throbber
Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
`
` Paper 24
`Entered: August 26, 2020
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`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)
`
`
`
`
`
`
`
`
`
`

`

`IPR2019-01141
`Patent 6,613,356 B1
`
`
`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.
`
`2
`
`

`

`IPR2019-01141
`Patent 6,613,356 B1
`
`
`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
`
`3
`
`

`

`IPR2019-01141
`Patent 6,613,356 B1
`
`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).
`
`4
`
`

`

`IPR2019-01141
`Patent 6,613,356 B1
`
`
`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.
`
`III. ORDER
`In consideration of the foregoing, it is:
`ORDERED that Patent Owner’s Motion to Exclude is denied.
`
`
`
`
`5
`
`

`

`IPR2019-01141
`Patent 6,613,356 B1
`
`PETITIONER:
`
`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
`
`6
`
`

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket