`Tel: 571-272-7822
`
`
`
`Paper 8
`Entered: December 20, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TELEBRANDS CORP.,
`Petitioner,
`
`v.
`
`TINNUS ENTERPRISES, LLC,
`Patent Owner.
`_______________
`
`Case PGR2017-00040
` Patent 9,682,789 B2
`_______________
`
`
`Before MICHAEL W. KIM, FRANCES L. IPPOLITO, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`IPPOLITO, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`PGR2017-00040 (Patent 9,682,789 B2)
`
`
`DISCUSSION
`I.
`A conference call in the above proceeding was held on December 11,
`2017 between the parties’ counsels and Judges Kim, Ippolito, and Cherry.1
`On the call, Petitioner, Telebrands Corporation, requested authorization to
`file a reply to the Patent Owner’s Preliminary Response. Petitioner argued
`that good cause exists to grant its request because, among other things, it
`seeks to address whether the Board should exercise its discretion under 35
`U.S.C. §325(d) based on informative decisions that were designated
`informative after the filing of the Petition. See Unified Patents, Inc. v.
`Berman, Case IPR2016-01571 (PTAB Dec. 14, 2016) (Paper 10); Hospira,
`Inc. v. Genentech, Inc., Case IPR2017-00739 (PTAB July 27, 2017) (Paper
`16); and Cultec, Inc. v. Stormtech LLC, Case IPR2017-00777 (PTAB Aug.
`22, 2017) (Paper 7). More specifically, in its requested reply, Petitioner
`explained that it seeks to address whether a certain reference relied upon in
`the Petition is cumulative of references reviewed by the Examiner during
`prosecution of U.S. Patent 9,682,789 B2. Patent Owner opposed
`Petitioner’s request.
`We determined on the call that, under the circumstances of this case,
`Petitioner has not shown good cause for its request. See 37 C.F.R.
`§42.208(c). As discussed, Petitioner has already addressed §325(d) in the
`Petition, on pages 88–89, in a section titled “This Petition Contains New
`Arguments Not Previously Presented to the USPTO.” Furthermore,
`Petitioner has now made of record their position that a certain reference
`relied upon in the Petition is not cumulative of references reviewed by the
`
`
`1 A full transcript of the conference call will be filed by the parties as an
`exhibit. Ex. 2023.
`
`2
`
`
`
`PGR2017-00040 (Patent 9,682,789 B2)
`
`Examiner during prosecution, a position we will take into consideration.
`Thus, to the extent that the parties dispute whether the Board should exercise
`its discretion under §325(d), these respective positions have been briefed by
`the parties and entered in the record. Pet. 88–89; see Prelim. Resp. 2–6.
`Accordingly, we deny Petitioner’s request.
`
`II. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner’s request for authorization to file a reply to
`Patent Owner’s Preliminary Response is denied.
`
`
`
`
`
`
`3
`
`
`
`PGR2017-00040 (Patent 9,682,789 B2)
`
`PETITIONER:
`
`Robert Maldonado
`Tonia Sayour
`Elana Araj
`COOPER & DUNHAM LLP
`rmaldonado@cooperdunham.com
`tsayour@cooperdunham.com
`earaj@cooperdunham.com
`
`Eric Maurer
`BOIES, SCHILLER, & FLEXNER LLP
`emaurer@bsfllp.com
`
`PATENT OWNER:
`
`Robert Sterne
`Jason Eisenberg
`Jonathan Tuminaro
`Trent Merrell
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`rsterne@skgf.com
`jasone-ptab@skgf.com
`jtuminar-ptab@skgf.com
`tmerrell-ptab@skgf.com
`
`
`4
`
`
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
