Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 42
`Entered: September 25, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ASSOCIATED BRITISH FOODS PLC, AB VISTA, INC.,
`PGP INTERNATIONAL, INC., ABITEC CORPORATION,
`AB ENZYMES, INC., and AB ENZYMES GMBH,
`Petitioners,
`
`v.
`
`CORNELL RESEARCH FOUNDATION, INC.,
`Patent Owner.
`_______________
`
`Case IPR2019-00577 (Patent 8,993,300 B2)
`Case IPR2019-00578 (Patent 8,455,232 B2)
`Case IPR2019-00579 (Patent 7,829,318 B2)
`Case IPR2019-00580 (Patent 7,321,063 B2)
`Case IPR2019-00581 (Patent 7,026,150 B2)
` Case IPR2019-00582 (Patent 6,451,572 B1)1
`_______________
`Before SUSAN L. C. MITCHELL, ROBERT A. POLLOCK, and
`TIMOTHY G. MAJORS,
`Administrative Patent Judges.2
`MITCHELL, Administrative Patent Judge.
`
`1 This Order addresses issues in each of the identified proceedings. We
`exercise our discretion to issue one Order to be filed in each proceeding.
`The parties are not authorized to use this style heading in subsequent papers
`without prior authorization from the Board.
`2 This is not a decision by an expanded panel of the Board. Judges Mitchell,
`Pollock, and Majors are paneled in IPR2019-00577, IPR2019-00578,
`IPR2019-00579, and IPR2019-00580. Judges Mitchell, Pollock, and,
`Hardman are paneled in IPR2019-00581 and IPR2019-00582, although
`Judge Hardman did not participate in this decision.
`
`
`
`
`571-272-7822
`
`
`Paper No. 42
`Entered: September 25, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ASSOCIATED BRITISH FOODS PLC, AB VISTA, INC.,
`PGP INTERNATIONAL, INC., ABITEC CORPORATION,
`AB ENZYMES, INC., and AB ENZYMES GMBH,
`Petitioners,
`
`v.
`
`CORNELL RESEARCH FOUNDATION, INC.,
`Patent Owner.
`_______________
`
`Case IPR2019-00577 (Patent 8,993,300 B2)
`Case IPR2019-00578 (Patent 8,455,232 B2)
`Case IPR2019-00579 (Patent 7,829,318 B2)
`Case IPR2019-00580 (Patent 7,321,063 B2)
`Case IPR2019-00581 (Patent 7,026,150 B2)
` Case IPR2019-00582 (Patent 6,451,572 B1)1
`_______________
`Before SUSAN L. C. MITCHELL, ROBERT A. POLLOCK, and
`TIMOTHY G. MAJORS,
`Administrative Patent Judges.2
`MITCHELL, Administrative Patent Judge.
`
`1 This Order addresses issues in each of the identified proceedings. We
`exercise our discretion to issue one Order to be filed in each proceeding.
`The parties are not authorized to use this style heading in subsequent papers
`without prior authorization from the Board.
`2 This is not a decision by an expanded panel of the Board. Judges Mitchell,
`Pollock, and Majors are paneled in IPR2019-00577, IPR2019-00578,
`IPR2019-00579, and IPR2019-00580. Judges Mitchell, Pollock, and,
`Hardman are paneled in IPR2019-00581 and IPR2019-00582, although
`Judge Hardman did not participate in this decision.
`
`
`
`
`
`Case IPR2019-00577 (Patent 8,993,300 B2)
`Case IPR2019-00578 (Patent 8,455,232 B2)
`Case IPR2019-00579 (Patent 7,829,318 B2)
`Case IPR2019-00580 (Patent 7,321,063 B2)
`Case IPR2019-00581 (Patent 7,026,150 B2)
`Case IPR2019-00582 (Patent 6,451,572 B1)
`
`
`DECISION
`
`Petitioners’ Motion to Submit Supplemental Information
`37 C.F.R. § 42.123(a)
`On August 23, 2019, the Board granted Petitioners’ request for
`authorization to file a motion to submit supplemental information under
`37 C.F.R. § 42.123(a). See Ex. 3003, 1. On August 30, 2019, Petitioners
`filed their motion to submit supplemental information. Paper 31 (“Mot.”).3
`In their motion, Petitioners seek to submit priority applications for the
`Cheng reference, see Ex. 1004, asserted against the challenged claims to
`support Cheng’s priority status that Patent Owner has questioned. Mot. 1–2.
`These two provisional applications are U.S. Provisional Application No.
`60/019,735 and U.S. Patent No. 5,939,303 that issued from Application No.
`08/744,779. Mot. 1. Petitioners state that Patent Owner does not oppose
`this motion. Mot. 1. For the reasons discussed below, Petitioners’ motion to
`submit supplemental information under § 42.123(a) is granted.
`ANALYSIS
`As the moving party, Petitioners bear the burden of proving that they
`
`are entitled to the requested relief. 37 C.F.R. § 42.20(c). Under 37 C.F.R.
`§ 42.123(a), a party may file a motion to submit supplemental information if
`the following requirements are met: (1) a request for authorization to file
`such a motion is made within one month of the date the trial was instituted;
`
`
`3 We cite to the documents filed in IPR2019-00577 only. Similar papers are
`part of the record in the other five proceedings.
`
`2
`
`
`
`Case IPR2019-00577 (Patent 8,993,300 B2)
`Case IPR2019-00578 (Patent 8,455,232 B2)
`Case IPR2019-00579 (Patent 7,829,318 B2)
`Case IPR2019-00580 (Patent 7,321,063 B2)
`Case IPR2019-00581 (Patent 7,026,150 B2)
`Case IPR2019-00582 (Patent 6,451,572 B1)
`
`and (2) the supplemental information is relevant to a claim for which trial
`has been instituted.
`
`With respect to the first requirement of § 42.123(a), trial was
`instituted in this proceeding on July 25, 2019. Paper 25. Therefore, because
`Petitioners requested authorization to file a motion to submit supplemental
`information on August 30, 2019, Petitioners’ request was made within one
`month of the date the trial was instituted. See Ex. 3003, 1. With respect to
`the second requirement of § 42.123(a), we find that the supplemental
`information Petitioners seek to submit relates to the claims for which trial
`has been instituted because it is directed to the prior art status of the Cheng
`reference that has been asserted against the challenged claims.
`
`We are persuaded that Petitioners have met their burden because they
`satisfy the requirements of § 42.123(a). We also are persuaded that
`Petitioners have met their burden because the supplemental information
`Petitioners seek to submit does not change the grounds of unpatentability in
`this proceeding, nor does it change the evidence initially presented in the
`Petition to support those grounds of unpatentability. We also agree that
`consideration of such supplemental information will not delay the trial’s
`schedule. Instead, such information merely constitutes additional evidence
`that allegedly confirms the prior art status of the Cheng reference, which we
`invited Petitioners to submit in our Decision on Institution. See Paper 25,
`31.
`
`
`
`
`3
`
`
`
`Case IPR2019-00577 (Patent 8,993,300 B2)
`Case IPR2019-00578 (Patent 8,455,232 B2)
`Case IPR2019-00579 (Patent 7,829,318 B2)
`Case IPR2019-00580 (Patent 7,321,063 B2)
`Case IPR2019-00581 (Patent 7,026,150 B2)
`Case IPR2019-00582 (Patent 6,451,572 B1)
`
`Accordingly, it is hereby:
`ORDERED that Petitioners’ motion to submit supplemental
`information under 37 C.F.R. § 42.123(a) is granted.
`
`
`
`4
`
`
`
`Case IPR2019-00577 (Patent 8,993,300 B2)
`Case IPR2019-00578 (Patent 8,455,232 B2)
`Case IPR2019-00579 (Patent 7,829,318 B2)
`Case IPR2019-00580 (Patent 7,321,063 B2)
`Case IPR2019-00581 (Patent 7,026,150 B2)
`Case IPR2019-00582 (Patent 6,451,572 B1)
`
`For PETITIONERS:
`
`Jovial Wong
`Noorossadat Torabi
`Kurt Mathas
`WINSTON & STRAWN LLP
`jwong@winston.com
`ntorabi@winston.com
`kmathas@winston.com
`
`
`For PATENT OWNER:
`
`Michael Goldman
`Edwin Merkel
`Shelley Jones
`PEPPER HAMILTON LLP
`goldmanm@pepperlaw.com
`merekele@pepperlaw.com
`jonessa@pepperlaw.com
`
`Ajit Vaidya
`KENEALY VAIDYA LLP
`avaidya@kviplaw.com
`
`
`
`
`
`
`
`
`
`
`5
`
`
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