`571-272-7822
`
` Paper No. 6
` Date: May 26, 2020
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`JUNIPER NETWORKS, INC.,
`Petitioner,
`v.
`IMPLICIT, LLC,
`Patent Owner.
`
`
`IPR2020-00585, IPR2020-00586, IPR2020-00587,
`IPR2020-00590, IPR2020-00591, and IPR2020-005921
`
`
`
`
`Before THOMAS L. GIANNETTI, BARBARA A. PARVIS,
`SHEILA F. McSHANE, and NABEEL U. KHAN,
`Administrative Patent Judges.2
`
`PARVIS, Administrative Patent Judge.
`
`ORDER
`Authorizing Reply to Preliminary Response And Sur-reply
` 37 C.F.R. § 42.20
`
`
`1 The patents are U.S. Patent Nos. 8,694,683 B2, 9,270,790 B2,
`9,591,104 B2, 10,027,780 B2, 10,033,839 B2, and 10,225,378 B2. The
`parties may not use this caption for any subsequent papers without prior
`Board authorization.
`2 This is not an order from an expanded panel of the Board. Administrative
`Patent Judges of each of the three-member panels from all the respective
`proceedings are listed.
`
`
`
`
`
`IPR2020-00585 (Patent 8,694,683 B2)
`IPR2020-00586 (Patent 9,270,790 B2)
`IPR2020-00587 (Patent 9,591,104 B2)
`IPR2020-00590 (Patent 10,027,780 B2)
`IPR2020-00591 (Patent 10,033,839 B2)
`IPR2020-00592 (Patent 10,225,378 B2)
`
`
`BACKGROUND
`The Petitions and Preliminary Responses filed in these cases
`addressed arguments relating to 35 U.S.C. § 325(d). See, e.g., IPR2020-
`00585, Paper 1, 13–15; IPR2020-00585, Paper 6, 8–19. For instance, in its
`Preliminary Responses, Implicit, LLC, (“Patent Owner”) asserted that we
`should exercise our discretion and deny institution under 35 U.S.C. § 325(d).
`See, e.g., IPR2020-00585, Paper 6, 8–19. Juniper Networks, Inc.
`(“Petitioner”) appeared to anticipate those arguments and, therefore.
`addressed § 325(d) in its Petitions. See, e.g., IPR2020-00585, Paper 1, 13–
`15.
`
`In an email of May 19, 2020, Petitioner requested leave to file a reply
`of no more than seven pages to Patent Owner’s Preliminary Response to
`address further the § 325(d) issues. We held a call with the parties on May
`21, 2020 to consider Petitioner’s request. Patent Owner opposes Petitioner’s
`request as unnecessary because the Petitions sufficiently addressed the
`§ 325(d) issue. However, Patent Owner requests authorization to file a sur-
`reply of the same length in each of the proceedings if Petitioner’s request is
`granted, with briefing limited to five pages for both Petitioner and Patent
`Owner.
`On March 24, 2020, the Board designated Advanced Bionics, LLC v.
`MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469 (PTAB Feb.
`13, 2020) (Paper 6) as precedential. Because Advanced Bionics changed the
`analytical framework applied under 35 U.S.C. § 325(d), and the Petitions
`were filed prior to the case being designated as precedential, we determine
`
`2
`
`
`
`IPR2020-00585 (Patent 8,694,683 B2)
`IPR2020-00586 (Patent 9,270,790 B2)
`IPR2020-00587 (Patent 9,591,104 B2)
`IPR2020-00590 (Patent 10,027,780 B2)
`IPR2020-00591 (Patent 10,033,839 B2)
`IPR2020-00592 (Patent 10,225,378 B2)
`
`that permitting the parties to submit additional briefing on this matter would
`be in the interests of justice and would also be helpful to the panel. See 37
`C.F.R. § 42.20(d). In light of the similarities of the patents and issues
`among these cases, Petitioner and Patent Owner are instructed to file the
`same paper in all proceedings, i.e., IPR2020-00585, -586, -587, -590, -591,
`and -592 and are required to use this Order’s case caption format.
`During the call, the parties also indicated that a motion to transfer was
`granted in the district court proceeding identified in the parties’ mandatory
`notices. The parties are reminded of their obligations to file updated
`mandatory notices identifying any judicial or administrative matter that
`would affect, or be affected by, a decision in the instant proceedings. 37
`C.F.R. § 42.8 (b)(2). The parties also are reminded of their obligation to file
`motions for admission pro hac vice for backup counsel that are not
`registered practitioners. See 37 C.F.R. § 42.10 (c).
`
`
`3
`
`
`
`IPR2020-00585 (Patent 8,694,683 B2)
`IPR2020-00586 (Patent 9,270,790 B2)
`IPR2020-00587 (Patent 9,591,104 B2)
`IPR2020-00590 (Patent 10,027,780 B2)
`IPR2020-00591 (Patent 10,033,839 B2)
`IPR2020-00592 (Patent 10,225,378 B2)
`
`
`ORDER
`
`Accordingly, it is hereby:
`
`ORDERED that Petitioner is authorized to file in each of these
`
`proceedings, within 14 days of this Order, a Reply Brief of no more than
`seven pages limited to addressing 35 U.S.C. § 325(d) issues raised by the
`Preliminary Response and consistent with the foregoing instructions; and
`FURTHER ORDERED that, within 14 days of Petitioner’s Reply
`Brief, Patent Owner may file, in each of these proceedings, a Sur-reply Brief
`of no more than seven pages limited to arguments raised in Petitioner’s
`Reply Brief and consistent with the foregoing instructions.
`
`
`4
`
`
`
`IPR2020-00585 (Patent 8,694,683 B2)
`IPR2020-00586 (Patent 9,270,790 B2)
`IPR2020-00587 (Patent 9,591,104 B2)
`IPR2020-00590 (Patent 10,027,780 B2)
`IPR2020-00591 (Patent 10,033,839 B2)
`IPR2020-00592 (Patent 10,225,378 B2)
`
`FOR PETITIONER:
`
`Jonathan Lindsay
`David McPhie
`IRELL & MANELLA LLP
`jlindsay@irell.com
`dmcphie@irell.com
`
`
`FOR PATENT OWNER:
`
`Christian Hurt
`DAVIS FIRM, PC
`churt@davisfirm.com
`
`5
`
`