`Tel: 571-272-7822
`
`
`
`
` Paper 7
`Entered: October 5, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`PINN, INC.,
`Patent Owner.
`
`
`IPR2020-00999 (Patent 9,807,491 B2)
`PGR2020-00066 (Patent 10,455,066 B2)
` PGR2020-00073 (Patent 10,609,198 B2)1
`
`
`
`Before JAMESON LEE, KARL D. EASTHOM, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`
`
`ORDER
`Authorizing Reply and Sur-reply
`37 C.F.R. §§ 42.5(a), 42.20(d), 42.108(c), 42.208(c)
`
`On October 2, 2020, a conference call was held among counsel for
`Apple Inc. (Petitioner), counsel for Pinn, Inc. (Patent Owner), and Judges
`
`
`1 This order will be entered in each case. The parties are not authorized to
`use this caption.
`
`
`
`IPR2020-00999 (Patent 9,807,491 B2)
`PGR2020-00066 (Patent 10,455,066 B2)
`PGR2020-00073 (Patent 10,609,198 B2)
`
`Lee, Easthom, and Pettigrew. This order memorializes the rulings made on
`the call. The purpose of the call was to address Petitioner’s request for
`authorization to file a reply to Patent Owner’s Preliminary Response in each
`of these proceedings. See Ex. 3001. Petitioner seeks leave to address the
`following issues: (1) Petitioner’s stipulation in the parallel district court
`proceeding regarding asserted invalidity grounds, (2) discretionary denial
`pursuant to 35 U.S.C. §§ 314(a) and 324(a), (3) discretionary denial pursuant
`to 35 U.S.C. § 325(d), and (4) the construction of the claim term “wireless
`pairing” and the prior art’s disclosure of that limitation. See id. Patent
`Owner opposes Petitioner’s request. See id.
`The first two issues relate to the Board’s discretion to deny institution
`of inter partes review and post grant review under 35 U.S.C. §§ 314(a) and
`324(a), respectively, in view of a parallel district court proceeding.
`Although both the Petition and Preliminary Response in each case analyzed
`the factors in Apple Inc. v. Fintiv Inc., IPR2020-00019, Paper 11 (PTAB
`Mar. 20, 2020) (precedential), good cause exists for additional briefing on
`the Fintiv factors, at least because some documents may not yet have been
`served or filed in the district court case when the parties submitted their
`earlier papers to the Board. It also will be beneficial for the parties to clarify
`the circumstances regarding Petitioner’s stipulation regarding asserted
`invalidity grounds in district court.
`Regarding the third issue, good cause exists for additional briefing to
`address Patent Owner’s argument pursuant to 35 U.S.C. § 325(d) that prior
`art references that were before the Office during prosecution of the patents at
`issue are substantially the same as references asserted in the Petitions, none
`
`2
`
`
`
`IPR2020-00999 (Patent 9,807,491 B2)
`PGR2020-00066 (Patent 10,455,066 B2)
`PGR2020-00073 (Patent 10,609,198 B2)
`
`of which were previously before the Office. Petitioner should be given an
`opportunity to explain why the references are not substantially the same.
`Good cause also exists for additional briefing to address the claim
`construction and alleged prior art disclosure of “wireless pairing” in view of
`the Technical Special Master Report and Recommendation on Claim
`Construction, entered in the district court proceeding after the filing of two
`of the Petitions in these cases. See Ex. 2006.
`In view of the particular circumstances of these cases, we authorize
`Petitioner to file in each case a reply to Patent Owner’s Preliminary
`Response to address the issues identified in Petitioner’s request. Each of
`Petitioner’s replies is limited to 15 pages and is to be filed in each case no
`later than October 14, 2020. Patent Owner is authorized to file a sur-reply in
`each case, limited to 15 pages, no later than October 26, 2020.
`The parties are authorized to file with their replies and sur-replies
`additional evidence limited to documents filed or served in the parallel
`district court proceeding and documents from the prosecution histories of the
`patents at issue. No other additional evidence may be submitted.
`It is so ORDERED.
`
`
`
`
`3
`
`
`
`IPR2020-00999 (Patent 9,807,491 B2)
`PGR2020-00066 (Patent 10,455,066 B2)
`PGR2020-00073 (Patent 10,609,198 B2)
`
`PETITIONER:
`
`W. Karl Renner
`Kim Leung
`Usman Khan
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`leung@fr.com
`khan@fr.com
`
`
`PATENT OWNER:
`
`Cabrach Connor
`CONNOR KUDLAC LEE PLLC
`cab@connorkudlaclee.com
`
`Carder W. Brooks
`David A. Skeels
`WHITAKER CHALK SWINDLE & SCHWARTZ PLLC
`cbrooks@whitakerchalk.com
`dskeels@whitakerchalk.com
`
`John. R. Kasha
`KASHA LAW LLC
`john.kasha@kashalaw.com
`
`4
`
`
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