Trials@uspto.gov Paper 19
`571-272-7822
`
`Date: March 29, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SUMITOMO ELECTRIC INDUSTRIES, LTD.,
`Petitioner,
`
`v.
`
`UNITED TECHNOLOGIES CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2017-00966
`Patent 9,166,243 B2
`____________
`
`
`
`Before CHRISTOPHER L. CRUMBLEY and JON B. TORNQUIST,
`Administrative Patent Judges.
`
`
`CRUMBLEY, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5(a)
`
`At the request of Patent Owner United Technologies Corporation
`
`(“UTC”), the Board held a conference call in this matter on March 23, 2018.
`UTC requested the call to seek authorization to file a motion to submit
`supplemental information under 37 C.F.R. § 42.123(b). In particular, UTC
`
`
`571-272-7822
`
`Date: March 29, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SUMITOMO ELECTRIC INDUSTRIES, LTD.,
`Petitioner,
`
`v.
`
`UNITED TECHNOLOGIES CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2017-00966
`Patent 9,166,243 B2
`____________
`
`
`
`Before CHRISTOPHER L. CRUMBLEY and JON B. TORNQUIST,
`Administrative Patent Judges.
`
`
`CRUMBLEY, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5(a)
`
`At the request of Patent Owner United Technologies Corporation
`
`(“UTC”), the Board held a conference call in this matter on March 23, 2018.
`UTC requested the call to seek authorization to file a motion to submit
`supplemental information under 37 C.F.R. § 42.123(b). In particular, UTC
`
`
`
`
`
`IPR2017-00966
`Patent 9,166,243 B2
`
`
`desires to file a declaration from David Baldwin, a translator, regarding the
`proper translation of a Japanese-language reference (“JP228,” Ex. 1003) that
`forms the basis of the patentability challenges at issue in this inter partes
`review. Petitioner Sumitomo Electric Industries (“SEI”) opposed the
`request.
`Counsel for UTC explained that the translation of JP228 only came
`into dispute upon the filing of SEI’s Reply, which was accompanied by the
`Supplemental Declaration of James Yaegashi (Ex. 1066). In the
`Supplemental Declaration, UTC alleges, Mr. Yaegashi altered his prior
`translation of JP228 (Ex. 1004), in particular his interpretation of whether a
`voltage potential expressed at column 3, line 19 of JP228 is positive or
`negative. UTC asks that the declaration of Mr. Baldwin be entered into the
`record to address this change.
`
`During the call, it became apparent that the parties had not sufficiently
`met and conferred prior to contacting the Board, because UTC had not
`provided SEI with the proposed declaration by Mr. Baldwin. The panel
`asked the parties to continue to confer and see if agreement could be reached
`to enter the Baldwin declaration into the record without need for a motion
`for supplemental information. The parties were also advised that, in the
`absence of an agreement, the Board would consider permitting UTC to file a
`short sur-reply with the Baldwin declaration, with the possibility of a
`responsive paper from SEI.
`
`On March 26, 2018, UTC provided an update to the Board via an e-
`mail, a copy of which has been entered into the record as Exhibit 3001. As
`set forth in the e-mail, the parties appear to have reached agreement as to the
`
`2
`
`
`
`
`
`
`IPR2017-00966
`Patent 9,166,243 B2
`
`
`filing of the Baldwin declaration without the need for further briefing,1 and
`both counsel propose to address the issue at oral argument. The Board
`appreciates the parties’ efforts to find common ground on this issue, and will
`permit the Baldwin declaration to be addressed at oral argument.
`
`One remaining issue remains unresolved. As set forth in the e-mail,
`UTC proposes to include with the Baldwin declaration an Exhibit A, which
`is a translation of JP228 that Mr. Baldwin prepared in November 2016,
`before the filing of SEI’s Petition for inter partes review. SEI objects to
`entering this pre-existing translation into the record, because it “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.” Id. UTC argues
`that the pre-existing translation is probative of Mr. Baldwin’s credibility,
`because it was prepared independently of the inter partes review and before
`the dispute over Mr. Yaegashi’s translation arose. Id.
`
`We agree with UTC that the pre-existing Baldwin translation is
`probative of Mr. Baldwin’s credibility, and may be useful to the Board in
`resolving the dispute over the change in Mr. Yaegashi’s translation. But
`SEI’s objection to the late nature of Mr. Baldwin’s translation, of which
`UTC has been in possession for over a year, also has merit. We consider it
`improper to admit the pre-existing Baldwin translation as independent
`evidence of the proper translation of JP228; if UTC had desired the Board to
`consider the Baldwin translation on its own, it could have been submitted
`earlier in the proceeding and SEI would have had the opportunity to fully
`explore and contest the translation. We will permit UTC, however, to file
`
`
`1 UTC’s e-mail conveys SEI’s position that “no further briefing or papers
`should be filed on this issue.” Ex. 3001.
`3
`
`
`
`
`
`
`IPR2017-00966
`Patent 9,166,243 B2
`
`
`the translation as Exhibit A, solely for the limited purpose of establishing
`Mr. Baldwin’s credibility and resolving the dispute over Mr. Yaegashi’s
`translation. The Board will not consider the Baldwin translation as
`independent evidence of the proper translation of JP228 on issues beyond
`the change in Mr. Yaegashi’s translation.2
`
`
`In light of the foregoing, it is
`
`ORDERED that Patent Owner is authorized to enter into the record
`the declaration of David Baldwin, as agreed to by the parties;
`
`FURTHER ORDERED that the Baldwin declaration may be
`accompanied by an Exhibit A that will be considered by the Board only for
`the limited purpose set forth above; and
`FURTHER ORDERED that no further briefing is authorized, but the
`parties may address the Baldwin declaration at oral argument.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`2 In its email to the Board, UTC agrees with this limited approach, stating
`that “[b]eyond [the voltage potential] point, UTC is not attempting to initiate
`a dispute as to the appropriate translation.” Ex. 3001.
`4
`
`
`
`
`
`
`
`
`IPR2017-00966
`Patent 9,166,243 B2
`
`For PETITIONER:
`
`John S. Goetz
`John Pegram
`FISH & RICHARDSON P.C.
`goetz@fr.com
`pegram@fr.com
`
`
`For PATENT OWNER:
`
`Theodore Olds
`Matthew Koziarz
`CARLSON, GASKEY & OLDS, P.C.
`tolds@cgolaw.com
`mkoziarz@cgolaw.com
`
`
`5
`
`
`
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