Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 40
`Entered: April 2, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EMC CORPORATION,
`Petitioner,
`
`v.
`
`ACTIVIDENTITY, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00338
`Patent 9,098,685 B2
`____________
`
`
`Before JAMES B. ARPIN, LYNNE E. PETTIGREW, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Motion to Submit Supplemental Information
`37 C.F.R. § 42.123(a)
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 40
`Entered: April 2, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EMC CORPORATION,
`Petitioner,
`
`v.
`
`ACTIVIDENTITY, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00338
`Patent 9,098,685 B2
`____________
`
`
`Before JAMES B. ARPIN, LYNNE E. PETTIGREW, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Motion to Submit Supplemental Information
`37 C.F.R. § 42.123(a)
`
`
`
`
`
`
`
`
`
`IPR2017-00338
`Patent 9,098,685 B2
`
`
`I. DISCUSSION
`
`EMC Corporation, (“Petitioner”) filed a request for inter partes
`
`review of claims 1, 3, 5, 7–9, 11, 13, 15, 16, and 19 (the “challenged
`
`claims”) of U.S. Patent No. 9,098,685 B2 (Ex. 1001, “the ’685 patent”).
`
`Paper 1 (“Pet.”). Intellectual Ventures I LLC (“IV”), the exclusive licensee
`
`of the ’685 patent (Paper 13), filed a Preliminary Response. Paper 8
`
`(“Prelim. Resp.”).
`
`In the Preliminary Response, IV contended that one of the prior art
`
`references relied on by Petitioner (Ex. 1005, “Neuman”) did not qualify as a
`
`prior art, printed publication because Petitioner had not established that
`
`Neuman was publicly available before the priority date of the ’685 patent.
`
`Prelim. Resp. 33–40. We disagreed.
`
`With respect to Neuman, we stated,
`
`Petitioner’s declarant, Dr. Neuman, is the author of the
`Neuman reference at issue. Ex. 1002 ¶¶ 69–70. Dr. Neuman’s
`declaration states expressly that his work was “published in a
`series of Internet Drafts with the Internet Engineering Task Force
`(IETF).” Id. at ¶ 69. Dr. Neuman’s declaration also states that
`“draft versions of these documents are made available for review
`and comment by members of the public by placing them in the
`IETF’s Internet-Drafts directory. This makes these working
`documents readily available to a wide audience, thus facilitating
`the process of review and revision. Such drafts were accessible
`to the public through the IETF’s website (www.ietf.org).” Id.
`Dr. Neuman states unequivocally that the reference at issue was
`“published on June 23, 1999,” which is before the priority date
`of the ’685 patent. Id. at ¶ 70. On this record, Petitioner has
`made a sufficient showing that the Neuman reference qualifies
`as a prior art printed publication.
`
`Inst. Dec. 25 (emphasis added).
`
`2
`
`
`
`IPR2017-00338
`Patent 9,098,685 B2
`
`
`We determined that Petitioner had established a reasonable likelihood
`
`that it would prevail in showing the unpatentability of at least one of the
`
`challenged claims. Accordingly, we instituted an inter partes review of the
`
`challenged claims of the ’685 patent. Paper 9, 3 (“Inst. Dec.”).
`
`Subsequent to the Institution Decision, on August 11, 2017, Petitioner
`
`filed an authorized Motion to Submit Supplemental Information seeking to
`
`enter Exhibits 1032–34 relating to the prior art status of the Neuman
`
`reference (Ex. 1005). Paper 15, 1; see Paper 16. IV filed an Opposition
`
`(Paper 17) to Petitioner’s Motion, and Petitioner filed a Reply (Paper 20) to
`
`IV’s Opposition. On October 17, 2017, IV filed the Patent Owner Response
`
`(Paper 24) and the Transcript of the Deposition of Dr. Neuman (Ex. 2006).
`
`In the Patent Owner Response, IV did not renew its challenge to the
`
`public accessibility of the Neuman reference. Paper 24, passim. As we
`
`noted in the Scheduling Order, “[t]he patent owner is cautioned that any
`
`arguments for patentability not raised in the response will be deemed
`
`waived.” Paper 10, 3. Thus, we deem Patent Owner’s challenge to the
`
`public accessibility of the Neuman reference waived.
`
`In addition, IV filed Objections to Petitioner’s Evidence (Paper 12, 3–
`
`4), including to the Neuman reference (Ex. 1005). Petitioner explained in its
`
`Motion to Submit Supplemental Information that “[a]ll supplemental
`
`information Petitioner seeks to submit has previously been served on [IV] in
`
`response to their evidentiary objections (Paper 12) on July 18, 2017.”
`
`Paper 15, 1. IV did not file a timely Motion to Exclude. Thus, we also
`
`deem Patent Owner’s evidentiary objections to the Neuman reference
`
`waived. See Office Trial Practice Guide, 77 Fed. Reg. 48756, 48767
`
`(Aug. 14, 2012) (“A party wishing to challenge the admissibility of evidence
`
`3
`
`
`
`IPR2017-00338
`Patent 9,098,685 B2
`
`must object timely to the evidence at the point it is offered and then preserve
`
`the objection by filing a motion to exclude the evidence.”).
`
`Because Patent Owner’s challenges to the public accessibility of the
`
`Neuman reference and Patent Owner’s evidentiary objections to the Neuman
`
`reference are deemed waived, we determine that Petitioner’s Motion to
`
`Submit Supplemental Information is moot.
`
`II. ORDER
`
`Accordingly, it is
`
`ORDERED that Petitioner’s Motion to Submit Supplemental
`
`Information is denied; and
`
`FURTHER ORDERED that Exhibits 1032–34 are expunged.
`
`
`
`
`
`
`4
`
`
`
`IPR2017-00338
`Patent 9,098,685 B2
`
`PETITIONER:
`
`Peter M. Dichiara
`Arthur Shum
`Elaine Zhong
`Thomas Brown
`WILMER CUTLER PICKERING HALE and DORR LLP
`peter.dichiara@wilmerhale.com
`arthur.shum@wilmerhale.com
`elaine.zhong@wilmerhale.com
`tom.brown@emc.com
`
`
`PATENT OWNER:
`
`Intellectual Ventures I LLC:
`
`Lori A. Gordon
`Byron L. Pickard
`Lestin L. Kenton
`STERNE, KESSLER, GOLDSTEIN & FOX PLLC
`lgordon-PTAB@skgf.com
`bpickard-PTAB@skgf.com
`Ikenton-PTAB@skgf.com
`
`James R. Hietala
`Tim R. Seeley
`INTELLECTUAL VENTURES
`jhietala@intven.com
`tim@intven.com
`
`
`5
`
`
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