Takeaway: The Board’s rules do not provide for a reply to a preliminary response, even in the case where one is agreed to by both parties.

In its Order, the Board summarized a conference call that it held with counsel for the parties on November 6, 2015.  In particular, the Board confirmed that it had denied Petitioner’s request for authorization to file a reply to the preliminary response and Patent Owner’s request for authorization to file a sur-reply.

Patent Owner had indicated its intent “to rely upon information obtained under a protective order in an arbitration proceeding with a third party” in order to raise a real-party-in-interest issue in its preliminary response.  Petitioner, for its part, “agreed to not oppose Patent Owner’s use of the information if the Board would allow Petitioner to file a reply to the preliminary response and if confidentiality concerns are addressed by redactions of the information or entry of a protective order.”  This led to the parties making the above-referenced requests for authorization during the conference call with the Board.

The Board denied the parties’ requests for authorization because its rules “do not provide for a reply to a preliminary response,” even where both parties agree that such a reply may be filed.  The Board went on to note that because a preliminary response raising the real-party-in-interest issue had not yet been filed, Petitioner’s request was premature.

The Board concluded by indicating that any information asserted by Petitioner to be confidential should be filed by Patent Owner as confidential, along with Petitioner (by itself) or the parties (jointly) filing “a corresponding motion to seal.”  The Board then directed the parties to Garmin International, Inc. v. Cuozzo Speed Technologies, LLC, IPR2012-00001, for additional guidance as to motion to seal requirements.

Zero Gravity Inside, Inc. v. FootBalance System Oy, IPR2015-01769, IPR2015-01770
Paper 11: Order on Conduct of Proceeding
Dated: November 9, 2015
Patents:  7,793,433 B2, 8,171,589 B2
Before: Meredith C. Petravick, Jeremy M. Plenzler, and Timothy J. Goodson
Written by: Petravick