`Entered: August 19, 2016
`
`
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TIANJIN SHUANGRONG PAPER PRODUCTS CO., LTD. AND
`SHUANG RONG AMERICA, LLC,
`Petitioner,
`
`v.
`
`KISS NAIL PRODUCTS, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00371
`Patent 8,561,619 B1
`____________
`
`
`Before JOSIAH C. COCKS and JAMES J. MAYBERRY, Administrative
`Patent Judges.
`
`MAYBERRY, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`IPR2016-00371
`Patent 8,561,619 B1
`
`
`On August 19, 2016, the Board conducted a conference call with
`counsel for Petitioner, Tianjin Shuangrong Paper Products Co., Ltd. and
`Shuang Rong America, LLC, and counsel for Patent Owner, Kiss Nail
`Products, Inc. Patent Owner had a court reporter transcribing the call.
`Petitioner requested the call seeking authorization to file a motion to file
`supplemental information.
`
`
`Background
`On December 29, 2015, Petitioner filed a Petition for Inter Partes
`Review of U.S. Patent No. 8,561,619 B1. Paper 1 (the “Petition”). Exhibit
`1007 accompanied the Petition and provided an English translation of
`Korean patent publication 10-2006-0091440, which was provided as a
`Korean-language exhibit as Exhibit 1006. See Exs. 1006, 1007 (the “Zenon
`reference”). Exhibit 1007 included a Certification of Translation affidavit
`from Dongshen Wang, who apparently works for Expert Translation Bureau,
`LLC. Ex. 1007, 21. We instituted trial on two separate grounds, with both
`grounds including the Zenon reference. Paper 13, 28.
`In a conference call on August 8, 2016, Patent Owner sought to
`depose Mr. Wang as part of routine discovery, which Petitioner had
`opposed. We granted Patent Owner’s request. Paper 19. Subsequent to our
`Order, the parties determined that Mr. Wang would not be available to be
`deposed. Petitioner seeks to file supplemental information in the form of a
`declaration from another party attesting to the accuracy of Mr. Wang’s
`translation. Mr. Kim, the new declarant, is available for deposition.
`In the call of August 19, 2016, Petitioner explained that Mr. Wang is
`unable to travel to a location amenable to a deposition and that the
`
`2
`
`
`
`IPR2016-00371
`Patent 8,561,619 B1
`
`deposition cannot be taken in China. Petitioner also indicated that Mr.
`Wang moved to China subsequent to providing the translation to pursue
`another opportunity.
`Patent Owner plans to oppose any motion to submit the supplemental
`information and it believes that Petitioner cannot make the requisite showing
`under 37 C.F.R. § 42.123(b).
`In consideration of the foregoing, it is hereby
`ORDERED that Petitioner is authorized to file a motion to submit
`supplemental information under 37 C.F.R. § 42.123(b) (the “Motion”);
`FURTHER ORDERED that the Motion shall be no more than 5 pages
`and filed no later than August 25, 2016 and, filed along with the Motion,
`shall be a Petitioner’s exhibit that includes the supplemental information,
`which will be conditionally entered pending a decision on the Motion;
`FURTHER ORDERED that Patent Owner may file an opposition to
`the Motion (the “Opposition”), and the Opposition shall be no more than 5
`pages and filed no later than August 31, 2016;
`FURTHER ORDERED that no reply brief is authorized at this time;
`
`and
`
`FURTHER ORDERED that Patent Owner is to file the transcript of
`the August 19, 2016 call as a Patent Owner’s exhibit.
`
`
`
`
`3
`
`
`
`IPR2016-00371
`Patent 8,561,619 B1
`
`For PETITIONER:
`S. Art Hasan
`Kyle W. Kellar
`LEWIS ROCA ROTHGERBER CHRISTIE LLP
`ahasan@lrrc.com
`pto@lrrc.com
`
`
`
`For PATENT OWNER:
`Geoffrey Gavin
`George Phillips
`JONES DAY
`ggavin@jonesday.com
`gphillips@jonesday.com
`
`
`4
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