7) calendar days
`from the date of entry of this Order;
`FURTHER ORDERED that Patent Owner is authorized to file a Sur-
`Reply Brief limited to addressing arguments raised in Petitioner’s Reply
`Brief;
`
`4
`
`
`
`Case IPR2019-01191
`Patent 8,606,917 B2
`
`FURTHER ORDERED that Patent Owner’s Sur-Reply Brief shall be
`limited to seven (7) pages and shall be filed no later than seven (7) calendar
`days after the filing of Petitioner’s Reply Brief; and
`FURTHER ORDERED that no other briefing is authorized at this
`
`time.
`
`
`PETITIONER:
`Jeffrey W. Lesovitz
`Steven J. Rocci
`Daniel J. Goettle
`BAKER & HOSTETLER LLP
`jlesovitz@bakerlaw.com
`srocci@bakerlaw.com
`dgoettle@bakerlaw.com
`
`PATENT OWNER:
`Douglas G. Muehlhauser
`William H. Shreve
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2dgm@knobbe.com
`2whs@knobbe.com
`
`5
`
`
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