`571-272-7822
`
`
`
`
`
` Paper: 9
`Entered: December 8, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DISH NETWORK L.L.C., DISH TECHNOLOGIES L.L.C.,
`and SLING TV L.L.C.,
`Petitioner,
`
`v.
`
`
`SOUND VIEW INNOVATIONS, LLC,
`Patent Owner.
`____________
`
`IPR2020-01276
`Patent 6,757,796 B1
`____________
`
`
`
`
`
`
`
`
`Before DEBRA K. STEPHENS, JOHN A. HUDALLA, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`HUDALLA, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. §§ 42.5, 42.108
`
`
`On December 7, 2020, Petitioner emailed the Board requesting
`
`authorization to file a four-page reply to address certain arguments in Patent
`Owner’s Preliminary Response (Paper 8, “Prelim. Resp.”) related to
`IPR2020-00969. In particular, Patent Owner puts forth arguments based on
`collateral estoppel and 35 U.S.C. § 325(d) that are related to the Board’s
`Decision Denying Institution of Inter Partes Review in IPR2020-00969.
`
`
`
`IPR2020-01276
`Patent 6,757,796 B1
`
`Prelim. Resp. 26–31. Petitioner contends good cause exists to grant
`Petitioner’s request because the Decision Denying Institution in
`IPR2020-00969 issued between the filing of the Petition and the Preliminary
`Response in this case.
`Patent Owner wrote a separate email on December 7, 2020, to indicate
`that it does not believe good cause exists to authorize a reply. Nevertheless,
`Patent Owner indicated that it would not oppose Petitioner’s request
`provided that (1) Patent Owner is authorized to file a sur-reply; and (2) the
`reply and sur-reply are limited to four pages and to the issues of collateral
`estoppel and § 325(d).
`37 C.F.R. § 42.108(c) states that a petitioner “may seek leave to file a
`reply to the preliminary response” and that “[a]ny such request must make a
`showing of good cause.” In view of § 42.108(c), we may authorize a reply
`under our authority to “enter non-final orders to administer the proceeding.”
`37 C.F.R. § 42.5(a). The panel believes it will be helpful for the parties to
`further address the impact, if any, of the Decision Denying Institution in
`IPR2020-00969. Given the potentially dispositive nature of the issues raised
`by Patent Owner, we find that Petitioner has established good cause for
`further briefing.
`Therefore, we authorize Petitioner to file a reply limited to addressing
`Patent Owner’s arguments based on collateral estoppel and § 325(d) in the
`Preliminary Response. We also authorize Patent Owner to file a sur-reply
`limited to responding to Petitioner’s reply. The reply and sur-reply will each
`be limited to four pages. The deadlines for filing the reply and sur-reply are
`set forth in the Order below.
`
`
`
`2
`
`
`
`IPR2020-01276
`Patent 6,757,796 B1
`
`
`ORDER
`
`It is
`ORDERED the Petitioner is authorized to file a reply of no more than
`four pages limited to addressing Patent Owner’s arguments based on
`collateral estoppel and 35 U.S.C. § 325(d) in the Preliminary Response;
`FURTHER ORDERED that Patent Owner is authorized to file a
`sur-reply of no more than four pages limited to addressing the arguments
`and assertions in Petitioner’s reply; and
`FURTHER ORDERED that Petitioner’s reply is due one week from
`the date of this Order, and Patent Owner’s sur-reply is due one week from
`the filing of Petitioner’s reply.
`
`
`
`
`
`3
`
`
`
`IPR2020-01276
`Patent 6,757,796 B1
`
`PETITIONER:
`
`Eliot Williams
`Hopkins Guy
`Ali Dhanani
`Thomas Carter Jr
`BAKER BOTTS L.L.P.
`eliot.williams@bakerbotts.com
`hop.guy@bakerbotts.com
`ali.dhanani@bakerbotts.com
`thomas.carter@bakerbotts.com
`
`PATENT OWNER:
`
`Kenneth J. Weatherwax
`Nathan Lowenstein
`Bridget Smith
`Edward Hsieh
`Parham Hendifar
`Patrick Maloney
`Jason C. Linger
`LOWENSTEIN & WEATHERWAX LLP
`weatherwax@lowensteinweatherwax.com
`lowenstein@lowensteinweatherwax.com
`smith@lowensteinweatherwax.com
`hsieh@lowensteinweatherwax.com
`hendifar@lowensteinweatherwax.com
`maloney@lowensteinweatherwax.com
`linger@lowensteinweatherwax.com
`
`
`
`4
`
`
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