`571-272-7822
`
`
`
`
`
`
`Paper 7
`Entered: November 21, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LEE SPECIALTIES, INC.,
`Petitioner,
`
`v.
`
`FHE USA LLC,
`Patent Owner.
`
`____________
`
`IPR2019-01366
`Patent 10,030,461 B2
`____________
`
`
`
`
`Before JAMES A. TARTAL, MICHAEL L. WOODS, and
`SEAN P. O’HANLON, Administrative Patent Judges.
`
`O’HANLON, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`IPR2019-01366
`Patent 10,030,461 B2
`
`
`I. INTRODUCTION
`A conference call in this proceeding was held on November 21, 2019,
`
`among counsel for Petitioner Lee Specialties, Inc. (Greg Webb), counsel for
`Patent Owner FHE USA LLC (Douglas Nemec), and Judges Tartal, Woods,
`and O’Hanlon. The purpose of the call was to address Petitioner’s request to
`file a Reply to the Preliminary Response to the Petition. During the
`conference call, we granted Petitioner’s request.
`
`II. DISCUSSION
`Our rules permit a petitioner to request a reply to a preliminary
`
`response; however, the request must make a showing of good cause.
`37 C.F.R. § 42.108(c). During the conference call, Petitioner argued good
`cause exists to file a Reply to the Preliminary Response to address
`arguments raised therein regarding district court litigation1 regarding the
`patent at issue in this inter partes review. Specifically, Petitioner indicated
`that it wished to present additional facts for the Board to consider when
`addressing Patent Owner’s arguments that the Board should exercise its
`discretion under 35 U.S.C. § 314(a) to deny institution in view of the district
`court litigation. Petitioner indicated that its Reply would be limited to this
`issue.
`
`
`1 FHE USA LLC v. Lee Specialties, Inc., No. 5-18-cv-00715 (W.D. Tex.
`filed July 12, 2018) and FHE USA LLC v. Express Supply & Rental LLC,
`No. 6-18-cv-00913 (W.D. La. filed July 12, 2018) (collectively, “the district
`court litigation”).
`
`2
`
`
`
`IPR2019-01366
`Patent 10,030,461 B2
`
`Patent Owner argued that Petitioner did not make a good cause
`
`showing at least because Petitioner could have, but did not, present
`arguments in the Petition regarding the district court litigation.
`
`Having considered Petitioner’s and Patent Owner’s contentions, and
`as we indicated during the conference call, we determine good cause exists
`supporting Petitioner’s request to file a Reply to Patent Owner’s Preliminary
`Response, limited to addressing the issues identified above. We also
`determine good cause exists for Patent Owner to file a Sur-Reply to
`Petitioner’s Reply. As discussed during the call, Petitioner’s Reply is
`limited to eight pages and is due by November 29, 2019, and Patent Owner’s
`Sur-Reply is limited to eight pages and is due by December 6, 2019.
`
`III. ORDER
`
`Accordingly, it is:
`
`ORDERED that Petitioner’s request for leave to file a Reply to Patent
`
`Owner’s Preliminary Response is granted;
`
`FURTHER ORDERED that Petitioner’s Reply is limited to eight
`pages, must be filed by Friday, November, 29, 2019, and may only respond
`to issues raised in Patent Owner’s Preliminary Response regarding the
`district court litigation;
`
`FURTHER ORDERED that Patent Owner may file a Sur-Reply to
`Petitioner’s Reply; and
`
`FURTHER ORDERED that the Sur-Reply is limited to eight pages,
`must be filed by Friday, December 6, 2019, and may only respond to issues
`raised in Petitioner’s Reply.
`
`3
`
`
`
`IPR2019-01366
`Patent 10,030,461 B2
`
`For PETITIONER:
`Gregory P. Webb
`Dustin Johnson
`Russ Emerson
`Don Tiller
`HAYNES AND BOONE, LLP
`greg.webb.ipr@haynesboone.com
`dustin.johnson.ipr@haynesboone.com
`russ.emerson@haynesboone.com
`don.tiller@dtillerlawpllc.com
`
`
`For PATENT OWNER:
`Douglas R. Nemec
`Rachel R. Blitzer
`Christopher B. McKinley
`SKADDEN, ARPS, SLATE, MEAGHER & FLOM LLP
`douglas.nemec@skadden.com
`rachel.blitzer@skadden.com
`christopher.mckinley@skadden.com
`
`4
`
`
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