Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 31
`Entered: September 5, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INGENICO INC.,
`Petitioner,
`
`v.
`
`IOENGINE, LLC,
`Patent Owner.
`____________
`
`Case IPR2019-00416
`Patent 8,539,047 B2
`____________
`
`Before ELIZABETH M. ROESEL, SHEILA F. McSHANE, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`HOWARD, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Petitioner’s Motion to Submit Supplemental Information
`37 C.F.R. §§ 42.5(a), 42.123(a)
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 31
`Entered: September 5, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INGENICO INC.,
`Petitioner,
`
`v.
`
`IOENGINE, LLC,
`Patent Owner.
`____________
`
`Case IPR2019-00416
`Patent 8,539,047 B2
`____________
`
`Before ELIZABETH M. ROESEL, SHEILA F. McSHANE, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`HOWARD, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Petitioner’s Motion to Submit Supplemental Information
`37 C.F.R. §§ 42.5(a), 42.123(a)
`
`
`
`
`
`
`
`IPR2019-00416
`Patent 8,539,047 B2
`
`
`On August 16, 2019, the Board authorized Ingenico Inc. (“Petitioner”)
`
`to file a Motion to Submit Supplemental Information Pursuant to 37 CFR
`
`§ 42.123(a). Paper 25. Petitioner filed its Motion and Patent Owner filed an
`
`Opposition. Paper 27 (“Mot.” or “Motion”); Paper 30 (“Opp.”). After
`
`considering the Parties’ papers and the evidence of record, Petitioner’s
`
`motion is granted.
`
`Under 37 CFR § 42.123(a), a party may file a motion to submit
`
`supplemental information in accordance with the following requirements:
`
`(1) A request for the authorization to file a motion to submit
`
`supplemental information is made within one month of the date the trial is
`
`instituted.
`
`(2) The supplemental information must be relevant to a claim for
`
`which the trial has been instituted.
`
`Petitioner requested authorization to file the motion in an email dated
`
`August 13, 2019, within one month of the date the trial was instituted (i.e.,
`
`July 15, 2019). See Paper 25. Patent Owner does not dispute that
`
`Petitioner’s request is timely. See generally Opp. Accordingly, Petitioner’s
`
`motion meets the requirement of 37 C.F.R. § 42.123(a)(1).
`
`Petitioner asserts that the proffered supplemental information (i.e.,
`
`Exhibits 1031–1035) is relevant to challenged claims 1–21, 23–25, 27, and
`
`28 of US Patent No. 8,539,047 B2 for the which the trial has been instituted.
`
`Mot. 2–5. Patent Owner disagrees. Opp. 2–5. For the reasons discussed
`
`below, we determine Petitioner’s motion meets the requirement of
`
`§ 42.123(a)(2).
`
`In the Decision on Institution (Paper 20), we indicated that “the
`
`parties may wish to address during the trial whether the use of [graphical
`
`2
`
`
`
`IPR2019-00416
`Patent 8,539,047 B2
`
`user interfaces (‘GUIs”’)] were ubiquitous for portable phones, PDAs, and
`
`personal computers in 2004. See Ex. 1003 ¶ 14 (describing various portable
`
`devices that can be used in Iida).” Paper 20, 46.
`
`Petitioner states that “Patent Owner had posited that just because
`
`accommodating a graphical user interface (‘GUI’) on a cellphone today
`
`would have been obvious because of the current ubiquity of the iPhone and
`
`the like, that did not mean one would have accommodated a GUI back on
`
`March 23, 2004.” Mot. 2. Petitioner argue that the evidence submitted with
`
`the Petition “supports the conclusion that a POSITA would have been
`
`motivated by Iida’s interest in accommodating existing user devices to
`
`therefore accommodate devices with a GUI, such as disclosed by Genske.”
`
`Id. More specifically, Petitioner argues that the supplemental information
`
`“show the widespread use of GUIs in laptop computers and PDAs and their
`
`growing use in cellphones well prior to the critical date” and should “dispel”
`
`“Patent Owner’s argument that it would take hindsight to see a benefit in
`
`putting a GUI on a wide variety of electronic devices.” Id. at 5.
`
`Petitioner further argues that “[b]ecause the challenged claims only
`
`refer to the broader terminology ‘interactive user interface’ rather than just a
`
`GUI, the exhibits are not limited to GUIs.” Id. at 3.
`
`Patent Owner argues that “Ingenico is using this issue as a backdoor
`
`to introduce new prior art that Ingenico failed to include in its Petition.”
`
`Opp. 2; see also id. at 2–3. According to Patent Owner, “Ingenico admits
`
`that the purpose of its submission is not to show the ubiquity of GUIs, but to
`
`show ‘the widespread availability and use of interactive user interfaces in
`
`3
`
`
`
`IPR2019-00416
`Patent 8,539,047 B2
`
`portable apparatus prior to 2004.’” Opp. 3 (quoting Ex. 20941) (emphasis
`
`added in Opp.). Patent Owner further argues that the motion should be
`
`denied because “Ingenico does not even attempt to explain why its new
`
`information could not have been presented with its Petition.” Id. (citation
`
`omitted).
`
`Patent Owner also argues that the cited exhibits are not responsive to
`
`either the Institution Decision or Patent Owner’s Preliminary Response. Id.
`
`at 4–5. Specifically, Patent Owner argues that Petitioner’s “strategy is to
`
`proffer descriptions and advertisements of dozens of devices that it admits
`
`did not have GUIs, and then cite several isolated examples of alleged GUI-
`
`based products, implying that those are representative of the numerous non-
`
`GUI devices in Ingenico’s submissions.” Id. at 4 (citation omitted).
`
`Based on the present record, we determine that the evidence of record
`
`sufficiently demonstrates that Petitioner’s supplement information, Exhibits
`
`1031–1035, is relevant to the claims for which the trial has been instituted,
`
`as required by § 42.123(a)(2). That is, based on Petitioner’s assertions in its
`
`motion, the supplemental information may be useful in determining the
`
`patentability or unpatentability of the challenged claims. Permitting
`
`admission of the supplemental information at this time also will allow Patent
`
`Owner the opportunity to address this information in its Response, if it
`
`chooses to do so, and will ensure an efficient deposition of Petitioner’s
`
`expert witness, Mr. Geier. See Paper 29 (Notice of Deposition).
`
`At this stage of the proceeding, and for purposes of deciding
`
`Petitioner’s motion, we do not reach a determination of whether the
`
`
`1 Exhibit 2094 is an August 2019 email from Robert Asher (counsel for
`Petitioner) to, inter alia, Derek Brader (counsel for Patent Owner).
`
`4
`
`
`
`IPR2019-00416
`Patent 8,539,047 B2
`
`supplemental information constitutes evidence that supports a reason to
`
`combine Iida and Genske or whether any arguments based on the
`
`supplemental information exceed the scope of a proper reply. See Intelligent
`
`Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed.
`
`Cir. 2016) (determining the reply brief exceeded the scope of a reply under
`
`37 C.F.R. § 42.23(b)). The parties may present any arguments regarding
`
`these issues in Patent Owner’s Response, Petitioner’s Reply, and Patent
`
`Owner’s Sur-Reply.
`
`Accordingly, it is:
`
`ORDER
`
`ORDERED that Petitioner’s Motion to Submit Supplemental
`
`Information Pursuant to 37 C.F.R. § 42.123(a) is granted.
`
`
`
`5
`
`
`
`IPR2019-00416
`Patent 8,539,047 B2
`
`PETITIONER:
`
`Robert Asher
`rasher@sunsteinlaw.com
`
`Timothy Murphy
`tmurphy@sunsteinlaw.com
`
`
`
`PATENT OWNER:
`
`
`Michael A. Fisher
`michael.fisher@dechert.com
`
`Derek J. Brader
`derek.brader@dechert.com
`
`Robert W. Ashbrook
`robert.ashbrook@dechert.com
`
`
`
`
`
`
`
`
`
`
`6
`
`
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