UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`APPLE INC.,
`
`Petitioner
`
`v.
`
`PARUS HOLDINGS, INC.,
`
`Patent Owner
`___________
`
`
`
`Case No. IPR2020-00686
`U.S. Patent No. 7,076,431
`____________
`
`
`PETITIONER APPLE INC.’S REPLY TO PATENT OWNER’S
`OPPOSITION TO PETITIONER’S MOTION TO STRIKE PORTIONS OF
`PATENT OWNER’S SUR-REPLY
`
`
`
`
`
`
`____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`APPLE INC.,
`
`Petitioner
`
`v.
`
`PARUS HOLDINGS, INC.,
`
`Patent Owner
`___________
`
`
`
`Case No. IPR2020-00686
`U.S. Patent No. 7,076,431
`____________
`
`
`PETITIONER APPLE INC.’S REPLY TO PATENT OWNER’S
`OPPOSITION TO PETITIONER’S MOTION TO STRIKE PORTIONS OF
`PATENT OWNER’S SUR-REPLY
`
`
`
`
`
`
`
`I.
`
`Parus’s Supplemental Declaration Is New, Unauthorized Evidence
`
`Parus’s Opposition (Paper 27) improperly litigates the substantive merits of
`
`this inter partes review without responding to the merits of Apple’s Motion to Strike.
`
`Parus does not respond to Apple’s cited caselaw discussing similar cases in which
`
`the Board granted motions to strike for evidence submitted with a sur-reply without
`
`authorization, nor does Parus provide any caselaw to support its position. Instead,
`
`Parus argues why it should be allowed to unilaterally authorize itself to file evidence
`
`with its sur-reply, despite express rules against doing so. PTAB’s Consolidated Trial
`
`Practice Guide (November 2019) (Nov. 2019 TPG) at 73 (“The sur-reply may not
`
`be accompanied by new evidence other than deposition transcripts of the cross-
`
`examination of any reply witness.”).
`
`Parus does not argue Exhibit 2027, a new supplemental declaration filed with
`
`its Sur-Reply, was authorized by the Board.1 Instead, Parus contends: 1) the filing
`
`was proper because it responded to Dr. Terveen’s supplemental declaration; and 2)
`
`the filing was proper because it was not a new opinion. (Paper 27, 1-5). Neither of
`
`these arguments has merit.
`
`
`1 Parus agrees Ex. 2026 was improperly filed with its Sur-Reply and agrees to
`
`withdraw it. (Paper 27, 7).
`
`
`
`1
`
`
`
`The Board’s rules state that new evidence may not be filed with a sur-reply.
`
`A declaration constitutes new evidence, and therefore it is not permitted to be filed
`
`with a sur-reply. There is no exception for “responsive” evidence, as Parus appears
`
`to argue. Mallinckrodt Pharmaceuticals Ireland Limited v. Biovie, Inc., IPR2018-
`
`00974, Paper 34 at 8 (rejecting Patent Owner’s argument that new evidence may be
`
`submitted if it is responsive to Petitioner’s reply). Nor is there any exception for the
`
`length of the evidence, as Parus appears to suggest. The length of the supplemental
`
`declaration (Ex. 2027) is irrelevant.
`
`Parus also argues that Apple is not prejudiced because the new evidence does
`
`not include a “new opinion.” (Paper 27, 3-5). The Board’s rules do not make an
`
`exception for new evidence that does not include a new opinion. And logically, if
`
`the new evidence did not contain a new opinion, Parus would not need to submit the
`
`supplemental declaration.
`
`Because the Board’s rules do not allow for submission of a supplemental
`
`declaration in a sur-reply, and because Parus failed to follow the Board’s rules in
`
`requesting authorization to file a motion for new evidence, Ex. 2027 should be
`
`expunged.
`
`II. Apple’s Supplemental Declaration Was Proper
`Parus also implies that Ex. 1040, Apple’s Supplemental Declaration of Dr.
`
`Terveen, is improper and that Parus intends to file a motion to exclude. (Paper 27,
`
`
`
`2
`
`
`
`2, fn1). The Board’s rules permit a petitioner to file a supplemental declaration with
`
`the petitioner reply. Had Parus wished to challenge the scope of Dr. Terveen’s
`
`supplemental declaration, its proper recourse was to file a motion to strike. Nov.
`
`2019 TPG at 79 (“Nor should a motion to exclude address arguments or evidence
`
`that a party believes exceeds the proper scope of reply or sur-reply.”).
`
`III. Portions of Parus’s Sur-Reply Should Be Stricken
`In addition to expungement of Exhibits 2026-2027, the limited portions of the
`
`Sur-Reply relying exclusively on Exhibits 2026-2027 should be stricken. The
`
`selected portions shown in Exhibit 1042 are narrowly tailored to only the text of the
`
`Sur-Reply that relies exclusively on Exhibits 2026-2027. Striking the citations to
`
`Exs. 2026-2027 alone is insufficient, as the arguments are still available for Parus to
`
`rely on and are still part of the record (albeit, supported by attorney argument only).
`
`As such, these portions should be stricken.
`
`IV. Conclusion
`Parus violated this Board’s rules and filed new evidence with its Sur-Reply.
`
`The proper remedy to prevent prejudice to Apple is to expunge the late-filed exhibits
`
`and strike the related portions of the Sur-Reply. Accordingly, Apple requests the
`
`Board grant Petitioner’s Motion to Strike Portions of Patent Owner’s Sur-Reply.
`
`
`
`3
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`ERISE IP, P.A.
`
`
`
`BY: /s/ Jennifer C. Bailey
`
`Jennifer C. Bailey Reg. No. 52,583
`Adam P. Seitz, Reg. No. 52,206
`7015 College Blvd., Suite 700
`Overland Park, KS 66211
`P: (913) 777-5600
`F: (913) 777-5601
`jennifer.bailey@eriseip.com
`adam.seitz@eriseip.com
`
`ATTORNEYS FOR PETITIONER
`APPLE INC.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`4
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE ON PATENT OWNER
`UNDER 37 C.F.R. § 42.6
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on June 1, 2021
`the foregoing Petitioner Apple Inc.’s Reply to Patent Owner’s Opposition to
`Petitioner’s Motion to Strike Portions of Patent Owner’s Sur-Reply was served via
`electronic filing with the Board and via Electronic Mail on the following
`practitioners of record for Patent Owner:
`
`
`
`
`
`
`
`
`
`
`
`
`
`Michael J. McNamara (mmcnamara@mintz.com)
`Michael T. Renaud (mtrenaud@mintz.com)
`William A. Meunier (wameunier@mintz.com)
`Andrew H. DeVoogd (ahdevoogd@mintz.com)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/s/ Jennifer C. Bailey
`
`
`Jennifer C. Bailey Reg. No. 52,583
`
`ATTORNEY FOR PETITIONER
`
`
`
`
`
`
`5
`
`
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
