`571-272-7822
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` Paper 24
`Entered: August 26, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`NEW U LIFE CORPORATION,
`Petitioner,
`
`v.
`
`AXCESS GLOBAL SCIENCES, LLC,
`Patent Owner.
`____________
`
`IPR2019-01141
`Patent 6,613,356 B1
`____________
`
`
`Before GEORGIANNA W. BRADEN, JENNIFER MEYER CHAGNON,
`and MICHAEL A. VALEK, Administrative Patent Judges.
`
`VALEK, Administrative Patent Judge.
`
`
`
`
`ORDER
`Denying Patent Owner’s Motion to Exclude
`37 C.F.R. § 42.64(c)
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`IPR2019-01141
`Patent 6,613,356 B1
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`
`INTRODUCTION
`I.
`New U Life Corporation (“Petitioner”) filed a Petition (Paper 1)
`seeking an inter partes review of claims 1–19 of U.S. Patent No. 6,613,356
`B1 (“the ’356 patent,” Ex. 1001). We instituted review. Paper 8.
`After institution, Patent Owner filed a Response (Paper 11) and a
`contingent Motion to Amend (Paper 12). On May 12, 2020, Petitioner filed
`a Reply to Patent Owner’s Response (Paper 15) (“Reply”) and an Opposition
`to Patent Owner’s Motion to Amend (Paper 14) (“MTA Opposition”). At
`the same time, Petitioner filed Exhibits 1024–1031. These exhibits are cited
`in support of Petitioner’s arguments in both the Reply and the MTA
`Opposition.
`After receiving preliminary guidance from the Board (Paper 16),
`Patent Owner withdrew its Motion to Amend on June 23, 2020. Paper 18.
`On the same day, Patent Owner filed a Sur-reply to Petitioner’s Reply that,
`inter alia, asserts Exhibits 1025–10311 are “irrelevant” and requests they be
`stricken because they “could have been submitted with [Petitioner’s] original
`petition.” Paper 17, 6–7.
`Patent Owner subsequently filed a Motion to Exclude Exhibits 1024–
`1031 on these bases. Paper 20 (“Motion” or “Mot.”). Petitioner filed an
`Opposition to the Motion. Paper 22 (“Opp.”). Patent Owner replied. Paper
`23 (“Mot. Reply”).
`
`
`1 Patent Owner states that it “inadvertently omitted Exhibit 1024 from the
`list of ‘new’ exhibits” objected to in its Sur-reply, “but the reasons for its
`objection apply equally to Exhibit 1024 in addition to Exhibits 1025–1031.”
`Mot. 1.
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`2
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`IPR2019-01141
`Patent 6,613,356 B1
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`In this Order, we address Patent Owner’s Motion as well as the
`parties’ request for a prehearing conference regarding that Motion
`(Ex. 3001).
`
`II. DISCUSSION
`A. Motion to Exclude
`Petitioner served Exhibits 1024–1031 on May 12, 2020, when it filed
`those exhibits along with its Reply and MTA Opposition. As Petitioner
`points out, our rules require that “[o]nce a trial has been instituted, any
`objection must be filed within five business days of service of evidence to
`which the objection is directed.” Opp. 4 (quoting 37 C.F.R. § 42.64(b)(1));
`see also PTAB Consolidated Trial Practice Guide (2019), available at
`https://www.uspto.gov/TrialPracticeGuideConsolidated (“TPG”), 78–79.
`Thus, Petitioner contends the objections referenced in the Motion were
`waived because Patent Owner “did not object to any of the Exhibits served
`on May 12 until it filed its Surreply . . . six weeks later.” Opp. 5.
`We agree that Patent Owner failed to timely file objections pursuant
`to 37 C.F.R. § 42.64(b)(1). Patent Owner does not dispute the relevant dates
`and, in fact, identifies the Sur-reply, which was filed more than a month
`after service of Exhibits 1024–1031, as the first time it raised the objections.
`Mot. 1. Because Patent Owner did not file these objections within five
`business days of being served with these exhibits, the objections were not
`preserved for later inclusion in a motion to exclude.
`Patent Owner contends its objections were “timely under Rule 42.64,
`because the exhibits became irrelevant only upon withdrawal of the Motion
`to Amend.” Mot. Reply 2. We disagree. Petitioner’s reliance on these
`exhibits was not limited to its MTA Opposition. Exhibits 1024–1031 are
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`IPR2019-01141
`Patent 6,613,356 B1
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`repeatedly cited in Petitioner’s Reply to Patent Owner’s Response to the
`Petition. See Paper 15, 13–17. Thus, at the time it filed its Reply, Petitioner
`made clear it was relying on these exhibits to reply both to Patent Owner’s
`arguments concerning the grounds and challenged claims in the Petition, as
`well as the issues presented in the Motion to Amend. Even if Patent Owner
`agreed that Exhibits 1024–1031 were relevant to the latter, it has identified
`no reason why it could not have timely objected to Petitioner’s reliance on
`those exhibits to support its arguments regarding the challenged claims in its
`Reply.
`Patent Owner argues it was not required to make such a “contingent
`objection” under our rules. Mot. Reply 2. Again, we disagree.
`Rule 42.64(b)(1) makes clear that “any objection must be filed within five
`business days of service of evidence to which the objection is directed.”
`37 C.F.R. § 42.64(b)(1) (emphasis added). This includes Patent Owner’s
`objections that Exhibits 1024–1031 are “irrelevant” to the grounds in the
`Petition and/or “could have been submitted with [Petitioner’s] original
`petition.” Paper 17, 6–7.
`We likewise are unpersuaded by Patent Owner’s argument that “[t]he
`better rule is for a patent owner to simply lodge any objections upon
`withdrawal of a motion to amend, as [it] did here.” Mot. Reply 2. Indeed,
`allowing a patent owner to circumvent the “five business days” requirement
`of Rule 42.64(b)(1) by withdrawing its motion to amend where the petitioner
`has previously made clear that it was also relying on the evidence to reply to
`Patent Owner’s response to the petition would frustrate the Rule’s purpose in
`providing a framework for timely “correction in the form of supplemental
`evidence.” See 37 C.F.R. § 42.64(b)(1)–(2).
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`4
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`IPR2019-01141
`Patent 6,613,356 B1
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`For these reasons, we determine that the objections referenced in
`Patent Owner’s Motion were waived because they were not timely filed
`pursuant to 37 C.F.R. § 42.64(b)(1). We, therefore, deny the Motion without
`deciding the merits of those objections.
`Prehearing Conference Request
`B.
`An oral hearing has been set for September 1, 2020. Paper 21. The
`parties jointly requested a prehearing conference “to potentially resolve the
`pending Motion to Exclude Evidence (Paper 20), and thereby narrow the
`issues in advance of the Oral Hearing.” Ex. 3001. This Order resolves that
`motion.
`As for the parties’ additional request for “guidance from the Board on
`issues to focus on at the Oral Hearing” (Ex. 3001), we note that Patent
`Owner has withdrawn its Motion to Amend and, therefore, we expect the
`parties to focus their arguments only on the challenged claims of the ’356
`patent and the grounds presented in the Petition. We leave it to the parties’
`discretion to craft the specifics of their oral arguments consistent with the
`Board’s rules and TPG.
`Since the issues identified in the parties’ request have been addressed
`above, we do not see a need for a prehearing conference at this time. If
`either party has a different view, it may submit a new request explaining
`what it believes remains for discussion prior to the hearing.
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`III. ORDER
`In consideration of the foregoing, it is:
`ORDERED that Patent Owner’s Motion to Exclude is denied.
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`IPR2019-01141
`Patent 6,613,356 B1
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`PETITIONER:
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`Brian Galvin
`GALVIN PATENT LAW LLC
`brian@glavinpatentlaw.com
`
`Brian S. Boon
`BOON INTELLECTUAL PROPERTY LAW PLLC
`brianboon@boonintellectualpropertylaw.com
`
`
`PATENT OWNER:
`
`Ryan E. Hatch
`LAW OFFICE OF RYAN E. HATCH
`ryan@ryanehatch.com
`
`Tara Klamrowski
`SEGE LAW PRACTICE
`tara@alansege.com
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