In its Order, the Board denied Patent Owner’s Motion for Leave to File Motion to Strike, declining to rule on the permissible scope of Petitioner’s Reply brief until the final written decision. The Board also granted a one-week due date extension to the Patent Owner and authorized it to file a Motion for Observation on Cross-Examination of Petitioner’s Reply declarant.
The Board specifically discussed three of Patent Owner’s objections to Petitioner’s reply. First, Patent Owner claimed that Petitioner had improperly raised new arguments because the Reply invoked elements of prior art reference that differed from the elements on which Petitioner’s initial Petition had relied. The Board explained that it was inclined to reject Patent Owner’s argument because Petitioner’s Reply may properly add those references if the change reacted to a narrower claim construction in the Patent Owner Response. Nevertheless, the Board put off a definitive ruling on the matter until the final written decision, noting that if it ultimately agrees with Patent Owner, it would ignore Petitioner’s new arguments.
Second, the Board addressed Patent Owner’s assertion that Petitioner improperly sought to introduce a publication explaining the two-way voice functionality of the “ALOHA protocol,” a technology cited within prior art reference Deluca. Patent Owner contended that Deluca’s ALOHA protocol reference was not associated with a two-way voice application, so the publication should be excluded. Again declining to issue a final ruling at the current stage, the Board noted that Patent Owner’s challenge initially appeared to be persuasive.
Third, the Board briefly examined Patent Owner’s argument that Petitioner’s Reply improperly introduced the parent application to Deluca. Petitioner brought in the parent application in response to Patent Owner’s identification of an alleged error in Deluca. The Board stated that it was inclined to agree with Petitioner regarding the propriety of introducing the parent application to aid in interpretation of the challenged segment, but would not make a determination until its final written decision.
Distinctive Developments, Ltd. v. Uniloc USA, Inc., IPR2013-00391
Paper 26: Order on Motion for Leave to File Motion to Strike
Dated: May 29, 2014
Patent 6,857,067
Before: Jameson Lee and Matthew R. Clements
Written by: Lee