`Tel: 571-272-7822
`
`Paper 39
`Entered: October 28, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SIMPSON STRONG-TIE COMPANY INC.,
`Petitioner,
`
`v.
`
`COLUMBIA INSURANCE COMPANY,
`Patent Owner.
`____________
`
`PGR2019-00063
`Patent 10,316,510 B2
`____________
`
`
`
`Before SCOTT A. DANIELS, NEIL T. POWELL, and
`STEPHEN E. BELISLE, Administrative Patent Judges.
`
`BELISLE, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`Denying Authorization to File Motion to Strike Petitioner’s Reply
`37 C.F.R. § 42.5
`
`
`
`PGR2019-00063
`Patent 10,316,510 B2
`
`
`In an October 6, 2020, email to the Board, Columbia Insurance
`Company (“Patent Owner”) requested authorization to file a motion to strike
`at least certain arguments in the Reply to Patent Owner’s Response
`(Paper 32, “Reply”) of Simpson Strong-Tie Company Inc. (“Petitioner”).
`Petitioner opposes the request. The panel held a conference call with the
`parties on October 15, 2020, to consider Patent Owner’s request. For the
`reasons discussed during the conference call, we denied Patent Owner’s
`request. This Order further details our reasoning.
`First, our Consolidated Trial Practice Guide (“Consolidated Practice
`Guide”)1 states: “Generally, authorization to file a motion to strike should be
`requested within one week of the allegedly improper submission. The Board
`will consider such requests on a case-by-case basis.” Consolidated Practice
`Guide at 81 (emphasis added). Although Petitioner filed its Reply on
`August 27, 2020, Patent Owner did not request a conference call to request
`leave to file a motion to strike until October 6, 2020—about six weeks later,
`and proposed dates for the conference call beginning with October 12, 2020,
`only after Patent Owner filed its Sur-Reply to Petitioner’s Reply on
`October 8, 2020. During the conference call, Patent Owner did not present
`sufficient reason for this substantial delay in requesting authorization to file
`a motion to strike.
`Second, “striking the entirety or a portion of a party’s brief is an
`exceptional remedy that the Board expects will be granted rarely,” but doing
`so may be appropriate where, for example, it is “beyond dispute” that an
`issue raised therein is new. Consolidated Trial Practice Guide at 80–81
`
`
`1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated; see
`also 84 Fed. Reg. 64,280 (Nov. 21, 2019).
`
`2
`
`
`
`PGR2019-00063
`Patent 10,316,510 B2
`
`(“[W]here a reply clearly relies on a new theory not included in prior
`briefing, and where addressing this new theory during oral hearing would
`prejudice the opposing party, striking the portion of the brief containing that
`theory may be appropriate.”). Here, Patent Owner alleges:
`[T]he Reply raised the following new arguments that could have
`been presented in the Petition:
`• That the embossments 102 of the Gilb ’155 hanger would
`prevent the sheathing from laying flush with face 4', thus
`allowing the gusset-like member 9 to extend out the other side of
`the sheathing.
`• Arguing in contradiction to its “isometric renderings of the
`Tsukamoto combination hanger,” that top flange 3A and back
`flange 3D “share at least a point, if not more.”
`• Arguing with respect to the Gilb ’155 combination, “one
`sheet of sheathing would be narrower than the other due to the
`tapering of flanges 52.”
`• Arguing with respect to the Tsukamoto combination, that
`“a POSITA could simply make two cuts around the extension
`portions, such that the inner space covering the back flanges
`would be filled.”
`Email from Patent Owner’s Counsel, John R. Schroeder, to Board, dated
`Oct. 6, 2020 (citations omitted). Petitioner argues that its Reply, including
`the substance therein relating to the above-challenged arguments, responds
`to arguments raised in Patent Owner’s Response, as permitted by 37 C.F.R.
`§ 42.23(b). Having reviewed Petitioner’s Reply in view of Patent Owner’s
`above-noted concerns, we cannot find that the Reply clearly or indisputably
`presents new arguments or theories as urged by Patent Owner.
`Accordingly, we decline to exercise our discretion to authorize Patent
`Owner to file a motion to strike Petitioner’s Reply, in whole or in part.
`
`3
`
`
`
`PGR2019-00063
`Patent 10,316,510 B2
`
`
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Patent Owner’s request for authorization to file a
`Motion to Strike Petitioner’s Reply (in whole or in part) is denied.
`
`
`For PETITIONER:
`Michelle Holoubek
`Sean Flood
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`holoubek-ptab@sternekessler.com
`sflood-ptab@sternekessler.com
`
`
`For PATENT OWNER:
`
`Kurt James
`Steven Levitt
`John Schroeder
`STINSON LLP
`kurt.james@stinson.com
`steven.levitt@stinson.com
`john.schroeder@stinson.com
`
`
`
`4
`
`
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