Paper 26
`Date: August 7, 2014
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`Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTERNATIONAL BUSINESS MACHINES CORPORATION,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`
`____________
`
`Case IPR2014-00180
`Patent 7,634,666
`____________
`
`
`Before DAVID C. McKONE, JAMES A. TARTAL, and MIRIAM L. QUINN,
`Administrative Patent Judges.
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`
`
`QUINN, Administrative Patent Judge.
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`
`
`
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`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
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`IPR2014-00180
`Patent 7,634,666
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`On August 5, 2014, we held a conference call between respective counsel
`for Petitioner and Patent Owner, and Judges Quinn, Tartal, and McKone.
`Petitioner requested, again, authorization for a motion to file additional
`information under 37 C.F.R. § 42.123(b). A court reporter was present for a
`portion of the call. After consideration of the parties’ positions, the panel denied
`Petitioner’s request with prejudice. This order summarizes the request and ruling
`of the panel.
`A. PETITIONER’S REQUEST
`Petitioner contends that a redacted transcript of a named inventor,
`Dr. Cheng, should be authorized as supplemental information because that
`testimony is “highly relevant” to claim construction. In support of its request,
`Petitioner cites Voice Techs. Group, Inc. v. VMC Systems, Inc., 164 F.3d 605
`(Fed. Cir. 1999) and argues that Dr. Cheng’s testimony bears directly on what the
`specification discloses, vis-à-vis the disputed terms. Petitioner argued that Patent
`Owner has recently filed its Patent Owner Response and that the proposed
`testimony would be responsive to the claim construction position of Patent Owner.
`Although the inventor’s testimony is argued as supporting a broadest reasonable
`interpretation analysis of certain claim terms, Petitioner stated the reason for
`seeking to supplement the record under 37 C.F.R. § 42.123(b), instead of
`submitting the information as part of its Reply, is related to considerations of trial
`tactics concerning inclusion of the information in the record and the 15-page limit
`of Replies.
`Petitioner also argued that should the panel authorize the motion, it would
`show sufficiently that the testimony could not have been reasonably obtained
`earlier, a showing required under Rule 123(b).
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`IPR2014-00180
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`B. PATENT OWNER’S OPPOSITION
`Patent Owner indicated it would oppose the motion, if authorization is
`granted, because of the uncertain significance that the proposed inventor testimony
`would have in the proceedings and the alleged lack of diligence in seeking the
`testimony of Dr. Cheng. Patent Owner did not state any facts evidencing
`deliberateness in delays to obtain the testimony.
`C. ANALYSIS AND DECISION
`After consideration of the parties’ arguments and contentions, we denied
`Petitioner’s request with prejudice. This is the second time Petitioner seeks
`authorization to file a motion for supplemental information to introduce into the
`record portions of the deposition of Dr. Cheng, obtained in the co-pending district
`court case. The panel denied the first request because we were unpersuaded by the
`argument that the inventor testimony is relevant to a claim for which trial has been
`instituted. In our Order dated July 3, 2014, we stated that the utility of that
`testimony to the panel’s understanding of the technology or assistance in claim
`construction demonstrated, at best, general relevance untethered to any specific
`claim for which trial has been instituted. See Paper 22, at 2–3. During that first
`conference and in that Order we gave guidance to Petitioner that the appropriate
`introduction of the inventor testimony would be as support of its Reply, where
`Petitioner has an opportunity to address the arguments made by Patent Owner in
`the Response. We declined to advise the parties regarding whether the inventor
`testimony would be allowable in a reply because Patent Owner had not filed a
`Response at the time of the Order.
`Since then, Patent Owner has filed a Response. Petitioner’s renewal of the
`request for authorization was focused solely on whether the inventor testimony
`would be “highly relevant” to claim construction. We denied Petitioner’s request
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`for multiple reasons. First, the relevance of the inventor testimony, however
`marginal, must be explained in order for the panel to give it proper consideration.
`See 37 C.F.R. § 42.104(b)(5) (“The Board may exclude or give no weight to the
`evidence where a party has failed to state its relevance or to identify specific
`portions of the evidence that support the challenge.”). A motion to file
`supplemental information is not a vehicle for explaining the significance of that
`testimony. Nor is such a motion an opportunity to obtain extra pages for argument
`that properly should be presented in a reply. Therefore, if the inventor testimony
`supports the broadest reasonable interpretation, as argued by Petitioner, and its
`consideration would challenge either Patent Owner’s position or the panel’s claim
`construction, Petitioner is free to make its argument regarding that testimony in the
`Reply.
`Second, we were not persuaded with Petitioner’s reliance on Voice Techs.
`Group. Although we recognize that, in a Markman hearing, inventor testimony has
`been found useful for the district court’s determination of claim scope, we also
`recognize that “inventor testimony is of little probative value for purposes of claim
`construction.” E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1370 n.5 (Fed.
`Cir. 2003); Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 1379 (Fed. Cir.
`2000) (explaining that “[i]n Markman, we addressed the . . . issue of litigation-
`derived inventor testimony in the context of claim construction, and concluded that
`such testimony is entitled to little, if any, probative value.”). Furthermore, our
`rules place limits on the introduction of evidence, regardless of whether it is
`relevant to claim construction, after trial has been instituted. See 37 C.F.R.
`§ 42.123 (requiring in subsections (a) and (b) that supplemental information must
`be relevant to a claim for which the trial has been instituted, in subsection (b)
`further requiring that consideration of the supplemental information would be in
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`the interests-of-justice, or in subsection (c) that consideration of non-relevant
`information would be in the interests-of-justice). We were not persuaded by
`Petitioner’s allegation that it would be able to show that the claim-construction-
`related-inventor testimony is “highly relevant,” in this proceeding, to a claim for
`which trial has been instituted under Rule 123(b) such that, in the interests-of-
`justice, it should be introduced as supplemental information. The panel has ruled
`only on whether the testimony may be filed as supplemental information, not
`whether the testimony is admissible. To be clear, the panel has not precluded
`Petitioner from making its inventor-testimony-based arguments with regard to
`claim construction. Such arguments and evidence, however, must be presented, if
`at all, in Petitioner’s Reply.
`Accordingly, Petitioner’s request for authorization to file supplemental
`information under 37 C.F.R. § 42.123 (b) is denied with prejudice.
`
`Order
`It is
`ORDERED that Petitioner’s request for authorization to file supplemental
`information under 37 C.F.R. § 42.123(b) is denied with prejudice.
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`IPR2014-00180
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`PETITIONER:
`
`Kenneth R. Adamo
`Eugene Goryunov
`KIRKLAND & ELLIS LLP
`kenneth.adamo@kirkland.com
`eugene.goryunov@kirkland.com
`
`PATENT OWNER:
`
`Herbert D. Hart III
`Jonathan R. Sick
`Peter J. McAndrews
`MCANDREWS, HELD & MALLOY, LTD.
`hhart@mcandrews-ip.com
`jsick@mcandrews-ip.com
`pmcandrews@mcandrews-ip.com
`
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