Paper 17
`Entered: July 14, 2020
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`KANNUU PTY LTD.,
`Patent Owner.
`____________
`
`IPR2020-00736 (Patent 9,697,264 B2)
`IPR2020-00737 (Patent 9,436,354 B2)
`IPR2020-00738 (Patent 8,370,393 B2)
`IPR2020-00739 (Patent 8,996,579 B2)
`IPR2020-00740 (Patent 8,676,852 B2)
`____________
`
`
`Before KRISTEN L. DROESCH, MINN CHUNG, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`
`ORDER1
`Granting Patent Owner’s Request for Submission of
`Corrected Preliminary Response
`Granting Petitioner’s Request for Additional Briefing
`37 C.F.R. §§ 42.5, 42.108(c)
`
`
`
`1 We issue one Order to be filed in each case. The parties are not authorized
`to use a multi-case caption.
`
`
`Entered: July 14, 2020
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`KANNUU PTY LTD.,
`Patent Owner.
`____________
`
`IPR2020-00736 (Patent 9,697,264 B2)
`IPR2020-00737 (Patent 9,436,354 B2)
`IPR2020-00738 (Patent 8,370,393 B2)
`IPR2020-00739 (Patent 8,996,579 B2)
`IPR2020-00740 (Patent 8,676,852 B2)
`____________
`
`
`Before KRISTEN L. DROESCH, MINN CHUNG, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`
`ORDER1
`Granting Patent Owner’s Request for Submission of
`Corrected Preliminary Response
`Granting Petitioner’s Request for Additional Briefing
`37 C.F.R. §§ 42.5, 42.108(c)
`
`
`
`1 We issue one Order to be filed in each case. The parties are not authorized
`to use a multi-case caption.
`
`
`
`IPR2020-00736 (Patent 9,697,264 B2) IPR2020-00737 (Patent 9,436,354 B2)
`IPR2020-00738 (Patent 8,370,393 B2) IPR2020-00739 (Patent 8,996,579 B2)
`IPR2020-00740 (Patent 8,676,852 B2)
`
`
`I. DISCUSSION
`A conference call was held on July 10, 2020, among respective
`counsel for Petitioner and Patent Owner and Judges Droesch, Kaiser, and
`Chung, in response to Petitioner’s request, in each of the above-identified
`proceedings, to strike Patent Owner’s Preliminary Response for exceeding
`the word count limit and Patent Owner’s request for submitting a Corrected
`Preliminary Response to comply with the word limit. Petitioner also
`requested authorization under 37 C.F.R. § 42.108(c) to file a reply to Patent
`Owner’s Preliminary Response in each of these proceedings. This Order
`memorializes the rulings made on the call.
`During the conference call, Petitioner argued that Patent Owner’s
`Preliminary Response in each of these proceedings should be struck in its
`entirety because the overages are egregious and appear to have been
`calculated to avoid the word limit under 37 C.F.R. § 42.24(b)(1). As an
`example of Patent Owner’s alleged egregious violation of our rules,
`Petitioner asserted that in each Preliminary Response, Patent Owner placed
`nearly all citations in footnotes and failed to count the words in the
`footnotes, which amounted to thousands of words. As an alternative
`remedy, Petitioner requested that the Board require Patent Owner’s
`Preliminary Responses be made compliant by deleting words only and
`without any other modifications.
`Patent Owner responded that the overages were unintentional and
`were due to inadvertent failure to count the words in the footnotes. Similar
`to Petitioner’s alternative remedy, Patent Owner requested authorization to
`file a motion to correct its preliminary responses to comply with the word
`
`2
`
`
`
`IPR2020-00736 (Patent 9,697,264 B2) IPR2020-00737 (Patent 9,436,354 B2)
`IPR2020-00738 (Patent 8,370,393 B2) IPR2020-00739 (Patent 8,996,579 B2)
`IPR2020-00740 (Patent 8,676,852 B2)
`
`limit.
`
`Having considered the parties positions, during the conference call,
`we authorized Patent Owner to file, within three business days, a Corrected
`Preliminary Response in each of these proceedings that complies with the
`word count limit specified in 37 C.F.R. § 42.24(b)(1) by deleting words
`only. No other modification is permitted except for revisions to the table of
`contents and the table of authorities to be consistent with the deletions. In
`addition, Patent Owner’s lead counsel is required to submit an affidavit
`certifying the total number of words, including the words in the footnotes
`and pictures, in each Corrected Preliminary Response. Patent Owner is also
`required to submit, in each proceeding, a redlined version of the Corrected
`Preliminary Response, comparing the Corrected Preliminary Response with
`the previously filed Preliminary Response.
`Turning to the next issue, during the conference call, Petitioner
`requested authorization to file a 10-page reply in each proceeding to address
`the contractual estoppel issue and alleged secondary considerations evidence
`issue presented in Patent Owner’s Preliminary Response. Patent Owner
`argued that there is no good cause because Petitioner knew or should have
`known that under the forum selection clause of the non-disclosure agreement
`(NDA) between the parties, Petitioner is estopped from requesting inter
`partes review, and because Petitioner failed to address known evidence of
`secondary considerations in the Petition.
`Having considered the parties positions, during the conference call,
`we authorized Petitioner to file, in each of these proceedings, a reply to
`Patent Owner’s Corrected Preliminary Response, not to exceed 8 pages and
`
`3
`
`
`
`IPR2020-00736 (Patent 9,697,264 B2) IPR2020-00737 (Patent 9,436,354 B2)
`IPR2020-00738 (Patent 8,370,393 B2) IPR2020-00739 (Patent 8,996,579 B2)
`IPR2020-00740 (Patent 8,676,852 B2)
`
`limited to addressing the contractual estoppel issue presented in Patent
`Owner’s Corrected Preliminary Response. We also authorized Patent
`Owner to file a sur-reply in each of these proceedings, not to exceed 8 pages
`and limited to responding to the assertions and arguments made in
`Petitioner’s reply in the same proceeding. The parties may not submit any
`new evidence with the reply or the sur-reply.
`
`II. ORDER
`
`It is hereby:
`ORDERED that Patent Owner is authorized to file, no later than
`July 15, 2020, a Corrected Preliminary Response in each of these
`proceedings that complies with the word count limit specified in 37 C.F.R.
`§ 42.24(b)(1) by deleting words only. No other modification is permitted
`except for revisions in the table of contents and the table of authorities to be
`consistent with the deletions.
`FURTHER ORDERED that, with each Corrected Preliminary
`Response, Patent Owner’s lead counsel is required to submit an affidavit
`certifying the total number of words, including the words in all of the
`footnotes and pictures, in the Corrected Preliminary Response;
`FURTHER ORDERED that Patent Owner is required to submit, in
`each proceeding, a redlined version of the Corrected Preliminary Response,
`comparing the Corrected Preliminary Response with the previously filed
`Preliminary Response;
`FURTHER ORDERED that Petitioner’s request for authorization to
`file a reply to Patent Owner’s Corrected Preliminary Response in each of
`these proceedings is granted;
`
`4
`
`
`
`IPR2020-00736 (Patent 9,697,264 B2) IPR2020-00737 (Patent 9,436,354 B2)
`IPR2020-00738 (Patent 8,370,393 B2) IPR2020-00739 (Patent 8,996,579 B2)
`IPR2020-00740 (Patent 8,676,852 B2)
`
`
`FURTHER ORDERED that Petitioner’s reply is limited to addressing
`the contractual estoppel issue presented in Patent Owner’s Corrected
`Preliminary Response;
`FURTHER ORDERED that Petitioner’s reply is not to exceed 8 pages
`and is to be filed no later than 1 week from the filing of Patent Owner’s
`Corrected Preliminary Response;
`FURTHER ORDERED that Patent Owner is authorized to file a
`sur-reply in each of these proceedings, limited to responding to the
`assertions and arguments made in Petitioner’s reply in the same proceeding;
`FURTHER ORDERED that Patent Owner’s sur-reply is not to exceed
`8 pages and is to be filed no later than 1 week from the filing of Petitioner’s
`reply; and
`FURTHER ORDERED that the parties may not submit new evidence.
`
`
`
`
`5
`
`
`
`IPR2020-00736 (Patent 9,697,264 B2) IPR2020-00737 (Patent 9,436,354 B2)
`IPR2020-00738 (Patent 8,370,393 B2) IPR2020-00739 (Patent 8,996,579 B2)
`IPR2020-00740 (Patent 8,676,852 B2)
`
`PETITIONER:
`
`Kevin Johnson
`Brian Mack
`Marissa Ducca
`James Glass
`John McKee
`QUINN EMANUEL URQUHART & SULLIVAN
`kevinjohnson@quinnemanuel.com
`brianmack@quinnemanuel.com
`marissaducca@quinnemanuel.com
`jimglass@quinnemanuel.com
`johnmckee@quinnemanuel.com
`
`PATENT OWNER:
`
`Lewis Hudnell
`HUDNELL LAW GROUP P.C.
`lewis@hudnelllaw.com
`
`Perry Goldberg
`Ted Sichelman
`PROGRESS LLP
`goldberg@progressllp.com
`sichelman@progressllp.com
`
`
`
`6
`
`
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
