`Tel: 571-272-7822 Entered: November 5, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CIRRUS DESIGN CORPORATION,
`Petitioner,
`v.
`HOYT AUGUSTUS FLEMING,
`Patent Owner.
`
`Case IPR2019-01566
`Patent RE47,474
`
`
`
`Before JOSIAH C. COCKS, SCOTT C. MOORE, and
`STEPHEN E. BELISLE, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
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`IPR2019-01566
`Patent RE47,474
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`1. Introduction
`On October 31, 2019, a conference call was held between counsel for
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`the respective parties and Judges Cocks, Moore, and Belisle. Petitioner,
`Cirrus Design Corporation, was represented by Mr. Kevin Wagner.1 Patent
`Owner, Hoyt Augustus Fleming, was represented by Mr. Cook Alciati.2, 3
`Petitioner had requested the conference call to discuss filing of a reply to
`Patent Owner’s Preliminary Response (Paper 8).4
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`2. Discussion
`On the call, Petitioner requested authorization to file a reply to Patent
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`Owner’s Preliminary Response. Petitioner’s basis for such authorization
`was that the Response included argument that Petitioner had not anticipated,
`and that it sought to respond to such argument via a reply. Patent Owner
`objected to authorization of a reply. Patent Owner characterized the
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`1 An “Unopposed Motion for Pro Hac Vice Admission of Kevin P. Wagner”
`is currently pending before the panel. See Paper 9. The Motion will be
`decided in due course.
`2 Patent Owner’s mandatory notices (Paper 5) and power of attorney (Paper
`6) designate only “Greg H. Gardella” as lead counsel and “Natalie J. Grace”
`as back-up counsel representing Patent Owner in this proceeding. Any
`counsel that Patent Owner seeks to have as its representative in this
`proceeding must be identified through filing of mandatory notices and a
`power of attorney. See 37 C.F.R. §§ 42.8(b)(3), 42.10(b).
`3 Neither party raised any objection with respect to the opposing party’s
`counsel representation on the conference call.
`4 Patent Owner had arranged for a court reporter on the call. Patent Owner
`must file a copy of the transcript of the call as an exhibit when the transcript
`becomes available.
`
`2
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`
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`IPR2019-01566
`Patent RE47,474
`situation as a routine dispute between parties that disagree as to the merits of
`substantive argument for which a reply is not warranted.
`
`Although a petitioner may request leave to file a reply to a preliminary
`response, “[a]ny such request must make a showing of good cause.” Trial
`Practice Guide Update (July 2019) 20–21; see Office Patent Trial Practice
`Guide, July 2019 Update, 84 Fed. Reg. 33925 (July 16, 2019). The panel is
`not persuaded that Petitioner’s mere desire to respond to an argument or
`arguments raised by Patent Owner that Petitioner may not have foreseen
`establishes good cause to permit the filing of a reply. Furthermore, to the
`extent that Petitioner believes Patent Owner’s arguments are in error as to
`any matters of facts or law, this panel, like other Board panels, is positioned
`appropriately to evaluate such matters without an apparent need, at this time,
`for further briefing. See, e.g., Xactware Solutions, Inc. v. Pictometry
`International Corporation, IPR2016-00593, Paper 11 at 3 (PTAB July 1,
`2016) (“identifying and evaluating statements or misstatements of the facts
`and law are well within the purview of the Panel of Judges assigned to these
`proceedings.”).
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`3. Order
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`It is
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`ORDERED that Petitioner is not authorized to file a reply to Patent
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`Owner’s Preliminary Response (Paper 8).
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`3
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`IPR2019-01566
`Patent RE47,474
`For PETITIONER:
`
`Victor Jonas
`Victor.Jonas@FaegreBD.com
`
`For PATENT OWNER:
`
`Greg H. Gardella
`Natalie Grace
`ggardella@gardellagrace.com
`ngrace@gardellagrace.com
`
`
`
`4
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