UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`THE BOEING COMPANY,
`Petitioner
`
`v.
`
`SEYMOUR LEVINE,
`Patent Owner
`_______________________
`
`Case No. IPR2015-01341
`Patent No. RE39,618
`________________
`
`
`
`PETITIONER’S MOTION TO SUBMIT SUPPLEMENTAL
`INFORMATION PURSUANT TO 37 C.F.R. § 42.123(a)
`
`
`
`
`
`29461908.2
`03007-0014/92045966.1
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`
`______________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`THE BOEING COMPANY,
`Petitioner
`
`v.
`
`SEYMOUR LEVINE,
`Patent Owner
`_______________________
`
`Case No. IPR2015-01341
`Patent No. RE39,618
`________________
`
`
`
`PETITIONER’S MOTION TO SUBMIT SUPPLEMENTAL
`INFORMATION PURSUANT TO 37 C.F.R. § 42.123(a)
`
`
`
`
`
`29461908.2
`03007-0014/92045966.1
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`
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`Case IPR2015-01341
`Attorney Docket No. 03007.0014
`
`I.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
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`In accordance with the Board’s Order dated January 20, 2016 (Paper 20),
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`The Boeing Company (“Petitioner” or “Boeing”) respectfully moves to submit
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`the supplemental declaration of Dr. Albert Helfrick (tentatively Exhibit 1042),
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`and the Exhibits A-C to his declaration, as supplemental information pursuant
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`to 37 C.F.R. § 42.123(a).
`
`Boeing respectfully submits that including the supplemental Helfrick
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`declaration in this proceeding is the most practical way to address this material.
`
`Boeing filed a second petition (IPR2016-0023) regarding this patent before
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`Boeing’s one-year cutoff, and included a Helfrick declaration identical to the
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`one in the present petition except for a few paragraphs of expanded testimony
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`and related exhibits. Boeing wanted to ensure a full record was presented in a
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`timely manner, and did so before the statutory deadline. When this proceeding
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`was instituted, Boeing moved to include the limited additional material as
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`supplemental information, and if allowed, will withdraw its second petition. In
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`the alternative, Boeing has moved to join the two IPRs into a single proceeding
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`with one record.
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`The supplemental information meets all legal requirements for such
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`material, and should be allowed because its inclusion in this proceeding is not
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`prejudicial to the patent owner, who has had it for months, and is the most
`
`efficient and practical way to proceed regarding the ’618 patent. First, the
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`declaration and its exhibits are relevant: they further support Boeing’s showing
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`that the transmitters in prior art ACARS systems would have been understood
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`by a skilled artisan to be “portable” or “positionable.” The Board already
`
`found sufficient evidence of this in Boeing’s petition and Dr. Helfrick’s
`
`declaration in support thereof (Exhibit 1002) when the Board instituted trial
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`here. The supplemental information merely corroborates the current record.
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`Second, including the information here is consistent with Board
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`precedent, most notably Pacific Market International v. Ignite USA, LLC,
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`IPR2014-00561, Paper 23, at 3 (PTAB Dec. 2, 2014). As in that proceeding,
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`the supplemental information here does not alter the scope of the instituted
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`grounds. It relates to the same limitation, claims, and patent in issue, and
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`corroborates the same prior art reference combined in the same way currently at
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`issue. And like Pacific Market, the supplemental information here is limited in
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`comparison to the record already at issue, and was provided to the patent owner
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`before he commenced discovery. Accordingly, Petitioner respectfully requests
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`that the information be allowed in this proceeding and that this motion be
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`granted.
`II.
`
`STATEMENT OF REASONS FOR RELIEF REQUESTED
`A. LEGAL STANDARD
`A party may submit supplemental information under 37 C.F.R. §
`
`42.123(a) if a request is made within a month of institution for relevant
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`information. While meeting these criteria “does not, itself, guarantee” that the
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`motion will be granted, the Board recognizes that “supplemental information
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`may prove beneficial to the Board in reaching a decision with respect to the
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`trial.” See Pacific Market International v. Ignite USA, LLC, IPR2014-00561,
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`Paper 23 (PTAB Dec. 2, 2014) at 3. Thus, the Board has granted a motion to
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`submit supplemental information where, as here, limited expert testimony was
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`provided to further support a ground of unpatentability on which review had
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`been instituted. See id.
`B. ARGUMENT
`1.
`Boeing’s Motion Is Timely And The Supplemental
`Information Is Relevant
`As the Board has already found, Petitioner’s request for authorization
`
`was made within one month of the date of institution and is timely. Paper 20 at
`
`2. In addition, the supplemental information is relevant to a claim for which the
`
`trial has been instituted as required by 37 C.F.R. § 42.123(a)(2).
`
`For a number of prior art references in this case, including the Ward
`
`reference, Boeing contends that the “transmitter portable” (claim 4) or
`
`“transmitter positionable” (claim 14) limitation is disclosed by an ACARS
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`system. As the Board noted in its decision to institute review, “Ward discloses
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`that the data link to the ground systems is an ACARS system, a system that
`
`includes a transmitter.” Paper 10 at 15. The Board further found that
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`Dr. Helfrick’s testimony supported the “portability” or “positionability” of the
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`transmitter:
`
`Petitioner offers Dr. Helfrick’s statement that ARINC 624-1 discloses
`a standards-compliant ACARS system, including a VHF transceiver
`and an HF transceiver. Pet. 33 (citing Ex. 1002 ¶ 25). We are not
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`persuaded, on this record, that such disclosures of discrete transmitters
`do not indicate that they were capable of changing location.
`Id. at 15–16. The Supplemental Helfrick Declaration submitted herewith
`
`evidences the correctness of the Board’s conclusion by noting the
`
`connectability and removability of different types of ACARS transmitters,
`
`including VHF transceivers and HF transceivers. Thus, the supplemental
`
`information is relevant to claims for which the trial has been instituted.
`2.
`As explained above, the supplemental material relates to relevant
`
`The Board Should Grant Boeing’s Motion
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`testimony already in the record, i.e., that prior art transmitters could change
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`location. Further, it is limited compared to the record evidence. The Helfrick
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`declaration (Exhibit 1002) contains 107 paragraphs of testimony over 48 pages,
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`while the Supplemental Helfrick Declaration is 7 paragraphs over 4 pages.
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`The Board has granted requests for supplemental information under
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`similar circumstances. See, e.g., Pacific Market International, IPR2014-00561,
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`Paper 23. The supplemental information that petitioner sought to enter in
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`Pacific Market was additional expert testimony regarding reasons to combine
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`particular prior art references that formed the underlying basis for instituting
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`trial. Id. at 3–4. The Board found that the supplemental testimony “does not
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`operate to change any grounds of unpatentability that were authorized in this
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`proceeding, nor does it change the type of evidence initially presented in the
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`Petition to support the grounds of unpatentability.” Id. at 4. Rather, the
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`supplemental testimony was simply “additional evidence” which according to
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`Petitioner “confirm[ed] the prima facie obviousness of the case.” Id. The
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`Board found that presenting the supplemental testimony early in the
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`proceedings, rather than in connection with a reply to any Patent Owner
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`response, furthered the Board’s mandate to “secure the just, speedy, and
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`inexpensive resolution” of the proceeding. Id. at 4 (quoting 37 C.F.R. §
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`42.1(b)). This is because early disclosure affords the Patent Owner the
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`opportunity to cross-examine the expert and provide responsive testimony from
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`his own expert, and thereby “increases the likelihood that the record will be
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`developed more fully with a minimum number of depositions and without
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`additional motion practice.” Id.
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`The same is true here. Just as in Pacific Market, Boeing proposes a
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`modest amount of additional expert testimony that confirms the prima facie
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`obviousness of the claims. Furthermore, the Board in Pacific Market noted that
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`a supplemental declaration provided within a month of institution provided
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`Patent Owner “sufficient time to address any new information submitted by a
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`petition.” Id. at 4. Here, Boeing made the supplemental information available
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`to Levine before this trial was instituted when it filed the second IPR petition.
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`Thus, there can be no possible prejudice to Levine.
`IV. CONCLUSION
`For the foregoing reasons, Boeing respectfully requests that it be
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`permitted to submit the Supplemental Helfrick Declaration and exhibits cited
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`therein as supplemental information.
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`
` /Ryan J. McBrayer/
`Ryan J. McBrayer (Reg. No. 54,299)
`Perkins Coie LLP
`1201 Third Avenue, Suite 4900
`Seattle, WA 98101
`
`Attorneys for Petitioner
`The Boeing Company
`
`
`
`
`DATED: January 27, 2016
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the foregoing PETITIONER’S
`MOTION FOR SUPPLEMENTAL INFORMATION PURSUANT TO 37
`C.F.R. § 42.123(A) and EXHIBIT 1042 was served in its entirety on
`January 27, 2016, upon the following parties via email, pursuant to the parties’
`agreement concerning service.
`Bruce R. Zisser
`Amar L. Thakur
`Quinn Emanuel Urquhart & Sullivan, LLP
`865 South Figueroa Street, 10th Floor
`Los Angeles, CA 90017
`brucezisser@quinnemanuel.com
`amarthakur@quinnemanuel.com
`Attorneys for Patent Owner Seymour Levine
`
`Dated: January 27, 2016
`
`
`
`
`
` /Ryan J. McBrayer/
`Ryan J. McBrayer (Reg. No. 54,299)
`Perkins Coie LLP
`1201 Third Avenue, Suite 4900
`Seattle, WA 98101
`
`
`
`29461908.2
`03007-0014/92045966.1
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`-7-
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