Paper 6
`Trials@uspto.gov
`571-272-7822 Entered: May 9, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INVUE SECURITY PRODUCTS, INC.,
`Petitioner,
`
`v.
`
`MOBILE TECH, INC.,
`Patent Owner.
`____________
`
`Case PGR2019-00019
`Patent 10,026,281 B1
`____________
`
`
`
`Before RAMA G. ELLURU, TERRENCE W. McMILLIN, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`McMILLIN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: May 9, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INVUE SECURITY PRODUCTS, INC.,
`Petitioner,
`
`v.
`
`MOBILE TECH, INC.,
`Patent Owner.
`____________
`
`Case PGR2019-00019
`Patent 10,026,281 B1
`____________
`
`
`
`Before RAMA G. ELLURU, TERRENCE W. McMILLIN, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`McMILLIN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`
`PGR2019-00019
`Patent 10,026,281 B2
`
`
`On May 9, 2019, a conference call was held between counsel for the
`parties and Judges Elluru, McMillin, and Galligan. This teleconference was
`set up in response to an email received from Petitioner’s counsel, David
`Moreland, on May 8, 2019, that said:
`Recent decisions by the Board have relied on discretion solely to
`reject petitions based on perceived lack of specificity in the stated
`grounds. Petitioner InVue submits that the present PGR petition
`is narrowly tailored to five (5) distinct grounds. However,
`because Patent Owner MTI’s preliminary response characterizes
`the grounds as being voluminous and incorporating undisclosed
`references, InVue requests authorization to file at most a two-
`page reply before Friday, May 10 to explain why such assertions
`are not correct. InVue submits that such a limited request will
`not affect the Board’s ability to render a timely Institution
`Decision, which is due June 6.
`
`InVue has conferred with MTI on the above. MTI objects to the
`submission of this reply and requests a conference call to discuss
`to the extent the Board is considering to allow it.
`
`
`Ex. 3001. In this email, Petitioner requests authorization to file a reply to
`Patent Owner’s Preliminary Response. The email also indicates the parties
`have conferred and that Patent Owner objects to the submission of the reply.
`These positions of the parties were confirmed during the teleconference.
`Argument from counsel for both parties was heard and considered.
`
`Under 37 C.F.R. § 42.208(c), “A petitioner may seek leave to file a
`reply to the preliminary response in accordance with §§42.23 and 42.24(c).
`Any such request must make a showing of good cause.” For the following
`reasons, Petitioner has not established good cause for filing a reply to the
`Preliminary Response.
`
`
`2
`
`
`
`PGR2019-00019
`Patent 10,026,281 B2
`
`
`The Petition was filed on November 21, 2018. The Preliminary
`Response was filed on March 6, 2019, which was over 2 months before
`Petitioner’s request to file a reply was made. The statutory deadline to issue
`a decision on whether to institute a post-grant review in response to the
`Petition is June 6, 2019, which is less than 1 month from when Petitioner’s
`request for a reply was made. 35 U.S.C. § 324(c) (a determination whether
`to institute a post-grant review shall be made within 3 months after a
`preliminary response is filed). 37 C.F.R. § 42.25 provides, “[a] party should
`seek relief promptly after the need for relief is identified. Delay in seeking
`relief may justify a denial of relief sought.” Petitioner was unable to provide
`any satisfactory explanation as to why its request was not made earlier.
`Furthermore, during the teleconference with the parties, counsel for
`Petitioner indicated that additional briefing is appropriate in view of recent
`Board decisions denying institution. However, the requirement for
`specificity in petitions, which is the issue Petitioner wishes to address in a
`reply, has been in effect since AIA post-issuance reviews began. The
`relevant statute provides that a determination whether to institute a post-
`grant review shall be made based on “the information presented in the
`petition.” 35 U.S.C. § 324(a). In addition, 35 U.S.C. § 322(a)(3) provides
`that the petition identify “in writing and with particularity, each claim
`challenged, the grounds on which the challenge to each claim is based, and
`the evidence that supports the grounds for the challenge to each claim.” 37
`C.F.R. § 42.22(a)(2) provides that each petition include, “[a] full statement
`of the reasons for the relief requested, including a detailed explanation of the
`significance of the evidence including material facts, and the governing law,
`
`3
`
`
`
`PGR2019-00019
`Patent 10,026,281 B2
`
`rules, and precedent.” See also 37 C.F.R. § 42.204. Thus, Petitioner did not
`provide any satisfactory reason why it needs a reply.
`
`The Board considers the request for authorization to file a reply to the
`Preliminary Response to be untimely. Additionally, the Board considers a
`reply to be unnecessary. We determine that no good cause has been shown
`for granting Petitioner’s request.
`
`Upon consideration thereof,
`it is ORDERED that:
`the Petitioner’s request for authorization to file a reply to the Patent
`Owner’s Preliminary Response is denied.
`
`
`
`
`
`
`
`
`
`
`4
`
`
`
`PGR2019-00019
`Patent 10,026,281 B2
`
`PETITIONER:
`David Moreland
`dmoreland@mcciplaw.com
`
`Gregory Carlin
`gcarlin@mcciplaw.com
`
`Trent Kirk
`trentkirk@invue.com
`
`PATENT OWNER:
`
`Alan Norman
`anorman@thompsoncoburn.com
`
`Anthony Blum
`ablum@thompsoncoburn.com
`
`David Jinkins
`djinkins@thompsoncoburn.com
`
`Matthew Braunel
`mbraunel@thompsoncoburn.com
`
`
`
`
`5
`
`
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