Trials@uspto.gov Paper 40
`Tel: 571-272-7822
` Entered: May 11, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CIRRUS DESIGN CORPORATION,
`Petitioner,
`v.
`HOYT AUGUSTUS FLEMING,
`Patent Owner.
`
`IPR2019-01566
`Patent RE47,474 E
`
`
`
`Before JOSIAH C. COCKS, SCOTT C. MOORE, and
`STEPHEN E. BELISLE, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`ORDER
`Granting Petitioner’s Motion to Submit Supplemental Information
`37 C.F.R. § 42.123(a)
`
`
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`
`
`
`Tel: 571-272-7822
` Entered: May 11, 2020
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CIRRUS DESIGN CORPORATION,
`Petitioner,
`v.
`HOYT AUGUSTUS FLEMING,
`Patent Owner.
`
`IPR2019-01566
`Patent RE47,474 E
`
`
`
`Before JOSIAH C. COCKS, SCOTT C. MOORE, and
`STEPHEN E. BELISLE, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`ORDER
`Granting Petitioner’s Motion to Submit Supplemental Information
`37 C.F.R. § 42.123(a)
`
`
`
`
`
`
`
`
`
`IPR2019-01566
`Patent RE47,474 E
`
`1. Introduction
`Petitioner, Cirrus Design Corporation, filed a “Motion to Submit
`
`Supplemental Information Under 37 C.F.R. § 42.123(a).” Paper 24
`(“Motion” or “Mot.”).1 The Motion indicates that Patent Owner, Hoyt
`Augustus Fleming, does not oppose the Motion (Mot. 8, n.2), and no
`opposition has been filed.2 For the reasons set forth below, we grant the
`Motion.
`
`2. Discussion
`In its Motion, Petitioner seeks to have entered proposed Exhibits
`1038–1042 as supplemental information. According to Petitioner those
`exhibits constitute “Declaration of Robert Haig” (Ex. 1038), a “Declaration
`of Rachel J. Watters” (Ex. 1039), a “Declaration of Frank Hoffmann”
`(Ex. 1040), a “Declaration of Shirley Katherine Johnson,” and a
`“Declaration of Sunshine Carter” (Ex. 1042). Mot. 3–5. Petitioner explains
`that those Declarations had been served on Patent Owner on February 6,
`2020, to address objections that Patent Owner had raised with Petitioner in
`connection with various exhibits currently in the record. Id. at 1–5.
`Specifically, those objections pertained to “authenticity and/or date of
`publication” of certain exhibits and also to Frank Hoffmann’s testimony
`referencing “The Cirrus Design, Pilot’s Operation Handbook, SR22,
`Revision A8” that was stated to not be of record. Id. at 3. Petitioner further
`
`
`1 The Motion was previously authorized by the panel. Paper 23.
`2 During a conference call in which the Motion was authorized, Patent
`Owner indicated to the panel that it did not object to the Motion, and would
`not file an opposition. See Paper 23, 3.
`
`2
`
`
`
`IPR2019-01566
`Patent RE47,474 E
`explains that the proposed Exhibits 1038–1042 address issues of public
`accessibility of certain exhibits and also that Mr. Hoffman’s reference in one
`paragraph of his Declaration to “Revision A8” instead of “Revision A7” was
`a typographical error. Id. at 2–5.
`Supplemental “evidence” and supplemental “information” are
`different. Supplemental information arises under 37 C.F.R. § 42.123 and is
`additional information that potentially may be filed after institution of a trial
`and “must be relevant to a claim for which the trial has been instituted.”
`37 C.F.R. § 42.123(a)(2). Supplemental evidence, on the other hand, is
`evidence that may be served on an opposing party in response to an
`objection. 37 C.F.R. § 42.64(b)(2). The intent of supplemental evidence is
`to alleviate the need for the Board to have to consider whether the initial
`evidence needs to be excluded in the event that such evidence becomes the
`subject of a motion to exclude. Supplemental information and supplemental
`evidence, thus, have distinct roles as a part of an inter partes review
`proceeding. Here, however, Petitioner contends that the Exhibits 1038–1042
`that it had served on Patent Owner as supplemental evidence would also
`benefit the record to be entered as supplemental information. See Mot. 5–
`10.
`
`
`
`37 C.F.R. § 42.123 states, in part, the following:
`§ 42.123 Filing of supplemental information.
`(a) Motion to submit supplemental information. Once a
`trial has been instituted, 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 for which the trial has been instituted.
`
`3
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`IPR2019-01566
`Patent RE47,474 E
`(2) The supplemental information must be relevant to a
`claim for which the trial has been instituted.
`Petitioner’s request for authorization to file the Motion was timely,
`
`and Petitioner contends that the supplemental information is relevant to a
`claim for which trial has been instituted. Mot. 5–6. Petitioner also contends
`that the supplemental information: (1) “does not change the ground of
`unpatentability authorized in this proceeding or the evidence initially
`presented in the Petition to support that ground of unpatentability”;
`(2) “would not interfere with the just, speedy, and inexpensive resolution of
`this proceeding”; (3) “Patent Owner will not be prejudiced by submission of
`the supplemental information”; and (4) “provides additional evidence of
`public accessibility, in addition to the indicia of public accessibility already
`evidence from the exhibits and Mr. Hoffmann’s testimony included with the
`Petition.” Id. at 7–9.
`
`Although, as noted above, supplemental evidence and supplemental
`information are different, there is no prohibition in entering supplemental
`evidence in a proceeding as supplemental information. With Petitioner’s
`above-noted contentions in mind, and given that Patent Owner does not
`oppose the Motion, we conclude that, in this case, entry of the supplemental
`information is warranted. Accordingly, we grant the Motion.
`
`3. Order
`
`It is
`
`ORDERED that “Petitioner’s Motion to Submit Supplemental
`
`Information Under 37 C.F.R. § 42.123(a)” (Paper 24) is granted.
`
`
`
`4
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`IPR2019-01566
`Patent RE47,474 E
`For PETITIONER:
`
`Victor Jonas
`victor.jonas.ptab@faegredrinker.com
`
`Joel Sayres
`joel.sayres@faegredrinker.com
`
`For PATENT OWNER:
`
`Greg Gardella
`ggardella@gardellagrace.com
`
`Natalie Grace
`ngrace@gardellagrace.com
`
`
`
`5
`
`
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