Paper No. 30
`Trials@uspto.gov
`Entered: January 16, 2020
`571.272.7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`SZ DJI TECHNOLOGY CO., LTD.
`Petitioner,
`v.
`AUTEL ROBOTICS USA LLC,
`Patent Owner.
`
`IPR2019-00343
`Patent 9,260,184 B2
`
`
`
`
`
`
`
`
`
`
`Before ERICA A. FRANKLIN, JENNIFER MEYER CHAGNON, and
`AVELYN M. ROSS, Administrative Patent Judges.
`
`CHAGNON, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting Patent Owner’s Motion for Late Submission
`of Supplemental Information
`37 C.F.R. § 42.123(b)
`
`
`
`
`
`
`
`Trials@uspto.gov
`Entered: January 16, 2020
`571.272.7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`SZ DJI TECHNOLOGY CO., LTD.
`Petitioner,
`v.
`AUTEL ROBOTICS USA LLC,
`Patent Owner.
`
`IPR2019-00343
`Patent 9,260,184 B2
`
`
`
`
`
`
`
`
`
`
`Before ERICA A. FRANKLIN, JENNIFER MEYER CHAGNON, and
`AVELYN M. ROSS, Administrative Patent Judges.
`
`CHAGNON, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting Patent Owner’s Motion for Late Submission
`of Supplemental Information
`37 C.F.R. § 42.123(b)
`
`
`
`
`
`
`
`
`IPR2019-00343
`Patent 9,260,184 B2
`
`
`This proceeding involves challenges to certain claims of U.S. Patent
`No. 9,260,184 (Ex. 1001, “the ’184 patent”). On December 23, 2019, with
`Board authorization (see Paper 24), Patent Owner filed a Motion to Submit
`Supplemental Information Under 37 C.F.R. § 42.123(b). Paper 251 (“Mot.”
`or “Motion”). Petitioner filed an Opposition to the Motion. Paper 27
`(“Opp.”). Having reviewed the record on this matter, we grant Patent
`Owner’s Motion.
`Under 37 C.F.R. § 42.123, a motion to submit supplemental
`information more than one month after the date a trial is instituted2 “must
`show why the supplemental information could not have been obtained
`earlier[] and that consideration of the supplemental information would be in
`the interest[] of [] justice.” Id. § 42.123(b). In its Motion, Patent Owner
`requests entry into the record of this proceeding excerpts of testimony from
`a parallel International Trade Commission investigation3 relating to the ’184
`patent. Mot. 1. In particular, Patent Owner seeks to submit testimony of
`Petitioner’s expert witness Juan J. Alonso, Ph.D.4 (Proposed Exhibit 1) and
`
`
`1 Patent Owner appends the following documents to the Motion: Proposed
`Exhibit 1, Proposed Exhibit 2, and Motion Exhibit. Submission of these
`documents was authorized, however, these documents have not yet been
`entered as evidence of record in these proceedings. Paper 24, 3.
`2 Trial in this proceeding was instituted on May 22, 2019. Paper 7.
`3 Certain Unmanned Aerial Vehicles and Components Thereof,
`Inv. No. 337-TA-1133 (“the ITC investigation”).
`4 Petitioner does not rely on testimony from Dr. Alonso in this inter partes
`review proceeding. Petitioner’s positions in this inter partes review are
`supported by Declarations of Alfred Ducharme, Ph.D. (Ex. 1003; Ex. 1032).
`
`2
`
`
`
`IPR2019-00343
`Patent 9,260,184 B2
`
`testimony of Patent Owner’s expert witness Charles F. Reinholtz, Ph.D.5
`(Proposed Exhibit 2) from the hearing conducted in the ITC investigation.
`Id.
`
`Patent Owner contends that the supplemental information reasonably
`could not have been obtained earlier because the hearing in the ITC
`investigation was held on October 21–23, 2019, and that Petitioner’s reply
`brief, which contains arguments allegedly contradicted by the proposed
`supplemental evidence was filed on November 22, 2019. Id. at 2.
`Patent Owner further contends that “[t]he testimony from Petitioner’s
`expert [in the ITC investigation] contradicts Petitioner’s arguments relating
`to Microdrones[6] (Grounds 1 and 2) as applied to claim 1” of the ’184 patent
`and that “[t]he testimony is directly relevant to the exact same arguments
`and issues pending in the IPR, and is thus highly relevant.” Id. at 1. At
`issue in this proceeding, among other things, is whether Microdrones
`discloses the “engagement limitation”7 of claim 1 of the ’184 patent, which
`also implicates related claim construction arguments. See id. at 3; Paper 22
`(Petitioner’s Reply to Patent Owner’s Response), 5–7. According to Patent
`
`
`5 Patent Owner also submits testimony of Dr. Reinholtz in this proceeding
`(Ex. 2010).
`6 Microdrones User Manual for md4-200 (Version 2.2) (Ex. 1004).
`7 Claim 1 recites “the clockwise rotor blade is engageable only with the
`clockwise lock mechanism and cannot be engaged in the counterclockwise
`lock mechanism, and the counterclockwise rotor blade is engageable only
`with the counterclockwise lock mechanism and cannot be engaged in the
`clockwise lock mechanism,” which the parties refer to as the “engagement
`limitation.” Ex. 1001, 5:53–6:4.
`
`3
`
`
`
`IPR2019-00343
`Patent 9,260,184 B2
`
`Owner, Dr. Alonso’s testimony from the ITC investigation is inconsistent
`with positions Petitioner has taken in this inter partes review. See Mot. 3–5.
`As to timeliness, Petitioner contends that Patent Owner has “failed to
`establish that the proffered testimony could not be obtained earlier through
`cross-examination” of Dr. Ducharme8, or “why it waited six weeks after the
`ITC testimony to seek to submit this testimony.” Opp. 1.
`As to whether consideration of the proffered testimony would be in
`the interests-of-justice, Petitioner argues that Patent Owner’s Motion is
`“merely an attempt to substitute ITC cross-examination in place of
`cross-examination of the IPR declarant.” Id. at 2. In this regard, Petitioner
`asserts that, Patent Owner “never alleges any contradictions between
`[Dr. Ducharme’s] testimony and the proffered ITC testimony,” but instead
`argues that the proffered ITC testimony “is inconsistent with [Petitioner’s]
`positions in this IPR.” See id. (citing Mot. 2). Petitioner also argues that
`“Dr. Alonso’s ITC testimony does not contradict [Petitioner’s] positions.”
`Id. at 3; see id. at 3–5 (expanding on this contention). Finally, Petitioner
`argues that “admission of PE1 would be unduly prejudicial to Petitioner
`because it is an incomplete representation of Dr. Alonso’s testimony.” Id.
`at 5. In particular, Petitioner notes that Patent Owner does not seek to
`introduce Dr. Alonso’s witness statement submitted as his direct testimony
`in the ITC investigation, but only seeks to introduce his cross-examination
`testimony. Id.
`
`
`8 As noted by Petitioner (Opp. 1), Patent Owner elected not to depose
`Dr. Ducharme in this proceeding.
`
`4
`
`
`
`IPR2019-00343
`Patent 9,260,184 B2
`
`
`Having considered the parties’ arguments, we determine that Patent
`Owner has met the threshold required to show that the proposed
`supplemental information has relevance in this proceeding, that Patent
`Owner’s request is timely despite the advanced stage of this proceeding, and
`that it would be in the interests-of-justice to grant the Motion. We are
`cognizant of the concerns raised by Petitioner, however we determine those
`concerns are outweighed by the relevance of potentially inconsistent
`testimony provided by Petitioner’s expert in the ITC investigation.9 Cf.
`Ultratec, Inc. v. CaptionCall, LLC, 872 F.3d 1267, 1272–73 (Fed. Cir. 2017)
`(“Ultratec sought to offer recent sworn testimony of the same expert
`addressing the same patents, references, and limitations at issue in the IPRs.
`A reasonable adjudicator would have wanted to review this evidence.”),
`1273 (“There would have been very little administrative burden to reviewing
`more on-point testimony from the same expert on the same exact issues.
`Had the testimony been inconsistent, a reasonable fact finder would consider
`the inconsistencies. Had the testimony been consistent, the Board would not
`have had to spend any more time on the issue.”). Further, we determine that
`reviewing the testimony would place minimal additional burden on the
`Board. See Ultratec, 872 F.3d at 1273.
`
`
`9 We note that we will be able to discern at the conclusion of trial whether
`Patent Owner’s use of the supplemental information reveals actual
`inconsistencies in Petitioner’s positions, as Patent Owner contends. Further,
`little weight may be given to this supplemental information in the context of
`assessing the credibility of Dr. Ducharme’s testimony in this inter partes
`review, as it is not the cross-examination of Dr. Ducharme himself.
`
`5
`
`
`
`IPR2019-00343
`Patent 9,260,184 B2
`
`
`Patent Owner is authorized to submit Proposed Exhibit 1 and
`Proposed Exhibit 210 as Exhibits in this proceeding. The parties may each
`file a single paper, not to exceed five (5) pages, with respect to the proposed
`supplemental information. The content of the supplemental information will
`only be considered to the extent that the specific relevance thereof to the
`issues in this proceeding is explicitly discussed and explained in the parties’
`authorized papers.
`
`In consideration of the foregoing, it is hereby:
`ORDERED that Patent Owner’s Motion to Submit Supplemental
`Information Under 37 C.F.R. § 42.123(b) is granted; and
`FURTHER ORDERED that Patent Owner shall submit Proposed
`Exhibit 1 and Proposed Exhibit 2 as Exhibits, no later than January 23, 2020;
`FURTHER ORDERED that Patent Owner may submit, along with the
`supplemental information, a paper of no more than five pages describing the
`relevance of the supplemental information to the issues in this proceeding;
`and
`
`FURTHER ORDERED that Petitioner may submit, no later than
`January 30, 2020, a responsive paper of no more than five pages.
`
`
`
`
`10 We note that the parties’ arguments in the briefing focus on Proposed
`Exhibit 1. We also authorize submission of Proposed Exhibit 2, based on
`Patent Owner’s indication that it was included “in the interests of
`completeness and fairness.” Mot. 4 n.2.
`
`6
`
`
`
`IPR2019-00343
`Patent 9,260,184 B2
`
`For PETITIONER:
`
`Lori Gordon
`Steven Peters
`KING & SPALDING LLP
`lgordon@kslaw.com
`speters@kslaw.com
`
`
`For PATENT OWNER:
`
`Timothy Bickham
`Matthew Bathon
`John Abramic
`Katherine Johnson
`Harold Fox
`Katherine Cappaert
`STEPTOE & JOHNSON LLP
`tbickham@steptoe.com
`mbathon@steptoe.com
`jabramic@steptoe.com
`kjohnson@steptoe.com
`hfox@steptoe.com
`kcappaert@steptoe.com
`
`
`7
`
`
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