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`Paper 26
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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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`INTIMIDATOR, INC. and RF PRODUCTS, INC.
`Petitioner
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`v.
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`BAD BOY, INC.
`Patent Owner
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`AIA Review IPR2018-01632
`U.S. Patent No. 9,730,386
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`PETITIONERS’ MOTION TO SUBMIT SUPPLEMENTAL
`INFORMATION PURSUANT TO 37 C.F.R. 42.123(a)
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`AIA Review IPR2018-01632
`U.S. Patent No. 9,730,386
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`INTRODUCTION
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`The Board authorized Petitioners’ April 11, 2019 request to file this motion
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`in its April 26, 2019 Order. (Paper 25.) Pursuant to 37 C.F.R. § 42.123(a),
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`Petitioners seek to submit as supplemental information 1) Exhibits 1020-21, which
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`are two product manuals showing commercial products distributed by Patent
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`Owner before the critical date of the ’386 Patent that are relevant because they
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`show the motivation of POSITA to combine prior art references “Melone” and
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`“Foster” as asserted in the Petition (collectively “Manuals”),1 and 2) Exhibit
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`1019, the Supplemental Declaration of Roelof H. deVries that addresses the
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`motivation to combine Melone and Foster supported by the Manuals.
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`ARGUMENT
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`This motion satisfies the requirements of 37 C.F.R. § 42.123(a). First,
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`Petitioners timely requested permission to file the instant motion. (Paper 25 at 2).
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`As noted below, the second requirement, relevancy, is also satisfied.
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`The Patent Owner’s Manuals contain supplemental information relevant to
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`1 For brevity's sake and because other years’ manuals are cumulative,
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`Petitioners proffer only two manuals from 2007 (Bad Boy Diesel Parts Manual)
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`and 2012 (Outlaw XP Model Zero-Turn Mower Owner's, Service & Parts Manual).
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`If the Board would prefer all manuals from 2007 - 2012, they can be provided.
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`1
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`AIA Review IPR2018-01632
`U.S. Patent No. 9,730,386
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`the motivation to combine Melone and Foster, rendering claims 1-4, 8, and 9
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`obvious. The Manuals do not raise new grounds of invalidity. Rather, they provide
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`evidence that not only were POSITA successfully motivated to combine prior art
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`asserted in the Petition, but also evidence of Patent Owner’s commercial products
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`that is inconsistent with a position taken by the Patent Owner in its Preliminary
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`Response. The Manuals show the use of Foster’s suspension cage with Melone’s
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`disclosed non-integrated pump and wheel motor to provide independent suspension
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`for a zero turn mower. Yet, in Patent Owner’s Preliminary Response, and based on
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`its expert’s declaration, Patent Owner asserts that there was no motivation for a
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`POSITA to combine Melone and Foster absent impermissible hindsight. (See, e.g.,
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`Ex. 2001, Paulus declaration ¶¶ 60-70). The Manuals show that not only could this
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`be done, but also that Patent Owner was doing this in a range of commercial
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`products long before the critical date. The Supplemental Declaration is relevant to
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`the prima facie obviousness of claims 1-4, 8, and 9 because it explains how the
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`Manuals show the motivation of a POSITA to combine Melone and Foster, and
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`that POSITA including Patent Owner were already successfully doing so.
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`The Board has recognized that Ҥ 42.123 does clearly contemplate scenarios
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`in which . . . supplemental information may prove beneficial to the Board in
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`reaching a decision with respect to the trial.” Pac. Mkt. Int’l v. Ignite USA, LLC,
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`IPR2014-00561, Paper 23 at 3 (PTAB Dec. 2, 2014). When, as here, the
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`2
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`supplemental
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`AIA Review IPR2018-01632
`U.S. Patent No. 9,730,386
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`information “does not operate
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`to change any grounds of
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`unpatentability,” admission of the supplemental information will assist the Board
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`to ensure a “just, speedy, and inexpensive resolution” by “increas[ing] the
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`likelihood that the record will be developed more fully” and that the patent owner
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`has sufficient time to address the supplemental information if it desires to do so.
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`(Id. at 4. See also Palo Alto Networks, Inc. v. Juniper Networks, Inc., IPR2013-
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`00369, Paper 37 at 4-5 (PTAB Feb. 5, 2014).)
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`Pac. Mkt. Int’l is instructive. There, the petitioner’s supplemental expert
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`declaration contained supplemental testimony that “confirms the prima facie
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`obviousness of claims 16-19” and did not “change any grounds of unpatentability”
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`at issue. Id., Paper 23 at 4. The petitioner did not claim that the opinions included
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`in the supplemental declaration could not have been included in the expert’s
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`original declaration. Contesting the motion, the patent owner argued that the
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`requested supplementation “is a transparent attempt to merely shore up its prior
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`weak points.” Id., Paper 21 at 1. According to the patent owner, the supplemental
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`declaration was, at most, proper material for the petitioner’s reply.
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`Rejecting this argument, the Board admitted the evidence into the record.
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`Id., Paper 23. Because the more stringent interests-of-justice standard does not
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`apply to requests under § 42.123(a), the Board found that the supplemental
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`information “may be useful in determining the patentability or unpatentability of
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`AIA Review IPR2018-01632
`U.S. Patent No. 9,730,386
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`the claims of the ’442 patent at issue” and should be admitted. Id. at 3-4. The
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`Board also reasoned that the evidence’s admission at the earliest point would
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`“increase[] the likelihood that the record will be developed more fully with a
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`minimum number of depositions.” Id.at 4.
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`Here, the information Petitioners seek to submit addresses the combination
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`of the existing references and the motivation to combine them, as evidenced by the
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`Manuals and discussed in the supplemental expert declaration, i.e., the evidence is
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`“directed to reasons to combine the particular prior art references that formed the
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`underlying basis” of the institution. Id. at 3. The supplemental information is
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`highly relevant - the Supplemental Declaration addresses Petitioners’ original
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`arguments, and the Manuals are inconsistent with Patent Owner’s position.
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`Permitting admission of the Supplemental Declaration at this time will allow
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`Patent Owner the opportunity to address this information now, if it chooses to do
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`so, and will ensure an efficient deposition of Petitioners’ expert—potentially
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`eliminating the need for a second deposition. Moreover, if it chooses to do so,
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`Patent Owner will have the opportunity to present expert testimony of its own to
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`rebut that testimony, ensuring no prejudice due to admission of the supplemental
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`information. Id. at 5. Thus, admission of the evidence now will eliminate any claim
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`that Patent Owner was prejudiced by delay in obtaining this supplemental
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`information, including any claim of prejudice related to Patent Owner’s potential
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`4
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`AIA Review IPR2018-01632
`U.S. Patent No. 9,730,386
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`decision to waive its Response, because Patent Owner will have the Supplemental
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`Declaration to consider prior to making its final decision.
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`Additionally, there can be no claim of prejudice due to surprise regarding the
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`supplemental information because this evidence addresses Patent Owner’s own
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`commercial products. See Palo Alto Networks, Paper 37 at 5 (“Given that Patent
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`Owner already has possession of the supplemental information, there is little, if
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`any, prejudice to the Patent Owner if the information is allowed into the record.”).
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`While 37 C.F.R. § 42.123(a) does not require consideration of the interests
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`of justice, even if those interests are considered, Exhibits 1019-21 should be
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`admitted. The Manuals depict Patent Owner’s products and were created by it, yet
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`are inconsistent with its arguments. (Compare, e.g., Paper 9, Preliminary Response
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`at 62-67 and Ex. 2001 ¶¶ 60-70 with Ex. 1020 at 7-8, 17 and Ex. 1021 at 29-30; see
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`also Ex. 1019 ¶ 51.) Despite creating an alleged issue of fact by asserting a
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`contrary position, Patent Owner has failed to produce the Manuals in this IPR, as
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`contemplated by 37 C.F.R. § 42.51(b)(1)(iii), much less during the prosecution of
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`the ’386 Patent. Stated otherwise, Patent Owner should not be allowed to run away
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`from relevant information discussing and constituting its own information.
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`CONCLUSION
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`Petitioners respectfully request the Board admit Exhibits 1019-21 as
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`supplemental information into the record.
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`5
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`Date: May 7, 2019
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`AIA Review IPR2018-01632
`U.S. Patent No. 9,730,386
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`Respectfully submitted,
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`By: /Warner J. Delaune/
`Warner J. Delaune
`Registration No. 36,781
`Lea Speed
`Registration No. 48,185
`Bradley E. Trammell (admitted pro
`hac vice)
`Adam S. Baldridge (admitted pro hac
`vice)
`Attorneys for Petitioners
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`BAKER DONELSON BEARMAN
`CALDWELL & BERKOWITZ, P.C.
`450 Laurel Street
`Chase North Tower, FL 20
`Baton Rouge, LA 70801
`Telephone: (225) 381-7000
`Facsimile: (225) 382-0232
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`AIA Review IPR2018-01632
`U.S. Patent No. 9,730,386
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that the foregoing Motion was served
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`electronically via e-mail on May 7, 2019, in its entirety on the following:
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`Christopher L. Drymalla
`Chad Ennis
`Bracewell LLP
`111 Congress Avenue, Suite 2300
`Austin, Texas 78701-4061
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`Patrick J. Connolly
`Bracewell LLP
`701 Fifth Avenue, Suite 6200
`Seattle, Washington 98104
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`Date: May 7, 2019
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`/Bradley E. Trammell/
`Bradley E. Trammell
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`7
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