`571-272-7822
`
`Paper: 16
`Entered: April 27, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`R.J. REYNOLDS VAPOR COMPANY,
`Petitioner,
`
`v.
`
`FONTEM HOLDINGS 1 B.V.,
`Patent Owner.
`____________
`
`Case IPR2016-01692
`Patent 9,326,548 B2
`____________
`
`
`
`Before JO-ANNE M. KOKOSKI, KRISTINA M. KALAN, and
`KIMBERLY MCGRAW, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`
`
`DECISION
`Petitioner’s Motion to Submit Supplemental Information
`37 C.F.R. § 42.123(a)
`
`
`
`IPR2016-01692
`Patent 9,326,548 B2
`
`
`On April 14, 2017, with Board authorization, Petitioner filed a Motion
`to Submit Supplemental Information. Paper 15 (“Mot.”). Patent Owner,
`although authorized by the Board to file a Response, did not do so.
`Petitioner seeks to submit the Supplemental Declaration of Dr. Robert H.
`Sturges (“Sturges Supplemental Declaration”) and the Declaration of Huo
`Gejun (“Huo Declaration”). Mot. 1. Under 37 C.F.R. § 42.123(a), a party
`may file a motion to submit supplemental information if the following
`requirements are met: (1) a request for authorization to file the motion was
`made within one month of the date the trial was instituted; and (2) the
`supplemental information is relevant to a claim for which trial was
`instituted. Here, Petitioner sought authorization to file its motion via an
`email to the Board dated April 7, 2017, which is within one month of the
`March 7, 2017 institution date in this proceeding. Mot. 1; see Paper 8.
`Trial was instituted to determine whether claims 1–10 are
`unpatentable under 35 U.S.C. § 103 as obvious over the combined teachings
`of Hon ’043, Whittemore, and Voges, and whether claims 11–14 are
`unpatentable under 35 U.S.C. § 103 as obvious over the combined teachings
`of Hon ’043, Whittemore, Voges, and Gehrer. Paper 8, 17. Petitioner states
`that the Sturges Supplemental Declaration “provides corroborating
`evidence” for opinions expressed by Dr. Sturges in Exhibit 1015, which is
`the declaration Dr. Sturges submitted in support of the Petition. Mot. 2. In
`particular, Petitioner states that
`the Sturges Supplemental Declaration provides additional,
`corroborating facts and data establishing that his opinions
`regarding airflow, a ‘coil wire,’ ‘convective heating,’ and
`‘percentage of the spray’ in ¶¶ 55–69, 83 and regarding ‘friction
`fit,’ ‘bonding material,’ ‘shear forces,’ ‘axial displacement,’ and
`
`2
`
`
`
`
`
`IPR2016-01692
`Patent 9,326,548 B2
`
`
`‘radial support’ in ¶¶ 72–82 of [Exhibit 1015] are the product of
`reliable principles and methods.
`
`
`Id. at 4.
`With respect to the Huo Declaration, Petitioner states that it confirms
`“that Ex. 1006 is what Petitioner represented it is—a true and accurate
`translation of the PCT equivalent of Hon ’043 (Ex. 1005).” Id. at 2.
`Petitioner further states that the Huo Declaration “is an updated translator
`certificate that includes the statement that the translator has been ‘warned
`that willful false statements and the like are punishable by fine or
`imprisonment, or both,’ which was not included in the original translator
`certificate included with the English translation in Ex. 1006.” Id. at 3–4.
`Based on Petitioner’s representations, we are persuaded that the
`Sturges Supplemental Declaration and the Huo Declaration are relevant to a
`claim for which trial was instituted. We are also persuaded that Petitioner’s
`supplemental information does not change the grounds of unpatentability
`authorized in this proceeding, nor does it change the evidence initially
`presented in the Petition to support those grounds. For these reasons, and
`because the Motion is unopposed, Petitioner’s Motion to Submit
`Supplemental Information is granted.
`
`
`Accordingly, it is
`ORDERED that Petitioner’s Motion to Submit Supplemental
`Information (Paper 15) is granted; and
`FURTHER ORDERED that, within five business days of this
`Decision, Petitioner shall file the Sturges Supplemental Declaration
`(attached as Exhibit 2 to Paper 15) and the Huo Declaration (attached as
`
`3
`
`
`
`
`
`IPR2016-01692
`Patent 9,326,548 B2
`
`Exhibit 3 to Paper 15) as two separately numbered exhibits in the record of
`this proceeding.
`
`
`4
`
`
`
`
`
`
`
`5
`
`IPR2016-01692
`Patent 9,326,548 B2
`
`FOR PETITIONER:
`
`Ralph Gabric
`rgabric@brinksgilson.com
`
`Robert Mallin
`rmallin@brinksgilson.com
`
`Yuezhong Feng
`yfeng@brinksgilson.com
`
`FOR PATENT OWNER:
`
`Michael J. Wise
`mwise@perkinscoie.com
`
`Joseph P. Hamilton
`jhamilton@perkinscoie.com
`
`Tyler Bowen
`tbowen@perkinscoie.com
`
`
`
`
`
`
`
`
`
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