Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`Paper 31
`Entered: June 10, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`PARUS HOLDINGS, INC.,
`Patent Owner.
`____________
`
`IPR2020-00686; Patent 7,076,431 B2
`IPR2020-00687; Patent 9,451,084 B2
`____________
`
`
`
`Before DAVID C. MCKONE, STACEY G. WHITE, and
`SHELDON M. MCGEE, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`
`
`
`ORDER
`Motion to Strike
`37 C.F.R. § 42.5(a)
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`
`Paper 31
`Entered: June 10, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`PARUS HOLDINGS, INC.,
`Patent Owner.
`____________
`
`IPR2020-00686; Patent 7,076,431 B2
`IPR2020-00687; Patent 9,451,084 B2
`____________
`
`
`
`Before DAVID C. MCKONE, STACEY G. WHITE, and
`SHELDON M. MCGEE, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`
`
`
`ORDER
`Motion to Strike
`37 C.F.R. § 42.5(a)
`
`
`
`
`
`
`
`
`
`IPR2020-00686; Patent 7,076,431 B2
`IPR2020-00687; Patent 9,451,084 B2
`
`
`Apple Inc. (“Petitioner”) filed a Petition requesting an inter partes
`review of claims 1–7, 9, 10, 13, 14, 18–21, and 25–30 of U.S. Patent
`No. 7,076,431 B2 (Ex. 1001, “the ’431 patent”). Paper 1 (“Pet.”).1 We
`instituted an inter partes review of those claims. Paper 9. Parus Holdings,
`Inc. (“Patent Owner”) filed a Response to the Petition (Paper 15), Petitioner
`filed a Reply (Paper 19), and Patent Owner filed a Sur-reply (Paper 21).
`The Sur-reply attached two exhibits, a User Guide for a Nuance
`Dragon NaturallySpeaking product (Ex. 2026) and a Declaration of Benedict
`Occhiogrosso in Support of Patent Owner’s Sur-reply (Ex. 2027). Pursuant
`to our email authorization, Patent Owner filed a Motion to Strike Exhibit
`2026, Exhibit 2027, and identified certain of the Sur-reply referring to those
`exhibits, including arguments and citations. Paper 26 (“Mot.”); Ex. 1042
`(annotated Sur-reply identifying portions to strike). Patent Owner opposed
`the Motion to Strike (Paper 27, “Opp.”), and Petitioner replied to the
`Opposition (Paper 28, “Reply to Mot.”). We grant Petitioner’s Motion to
`Strike as to Exhibits 2026 and 2027, and as to citations to those exhibits in
`the Sur-reply, but deny Petitioner’s Motion to strike arguments from the Sur-
`Reply.
`According to Board guidance, “[a] motion to strike may be
`appropriate when a party believes the Board should disregard arguments or
`late-filed evidence in its entirety.” Patent Trial and Appeal Board,
`
`
`1 Throughout this Order, we refer to papers filed in IPR2020-00686. Similar
`papers are filed in IPR2020-00687 (Paper 1 (Pet.), Paper 9 (Dec. to Inst.),
`Paper 19 (Reply), Paper 21 (Sur-reply), Paper 26 (Mot. to Strike), Paper 27
`(Opp. to Mot. to Strike), Paper 28 (Reply to Mot. to Strike), Paper 29
`(Mot. to Exclude), and Exhibits 1042, 2025, 2026, 2027).
`2
`
`
`
`IPR2020-00686; Patent 7,076,431 B2
`IPR2020-00687; Patent 9,451,084 B2
`
`Consolidated Trial Practice Guide, 80 (Nov. 2019) (“TPG”).2 For example,
`“[i]f a party believes that a brief filed by the opposing party raises new
`issues, is accompanied by belatedly presented evidence, or otherwise
`exceeds the proper scope of reply or sur-reply, it may request authorization
`to file a motion to strike.” Id. As it was in this proceeding, “[s]ur-replies to
`principal briefs (i.e., to a reply to a patent owner response . . .) normally will
`be authorized by the scheduling order entered at institution.” Id. at 73.
`However, “[t]he sur-reply may not be accompanied by new evidence other
`than deposition transcripts of the cross-examination of any reply witness.”
`Id. Petitioner’s Motion to Strike invokes this guidance as its basis for its
`request to strike Patent Owner’s evidence and argument. Mot. 1 (citing
`TPG 73).
`As to Exhibit 2026, Petitioner complains that it is prejudiced because
`Petitioner does not have an opportunity to respond to it. Mot. 2–3. Patent
`Owner “agrees that Ex. 2026 could have been entered earlier in this
`proceeding and agrees to withdraw it.” Opp. 7. We accept Patent Owner’s
`agreement and order Exhibit 2026 expunged.
`As to Exhibit 2027, Petitioner argues that Mr. Occhiogrosso provides
`new opinions, to which it has no opportunity to challenge via deposition or
`to provide a response. Mot. 2. Petitioner notes that the Sur-reply argues that
`Exhibit 2027 was submitted to respond to new arguments and evidence in
`the Reply. Id. at 5 (citing Reply 10 n.2). Petitioner argues that its Reply did
`not exceed proper scope. Id. at 5–6. Nevertheless, Petitioner argues, Patent
`
`
`2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`3
`
`
`
`IPR2020-00686; Patent 7,076,431 B2
`IPR2020-00687; Patent 9,451,084 B2
`
`Owner should have, but did not seek permission to submit new evidence in
`the Sur-Reply. Id. at 5.
`Patent Owner argues that Exhibit 2027 is responsive to unauthorized
`new evidence, specifically a Supplemental Declaration of Loren Terveen
`(Ex. 1040), filed with the Reply, and thus the submission of Exhibit 2027
`did not require authorization from the Board. Opp. 1–3.3 Here, Patent
`Owner focuses its arguments on showing that Petitioner’s Reply evidence
`was beyond permissible scope, rather than showing that the submission of
`purportedly new evidence in a reply justifies filing otherwise unauthorized
`new evidence in a sur-reply. Id. As Petitioner points out, however, the
`TPG’s prohibition on new evidence submitted with a sur-reply does not
`include an exception for evidence responsive to evidence submitted with a
`reply (beyond submitting new cross-examination testimony of a reply
`witness). TPG 73. Thus, Patent Owner should have sought authorization to
`file new evidence. As Petitioner notes, if Petitioner’s Reply or reply
`evidence exceeds proper scope, Patent Owner’s remedy is to challenge it
`directly, not to submit unauthorized sur-reply evidence.4 Reply to Mot. 3.
`
`
`3 Patent Owner expresses an intent to file a motion to exclude Exhibit 1040,
`Opp. 2 n.1, upon which Patent Owner has since followed up with a Motion
`to Exclude, Paper 29.
`4 Both parties spend much of their briefing arguing the propriety of the
`Reply evidence and whether it should be challenged via a motion to exclude
`(as Patent Owner has since filed) or via a motion to strike. Mot. 5–7;
`Opp. 1–3, 5–6; Reply to Mot. 2–3. We will address Patent Owner’s Motion
`to Exclude in due course and we decline to resolve, in connection with
`Petitioner’s Motion to Strike, issues regarding whether certain reply
`evidence and arguments were proper.
`
`4
`
`
`
`IPR2020-00686; Patent 7,076,431 B2
`IPR2020-00687; Patent 9,451,084 B2
`
`
`Patent Owner, referring to an earlier Declaration of Mr. Occhiogrosso
`(Ex. 2025), also argues that Exhibit 2027 should not be struck because it
`does not include new opinions. Opp. 3–5. We are not persuaded. Patent
`Owner does not explain why it did not cite to Mr. Occhiogrosso’s earlier
`Declaration in the Sur-reply instead of Exhibit 2027 if, indeed, Exhibit 2027
`really is the same in substance as evidence submitted earlier. Moreover,
`Patent Owner’s argument that Exhibit 2027 is not new is at least in friction
`with its argument that Exhibit 2027 is necessary to rebut Petitioner’s
`allegedly new evidence. Opp. 1–3.
`As the Trial Practice Guide provides, “[t]he sur-reply may not be
`accompanied by new evidence other than deposition transcripts of the cross-
`examination of any reply witness.” TPG 73. Patent Owner submitted
`Exhibit 2027, new testimony from Mr. Occhiogrosso, with the Sur-reply and
`did not seek authorization to do so. Patent Owner has not provided any
`persuasive justification for submitting this evidence without obtaining
`authorization from the Panel. Accordingly, we grant Petitioner’s Motion to
`Strike as to Exhibit 2027 and this exhibit will be expunged. See TPG 80.
`Petitioner also asks us to strike arguments in the Sur-reply that cite to
`Exhibits 2026 and 2027. Mot. 1, 3–5. Petitioner does not provide
`meaningful explanation as to why arguments in a sur-reply that rely on
`expunged evidence also should be struck. Rather, Petitioner argues that
`“[u]nder similar circumstances, the Board previously expunged late-filed
`exhibits and struck the related portions of the Patent Owner’s Sur-Reply.”
`Mot. 1 (citing Mallinckrodt Pharms. Ireland Ltd. v. Biovie, Inc., IPR2018-
`00974, Paper 34, 7–10 (PTAB Nov. 13, 2019); Apple Inc. v. Maxell, Ltd.,
`IPR2020-00200, Paper 24, 2 (PTAB March 2, 2021)).
`
`5
`
`
`
`IPR2020-00686; Patent 7,076,431 B2
`IPR2020-00687; Patent 9,451,084 B2
`
`
`In the Mallinckrodt case, the panel redacted citations (not argument)
`in a sur-reply that cited to an exhibit including improper evidence, but
`declined to strike the underlying exhibit, as it was proper to support a motion
`to amend. IPR2018-00974, Paper 34, at 9. Such is not the case here.
`Exhibits 2026 and 2027 can be expunged, and need not remain in the record
`for an independent permissible purpose. In the Apple case, the patent owner
`agreed to expunge contested exhibits from the record and to redact a sur-
`reply from referencing or relying on those exhibits. IPR2020-00200,
`Paper 24, at 2. Here, Patent Owner does not agree to redact arguments from
`the Sur-reply. Thus, neither of these cases is germane to this proceeding.
`Patent Owner argues that, if we strike Exhibit 2027, only citations to
`that exhibit, and not Patent Owner’s arguments, should be struck from the
`Sur-reply. Opp. 7. In reply, Petitioner argues that “[s]triking the citations to
`Exs. 2026–2027 alone is insufficient, as the arguments are still available for
`[Patent Owner] to rely on and are still part of the record (albeit, supported by
`attorney argument only).” Reply to Mot. 3. As Patent Owner observes,
`“Petitioner does not argue that the content of the sur-reply is improper and,
`as such, it should stand as submitted.” Opp. 7.
`We agree with Patent Owner that Petitioner has not shown (or
`meaningfully alleged) that the arguments presented in the Sur-reply are not
`responsive to the Reply or are otherwise improper. Thus, we do not strike
`those arguments. Nevertheless, as Patent Owner does not contest that we
`should strike the citations to Exhibits 2026 and 2027, if those exhibits are
`struck, we strike those citations. Patent Owner must, within seven days of
`this order, file a redacted Sur-reply, with citations to Exhibits 2026 and 2027
`
`6
`
`
`
`IPR2020-00686; Patent 7,076,431 B2
`IPR2020-00687; Patent 9,451,084 B2
`
`redacted. After Patent Owner’s filing, the unredacted Sur-reply will be
`expunged.
`
`I. ORDER
`
`Accordingly, it is
`ORDERED that Petitioner’s Motion to Strike (Paper 26) is granted as
`to its request to strike Exhibits 2026 and 2027;
`FURTHER ORDERED that Exhibits 2026 and 2027 are expunged;
`FURTHER ORDERED that Patent Owner shall file, within seven
`days of this order, a redacted version of the Sur-reply (Paper 21), with
`citations to Exhibits 2026 and 2027 redacted, and no other changes;
`FURTHER ORDERED that, after Patent Owner files a redacted Sur-
`reply, the unredacted Sur-reply (Paper 21) will be expunged; and
`FURTHER ORDERED that Petitioner’s Motion to Strike (Paper 26)
`is denied as to Petitioner’s request to strike arguments from the Sur-reply.
`
`
`
`7
`
`
`
`IPR2020-00686; Patent 7,076,431 B2
`IPR2020-00687; Patent 9,451,084 B2
`
`FOR PETITIONER:
`
`Jennifer C. Bailey
`Adam P. Seitz
`ERISE IP, P.A.
`jennifer.bailey@eriseip.com
`adam.seitz@eriseip.com
`
`
`FOR PATENT OWNER:
`
`Michael J. McNamara
`Michael T. Renaud
`William A. Meunier
`MINTZ, LEVIN, COHN, FERRIS, GLOVSKY AND POPEO, P.C.
`mmcnamara@mintz.com
`mtrenaud@mintz.com
`wameunier@mintz.com
`
`8
`
`
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