Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper No. 14
`Entered: September 16, 2020
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APEX TOOL GROUP, LLC,
`Petitioner,
`v.
`
`MILWAIKEE ELECTRIC TOOL CORPORATION,
`Patent Owner.
`____________
`
`PGR2020-00056
`Patent 10,422,617 B1
`____________
`
`Before GRACE KARAFFA OBERMANN, JOHN A. HUDALLA, and
`AARON W. MOORE, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`Authorizing Additional Briefing
`37 C.F.R. § 42.20(d)
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`Paper No. 14
`Entered: September 16, 2020
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APEX TOOL GROUP, LLC,
`Petitioner,
`v.
`
`MILWAIKEE ELECTRIC TOOL CORPORATION,
`Patent Owner.
`____________
`
`PGR2020-00056
`Patent 10,422,617 B1
`____________
`
`Before GRACE KARAFFA OBERMANN, JOHN A. HUDALLA, and
`AARON W. MOORE, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`Authorizing Additional Briefing
`37 C.F.R. § 42.20(d)
`
`
`
`
`
`
`
`PGR2020-00056
`Patent 10,422,617 B1
`
`
`Petitioner challenges the patentability of Patent No. 10,422,617 B1
`
`(“the ’617 patent”). See generally Paper 1 (“Petition”). On July 30, 2020,
`Petitioner submitted an email to the Board requesting authorization to file a
`five-page Reply to Patent Owner’s Preliminary Response (Paper 9) to the
`Petition. Ex. 3001, 2 (copy of email correspondence). On July 31, 2020,
`Patent Owner submitted an email opposing Petitioner’s request. Id. at 1–2.
`That same day, the Board authorized the parties to file a Reply and Sur-
`reply. Id. at 1 (Board’s responsive email of July 31, 2020). An Order
`entered September 3, 2020, memorializes the terms and conditions of that
`additional briefing. Paper 11 (“the Order”). We advised the parties that the
`Reply and Sur-reply were limited in substance to a solitary argument raised
`in Patent Owner’s Preliminary Response, namely, “that the ‘conventional
`tape measure blade design’ identified as ‘Prior Art 2’ in the [’617] patent’s
`specification is not prior art.” Order, 2; Ex. 3001, 2.
`The additional briefing authorized by the Order was completed on
`August 14, 2020. Four days later, the Director of the United States Patent
`and Trademark Office issued a memorandum setting forth guidance on how
`the Board shall consider statements by a patent applicant in a patent
`specification regarding the prior art when those statements are relied on in
`support of a request for inter partes review. See Memorandum from Andrei
`Iancu to Members of the Patent Trial and Appeal Board (Aug. 18, 2020),
`https://www.uspto.gov/sites/default/files/documents/signed_aapa_guidance
`memo.pdf (“AAPA Guidance Memo”).
`Given the circumstances set forth above, and in order to more fully
`and fairly develop the arguments in light of the recent AAPA Guidance
`2
`
`
`
`
`
`PGR2020-00056
`Patent 10,422,617 B1
`
`
`Memo, we authorize, sua sponte, additional briefing limited to issues
`pertaining to the AAPA Guidance Memo as detailed below. See 37 C.F.R.
`§ 42.20(d) (2019) (“The Board may order briefing on any issue involved in
`the trial.”). Specifically, any Additional Brief filed pursuant to this Order
`should address (1) whether the AAPA Guidance Memo has any bearing in
`post-grant review proceedings, including an explanation based on relevant
`points and authorities; and (2) the substantive effect of the AAPA Guidance
`Memo, if any, on the grounds stated in the Petition. Briefing will commence
`with simultaneous opening briefs followed by simultaneous responsive
`briefs, as set forth more particularly below.
`
`It is
`ORDERED that Petitioner is authorized to file an Additional Brief
`limited to issues pertaining to the AAPA Guidance Memo, namely,
`(1) Whether the AAPA Guidance Memo has any bearing in
`post-grant review proceedings, including an explanation based on
`relevant points and authorities; and
`(2) The substantive effect of the AAPA Guidance Memo, if
`any, on the grounds stated in the Petition;
`FURTHER ORDERED that Patent Owner likewise is authorized to
`file an Additional Brief limited to issues pertaining to the AAPA Guidance
`Memo, namely,
`(1) Whether the AAPA Guidance Memo has any bearing in
`post-grant review proceedings, including an explanation based on
`relevant points and authorities; and
`3
`
`
`
`
`
`PGR2020-00056
`Patent 10,422,617 B1
`
`
`(2) The substantive effect of the AAPA Guidance Memo, if
`any, on the grounds stated in the Petition;
`FURTHER ORDERED that the Additional Briefs shall be five pages
`or less in substantive length and filed no later than September 23, 2020;
`FURTHER ORDERED that Petitioner is authorized to file a
`Responsive Brief in the event that Patent Owner files an Additional Brief
`pursuant to the above authorization;
`FURTHER ORDERED Patent Owner likewise is authorized to file a
`Responsive Brief in the event that Petitioner files an Additional Brief
`pursuant to the above authorization;
`FURTHER ORDERED that any Responsive Brief filed pursuant to
`this Order shall be limited to responding to arguments made in the opposing
`party’s Additional Brief, shall be five pages or less in substantive length, and
`shall be filed no later than September 30, 2020;
`FURTHER ORDERED that no new evidence shall accompany any
`Additional Brief or Responsive Brief authorized by this Order; and
`
`FURTHER ORDERED that no other briefing or relief is authorized at
`this time.
`
`
`
`
`
`4
`
`
`
`
`
`PGR2020-00056
`Patent 10,422,617 B1
`
`
`
`For PETITIONER:
`Bradley Micsky
`Nathan Louwagie
`CARLSON, CASPERS, VANDENBURGH & LINDQUIST, P.A.
`bmicsky@carlsoncaspers.com
`nlouwagie@carlsoncaspers.com
`
`For PATENT OWNER:
`Jason White
`Alexander Stein
`MORGAN LEWIS & BOCKIUS
`Jason.white@morganlewis.com
`Alexander.stein@morganlewis.com
`
`
`
`
`5
`
`
`
`
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