`571-272-7822
`
`
`
`
` Paper 30
` Entered: September 23, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GENERAL ELECTRIC COMPANY,
`Petitioner,
`
`v.
`
`UNITED TECHNOLOGIES CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2018-01442
`Patent 9,695,751 B2
`____________
`
`Before HYUN J. JUNG and SCOTT A. DANIELS,
`Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`ORDER
`Granting Authorization for Motion to Submit Supplemental Information
`37 C.F.R. § 42.123(b)
`
`
`
`IPR2018-01442
`Patent 9,695,751 B2
`
`
`A conference call was conducted September 23, 2019, between
`Judges Daniels and Jung, and Patent Owner’s counsel, Mr. Holt and Mr.
`Renner, and Petitioner’s counsel, Mr. Ferguson and Mr. Musher, to discuss
`Mr. Holt’s request, in an email to the Board of September 20, 2019, to
`submit four U.S. patents to the Board along with Patent Owner’s Sur-Reply.
`During the call Mr. Holt explained that the four patents are offered in
`response to Petitioner’s evidence and arguments, which Patent Owner
`asserts were first raised in Petitioner’s Reply, as to the level of ordinary skill
`in the art and the understanding and interpretation of a prior art reference,
`namely Knip’s Figure 10, relied upon by Petitioner in its single reference
`obviousness challenge to claims 3 and 16.
`Mr. Ferguson argued that Petitioner’s assertions as to the level of one
`of ordinary skill in the art and the understanding of Knip’s Figure 10 are not
`new arguments or evidence, as they were initiated in the Petition, and that
`Patent Owner’s submission of these four patents is untimely and should have
`occurred earlier.
`We determined Patent Owner’s request was a request for
`authorization to file a Motion to Submit Supplemental Information. See 37
`C.F.R. §§ 42.123(b). We point out that supplemental information must be
`responsive and not simply new evidence that could have been filed earlier.
`See Rules of Practice for Trials Before the Patent Trial and Appeal Board
`and Judicial Review of Patent Trial and Appeal Board Decisions; Final Rule,
`77 Fed. Reg. 48,612, 48,620 (Aug. 14, 2012). During the call we authorized
`Patent Owner’s counsel to file a five page motion no later than September
`27, 2019. We authorized Petitioner’s counsel to file a five page opposition
`no later than October 4, 2019. The parties should meet and confer regarding
`
`
`
`
`2
`
`
`
`IPR2018-01442
`Patent 9,695,751 B2
`
`changes to due dates 3, 4, and 5 to accommodate filing of Patent Owner’s
`sur-reply subsequent to our determination on the Motion. We also indicated
`to the parties that if the Motion were to be granted, Petitioner would be
`given an opportunity to file a narrowly tailored response to the four patents.
`The due date for oral argument (if requested) is unchanged, and
`remains scheduled for October 30, 2019.
`After considering Patent Owner’s request, it is:
`ORDERED that Patent Owner’s request for authorization to file a
`Motion to Submit Supplemental Information, limited to five pages and due
`no later than September 25, 2019, is granted; and
`FURTHER ORDERED that Petitioner is authorized to file an
`Opposition to Patent Owner’s Motion to Submit Supplemental Information,
`also limited to five pages, no later than October 4, 2019.
`
`3
`
`
`
`IPR2018-01442
`Patent 9,695,751 B2
`
`PETITIONER:
`
`Anish R. Desai
`Brian E. Ferguson
`Christopher Pepe
`Daniel Musher
`WEIL, GOTSHAL & MANGES LLP
`anish.desai@weil.com
`brian.ferguson@weil.com
`christopher.pepe@weil.com
`daniel.musher@weil.com
`
`PATENT OWNER:
`
`W. Karl Renner
`David L. Holt
`Kenneth W. Darby, Jr.
`FISH & RICHARDSON P.C.
`Axf-ptab@fr.com
`holt2@fr.com
`kdarby@fr.com
`
`4
`
`
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