Zilberberg, Jessica E.
`Trials
`Olds, Theodore W.; Koziarz, Matt L.; goetz@fr.com; John Pegram; IPR07877-0011IP1
`IPR2017-00966 | Supplemental Translator Declaration
`Monday, March 26, 2018 6:01:41 PM
`
`From:
`To:
`Cc:
`Subject:
`Date:
`
`Dear Board:
`
`On Friday, March 23, you held a conference call regarding Patent Owner UTC’s request for
`authorization to file a motion to submit supplemental information. As discussed in the conference
`call, the principal reference in the Petition is JP228, a Japanese patent. Petitioner filed a translation
`of JP228 with the Petition on February 23, 2017. UTC included a detailed analysis of JP228 in its
`POR on December 13, 2017. Petitioner then filed a Reply on March 14, 2018, accompanied by a
`“supplemental declaration” of its translator that fundamentally altered a key aspect of his
`interpretation of JP228 – changing a “minus” sign of a key parameter to a “plus” sign.
`
`UTC sought leave from the Board to submit a responsive declaration of a professional translator,
`including the translator’s own translation of JP228 (“Exhibit A” to the declaration). Exhibit A is
`probative not only as to the critical issue of how “plus” and “minus” signs are used in JP228, but
`also as to the credibility of the translation – it was performed independently in the course of UTC’s
`normal case preparations even before the current dispute arose as to the correct interpretation of the
`“minus” sign in JP228, and agreed with Petitioner’s original translation on the key point now at
`issue. Beyond this point, UTC is not attempting to initiate a dispute as to the appropriate translation.
`
`On the conference call, the Board directed UTC to share the responsive declaration with Petitioner,
`and ruled that either (1) Petitioner could agree to permit the filing of the responsive declaration, or
`(2) that the Board would issue an order allowing UTC to file a sur-reply if Petitioner did not agree.
`
`Petitioner has responded as follows (and has instructed UTC to include this summary in this email):
`
`“The Petitioner does not object to the declaration but does object to Exhibit A to the declaration,
`which is a translation of JP228 that the declarant prepared “in or around November 2016.” This
`translation was never previously disclosed to Petitioner, is not of record in this IPR, and was not a
`part of Patent Owner’s requested motion to supplement. Whether the Board allows Patent Owner to
`include Exhibit A as an attachment to the new declaration or not, Petitioner believes that no further
`briefing or papers should be filed on this issue and requests that the parties simply be permitted to
`comment on this new evidence at the oral argument.”
`
`Because Petitioner has not agreed to permit UTC’s responsive declaration in full, but only in part,
`UTC would appreciate further instruction from the Board as to whether it should file the
`supplemental declaration or instead file a sur-reply.
`
`Thanks,
`Jessica
` 
`Jessica Zilberberg
`Intellectual Property Attorney
`Carlson, Gaskey & Olds, P.C.
`(248) 283-0726 (direct)
`(248) 988-8360 (main)
`www.cgolaw.com
` 
`
`