Paper No. 45
`Trials@uspto.gov
`571.272.7822 Filed: July 25, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BESTWAY (USA), INC.,
`Petitioner,
`
`v.
`
`INTEX MARKETING LTD.,
`Patent Owner.
`____________
`
`Case PGR2017-00003
`Patent 9,254,240 B2
`____________
`
`
`
`
`Before KEN B. BARRETT, FRANCES L. IPPOLITO, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`
`BARRETT, Administrative Patent Judge.
`
`
`
`ORDER
`Denying Patent Owner’s Request for a Sur-reply and
`Granting Petitioner’s Request for Oral Argument
`37 C.F.R. §§ 42.5, 42.70
`
`
`Trials@uspto.gov
`571.272.7822 Filed: July 25, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BESTWAY (USA), INC.,
`Petitioner,
`
`v.
`
`INTEX MARKETING LTD.,
`Patent Owner.
`____________
`
`Case PGR2017-00003
`Patent 9,254,240 B2
`____________
`
`
`
`
`Before KEN B. BARRETT, FRANCES L. IPPOLITO, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`
`BARRETT, Administrative Patent Judge.
`
`
`
`ORDER
`Denying Patent Owner’s Request for a Sur-reply and
`Granting Petitioner’s Request for Oral Argument
`37 C.F.R. §§ 42.5, 42.70
`
`
`
`PGR2017-00003
`Patent 9,254,240 B2
`
`
`Procedural Posture
`
`
`
`In the original Institution Decision, a post-grant review was instituted
`
`on Petitioner’s challenge of claims 1–7 and 17 under 35 U.S.C. § 103 as
`
`unpatentable over Peterson and Fireman (“Ground 1”), but a trial was not
`
`instituted as to Petitioner’s obviousness challenge of claims 18–22 and 30
`
`based on Peterson, Fireman, and Guan ’797 (“Ground 2”), or Petitioner’s
`
`obviousness challenge of claims 18–22 based on Peterson, Fireman, Guan
`
`’797, and Wang ’615 (“Ground 3”). Paper 9. An oral argument directed to
`
`Ground 1 was conducted on February 5, 2018. On May 2, 2018, we
`
`modified our institution decision to institute on all of the challenged claims
`
`and all of the grounds presented in the Petition. Paper 30; see Guidance on
`
`the Impact of SAS1 on AIA Trial Proceedings (April 26, 2018).2
`
`
`
`Additional briefing regarding Grounds 2 and 3 was authorized.
`
`Paper 33. We ordered the parties to file, after the filing of Petitioner’s Reply
`
`concerning Grounds 2 and 3, “a joint submission setting forth their
`
`position(s) on any proposed modifications to the schedule and the
`
`proceeding prior to the issuance of a Final Written Decision on all claims
`
`and grounds challenged in the Petition.” Id. It is that joint submission
`
`(Paper 44) that is before us now. In that submission, each party makes a
`
`request. We deny Patent Owner’s request to file a sur-reply to Petitioner’s
`
`
`
`1 SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018).
`
`2 Available at https://www.uspto.gov/patents-application-process/patent-
`trial-and-appeal-board/trials/guidance-impact-sas-aia-trial.
`
`2
`
`
`
`PGR2017-00003
`Patent 9,254,240 B2
`
`
`Supplemental Reply and we grant Petitioner’s request for a second oral
`
`argument.
`
`Patent Owner’s Request for a Sur-reply
`
`
`
`In the latest round of briefing—concerning Grounds 2 and 3—Patent
`
`Owner, in Paper 34, opted to rely on its arguments set forth in the
`
`Preliminary Response, and Petitioner filed a Supplement Reply thereto
`
`(Paper 41). Patent Owner requests that it be allowed ten business days to
`
`“submit a sur-reply to address new arguments raised in Petitioner’s Reply,
`
`including Petitioner’s characterization of the asserted grounds.” Paper 44
`
`(Joint Submission regarding further proceedings). Petitioner opposes this
`
`request. Id.
`
`
`
`The Board will determine for itself whether arguments in Petitioner’s
`
`Supplemental Reply are outside the appropriate scope for a reply and
`
`whether Petitioner mischaracterize the grounds set forth in the Petition, and,
`
`if so, we will not consider those arguments. Because we will not consider
`
`new arguments from Petitioner, there is no need for Patent Owner to address
`
`those arguments. Accordingly, Patent Owner’s request to submit a sur-reply
`
`is denied. We note that Patent Owner will have the opportunity to respond
`
`to Petitioner’s arguments regarding Grounds 2 and 3 at the oral argument.
`
`Oral Argument
`
`
`
`Petitioner requests a second oral argument in this case, pursuant to 37
`
`C.F.R. § 42.70(a), to address Grounds 2 and 3. Papers 43, 44. Petitioner
`
`requests fifteen minutes to present its arguments. Paper 43. Patent Owner
`
`believes oral argument is unnecessary. Paper 44. In response to a query
`
`from the Board, the parties submitted via email a list of dates and times
`
`when both parties are available for a short, telephonic conference.
`
`3
`
`
`
`PGR2017-00003
`Patent 9,254,240 B2
`
`
`
`
`We grant the request for oral argument and further order that the
`
`argument will be conducted telephonically.
`
`
`
`The telephonic hearing will commence at 11:00 AM ET, on
`
`Wednesday, August 1, 2018. Counsel will participate by telephone and
`
`will be provided with the call-in number prior to the date of the hearing.
`
`The hearing will be open to the public, on the ninth floor of Madison
`
`Building East, 600 Dulany Street, Alexandria, Virginia, for in-person
`
`attendance that will be accommodated on a first-come, first-served basis.
`
`The Board will provide a court reporter, and the reporter’s transcript will
`
`constitute the official record of the hearings.
`
`
`
`Each party will have a total of fifteen (15) minutes to present
`
`arguments. Petitioner bears the ultimate burden of proof that Patent
`
`Owner’s patent claims at issue are unpatentable. Thus, Petitioner will
`
`proceed first to present its case with respect to the challenged patent claims
`
`and to Grounds 2 and 3. Thereafter, Patent Owner may respond to
`
`Petitioner’s arguments. Petitioner may reserve some of its argument time to
`
`respond to Patent Owner’s presentation.
`
`
`
`Because an oral argument concerning Ground 1 has been completed,
`
`arguments at this second hearing will be limited to Grounds 2 and 3 as they
`
`are set forth in the Petition.
`
`
`
`The parties are reminded that the presenter must identify clearly and
`
`specifically each demonstrative exhibit (e.g., by slide or screen number)
`
`referenced during the hearing to ensure the clarity and accuracy of the
`
`reporter’s transcript and the ability of the judges and counsel participating
`
`telephonically to closely follow the presenter’s arguments. Additionally, the
`
`parties are requested to provide a courtesy copy of any demonstrative
`
`4
`
`
`
`PGR2017-00003
`Patent 9,254,240 B2
`
`
`exhibits to the Board by emailing them to Trials@uspto.gov no later than 4
`
`pm ET on Tuesday, July 31, 2018.
`
`
`
`Demonstrative exhibits are to be served on the opposing party no later
`
`than Monday, July 30, 2018, and are to be filed no later than the time of the
`
`oral argument. It is preferred that the demonstrative exhibits be filed before
`
`5 pm ET on July 30, 2018, to ensure the judges and court reporter have
`
`access to those in advance of the hearing.
`
`
`
`The Board asks that the parties attempt to resolve objections to the
`
`demonstratives, and, if any objections cannot be resolved, the parties may
`
`raise those objections with the Board at the hearing. The Board may reserve
`
`ruling on the objections until after the oral argument. The parties may refer
`
`to St. Jude Medical, Cardiology Div., Inc. v. The Board of Regents of the
`
`University of Michigan, IPR2013-00041 (PTAB Jan. 27, 2014) (Paper 65)
`
`regarding the appropriate content of demonstrative exhibits.
`
`
`
`The Board expects lead counsel for each party to be present
`
`telephonically at the hearing, although lead or back-up counsel of record
`
`may make the presentation. If either party anticipates that its lead counsel
`
`will not attend the oral argument, the party is to notify the Board, via email
`
`to Trials@uspto.gov, no later than two business days prior to the oral
`
`hearing.
`
`
`
`The parties are reminded that, at the oral argument, they “may rely
`
`upon evidence that has been previously submitted in the proceeding and may
`
`only present arguments relied upon in the papers previously submitted.”
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768
`
`(Aug. 14, 2012). “No new evidence or arguments may be presented at the
`
`oral argument.” Id.
`
`5
`
`
`
`PGR2017-00003
`Patent 9,254,240 B2
`
`
`
`
`
`
`Accordingly, it is
`
`ORDERED that Patent Owner’s request to file a sur-reply to
`
`Petitioner’s supplemental reply brief is denied;
`
`
`
`FURTHER ORDERED that Petitioner’s request for a second oral
`
`argument is granted; and
`
`
`
`FURTHER ORDERED that a telephonic oral argument will
`
`commence at 11:00 AM ET, on Wednesday, August 1, 2018, and that the
`
`hearing will be open to the public on the ninth floor of Madison Building
`
`East, 600 Dulany Street, Alexandria, Virginia.
`
`
`
`
`
`
`For PETITIONER:
`
`Michael Chu
`mchu@mwe.com
`
`Brian Jones
`bajones@mwe.com
`
`
`For PATENT OWNER:
`
`Trevor Carter
`Trevor.carter@faegrebd.com
`
`Andrew McCoy
`Andrew.mccoy.ptab@faegrebd.com
`
`
`6
`
`
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