`571-272-7822
`
`
`
`
`
`
`Paper 19
`Entered: October 7, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MOTOROLA MOBILITY LLC,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner.
`____________
`
`Cases
`IPR2014-00500 (Patent 5,790,793)
`IPR2014-00501 (Patent 7,136,392 B2)1
`____________
`
`
`Before MICHAEL W. KIM, PATRICK R. SCANLON, and
`KRISTINA M. KALAN, Administrative Patent Judges.
`
`SCANLON, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 This Order addresses overlapping issues in these cases. Therefore, we
`issue one order applicable to both cases. The parties are not authorized to
`use this style heading in subsequent papers.
`
`
`
`IPR2014-00500 (Patent 5,790,793)
`IPR2014-00501 (Patent 7,136,392 B2)
`
`
`During the initial telephone conference call in the above proceedings
`held on September 29, 2014, Petitioner indicated it would seek authorization
`to file additional information via a Motion to Submit Supplemental
`Information under 37 C.F.R. § 42.123. IPR2014-00500, Paper 17; IPR2014-
`00501, Paper 18. We directed Petitioner to provide the additional information
`to Patent Owner, and we directed the parties to then discuss the additional
`information. Id.
`A conference call in the above proceedings was held on October 3,
`2014, among respective counsel for Petitioner and Patent Owner, and Judges
`Kim, Scanlon, and Kalan. The purpose of the call was to review the parties’
`discussions on the additional information and their impact on Petitioner’s
`request. During this call, Petitioner stated that a partial consensus had been
`reached between the parties. Specifically, Petitioner indicated that some of
`the additional information was documentary evidence that the parties agreed
`should be served but not filed.
`Petitioners further indicated, however, that some of the additional
`information was declaratory evidence, which Petitioner asserted needed to be
`filed, rather than served, pursuant to 37 C.F.R. § 42.53(d)(2). Patent Owner
`disagreed, contending that the declaratory evidence should be served, not
`filed. In support of this position, Patent Owner stated that 37 C.F.R.
`§ 42.53(d)(2) does not seem applicable in the present instance. Patent Owner
`also stated that the proposed declarations and related exhibits are responsive
`curative evidence, not supplemental information under 37 C.F.R. § 42.123,
`and allowing curative evidence to be filed, rather than served, would be
`inconsistent with Board precedent.
`
`
`
`2
`
`
`
`IPR2014-00500 (Patent 5,790,793)
`IPR2014-00501 (Patent 7,136,392 B2)
`
`
`In response to Patent Owner’s comments, Petitioner reiterated its
`concern that, if not permitted to file the declaratory evidence at this point in
`the proceedings, Petitioner would be prohibited from filing by 37 C.F.R.
`§ 42.53(d)(2).
`After consideration of the parties’ positions, we do not authorize
`Petitioner to file a motion to submit the declaratory evidence under 37 C.F.R.
`§ 42.123. The declaratory evidence seems to be offered strictly in response to
`Patent Owner’s objections and, therefore, is supplemental evidence under
`37 C.F.R. § 42.64(b)(2), which is served, not filed. Regarding Petitioner’s
`concerns about 37 C.F.R. § 42.53(d)(2), we note that Petitioner will be
`considered to have asked for permission to file the declaratory evidence prior
`to any applicable cross-examination. Furthermore, to the extent evidentiary
`objections remain, and Patent Owner files a motion to exclude evidence,
`Petitioner will have an opportunity to file the declaratory evidence with its
`opposition to the motion to exclude.
`
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner’s request to file a Motion to Submit
`Supplemental Information under 37 C.F.R. § 42.123 is DENIED.
`
`
`
`
`
`
`3
`
`
`
`IPR2014-00500 (Patent 5,790,793)
`IPR2014-00501 (Patent 7,136,392 B2)
`
`
`PETITIONER:
`
`Theodore Brown
`Christopher Schenck
`John Alemanni
`KILPATRICK TOWNSEND & STOCKTON LLP
`tbrown@kilpatricktownsend.com
`cschenck@kilpatricktownsend.com
`jalemanni@kilpatricktownsend.com
`
`PATENT OWNER:
`
`Brenton Babcock
`Ted Cannon
`Donald Coulman
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2BRB@knobbe.com
`2tmc@knobbe.com
`dcoulman@intven.com
`
`
`
`
`
`
`
`
`
`4
`
`
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