Trials@uspto.gov
`571-272-7822
`
`
`Paper 11
`Date: July 21, 2020
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`LG ELECTRONICS INC.,
`Petitioner,
`v.
`IMMERVISION, INC.,
`Patent Owner.
`
`
`IPR2020-00179 (Patent 6,844,990 B2)
` IPR2020-00195 (Patent 6,844,990 B2)1
`
`Before KRISTINA M. KALAN, WESLEY B. DERRICK, and
`KIMBERLY MCGRAW, Administrative Patent Judges.
`DERRICK, Administrative Patent Judge.
`
`ORDER
`Granting Petitioner’s Motion to Submit Supplemental Information
`37 C.F.R. § 42.123
`
`
`
`
`1 This Order applies to both listed cases. The parties may not use this style
`heading unless authorized.
`
`
`
`
`571-272-7822
`
`
`Paper 11
`Date: July 21, 2020
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`LG ELECTRONICS INC.,
`Petitioner,
`v.
`IMMERVISION, INC.,
`Patent Owner.
`
`
`IPR2020-00179 (Patent 6,844,990 B2)
` IPR2020-00195 (Patent 6,844,990 B2)1
`
`Before KRISTINA M. KALAN, WESLEY B. DERRICK, and
`KIMBERLY MCGRAW, Administrative Patent Judges.
`DERRICK, Administrative Patent Judge.
`
`ORDER
`Granting Petitioner’s Motion to Submit Supplemental Information
`37 C.F.R. § 42.123
`
`
`
`
`1 This Order applies to both listed cases. The parties may not use this style
`heading unless authorized.
`
`
`
`
`
`IPR2020-00179 (Patent 6,844,990 B2)
`IPR2020-00195 (Patent 6,844,990 B2)
`INTRODUCTION
`Pursuant to 37 C.F.R. § 42.123(a), and as authorized by the Board in
`the June 15, 2020, Order (Paper 9 in each proceeding), Petitioner LG
`Electronics Inc. (“Petitioner”), filed a motion to submit supplemental
`information (Paper 10 in each proceeding (“Motion”)).2 Specifically,
`Petitioner seeks authorization to file the following:
`1)
`Code V Designer’s Manual: System of Optical Design
`Programs, 2nd ed., Optical Research Associates (1978) (Ex. 1014);
`2)
`Excerpts of the Code V Reference Manual, Version 7.60,
`Optical Research Associates (Feb. 1994) (Ex. 1015);
`3)
`“A Technical Overview of CODE V Version 7” by Bruce
`R. Irving of Optical Research Associates, Proceedings Volume 0766
`of the Society of Photo-Optical Instrumentation Engineers (SPIE),
`Recent Trends in Optical Systems Design and Computer Lens Design
`Workshop (1987) (Ex. 1016); and
`4)
`A supplemental declaration from Petitioner’s expert
`(Ex. 1017) that authenticates the above three additional pieces of
`evidence and notes that they corroborate his opinion in his original
`declaration that the Code V lens design software would render the
`same results in 2001 as it did at the time of his declaration.
`Id. at 1. Petitioner also represents that “Petitioner met and conferred with
`Patent Owner” and that Patent Owner “indicated that it did not oppose th[e]
`[M]otion.” Id. at 2. No opposition was filed by Immervision, Inc. (“Patent
`Owner”) within the period of time in which it was authorized to file an
`opposition. See Order 3. Nonetheless, Petitioner bears the burden of
`proving that it is entitled to the relief requested. 37 C.F.R. § 42.20(c).
`
`
`2 The Board entered a single Order in each proceeding and Petitioner’s
`Motions are differently captioned, but are otherwise identical. Our citation
`to Motion is, accordingly, to Paper 10 in IPR2020-00179, as representative
`of the Motion in both proceedings.
`
`2
`
`
`
`IPR2020-00179 (Patent 6,844,990 B2)
`IPR2020-00195 (Patent 6,844,990 B2)
`Having considered the record before us, we grant Petitioner’s Motion
`for the reasons set forth below.
`
`ANALYSIS
`A party may file a motion to submit supplemental information, after
`trial has been instituted, provided that: (1) the request for authorization to
`file the motion is made within one month of the date the trial is instituted;
`and (2) the supplemental information is relevant to a claim for which trial
`has been instituted. 37 C.F.R. § 42.123(a). Section 123(a), however, “does
`not connote the PTAB must accept supplemental information so long as it is
`timely and relevant.” Redline Detection, LLC v. Star Envirotech, Inc., 811
`F.3d 435, 445 (Fed. Cir. 2015) (citation omitted). As set forth by our
`reviewing court, the guiding principle in evaluating a motion to submit
`supplemental information is “to ensure the efficient administration of the
`Office and the ability to complete IPR proceedings in a timely manner.” Id.
`(citations and internal quotations omitted). “Requiring admission of
`supplemental information so long as it was timely submitted and relevant to
`the IPR proceeding would cut against this mandate and alter the intended
`purpose of IPR proceedings.” Id. That purpose is to “secure the just,
`speedy, and inexpensive resolution of every proceeding.” 37 C.F.R.
`§ 42.1(b). Thus, we consider whether submission of the supplemental
`information would change the grounds initially presented in the petition or
`otherwise unfairly change the evidence underlying those grounds.
`The requirements of 37 C.F.R. § 42.123(a) are met. Petitioner’s
`emailed request for authorization to file a motion to submit supplemental
`information is dated June 11, 2020 (see Order 2; Ex. 3001), which is within
`one month of the decision to institute this proceeding, issued May 13, 2020
`(Paper 6). Petitioner’s request also identifies the supplemental information
`
`3
`
`
`
`IPR2020-00179 (Patent 6,844,990 B2)
`IPR2020-00195 (Patent 6,844,990 B2)
`to be submitted, i.e., Exhibits 1014–1017, and each appears on its face both
`to be directed to Code V lens design software and relevant to a claim for
`which trial has been instituted, as Petitioner relied on the capabilities and
`availability of that software in its arguments, as explained in our decision to
`institute inter partes review. See, e.g., IPR2020-00179, Paper 6, 14–15;
`IPR2019-00195, Paper 6, 14–15.
`We must further determine whether the supplemental information
`would change the grounds initially presented in the petition or otherwise
`unfairly change the evidence underlying those grounds. Petitioner relied on,
`and continues to rely on, the capabilities of the Code V lens design software
`that was available circa 2001, as evidenced by the testimony of
`Dr. Chipman. Petitioner contends that the supplemental information pertains
`to that software prior to, or at that date, and to corroborating Dr. Chipman’s
`earlier testimony. Motion 1, 3–4. Patent Owner does not contest
`Petitioner’s motion to submit the supplemental information. Id. at 2. On
`this record, the supplemental information would not appear to change the
`grounds initially presented in the petition. Petitioner further contends that it
`could include this information as exhibits to its Reply rather than submitting
`it prior to Patent Owner’s Response, but that submitting it earlier as
`supplemental information affords Patent Owner an opportunity to consider it
`in preparing Patent Owner’s Response. Id. at 5. On this record, with the
`Motion uncontested by Patent Owner, we discern no unfair change in the
`evidence underlying the grounds presented in the Petition on which the inter
`partes review proceedings were instituted. In sum, Petitioner has
`sufficiently shown that allowing Petitioner to submit the supplemental
`information comports with the guiding principles set forth by our reviewing
`
`4
`
`
`
`IPR2020-00179 (Patent 6,844,990 B2)
`IPR2020-00195 (Patent 6,844,990 B2)
`court and the Rules. See, e.g., Redline Detection, 811 F.3d at 445; 37 C.F.R.
`§ 42.1(b).
`
`CONCLUSION
`Petitioner has sufficiently shown that it is entitled to submit the
`identified exhibits (Exhibits 1014–1017) as supplemental information in
`these proceedings. See 37 C.F.R. §§ 42.20(c), 42.123(a).
`
`
`ORDER
`
`Accordingly, it is:
`ORDERED that Petitioner’s motion to submit Exhibits 1014–1017 as
`supplemental information is granted.
`
`
`
`
`
`
`
`
`5
`
`
`
`IPR2020-00179 (Patent 6,844,990 B2)
`IPR2020-00195 (Patent 6,844,990 B2)
`For PETITIONER:
`
`Dion Bregman
`Bradford Cangro
`Andrew Devkar
`Collin Park
`Jeremy Peterson
`MORGAN LEWIS & BOCKIUS LLP
`Dion.bregman@morganlewis.com
`Bradford.cangro@morganlewis.com
`Andrew.devkar@morganlewis.com
`Collin.park@morganlewis.com
`jpeterson@morganlewis.com
`
`For PATENT OWNER:
`
`Stephen Murray
`John Simmons
`Dennis Butler
`Keith Jones
`PANITCH SCHWARZE BELISARIO & NADEL
`smurrary@panitchlaw.com
`jsimmons@panitchlaw.com
`dbutler@panitchlaw.com
`kjones@panitchlaw.com
`
`
`6
`
`
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