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`UNITED STATES PATENT AND TRADEMARK OFFICE
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` _______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_______________
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`SHENZHEN KEAN SILICONE PRODUCT CO., LTD.
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`Petitioner
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`v.
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`MR. PAUL KOH
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`Patent Owner
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`_______________
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`Patent No. 7,959,036
`Issue Date: June 14, 2011
`Title: Elastomeric Dispensing Container
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`_______________
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`PETITIONER’S MOTION TO INCLUDE ATTESTING AFFIDAVIT OF
`ENGLISH TRANSLATION OF FOREIGN REFERENCE “SHU” AS
`SUPPLEMENTARY EVIDENCE UNDER 37 C.F.R. § 42.64(b).
`On May 13, 2017, Petitioner submitted a petition for inter partes review with
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`respect to U.S. Patent No. 7,959,036 (“the 036 Patent”), including an English
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`translation of foreign reference No. DE202004014944 (“Shu”). However, the Shu
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`reference did not include an attesting affidavit with the translation required in 37
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`C.F.R. § 42.63(b). Petitioner now submits an affidavit in accordance with the rule.
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`Under 37 C.F.R. § 42.64(b), an opportunity is afforded to parties to submit
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`supplemental evidence in response to objections to evidence submitted during a
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`preliminary proceeding “within ten business days of the institution of the trial” (37
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`C.F.R. § 42.64(b)(1)) and service of the supplemental evidence “within ten
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`business days of service of the objection” (37 C.F.R. § 42.64(b)(2)). Patent
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`Owner’s Preliminary Response objected that the Shu translation was defective for
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`lack of an attesting affidavit, but the Board has not yet issued a final decision
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`whether to institute a trial, so it appears that Patent Owner’s objections are not ripe
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`for review.
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` Nevertheless, in Zhongshan Broad Ocean Motor Co., Ltd, et. al. v. Nidec
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`Motor Corporation, (CASE IPR2014-01121), the Board ruled that three Japanese
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`references in the absence of supporting affidavits were incomplete. See Id. at Paper
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`25, Decision Denying Requests for Rehearing Under 37 C.F.R. § 42.71. The Board
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`
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`stated that allowing Petitioner to file the supporting affidavits late as
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`supplementary evidence under 37 C.F.R. § 42.64(b) would reset the filing date of
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`the Petition more than a year after the filing of a complaint in a concurrent civil
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`litigation on the subject patent in violation of 35 U.S.C. § 315(b):
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`The defect with Petitioners’ Japanese documents is not that the
`filing of the references and translations were untimely, but that, in
`the absence of supporting affidavits, the translations were
`incomplete when filed. Although Petitioner may be permitted to file
`the attesting affidavits late, that does not entitle Petitioner to retain
`the filing date associated with the original incomplete references.
`Thus, in this case, it is not the inability to file attesting affidavits
`late that precludes Petitioner, but the fact that complete translations
`with attesting affidavits were not obtained and filed prior to the date
`on which institution of inter partes review was barred under 35
`U.S.C. § 315(b). (Id. at 7, emphasis added).
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`Accordingly, the Board recognized that Petitioner should be allowed to file
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`attesting affidavits late as supplementary evidence when the result of a new filing
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`date would not bar institution under U.S.C. § 315(b), such as in this case where there
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`is no pending civil litigation relating to the ‘036 patent. Issuing a new filing date
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`would thus not be time-barred under U.S.C. § 315(b).
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`Further, Patent Owner’s responsive brief already includes arguments relating
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`to the substance of the same translation of Shu that is enclosed in this motion.
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`Therefore, allowing Petitioner to file the supporting affidavit late does not prejudice
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`Patent Owner in any way.
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`
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`Dated: October 3, 2017
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`Respectfully submitted,
`/Xiyan Zhang/
`Xiyan Zhang, No. 68571
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`
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`CERTIFICATE OF SERVICE
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`The undersigned certifies service pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(b) of
`the following materials:
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` Motion to Include Attesting Affidavit of English Translation of Foreign
`Reference “Shu” as Supplementary Evidence under 37 C.F.R. § 42.64(b).
` Attesting Affidavit of English Translation of Shu reference.
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`on the Patent Owner by UPS, next day delivery at the correspondence address of
`record for the subject patent as listed on PAIR:
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`Melgar IP Law
`54 W 40th St.,
`New York, NY 10018
`Phone: 646-202-2900
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`Dated: October 10, 2017
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`/Xiyan Zhang/
`Xiyan Zhang
`Registration No. 68,571
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`
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