Proceeding No.: IPR2017-02143
`Patent No.: 7,480,569
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`YAMAHA GOLF CAR COMPANY
`Petitioner,
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`v.
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`CLUB CAR, LLC
`Patent Owner.
`____________
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`Case IPR2017-02143
`Patent 7,480,569
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`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION TO
`SUBMIT SUPPLEMENTAL INFORMATION UNDER 37 C.F.R. § 42.123(a)
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`Patent No.: 7,480,569
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`YAMAHA GOLF CAR COMPANY
`Petitioner,
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`v.
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`CLUB CAR, LLC
`Patent Owner.
`____________
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`Case IPR2017-02143
`Patent 7,480,569
`____________
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`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION TO
`SUBMIT SUPPLEMENTAL INFORMATION UNDER 37 C.F.R. § 42.123(a)
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`Proceeding No.: IPR2017-02143
`Patent No.: 7,480,569
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`INTRODUCTION
`On August 7, 2018, Petitioner Yamaha Golf Car Company (“YGC”) filed its
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`I.
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`Motion to Submit Supplemental Information Pursuant to 37 C.F.R. § 42.123(a)
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`(the “Motion”). More particularly, YGC seeks to submit supplemental information,
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`including three additional declarations from purported expert witnesses, nine
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`additional references that supposedly reflect the state of the art in January 2003,
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`and an additional claim chart for a previously submitted, but uncharted, reference.
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`As set forth herein, the PTAB should deny YGC’s Motion because (i) the
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`supplemental information could have been included in the original Petition, (ii)
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`YGC is impermissibly using this Motion as a mechanism to cure the deficiencies in
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`its Petition, and (iii) Patent Owner Club Car, LLC (“Club Car”) will be unfairly
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`prejudiced if the Motion is granted.
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`II. YGC MISCHARACTERIZES THE STANDARD FOR GRANTING
`MOTIONS TO SUBMIT SUPPLEMENTAL INFORMATION
`YGC conflates the standard for filing a motion to supplement evidence,
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`which is a relatively low showing, with the actual standard for granting a motion
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`to supplement evidence, which requires a more rigorous analysis.
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`A party may file a motion to submit supplemental information if (i) the
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`“request for the authorization . . . is made within one month of the date the trial is
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`instituted” and (2) “[t]he supplemental information . . . [is] relevant to a claim for
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`which the trial has been instituted.”1 37 C.F.R. § 42.123(a). But contrary to YGC’s
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`Proceeding No.: IPR2017-02143
`Patent No.: 7,480,569
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`argument (see Motion at 2-3), the PTAB does not apply this same standard when
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`assessing whether to grant that motion. See B/E Aerospace, Inc. v. MAG
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`Aerospace Indus., LLC, IPR2014-0150, Paper 37 at 3 (PTAB May 26, 2015) (“To
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`the contrary, section 123(a) specifies the requirements for authorization to file a
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`motion to submit supplemental information, not the requirements to file the
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`proffered information.”).
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`As explained by the Federal Circuit, section 42.123(a) “does not connote the
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`PTAB must accept supplemental information so long as it is timely and relevant.”
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`Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 445 (Fed. Cir.
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`1 YGC makes vague assertions of relevance, but never once explains why the
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`supplemental information is “relevant to a claim for which the trial has been
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`instituted,” as set forth in Rule 42.123(a)(2), or proffers any argument as to why
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`this supplemental information changes the patentability of any claim for which trial
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`has been instituted. See Motion at 6-9. This shortcoming, taken alone, provides
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`sufficient justification to deny YGC’s Motion. See B/E Aerospace, Inc. v. MAG
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`Aerospace Indus., LLC, IPR2014-01510, Paper 37 at 6 (PTAB May 26, 2015)
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`(denying motion to file supplemental information because “Petitioner fails to
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`identify any instituted claim that relates to the proffered information”).
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`2
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`2015) (citation omitted); Nevro Corp. v. Boston Sci. Neuromodulation Corp.,
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`Proceeding No.: IPR2017-02143
`Patent No.: 7,480,569
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`IPR2017-01812, Paper 30 at 4 (PTAB May 30, 2018) (“Satisfaction of [37 C.F.R.
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`§ 42.123(a)] . . . does not guarantee that a motion will be authorized or granted.”).
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`Instead, the PTAB’s guiding principle in making any determination on a motion to
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`submit supplemental information is “to ensure the efficient administration of the
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`Office and the ability of the Office to complete IPR proceedings in a timely
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`manner.” Redline Detection, 811 F.3d at 445 (citation and internal quotation marks
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`omitted). As explained herein, relevant factors the PTAB will consider in making
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`this determination include whether (i) the supplemental information could have
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`been included in the Petition, (ii) the Petitioner is changing its relied-upon
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`evidence in an attempt to cure deficiencies in its Petition, and (iii) the non-moving
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`party will be prejudiced if the supplemental information is permitted.
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`YGC, as the moving party, bears the burden of demonstrating that it is
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`entitled to the relief requested. See 37 C.F.R. § 42.20(c). Here, YGC cannot meet
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`its burden, as its motion to supplement does not satisfy, let alone even address,
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`these relevant factors. As a result, the Motion should be denied.
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` III. THE PTAB SHOULD DENY YGC’S MOTION TO SUBMIT
`SUPPLEMENTAL INFORMATION
`The PTAB should deny YGC’s motion for three independent reasons. First,
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`YGC could have, but chose not to, include this supplemental information in its
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`Petition. Second, YGC improperly uses this Motion as an attempt to change its
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`Proceeding No.: IPR2017-02143
`Patent No.: 7,480,569
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`relied-upon evidence in hopes of curing deficiencies in its Petition. Third, given
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`that Club Car’s POR is due in less than ten days, it will be prejudiced if this
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`Motion is granted.
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`A. YGC Advances no Justification for Choosing not to Include the
`Supplemental Information in its Petition
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`All information YGC seeks to admit in this Motion was available at the time
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`the Petition was filed—YGC provides no arguments to the contrary. Yet now,
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`post-intuition, YGC seeks to introduce three declarations of purported expert
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`witnesses, nine supposed prior art references, and a claim chart allegedly mapping
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`claim 1 of the ’965 Patent to Exhibit Y1003. See Motion at 1. YGC never justifies
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`this late submission of evidence and arguments. Nor can it. As a result, the PTAB
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`should deny this Motion.
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`“The Board may take into account whether the supplemental information
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`was reasonably available to the petitioner at the time the petition was filed.”
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`Laboratoire Francais Du Fractionnement Et Des Biotechnologies S.A. v. Novo
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`Nordisk Healthcare AG, IPR2017-00028, Paper 22 at 4 (PTAB June 13, 2017)
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`(citing Redline, 811 F.3d at 443); see also Ooma, Inc. v. Deep Green Wireless
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`LLC, IPR2017-01541, Paper 14 at 3 (PTAB Jan. 23, 2018) (“Petitioner has not
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`sufficiently persuaded us why the supplemental information could not have been
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`filed with the Petition . . . .” (citation omitted)). Indeed, the PTAB routinely denies
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`Proceeding No.: IPR2017-02143
`Patent No.: 7,480,569
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`motions to supplement when, as here, the “Petitioner has not explained sufficiently
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`why the supplemental information could not have been presented with its original
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`Petition.” Novo Nordisk, IPR2017-00028, Paper 22 at 4; see also Redline
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`Detection, LLC v. Star Envirotech, Inc., IPR2013-00106, Paper 24 at 4 (PTAB
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`Aug. 5, 2013), aff’d 811 F.3d 435 (Fed. Cir. 2015) (denying motion when moving
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`party did not, among other reasons, “make any attempt to justify the submission of
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`an expert declaration after filing its petition and after [the] decision to institute”).
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`Here, the proffered supplemental information was readily available to YGC
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`when it filed its Petition on September 20, 2017. Each newly-asserted reference
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`(Ex. Y1016-1024) predates YGC’s Petition. To the extent YGC felt these
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`references were relevant, they should have been included in the Petition. Similarly,
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`YGC advances no argument that it could not have included the additional witness
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`declarations or claim chart in its Petition.2 Accordingly, the PTAB should deny
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`2 Exhibit Y1026 is a declaration that purports to examine the various English
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`translations of Exhibit Y1009. See Motion at 4-6. YGC could have filed this
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`declaration in conjunction with its Petition. Indeed, YGC acknowledges that it was
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`in possession, and provided Club Car with a copy of, the allegedly imprecise
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`translation in the district court litigation. See Motion at 5. Given that YGC
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`YGC’s Motion.
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`Proceeding No.: IPR2017-02143
`Patent No.: 7,480,569
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`B. YGC Seeks to Change the Evidence it Relies Upon in Hopes of
`Curing the Deficiencies in its Petition
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`YGC seeks to change its relied-upon evidence by adding new expert
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`declarations and supporting references with the hopes of patching over the
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`shortcomings in its Petition. This post-institution gamesmanship should not be
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`permitted. See Mitsubishi Plastics, Inc. v. Celgard, LLC, IPR2014-00524, Paper 30
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`at 6 (PTAB Nov. 28, 2014) (holding that the Petitioner’s motion to introduce new
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`expert declarations improperly attempts “to change the evidence it relied upon in
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`making its original challenge”).
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`The PTAB explains that “37 C.F.R. § 42.123(a) is not intended to be an
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`avenue for bolstering a petition’s deficiencies, once those deficiencies are
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`identified by a patent owner or the Board.” Nevro Corp., IPR2017-01812, Paper 30
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`at 4 (citing Redline, 811 F.3d at 445). In practice, “[s]upplemental information is
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`not intended to provide a petitioner an advantageous ‘wait-and-see’ opportunity to
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`intentionally obtained a different translation, and relied upon the differences in its
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`Petition, it was reasonably foreseeable that disagreements would arise concerning
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`the English translation of Exhibit Y1009. Importantly, there was nothing that
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`prohibited YGC from including this declaration with its Petition.
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`use a patent owner’s preliminary response and [the PTAB’s] decision on institution
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`Proceeding No.: IPR2017-02143
`Patent No.: 7,480,569
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`in order to refine or bolster petitioner’s position.” Ooma, IPR2017-01541, Paper 14
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`at 3-4 (citation omitted); B/E Aerospace, IPR2014-01510, Paper 37 at 5 (same).
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`Indeed, “[t]he Board has repeatedly denied the submission of supplemental
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`information under 37 C.F.R. § 42.123(a), to bolster the challenges presented
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`originally in the petition, based on feedback gleaned from the decision on
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`institution or patent owner’s preliminary response.” VTech Commc’ns, Inc. v.
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`Shperix Inc., IPR2014-01431, Paper 21 at 3 (PTAB Apr. 7, 2015) (collecting
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`cases); see also Ooma, IPR2017-01541, Paper 14 at 3-4; Boeing Co. v. Levine,
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`IPR2015-01341, Paper 30 at 3 (PTAB April 15, 2016); Mitsubishi Plastics,
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`IPR2014-00524, Paper 30 at 5-6; ZTE Corp. v. ContentGuard Holdings Inc.,
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`IPR2013-00139, Paper 27 at 3 (PTAB July 30, 2013).
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`Here, YGC seeks to introduce supplemental evidence in order to overcome
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`the deficiencies in its Petition. For example, YGC attempts to introduce
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`supplemental information that responds to arguments raised by Club Car in its
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`POPR. See Motion at 4-5 (seeking to file declaration analyzing “certified
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`translation [of Exhibit Y1009 that was] filed by Patent Owner”); id. at 6-7
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`(requesting to introduce declaration of individual with purported knowledge of
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`“golf course management” in order to respond to testimony from Club Car’s
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`expert, Henry DeLozier); id. at 8-9 (attempting to supplement declaration
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`originally filed at Y1001 in hopes of addressing deficiencies identified by Club
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`Proceeding No.: IPR2017-02143
`Patent No.: 7,480,569
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`Car’s POPR). For example, in Exhibit Y1025, YGC seeks to add nearly seventy-
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`five pages of additional expert testimony, including numerous references that
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`purportedly demonstrate the state of the art; additional analysis of the disputed
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`claim terms “golf cart” and “driver,” including citations to numerous extrinsic
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`sources; purported new teachings allegedly disclosed in Exhibits Y1009 and
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`Y1006; and new testimony relating to YCG’s anticipation and obviousness
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`arguments that relies on, inter alia, the “state of the art” on the effective filing date.
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`See generally Y1025. But a motion to submit supplemental information cannot be
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`used as an avenue to change or supplement Petitioner’s relied-upon evidence in
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`response to arguments raised in Patent Owner’s POPR. See, e.g., Redline,
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`IPR2013-00106, Paper 24 at 3 (denying motion because “new declaration is not
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`just supplemental evidence, but is a completely new argument, with brand new
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`claim charts that include new information”); Mitsubishi Plastics, IPR2014-00524,
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`Paper 30 at 6 (denying motion when petitioner sought to “use expert declarations .
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`. . to bolster the evidence originally submitted in support of the Petition”).3
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`3 For this reason, YGC’s relied-upon case law is inapposite. See Motion at 2-3. For
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`example, in Palo Alto Networks, Inc. v. Juniper Networks, Inc., IPR2013-00369,
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`Paper 37 at 3 (PTAB Feb. 5, 2014), the Petitioner did not seek to introduce new
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` Additionally, YGC improperly seeks to use its Motion to challenge the
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`Proceeding No.: IPR2017-02143
`Patent No.: 7,480,569
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`Board’s claim construction. See Motion at 8 (noting that proposed supplemental
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`declaration “seeks to provide a more detailed analysis of the claim construction
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`regarding ‘golf cart’”). As explained by the PTAB, however, “[a] motion to submit
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`supplemental information is not a mechanism to challenge the Board’s claim
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`construction set forth in a Decision on Institution.” Rackspace US, Inc. v.
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`Personalweb Techs., LLC, IPR2014-00057, Paper 16 at 6 (PTAB Apr. 30, 2014).
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`YGC seeks to introduce supplemental information in order to patch over the
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`deficiencies in its Petition. A motion to submit supplemental information, however,
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`cannot be used as a way to change the relied-upon evidence, in hopes of
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`overcoming defects in the Petition. As a result, YGC’s motion should be denied.
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`declarations or additional references, but rather to introduce evidence confirming
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`the public accessibility of prior art cited in the Petition; see also Biomarin Pharms.
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`Inc. v. Genzyme Therapeutic Prods. Ltd., IPR2013-00534, Paper 80 at 1 (PTAB
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`Jan. 7, 2015) (granting motion to supplement when “Petitioner contend[ed] that
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`Exhibit 1182 should be admitted into the record because it is relevant to the issue
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`of public availability of Exhibit 1002”).
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`Proceeding No.: IPR2017-02143
`Patent No.: 7,480,569
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`C. YGC’s Supplemental Information will Prejudice Club Car
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`YGC’s motion must be denied because the supplemental information will
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`unduly prejudice Club Car. YGC seeks to introduce three new declarations, nine
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`additional references, and a new claim chart. Club Car would have no reasonable
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`opportunity to address this supplemental information, as its POR is due in less than
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`ten days.
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`“An important consideration in determining whether to authorize the filing
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`of a motion to submit supplemental information is that the . . . proceedings must be
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`completed within one year of institution.” Rackspace, IPR2014-00057, Paper 16, at
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`5 (citing 35 U.S.C. § 316(a)(11)). Petitioner’s motion to file supplemental
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`information should be denied when, as here, the newly-proffered supplemental
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`information “would impact Patent Owners’ ability to file its patent owner
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`responses timely.” Id.; Nevro Corp., IPR2017-01812, Paper 30 at 3 (accepting
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`Patent Owner’s argument—in a post-SAS Institute inter partes review—“that the
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`interests of justice do not support Petitioner’s request, because Patent Owner
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`would not have sufficient time to respond to this new information in its Patent
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`Owner Response”).
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`Here, YGC baldy asserts that consideration of the supplemental information
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`“will not frustrate the Board’s ability to complete this proceeding in a timely
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`manner, and [that] the Patent Owner will have an opportunity to address the
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`evidence in its Patent Owner response.” Motion at 9. YGC’s argument is wrong,
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`Proceeding No.: IPR2017-02143
`Patent No.: 7,480,569
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`especially given the voluminous amount of proffered supplemental information
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`and because Club Car’s POR is due in less than ten days. Therefore, Club Car will
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`be prejudiced, and YGC’s motion should be denied.
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`IV. CONCLUSION
`Accordingly, based on the above, Club Car respectfully requests that the
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`PTAB deny YGC’s Motion to Submit Supplemental Information Pursuant to 37
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`C.F.R. § 42.123(a).
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`Dated: September 5, 2018
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`Respectfully submitted,
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`/Cyrus A. Morton/
`Cyrus A. Morton
`Registration No. 44,954
`William Manske (pro hac vice)
`Attorneys for Patent Owner
`Robins Kaplan LLP
`2800 LaSalle Plaza
`800 LaSalle Avenue
`Minneapolis, MN 55402
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`Proceeding No.: IPR2017-02143
`Patent No.: 7,480,569
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`CERTIFICATE OF SERVICE
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` hereby certify that on September 5, 2018 a copy of PATENT OWNER’S
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` I
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`OPPOSITION TO PETITIONER’S MOTION TO SUBMIT SUPPLEMENTAL
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`INFORMATION UNDER 37 C.F.R. § 42.123(a) was served by electronic mail to
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`Petitioners:
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`Robert W. Dickerson
`rdickerson@zuberlaw.com
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`Armand F. Ayazi
`aayazi@zuberlaw.com
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`/Cyrus A. Morton/
`Cyrus A. Morton
`Registration No. 44,954
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