Paper 24
`Entered: August 5, 2013
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`Trials@uspto.gov
`Tel: 571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`
`
`REDLINE DETECTION, LLC
`Petitioner
`
`
`
`v.
`
`STAR ENVIROTECH, INC.
`Patent Owner
`_______________
`
`Case IPR2013-00106
`Patent 6,526,808
`_______________
`
`
`
`Before SALLY C. MEDLEY, JENNIFER S. BISK, and, JAMES B. ARPIN,
`Administrative Patent Judges.
`
`BISK, Administrative Patent Judge
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`On August 1, 2013, the initial conference call for this proceeding was held
`between respective counsel for the parties and Judges Medley, Bisk, and Arpin. A
`court reporter was present on the call and a transcript of the call was filed on
`August 2, 2013. Paper 23 (“Transcript”). Both parties filed a list of intended
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`Case IPR2013-00106
`Patent 6,526,808
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`motions list prior to the call. Paper 21 (“Petitioner’s List”); Paper 22 (“Patent
`Owner’s List”).
`
`Motion to Submit Supplemental Information
`On July 30, 2013, Petitioner (“Redline”) filed a “Motion for Supplemental
`Disclosure of New Exhibits” (“Motion”). Paper 19 (“Mot.”). With respect to the
`filing of the Motion, we noted that section 37 C.F.R. § 42.123(a) requires the filing
`party to request authorization to file a motion to submit supplemental information.
`Redline made no such request prior to filing the Motion. Because the Motion was
`filed within one month of date of institution, July 1, 2013, we stated that we would
`consider the filing of the Motion itself to include the request to file. However, any
`future motions that require advance authorization may result in dismissal or
`expungement if they are filed without prior authorization.
`The Motion seeks to submit four new exhibits: (1) Ex. 1039, a sixty page
`declaration of Dr. Michael St. Denis, a purported expert who “explains several
`aspects of the references on which the IPR was granted and further helps establish
`reasons for combining the references, and the reasons for unpatentability of claims
`9 and 10 based on the references on which IPR was granted” (Mot. 2); (2) Ex.
`1040, the resume of Michael St. Denis (Mot. 3); (3) Ex. 1041, a copy of U.S.
`Patent 3,250,723 (“Fortney”) (id.); and (4) Ex. 1042, a copy of U.S. Patent
`3,432,439 (“Dickman”) (id.). During the call, Redline stated that the Motion is
`consistent with our rules, in particular, § 42.53(d)(2), which provides for
`submission of further evidence before deposition or testimony is to be taken.
`Transcript 6. Redline added that Patent Owner (“Star Envirotech”) would not be
`prejudiced by the new exhibits because there is nothing new in the declaration. Id.
`at 6-7. Further, according to Redline, “submission of the declaration at this point
`makes things far less complex than had we had an expert opine as to all 12 grounds
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`Case IPR2013-00106
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`as originally submitted in our petition.” Id. at 7.
`Star Envirotech responds that submitting the new declaration violates both
`the law and the rules, and is extremely prejudicial. Id. at 8. First, Star Envirotech
`points to 35 U.S.C. § 312 (a)(3), which states that a petition “may be considered
`only if—the petitioner identifies in writing . . . the evidence that supports the
`grounds for the challenge to each claim, including-- (B) affidavits or declarations
`of supporting evidence and opinions, if the petitioner relies on expert opinions.”
`Id. at 8-9. According to Star Envirotech, the statute requires a declaration to be
`filed with the petition, and not after institution. Id. at 9. Second, Star Envirotech
`argues that the new declaration is not just supplemental evidence, but is a
`completely new argument, with brand new claim charts that include new
`information and new claim terms that were not argued in the petition. Id. at 9-10.
`In addition to the claim charts, Star Envirotech asserts that the declaration adds
`information not included in the petition, including argument regarding the
`knowledge of a person of skill in the art, new characterizations of references that
`were not part of the petition, and discussions of references that are not part of the
`petition. Id. at 10. Finally, Star Envirotech argues that this declaration is a
`responsive declaration post-initiation in that it actually references the Board’s
`decision and takes positions that are inconsistent with positions taken in the
`petition—for example, by adopting the Board’s definition of “flammable,” which
`is different than proposed in the petition. Id. at 10-11.
`Star Envirotech asserts that it is extremely prejudicial to have to respond to
`what amounts to essentially a new petition with only two months left before the
`response is due. Id. at 11. According to Star Envirotech, Redline essentially has
`waited for the petition to be granted and then “sandbagged” Star Envirotech by
`creating a declaration including new argument and theories in response to the
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`Board’s decision. Id. at 12.
`Under 37 C.F.R. § 42.123, a party may file a motion to submit supplemental
`information if a request for authorization to file such a motion is made within one
`month of the date the trial is instituted. Nothing in the rule suggests, however, that
`such a motion would be granted no matter the circumstance. We do not read 37
`C.F.R. § 42.123 as permitting a petitioner to wait for the Board to narrow the
`grounds submitted in the petition in order to create a more focused declaration at
`less expense that will bolster its position in the chosen grounds. See id. at 7, 12.
`This is particularly true if the evidence contained in the declaration was reasonably
`available at the time of filing of the petition. “The filing of a petition for inter
`partes review should not be turned into a two-stage process,” first to get the Board
`to narrow the issues, and second to complete the petition based on the issues left in
`the case. ZTE Corp. v. ContentGuard Holdings, Inc., IPR2013-00139, Paper 27 at
`3.
`
`Here, Redline does not make any attempt to justify the submission of an
`expert declaration after filing its petition and after a decision to institute has been
`made except to note that the move was cost effective—“submission of the
`declaration at this point makes things far less complex than had we had an expert
`opine as to all 12 grounds as originally submitted in our petition.” Transcript 7.
`Redline’s petition did not rely on any expert opinion and Redline has not alleged
`that any of the arguments or evidence in the newly submitted declaration is
`information that reasonably could not have been submitted with the Petition. The
`Board chose two of twelve grounds proposed by Redline, thus Redline could have
`submitted expert opinion testimony to support those grounds with the petition
`itself. Further, Redline was aware of both Fortney and Dickman at the time of the
`filing of the Petition, yet chose not to introduce either reference at that time for the
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`Case IPR2013-00106
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`Board’s consideration. ZTE Corp. v. ContentGuard Holdings, Inc., IPR2013-00139
`(Paper 27) 3. Therefore, Redline has not established sufficient basis now for
`submitting Fortney or Dickman.
`Moreover, Redline’s submission of the “supplemental evidence” is in
`essence something more than just supplemental evidence; at least the declaration
`contains arguments and responses to the Board’s decision to institute the inter
`partes review. For example, the newly submitted declaration responds to the
`Board’s claim interpretation and other points made in the decision. However, the
`proper course is for the Patent Owner to file a Patent Owner Response, followed by
`the filing of a reply by the Petitioner. Redline has not explained in any meaningful
`way why we should deviate from that course.
`For the foregoing reasons, Redline has not established sufficient basis for
`submitting Exhibits 1039, 1040, 1041, and 1042 at this point in the proceeding.
`Motion for Additional Discovery
`Counsel for Star Envirotech requests authorization to file a motion for
`additional discovery relating to the defense of assignor estoppel. In particular, Star
`Envirotech seeks additional evidence relating to whether Mr. Pieroni, an inventor
`of the ’808 patent is in privity with Redline, including a deposition of Mr. Pieroni,
`several related documents and contracts, and half a dozen or so interrogatories
`specifically directed to this issue. Transcript 23-24; Patent Owner’s List 1.
`Upon consideration of Star Envirotech’s request, we determine that briefing
`on this matter is warranted. Therefore, Star Envirotech is authorized to file a
`motion for additional discovery. Star Envirotech should prepare its motion for
`additional discovery with the statutory and regulatory considerations and the
`relevant precedent regarding the defense of assignor estoppel in mind when
`explaining specifically what discovery is being requested and including a showing
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`Case IPR2013-00106
`Patent 6,526,808
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`of why each item is necessary in the interests of justice. In particular, the
`“Decision on Motion for Additional Discovery” entered in IPR2012-00001, Paper
`26 can be used as guidance. A discovery request will not be granted if the request
`is unduly broad or burdensome or if the showing consists of a mere allegation that
`something useful will be found. In its motion, Star Envirotech also should apprise
`the Board of any efforts made to contact Mr. Pieroni to obtain his voluntary
`cooperation and the results of any such efforts.
`Redline is authorized to file an opposition to the motion. In its opposition,
`Redline should inform the Board of the extent to which, if any, they have control
`over Mr. Pieroni (i.e. Redline should inform the Board if Mr. Pieroni is an officer
`or employee that they can require to attend a deposition).
`Other Potential Motions
`Counsel for Redline represented that they may seek discovery from
`archive.org in the event that Star Envirotech challenges the authenticity of the 1999
`smokemachines.com Web site. We noted that in the event that authorization for
`such a motion is requested, this would be considered additional discovery.
`Counsel for Star Envirotech represented that Star Envirotech may file a
`motion to amend. As discussed, in filing its motion to amend, Star Envirotech
`should note the guidance provided in Paper 26 of IPR2012-00027, dated June 11,
`2013. Further guidance is available in the Office Patent Trial Practice Guide1, 37
`C.F.R. § 42.121, and IPR2012-00005, Paper 27. Further, prior to filing a motion to
`amend Star Envirotech should request a call with the panel to confer.
`Finally, the parties represented that they have no settlement discussions to
`report and that there are no problems, at the present time, with the Scheduling
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`1 77 Fed. Reg. 48766 (Aug. 14, 2012).
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`Case IPR2013-00106
`Patent 6,526,808
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`Order, entered July 1, 2013.
`Accordingly, it is
`ORDERED that Redline’s Motion to Submit Supplemental Information is
`denied;
`FURTHER ORDERED that Exhibits 1039, 1040, 1041, and 1042 are
`expunged from the record;
`FURTHER ORDERED that Star Envirotech is authorized to file a motion
`for additional discovery under 37 C.F.R. § 42.51(b)(2) by August 8, 2013, limited
`to 10 pages; Redline is authorized to file an opposition by August 13, 2013, also
`limited to 10 pages; and no reply is authorized;
`FURTHER ORDERED that no other motions are authorized at this time;
`
`and
`
`FURTHER ORDERED that the due dates specified in the Scheduling
`Order dated July 1, 2013 remain unchanged.
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`Case IPR2013-00106
`Patent 6,526,808
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`PETITIONER:
`Matthew A. Newboles
`Lowell Anderson
`STETINA BRUNDA GARRED & BRUCKER
`mnewboles@stetinalaw.com
`landerson@stetinlaw.com
`
`
`
`PATENT OWNER:
`Edward A. Schlatter
`Brenton R. Babcock
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`Edward.schlatter@knobbe.com
`babcock@knobbe.com
`
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