Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 9
`Date: January 13, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BLOOMREACH, INC.,
`Petitioner,
`
`v.
`
`GUADA TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`IPR2019-01304
`Patent 7,231,379
`____________
`
`
`Before MIRIAM L. QUINN, KIMBERLY McGRAW, and
`MATTHEW J. McNEILL, Administrative Patent Judges.
`
`McNEILL, Administrative Patent Judge.
`
`
`
`
`ORDER
`Denying Petitioner’s Request for Rehearing of Decision Denying Leave to
`File Reply to Patent Owner’s Preliminary Response
`37 C.F.R. § 42.71
`On November 4, 2019, the Board received an email from Petitioner
`requesting authorization to file a reply to Patent Owner’s Preliminary
`Response (Paper 6, “Prelim. Resp.”). Petitioner requested authorization to
`respond to Patent Owner’s proposed constructions and related arguments
`regarding the phrases “jumping to the at least one node,” “jumping to the
`vertex,” and “jumping.” Patent Owner opposed Petitioner’s request.
`
`
`Tel: 571-272-7822
`
`Paper 9
`Date: January 13, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BLOOMREACH, INC.,
`Petitioner,
`
`v.
`
`GUADA TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`IPR2019-01304
`Patent 7,231,379
`____________
`
`
`Before MIRIAM L. QUINN, KIMBERLY McGRAW, and
`MATTHEW J. McNEILL, Administrative Patent Judges.
`
`McNEILL, Administrative Patent Judge.
`
`
`
`
`ORDER
`Denying Petitioner’s Request for Rehearing of Decision Denying Leave to
`File Reply to Patent Owner’s Preliminary Response
`37 C.F.R. § 42.71
`On November 4, 2019, the Board received an email from Petitioner
`requesting authorization to file a reply to Patent Owner’s Preliminary
`Response (Paper 6, “Prelim. Resp.”). Petitioner requested authorization to
`respond to Patent Owner’s proposed constructions and related arguments
`regarding the phrases “jumping to the at least one node,” “jumping to the
`vertex,” and “jumping.” Patent Owner opposed Petitioner’s request.
`
`
`
`IPR2019-01304
`Patent 7,231,379
`
`
`On November 18, 2019, Judges McNeill, McGraw, and Quinn
`initiated a scheduled telephonic conference to discuss Petitioner’s request.
`Isaac Rabicoff, counsel for Patent Owner, was present. Petitioner failed to
`attend.
`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). In a November 25, 2019 Order (the “Order”), the Board denied
`Petitioner’s request, finding that Petitioner had failed to show good cause
`based on the totality of the circumstances.
`Petitioner filed a Request for Rehearing (Paper 8, “Request”), arguing
`that good cause exists for leave to file a Reply.
`Petitioner argues that in the Preliminary Response, Patent Owner
`proposed new constructions for the terms “jumping to the node” and
`“jumping to the vertex” and falsely represented that Petitioner had adopted
`these proposed constructions. Request 2. Petitioner argues that absent a
`reply, Petitioner will suffer prejudice from a one-sided record reflecting
`Patent Owner’s proposed constructions and false representations without an
`opportunity to reply. Id. According to Petitioner, it was unforeseeable that
`Patent Owner would propose constructions for “jumping to the node” and
`“jumping to the vertex.” Id. at 3. Petitioner also argues that it was
`unforeseeable that Patent Owner would falsely represent that Petitioner
`agreed to these constructions. Id. at 4.
`Petitioner also argues that Patent Owner’s proposed constructions are
`incorrect because Patent Owner’s constructions are nonsensical, unsupported
`
`2
`
`
`
`IPR2019-01304
`Patent 7,231,379
`
`by the intrinsic record, and contradicted by Patent Owner’s district court
`infringement positions. Id. at 4.
`Under 37 C.F.R. § 42.71(d), a party dissatisfied with a decision may
`file a request for rehearing. The request “must specifically identify all
`matters the party believes the Board misapprehended or overlooked, and the
`place where each matter was previously addressed in a motion, an
`opposition, or a reply.” Id.
`Petitioner has not persuaded us that we misapprehended or overlooked
`any argument or evidence showing good cause for leave for Petitioner to file
`a Reply. As an initial matter, Petitioner has not identified any argument or
`evidence that was overlooked or misapprehended in the Order.
`However, even considering Petitioner’s arguments in the Request in
`favor of leave for a reply brief, we are not persuaded that Petitioner has
`shown good cause. Petitioner’s argument that it was unforeseeable that
`Patent Owner would propose construing “jumping to the [at least one
`node/vertex]” is unpersuasive because Petitioner was on notice of Patent
`Owner’s claim construction position regarding these claim terms. In
`particular, as noted in the Order, Petitioner proposed a construction for the
`term “jumping” in the Petition (Paper 1, “Pet.”), citing Patent Owner’s
`Opposition to Defendant’s Motion to Dismiss in related District Court
`litigation. Pet. 14‒15 (citing Ex. 1003 at 18). Petitioner did not propose
`explicit constructions for “jumping to the at least one node” or “jumping to
`the vertex.” See Pet. 10‒15. But Petitioner was aware of Patent Owner’s
`positions regarding the constructions of “jumping to the [at least one
`node/vertex]” because Patent Owner proposed construing these terms in the
`
`3
`
`
`
`IPR2019-01304
`Patent 7,231,379
`
`same Opposition that Petitioner cited, and indeed on the same page of that
`Opposition. See Ex. 1003 at 18.
`Petitioner also argues that absent a reply, the record is left “one-
`sided,” resulting in prejudice to Petitioner. Request 2. We disagree. In Patent
`Owner’s Preliminary Response, Patent Owner proposed construing
`“jumping to the [at least one node/vertex]” to mean “the system jumping to
`the [at least one node/vertex].” Id. Patent Owner stated that “[p]resumably,
`[Petitioner] thereby also adopts the construction of ‘Jumping to the At Least
`One Node’ and ‘Jumping to the Vertex.’” Id. However, Patent Owner
`provides no analysis or explanation in the Preliminary Response why the
`Board should adopt Patent Owner’s proposed construction of the term
`“jumping to the [at least one node/vertex]” beyond its presumption that
`Petitioner agrees with its construction. See Prelim. Resp. 2 n.1.
`Patent Owner’s proposed construction regarding Petitioner’s claim
`construction position does not create a “one-sided record” resulting in
`prejudice to Petitioner because Patent Owner presented no arguments to
`which Petitioner needs additional briefing for a response. Patent Owner’s
`presumption that Petitioner agrees with its proposed claim construction is at
`odds with Petitioner’s analysis in the Petition, which implicitly construed
`“jumping to the [at least one node/vertex]” to not require “the system”
`limitation proposed by Patent Owner. See, e.g., Pet. 26‒29. Thus,
`Petitioner’s position regarding Patent Owner’s presumption is clear from the
`Petition.
`At this stage of the proceeding and on this record, both parties have
`provided argument regarding these limitations under competing
`constructions (implicit or explicit). Accordingly, at this stage of the
`
`4
`
`
`
`IPR2019-01304
`Patent 7,231,379
`
`proceeding, we are not persuaded that good cause has been shown to justify
`additional briefing. If inter partes review is instituted in this case, both
`Petitioner and Patent Owner will have the opportunity to address these issues
`further.
`For these reasons and based on the totality of the circumstances,
`Petitioner has not persuaded us that we misapprehended or overlooked any
`matters that were previously addressed in a motion, an opposition, or a reply.
`
`
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner’s Request for Rehearing of Petitioner’s
`Request for Authorization to File a Reply to Patent Owner’s Preliminary
`Response is denied.
`
`
`
`
`
`5
`
`
`
`IPR2019-01304
`Patent 7,231,379
`
`PETITIONER:
`
`Dion Bregman
`Michael Lyons
`Ahren Hsu-Hoffman
`MORGAN LEWIS
`dion.bregman@morganlewis.com
`michael.lyons@morganlewis.com
`ahren.hsu-hoffman@morganlewis.com
`
`
`PATENT OWNER:
`
`Isaac Rabicoff
`RABICOFF LAW
`isaac@rabilaw.com
`
`6
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
