Trials@uspto.gov
`Tel: 571-272-7822
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`
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`Paper 78
`Entered: March 6, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.
`Petitioner
`
`v.
`
`ACHATES REFERENCE PUBLISHING, INC.
`Patent Owner
`____________
`
`Case IPR2013-00080 (Patent 6,173,403)
`Case IPR2013-00081 (Patent 5,982,889)1
`
`
`Before HOWARD B. BLANKENSHIP, JUSTIN T. ARBES, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`1 This Order addresses an issue pertaining to both cases. Therefore, we
`exercise our discretion to issue one Order to be filed in each case. The
`parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`Tel: 571-272-7822
`
`
`
`Paper 78
`Entered: March 6, 2014
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.
`Petitioner
`
`v.
`
`ACHATES REFERENCE PUBLISHING, INC.
`Patent Owner
`____________
`
`Case IPR2013-00080 (Patent 6,173,403)
`Case IPR2013-00081 (Patent 5,982,889)1
`
`
`Before HOWARD B. BLANKENSHIP, JUSTIN T. ARBES, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`1 This Order addresses an issue pertaining to both cases. Therefore, we
`exercise our discretion to issue one Order to be filed in each case. The
`parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`
`Case IPR2013-00080 (Patent 6,173,403)
`Case IPR2013-00081 (Patent 5,982,889)
`
`
`
`
`A conference call in the above proceedings was held on February 24,
`
`2014 between respective counsel for Petitioner and Patent Owner, and
`
`Judges Blankenship, Arbes, and Anderson.2 The call was requested by
`
`Patent Owner to seek authorization to file (1) a motion to re-file certain
`
`errata sheets, and (2) a motion for additional discovery. After hearing from
`
`the parties during the call, the Board took both matters under advisement.
`
`
`
`Errata Sheets
`
`Patent Owner previously filed improper errata sheets for the
`
`depositions of its two declarants, Mr. Dmitry Radbel and Dr. Xin Wang
`
`(Exhibits 2033 and 2036 in each proceeding). The Board expunged the
`
`errata sheets because Patent Owner did not obtain prior authorization for
`
`filing them and because the errata sheets made substantive changes that
`
`materially altered the witnesses’ testimony. See IPR2013-00080, Paper 61;
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`IPR2013-00081, Paper 52. During the call, Patent Owner sought
`
`authorization to file a motion to re-file the expunged errata sheets. Patent
`
`Owner argued that the Board should exercise its discretion with respect to
`
`management of the record under 37 C.F.R. § 42.7(a) and permit the errata
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`sheets to be entered “for the limited purpose of preserving the record for
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`appeal” (i.e., challenging the Board’s application of its rules in expunging
`
`the errata sheets). Patent Owner stated that it was not requesting that the
`
`Board consider the errata sheets in rendering a final written decision in each
`
`proceeding; rather, the errata sheets would only exist in the record for
`
`purposes of appeal.
`
`
`2 A court reporter was present on the call. The parties shall file the transcript
`of the call as an exhibit in the instant proceedings.
`
`
`
`2
`
`
`
`Case IPR2013-00080 (Patent 6,173,403)
`Case IPR2013-00081 (Patent 5,982,889)
`
`
`
`
`Petitioner responded that the Board properly exercised its discretion to
`
`expunge the errata sheets and that, as the Board determined in the previous
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`Order, the time for Patent Owner to cure any issue with the witnesses’
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`substantive testimony was on redirect examination, not in an errata sheet
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`afterwards. Petitioner further argued that there is no basis for including the
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`improper errata sheets in the record because any appeal from the instant
`
`proceedings will be an appeal of the Board’s decision on the patentability of
`
`the challenged claims, not the Board’s application of its rules.
`
`Pursuant to 37 C.F.R. § 42.7(a), “[t]he Board may expunge any paper
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`directed to a proceeding . . . that is not authorized under this part or in a
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`Board order or that is filed contrary to a Board order.” The errata sheets at
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`issue were not authorized under the Board’s rules or any Order in the instant
`
`proceedings, for all of the reasons stated in the previous Order. See
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`IPR2013-00080, Paper 61; IPR2013-00081, Paper 52. Thus, expunging
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`them was appropriate under the circumstances. We are not persuaded that
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`the previous Order was in error or that the errata sheets should be re-filed for
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`purposes of appeal only. Specifically, Patent Owner has not explained
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`sufficiently why it would be appropriate to add the unauthorized errata
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`sheets to the record, but not consider the documents when the Board reviews
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`the entire record of each proceeding and renders a final written decision on
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`the patentability of the challenged claims. Accordingly, a motion to re-file
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`the expunged errata sheets is not authorized.
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`
`
`Additional Discovery
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`Petitioner, in its response to Patent Owner’s statement of fact 129 in
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`Patent Owner’s response, admitted that QuickOffice, Inc. (“QuickOffice”)
`
`
`
`3
`
`
`
`Case IPR2013-00080 (Patent 6,173,403)
`Case IPR2013-00081 (Patent 5,982,889)
`
`(a previously dismissed co-defendant in the related litigation between the
`
`
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`parties) “has entered into at least one form of an agreement related to
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`app[lication] development with Petitioner prior to the Petition being filed.”
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`See IPR2013-00080, Paper 59 at 4; IPR2013-00081, Paper 50 at 4. During
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`the call, Patent Owner sought authorization to file a motion for additional
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`discovery of that agreement under 37 C.F.R. § 42.51(b)(2). According to
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`Patent Owner, the agreement is relevant to the issue of whether QuickOffice
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`is a “real party-in-interest” or “privy” of Petitioner and, therefore, whether
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`the Petition in each proceeding is time-barred under 35 U.S.C. § 315(b).
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`Again, Patent Owner argued that the material only would be entered for
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`purposes of appeal, and would not be considered by the Board. Patent
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`Owner also argued that the requested discovery would serve judicial
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`economy because the agreement could be considered for the first time on
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`appeal, avoiding the potential need for a remand to the Board for additional
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`fact-finding on the Section 315(b) issue.
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`Petitioner opposed Patent Owner’s request, arguing that the time
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`period for discovery has passed and the record should not be changed at this
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`stage of the proceedings. Petitioner also pointed out that the Board
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`previously denied Patent Owner’s motion for additional discovery on the
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`Section 315(b) issue, and Patent Owner did not request rehearing of that
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`decision. See IPR2013-00080, Paper 18 (discovery request for copies of
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`certain “agreements” between Petitioner and its co-defendants, including
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`QuickOffice); IPR2013-00081, Paper 17.
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`We are not persuaded to authorize a motion for additional discovery.
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`The time period for discovery set forth in the Scheduling Orders in the
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`instant proceedings has expired. An oral hearing took place on February 26,
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`
`
`4
`
`
`
`Case IPR2013-00080 (Patent 6,173,403)
`Case IPR2013-00081 (Patent 5,982,889)
`
`2014, and the Board will enter a final written decision in each proceeding,
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`
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`based on the existing record, by June 3, 2014. Patent Owner has not given a
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`sufficient reason for adding to the record at this late stage, or explained
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`adequately why it would be appropriate to supplement the record with
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`material that will not be considered on the merits.
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`Patent Owner’s delay in seeking authorization to file a motion for
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`additional discovery also weighs against granting its request. Petitioner filed
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`its responses to Patent Owner’s statements of fact on January 13, 2014.
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`Patent Owner, however, did not request a conference call to seek
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`authorization until February 21, 2014, more than a month later and less than
`
`one week before the oral hearing. Accordingly, a motion for additional
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`discovery is not authorized.
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`
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`In consideration of the foregoing, it is hereby:
`
`ORDERED that Patent Owner is not authorized to file a motion to
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`re-file the expunged errata sheets of Mr. Radbel and Dr. Wang, and is not
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`authorized to file a motion for additional discovery of the agreement
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`between Petitioner and QuickOffice.
`
`
`
`5
`
`
`
`
`
`Case IPR2013-00080 (Patent 6,173,403)
`Case IPR2013-00081 (Patent 5,982,889)
`
`PETITIONER:
`
`Jeffrey P. Kushan
`Joseph A. Micallef
`SIDLEY AUSTIN LLP
`jkushan@sidley.com
`jmicallef@sidley.com
`
`
`PATENT OWNER:
`
`Brad D. Pedersen
`Eric H. Chadwick
`PATTERSON THUENTE PEDERSEN, P.A.
`prps@ptslaw.com
`chadwick@ptslaw.com
`
`Jason Paul DeMont
`KAPLAN BREYER SCHWARTZ & OTTESEN
`jpdemont@kbsolaw.com
`
`Vincent McGeary
`GIBBONS, P.C.
`vmcgeary@gibbonslaw.com
`
`
`
`
`
`6
`
`
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