Case IPR2015-01341
`U.S. Patent No. RE39,618
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`Filed on behalf of Seymour Levine
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`THE BOEING COMPANY.
`Petitioner,
`
`v.
`
`SEYMOUR LEVINE
`Patent Owner
`________________
`
`Case IPR2015-01341
`U.S. Patent No. RE39,618
`
`
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`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION TO
`SUBMIT SUPPLEMENTAL INFORMATION
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`
`
`
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`06012-00001/7641249.1
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`
`U.S. Patent No. RE39,618
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`
`
`
`Filed on behalf of Seymour Levine
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`THE BOEING COMPANY.
`Petitioner,
`
`v.
`
`SEYMOUR LEVINE
`Patent Owner
`________________
`
`Case IPR2015-01341
`U.S. Patent No. RE39,618
`
`
`
`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION TO
`SUBMIT SUPPLEMENTAL INFORMATION
`
`
`
`
`
`06012-00001/7641249.1
`
`
`
`Case IPR2015-01341
`U.S. Patent No. RE39,618
`
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`In accordance with the Board’s Order dated January 20, 2016 (Paper 20),
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`Patent Owner Seymour Levine (“Levine” or “Patent Owner”) hereby opposes The
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`Boeing Company’s (“Boeing” or “Petitioner”) Motion to Submit Supplemental
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`Information.
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`I.
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`BOEING SEEKS ONLY TO BOLSTER THE EVIDENCE IN ITS
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`PETITION IN DIRECT RESPONSE TO PATENT OWNER’S
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`PRELIMINARY RESPONSE
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`The Board should deny Boeing’s motion to submit supplemental
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`information because it seeks only to bolster the evidence submitted in the Petition
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`in response to deficiencies identified by Patent Owner in its Preliminary Response.
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`Allowing such a practice only encourages “the filing of petitions which are
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`partially inadequate.” ZTE Corp. v. ContentGuard Holdings, Inc., Case IPR2013-
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`00454, slip op. at 5–6 (PTAB Sept. 25, 2013) (Paper 12)(informative).
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`Boeing’s motion seeks to add to this IPR the additional evidence it
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`submitted with its second petition (IPR2016-0023), which it admitted was intended
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`specifically “to address purported deficiencies raised in the PO Preliminary
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`06012-00001/7641249.1
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`1
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`Case IPR2015-01341
`U.S. Patent No. RE39,618
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`Response in IPR2015-01341.” IPR2016-0023, Paper 1 at 1.1 Boeing has not
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`explained why this information could not have been submitted with its Petition.
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`The Board often denies motions to submit supplemental information when
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`that information “effectively changes the evidence originally relied upon in a
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`petition.” Mitsubishi Plastics, Inc., v. Celgard, LLC, Case IPR2014-00524, slip op.
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`at 5-6 (PTAB Nov. 28, 2014) (Paper 30). In that case the Board denied a request
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`to add expert declarations used in other cases against the same patent to support
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`similar grounds, citing Petitioner’s admission that the additional evidence was
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`intended “to bolster the evidence originally submitted in support of the Petition in
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`this proceeding.” Id. at 6. This is especially true when the additional information
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`was, as here, in petitioner’s possession at the time it filed the petition. ZTE Corp.
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`v. ContentGuard Holdings, Inc. Case IPR2013-00139, slip op. at 2-3 (PTAB Jul
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`30, 2013) (Paper 27) (denying request to file a motion for supplemental
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`information to add two references “that were in the petitioner’s possession at the
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`time of filing of the petition” and were being submitted to “bolster” petitioner’s
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`position in light of the Board’s claim construction.); Rackspace US, Inc. v.
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`1 Levine has filed its Preliminary Response to Boeing’s second Petition
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`asking the Board to deny the Petition under 35 U.S.C. § 325(d). IPR2016-0023,
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`Paper 6.
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`06012-00001/7641249.1
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`2
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`Case IPR2015-01341
`U.S. Patent No. RE39,618
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`PersonalWeb Technologies, LLC, Case IPR2014-00057, slip op. at 4-8 (PTAB
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`Apr. 30, 2014) (Paper 16) (same).
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`The supplemental Helfrick Declaration “changes the evidence originally
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`relied on” by, for the first time, providing evidence on the
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`“portable”/“positionable” requirement of the claimed transmitter. Under the guise
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`of ensuring a “full record” (Mot at 1), Boeing seeks to bolster its case against the
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`’618 patent with information that should have been submitted with the Petition but
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`which is being submitted here only in response to Levine’s Preliminary Response.
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`See, Vitaulic Co. v. The Viking Corp., Case IPR2015-00423, slip op. at 4 (PTAB
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`Aug 4, 2015) (Paper 16) (granting motion to submit supplemental information in
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`part because “the additional information from [the expert] was not created to
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`address deficiencies with the Petition raised by Patent Owner.”(emphasis added)).
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`The single decision relied on by Boeing is in accord, cautioning that “the
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`provision for submitting supplemental information is not intended to offer a
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`petitioner a routine avenue for bolstering deficiencies in a petition raised by a
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`patent owner in a Preliminary Response. To that end, a petitioner should not expect
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`§ 42.123 to present a ‘wait-and-see’ opportunity to supplement a petition after
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`initial comments or arguments have been laid out by a patent owner.” Pacific
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`Market International v. Ignite USA, LLC, IPR2014-00561, slip op. at 3 (PTAB
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`Dec. 2, 2014) (Paper 23). In that case, the Board approved submission of
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`06012-00001/7641249.1
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`3
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`Case IPR2015-01341
`U.S. Patent No. RE39,618
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`additional evidence directed only at the expert’s opinion as to why certain
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`references should be combined, but not to “change the type of evidence initially
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`presented in the Petition to support those grounds of unpatentability.” Id. at 3-4.
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`Here, by contrast, Boeing seeks to change the evidence relied on. In its Petition,
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`Boeing provided no evidence as to whether the alleged transmitters were
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`“portable” or “positionable.” Dr. Helfrick’s new declaration purports to provide
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`such evidence for the first time, thus changing the evidence Boeing relies on in its
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`challenge to the ’618 patent.
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`II. CONCLUSION
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`For the foregoing reasons, the Board should deny Boeing’s motion.
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`
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`Date: February 3, 2016
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` Respectfully submitted,
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`
`
`By: /Bruce R. Zisser, Reg. No. 40,884/
` Bruce R. Zisser, Reg. No. 40,884
`QUINN EMANUEL URQUHART &
`SULLIVAN LLP
`865 S. Figueroa St., 10th Floor
`Los Angeles, CA 90017
`General Tel: (213) 443-3000
`Direct Tel: (213) 443-3434
`Fax: (213) 443-3100
`Email: brucezisser@quinnemanuel.com
`
`
`Attorneys for Patent Owner –
`Seymour Levine
`
`06012-00001/7641249.1
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`
`4
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`Case IPR2015-01341
`U.S. Patent No. RE39,618
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that the foregoing PATENT OWNER’S
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`OPPOSITION TO PETITIONER’S MOTION TO SUBMIT
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`SUPPLEMENTAL INFORMATION was served electronically via e-mail on
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`February 3, 2016, in its entirety on the following:
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`
`
`Ryan J. McBrayer (Reg. No. 54,299)
`Perkins Coie LLP
`1201 Third Avenue, Suite 4900
`Seattle, WA 98101
`RMcBrayer@perkinscoie.com
`
`
`Chun M. Ng
`Perkins Coie LLP
`1201 Third Avenue, Suite 4900
`Seattle, WA 98101
`CNg@perkinscoie.com
`patentprocurement@perkinscoie.com
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` Respectfully submitted,
`
`By: /Bruce R. Zisser, Reg. No. 40,884/
` Bruce R. Zisser, Reg. No. 40,884
`Lead Attorney for Patent Owner
`QUINN EMANUEL URQUHART &
`SULLIVAN LLP
`865 S. Figueroa St., 10th Floor
`Los Angeles, CA 90017
`General Tel: (213) 443-3000
`Direct Tel: (213) 443-3434
`Fax: (213) 443-3100
`Email: brucezisser@quinnemanuel.com
`
`
`Attorney for Patent Owner –
`Seymour Levine
`
`
`
`Date: February 3, 2016
`
`
`
`06012-00001/7641249.1
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`
`5
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