`
`Trials@uspto.gov
`Entered: January 25, 2021
`
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`MACHINEX INDUSTRIES, INC.,
`Petitioner,
`
`v.
`
`JJG IP HOLDINGS, LLC,
`Patent Owner.
`_______________
`
`IPR2020-00899
`Patent 9,950,346 B2
`_______________
`
`Before GEORGE R. HOSKINS, MICHAEL L. WOODS, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`WOODS, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Petitioner’s Motion to Submit Supplemental Information
`37 C.F.R. § 42.123(a)
`
`
`
`
`
`
`
`IPR2020-00899
`Patent 9,950,346 B2
`
`
`On November 9, 2020, Petitioner filed a motion to submit
`supplemental information under 37 C.F.R. § 42.123(a). Paper 14 (“Motion”
`or “Mot.”). Patent Owner did not oppose the Motion. See Mot. 1
`(representing that Patent Owner does not oppose the Motion).
`Petitioner filed the supplemental information it seeks to submit,
`Exhibit 1037, with its Motion on November 9, 2020. For the reasons
`discussed below, Petitioner’s Motion is granted.
`37 C.F.R. § 42.123(a) provides that a party may file a motion to
`submit supplemental information if the following two requirements are met:
`(1) a request for authorization to file the motion is made within one month of
`institution, and (2) the supplemental information is relevant to a claim for
`which trial has been instituted. This rule, however, does not require us to
`accept all supplemental information, even if timely submitted and relevant.
`Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 445 (Fed.
`Cir. 2015). “The guiding principle for the PTAB in making any
`determination is to ‘ensure efficient administration of the Office and the
`ability of the Office to complete IPR proceedings in a timely manner.’” Id.
`(citing 35 U.S.C. § 316(b)). Timeliness and relevancy are “additional
`requirements that must be construed within the overarching context of the
`PTAB’s regulations governing IPR and general trial proceedings.
`Additionally, the PTAB has discretion to grant or deny motions as it sees
`fit.” Id. at 446–47 (footnote omitted) (citing 37 C.F.R. § 42.5(a), (b)).
`With respect to the first requirement, Petitioner requested
`authorization via an e-mail communication to the Board on November 6,
`2020, within 1-month of the date of institution. See Paper 11 (instituting
`review on October 20, 2020). We authorized the filing via an e-mail
`
`2
`
`
`
`IPR2020-00899
`Patent 9,950,346 B2
`
`
`response. Accordingly, Petitioner’s request for authorization to file the
`Motion was timely under § 42.123(a)(1).
`As to the second requirement, Petitioner asserts that the supplemental
`information it seeks to submit is relevant because it helps to establish the
`prior art status of Exhibit 1002, the Carlsohn reference, which is a reference
`in each of Petitioner’s challenges. Mot. 1; see also Paper 11, 9
`(summarizing the challenged grounds as each including Carlsohn). As such,
`Petitioner established that the supplemental information is relevant to the
`instituted claims under § 42.123(a)(2).
`
`Accordingly, it is:
`ORDERED that Petitioner’s motion to submit supplemental
`information under 37 C.F.R. § 42.123(a) is granted.
`
`
`
`
`
`
`
`3
`
`
`
`IPR2020-00899
`Patent 9,950,346 B2
`
`PETITIONER:
`
`Peter Sullivan
`psullivan@foleyhoag.com
`
`Jeffrey Lewis
`jidlewis@foleyhoag.com
`
`Stephen Kenny
`skenny@foleyhoag.com
`
`
`PATENT OWNER:
`
`Robert Brunelli
`rbrunelli@sheridanross.com
`
`Patricia Ho
`pho@sheridanross.com
`
`Kendria Pearson
`kpearson@sheridanross.com
`
`
`
`
`
`
`
`4
`
`
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