Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 30
` Entered: April 15, 2016
`
`
`
`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
`Patent RE39,618
`_______________
`
`
`
`
`
`Before MICHAEL W. KIM, TRENTON A. WARD, and
`DANIEL N. FISHMAN, Administrative Patent Judges.
`
`WARD, Administrative Patent Judge.
`
`ORDER
`Petitioner’s Motion to Submit Supplemental Information
`37 C.F.R. § 42.123(a)
`
`
`571-272-7822
`
`
`
` Paper 30
` Entered: April 15, 2016
`
`
`
`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
`Patent RE39,618
`_______________
`
`
`
`
`
`Before MICHAEL W. KIM, TRENTON A. WARD, and
`DANIEL N. FISHMAN, Administrative Patent Judges.
`
`WARD, Administrative Patent Judge.
`
`ORDER
`Petitioner’s Motion to Submit Supplemental Information
`37 C.F.R. § 42.123(a)
`
`
`
`IPR2015-01341
`Patent RE39,618
`
`
`INTRODUCTION
`I.
`We authorized the Boeing Company (“Petitioner”) to file a motion to
`submit supplemental information and Seymour Levine (“Patent Owner”) to
`file an opposition thereto. Paper 20, 2. Petitioner moves to submit
`supplemental information under 37 C.F.R. § 42.123(a). Paper 21 (“Mot.”).
`Patent Owner opposes. Paper 23 (“Opp.”). The supplemental information
`consists of Supplemental Declaration of Dr. Albert Helfrick (“Supplemental
`Helfrick Declaration”) and associated Exhibits A–C collectively filed as
`Exhibit 1042. Upon consideration of the documents and the parties’
`arguments, and for the reasons stated below, Petitioner’s motion is granted.
`
`
`II. DISCUSSION
`Pursuant to 37 C.F.R. § 42.123, a petitioner, upon meeting certain
`requirements, may request authorization to file a motion to submit
`supplemental information in connection with a petition. In that respect, 37
`C.F.R. § 42.123 states, in part, the following:
`§ 42.123 Filing of supplemental information.
`(a) Motion to submit supplemental information. Once a
`trial has been instituted, a party may file a motion to submit
`supplemental information in accordance with the following
`requirements:
`(1) A request for the authorization to file a motion to
`submit supplemental information is made within one month of
`the date for which the trial has been instituted.
`(2) The supplemental information must be relevant to a
`claim for which the trial has been instituted.
`As to the first requirement, we note that Petitioner’s request for
`authorization was made within one month of the institution of trial. See
`Paper 20, 2. With respect to the second requirement, Petitioner argues that
`
`2
`
`
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`IPR2015-01341
`Patent RE39,618
`
`the supplemental information relates to the recitation in independent claim 4
`of a “transmitter portable” and the recitation in independent claim 14 of a
`“transmitter positionable.” Mot. 3. Specifically, Petitioner argues that the
`supplemental information addresses the connectability and removability of
`certain transmitters disclosed in the prior art references relied upon in the
`Petition. Mot. 4. Additionally, Petitioner states that the Supplemental
`Helfrick Declaration provides a “modest amount of expert testimony that
`confirms the prima facie obviousness of the claims.” Mot. 5.
`Patent Owner counters that the motion to submit the Supplemental
`Helfrick Declaration should be denied because it changes the evidence
`originally relied upon by Petitioner. Opp. 3. More particularly, Patent
`Owner argues that the Supplemental Helfrick Declaration provides evidence,
`for the first time, regarding the “portable/positionable” requirement of the
`claimed transmitter. Opp. 3.
`Although a party may meet the requirements laid out in 37 C.F.R.
`§ 42.123 so as to obtain authorization to file a motion to submit
`supplemental information, that does not, itself, guarantee that the motion
`will be granted. Indeed, the provision for submitting supplemental
`information is not intended to offer a petitioner a routine avenue for
`bolstering deficiencies in a petition raised by a patent owner in a preliminary
`response. To that end, a petitioner should not expect § 42.123 to present a
`“wait-and-see” opportunity to supplement a petition after initial comments
`or arguments have been laid out by a patent owner.
`The requirements of 37 C.F.R. § 42.123, however, do clearly
`contemplate scenarios in which, after institution of trial in an inter partes
`review, supplemental information may prove beneficial to the Board in
`
`
`
`3
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`IPR2015-01341
`Patent RE39,618
`
`reaching a decision with respect to the trial. In promulgating the rule, the
`Board was cognizant of concerns that may arise due to a belated request to
`submit supplemental information in establishing an “interests-of-justice”
`standard in such a circumstance; however, there is no such standard for
`requests that are presented within one month of the date trial being
`instituted. See 37 C.F.R. § 42.123; see also 77 Fed. Reg. 48,707, Comment
`91 (Aug. 14, 2012).
`We determine that the supplemental information proposed by
`Petitioner is limited in scope, as directed exclusively to the issue of the
`“portability” or “positionability” of the transmitter in the challenged claims.
`See Ex. 1042. Furthermore, the Supplemental Helfrick Declaration is
`limited to 4 pages providing only 7 paragraphs of testimony from
`Dr. Helfrick, in comparison to the original 48 page, 107 paragraph, Helfrick
`Declaration submitted with the Petition. See id. Additionally, we are not
`persuaded by Patent Owner’s argument that the Supplemental Helfrick
`Declaration changes the evidence originally relied upon. The additional
`testimony from Dr. Helfrick, and related exhibits, do not alter the ground as
`proposed in the Petition but merely provide supplemental information
`seeking to support the ground as proposed. Compare Pet. 33; Ex. 1042. As
`Petitioner argues, the supplemental information is additional evidence
`provided to support Petitioner’s proposed prima facie case of obviousness
`set forth in the Petition. Mot. 4–5.
`Petitioner also suggests that it is more appropriate to bring this
`supplemental information forward at this stage in the proceeding, rather than
`in connection with Petitioner’s Reply to Patent Owner’s Response, so that
`Patent Owner has the opportunity to cross-examine the expert. Mot. 5. We
`
`
`
`4
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`IPR2015-01341
`Patent RE39,618
`
`agree that the inclusion of the evidence at this stage in the proceeding will
`provide Patent Owner with a greater opportunity to respond to the
`supplemental information and will further the Board’s mandate to “secure
`the just, speedy, and inexpensive resolution” of the proceeding. 37 C.F.R.
`§ 42.1(b).
`Accordingly, in view of the circumstances of this proceeding, we
`grant Petitioner’s motion to submit the Supplemental Declaration of
`Dr. Albert Helfrick and associated Exhibits A–C (Ex. 1042). Furthermore,
`as Patent Owner has already filed its Patent Owner Response in this
`proceeding, we authorize Patent Owner to file a Supplemental Patent Owner
`Response to address issues raised by the Supplemental Declaration of
`Dr. Albert Helfrick and associated Exhibits A–C (Ex. 1042). Should Patent
`Owner choose to file a Supplemental Patent Owner Response, it must not
`exceed five pages and must be filed on or before April 29, 2016.
`
`III. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner’s motion for leave to file a Supplemental
`Declaration of Dr. Albert Helfrick and associated Exhibits A–C (Ex. 1042)
`is granted;
`FURTHER ORDERED that Exhibit 1042 be, and hereby is, entered
`into the record; and
`FURTHER ORDERED that, if Patent Owner so chooses, Patent
`Owner may file, on or before April 29, 2016, a Supplemental Patent Owner
`Response of up to five pages to address only issues raised by the
`
`
`
`5
`
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`IPR2015-01341
`Patent RE39,618
`
`Supplemental Declaration of Dr. Albert Helfrick and associated Exhibits A–
`C (Ex. 1042).
`
`PETITIONER:
`
`Ryan McBrayer
`Chun Ng
`Edward (Ted) G. Dane
`Peter E. Gratzinger,
`PERKINS COIE LLP
`rmcbrayer@perkinscoie.com
`cng@perkinscoie.com
`Ted.Dane@mto.com
`Peter.Gratzinger@mto.com
`
`PATENT OWNER:
`
`Bruce R. Zisser
`Amardeep (Amar) L. Thakur
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`brucezisser@quinnemanuel.com
`amarthakur@quinnemanuel.com
`
`
`
`
`
`6
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