`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Paper 8
`Date: May 29, 2020
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`VMWARE INC.,
`Petitioner,
`v.
`INTELLECTUAL VENTURES I LLC,
`Patent Owner.
`
`IPR2020-00470
`Patent 7,949,752 B2
`
`
`
`
`
`
`
`
`
`Before THOMAS L. GIANNETTI, JENNIFER MEYER CHAGNON, and
`JOHN R. KENNY, Administrative Patent Judges.
`CHAGNON, Administrative Patent Judge.
`
`ORDER
`Granting Petitioner’s Request for Additional Briefing
`37 C.F.R. § 42.5; 37 C.F.R. §42.108(c)
`
`
`
`
`
`
`
`
`
`IPR2020-00470
`Patent 7,949,752 B2
`
`
`In an email dated May 26, 2020, Petitioner requested a conference call
`with the Board to request authorization to file a reply to Patent Owner’s
`Preliminary Response, in order to address the factors laid out in Apple, Inc.
`v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020)
`(precedential) (“Fintiv”). Petitioner’s email indicates that Patent Owner
`opposes the request. The panel has considered Petitioner’s request, and a
`conference call is not necessary at this time.
`Fintiv identifies a non-exclusive list of factors the Board considers
`when determining whether a related, parallel district court action provides
`any basis for discretionary denial under 35 U.S.C. § 314(a), and particularly
`in view of NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752,
`Paper 8 (PTAB Sept. 12, 2018) (precedential). See Fintiv, Paper 11, at 5–6.
`Patent Owner addresses the Fintiv factors in its Preliminary Response.
`See Paper 7, at 8–16. Fintiv issued on March 20, 2020 and was designated
`precedential on May 5, 2020. The Petition here was filed on February 10,
`2020. Given this timing, Petitioner could not have addressed the Fintiv
`factors in the Petition.
`We determine that there is good cause in this instance for Petitioner to
`file a reply to the Preliminary Response, and that further briefing addressing
`the Fintiv factors would be helpful to the Board in deciding whether to
`exercise discretion to deny institution under 35 U.S.C. § 314(a). See
`37 C.F.R. §42.108(c) (“A petitioner may seek leave to file a reply to the
`preliminary response . . . Any such request must make a showing of good
`cause.”). We also authorize Patent Owner to file a sur-reply to address the
`issues raised in Petitioner’s reply.
`
`2
`
`
`
`IPR2020-00470
`Patent 7,949,752 B2
`
`
`We note that Petitioner’s email refers to a stipulation concerning its
`arguments in the co-pending district court litigation. Before considering this
`stipulation, the panel requests that Petitioner show it has filed the stipulation
`with the district court.
`
`
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner is authorized to file a preliminary reply of
`no more than ten (10) pages within five (5) business days after the entry of
`this order, addressing the Fintiv factors; and
`FURTHER ORDERED that Patent Owner is authorized to file a
`preliminary sur-reply of no more than ten (10) pages within five (5) business
`days after Petitioner files its preliminary reply, addressing the issues raised
`in Petitioner’s preliminary reply.
`
`
`
`3
`
`
`
`IPR2020-00470
`Patent 7,949,752 B2
`
`FOR PETITIONER:
`
`Katherine Vidal
`Louis Campbell
`Michael Tomasulo
`Winston & Strawn LLP
`kvidal@winston.com
`llcampbell@winston.com
`mtomasulo@winston.com
`
`
`
`
`FOR PATENT OWNER:
`
`Byron L. Pickard
`Daniel S. Block
`James R. Hietala
`Lestin Kenton
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`bpickard-ptab@sternekessler.com
`dblock-ptab@sternekessler.com
`jhietala@intven.com
`lkenton-ptab@sternekessler.com
`
`
`
`
`4
`
`
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