`Tel: 571-272-7822
`
`
`Paper No. 7
`Entered: September 21, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SUPERCELL OY,
`Petitioner,
`
`v.
`
`GREE, INC.,
`Patent Owner.
`_________
`
`Case PGR2018-00064
`Patent 9,737,816 B2
`____________
`
`
`Before LYNNE H. BROWNE, HYUN J. JUNG, and CARL M. DEFRANCO,
`Administrative Patent Judges.
`
`BROWNE, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`PGR2018-00064
`Patent 9,737,816 B2
`
`
`On September 20, 2018, a conference call was held, between counsel for the
`parties and Judges Browne, Jung, and DeFranco, concerning Petitioner’s request to
`file a reply to Patent Owner’s Preliminary Response (Paper 38, “Prelim. Resp.”),
`which presents arguments regarding the effective filing date of the challenged
`patent. The panel observed that the Petition already contains arguments addressing
`the effective filing date. Petitioner agreed but asserted that it believes the
`Preliminary Response presents genuine issues of fact that it should be allowed to
`address. According to Petitioner, the Preliminary Response improperly
`incorporates by reference several paragraphs from the declaration filed by Patent
`Owner and the testimony in the declaration does not identify the underlying facts
`and data on which the declarant based his conclusions.
`Patent Owner responded that Petitioner is attempting to gain another
`opportunity to address the issue of the effective filing date and that Petitioner chose
`to forego the opportunity to support the issue with declaratory evidence by
`choosing not to file a declaration in this proceeding. Patent Owner also responded
`that there are no issues of material fact presented by the record thus far, that the
`Preliminary Response does not improperly incorporate declarant testimony, and
`that the testimony is supported by the record. Patent Owner further noted that
`additional briefing is normally granted when the Board has not heard from both
`parties with respect to an issue.
`We agree with Patent Owner. Concerning potential issues of material fact,
`Petitioner has informed the Board of its belief, and so the Board will take it into
`account. If there are no genuine issues of material fact, then further briefing is not
`warranted from the Petitioner. If the Preliminary Response does contain improper
`incorporations of declarant testimony or if that testimony is not supported by
`
` 2
`
`
`
`
`
`
`
`PGR2018-00064
`Patent 9,737,816 B2
`
`reference to the underlying facts and data, the Board will be able to make those
`determinations, without need for a reply from Petitioner.
`Accordingly, it is
`ORDERED that Petitioner’s request to file a reply to Patent Owner’s
`Preliminary Response is denied.
`
`
` 3
`
`
`
`
`
`
`
`PGR2018-00064
`Patent 9,737,816 B2
`
`For PETITIONER:
`
`Jennifer R. Bush
`Michael Sacksteder
`FENWICK & WEST LLP
`jbush-ptab@fenwick.com
`msacksteder@fenwick.com
`
`
`For PATENT OWNER:
`
`Scott McKeown
`Matthew Rizzolo
`ROPES & GRAY LLP
`Scott.McKeown@ropesgray.com
`Matthew.Rizzolo@ropesgray.com
`
` 4
`
`
`
`
`
`
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