Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 21
`Entered: February 4, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`PROLLENIUM US INC.,
`Petitioner,
`
`v.
`
`ALLERGAN INDUSTRIE, SAS,
`Patent Owner.
`
`
`IPR2020-00901, Patent 10,485,896 B2
` IPR2020-00902, Patent 10,391,202 B21
`
`
`
`
`
`
`
`
`
`Before JOHN G. NEW, SHERIDAN K. SNEDDEN, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`NEW, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Petitioner’s Motion to Submit
`Supplemental Information
`37 C.F.R. § 42.123(a)
`
`
`
`
`1 This Order applies to both cases. We exercise our discretion to issue one
`Order to be docketed in each case. The parties may only use this caption
`when authorized by Board. The parties are instructed to use this heading
`for the consolidated filings authorized in this Order.
`
`
`
`
`Tel: 571-272-7822
`
`Paper 21
`Entered: February 4, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`PROLLENIUM US INC.,
`Petitioner,
`
`v.
`
`ALLERGAN INDUSTRIE, SAS,
`Patent Owner.
`
`
`IPR2020-00901, Patent 10,485,896 B2
` IPR2020-00902, Patent 10,391,202 B21
`
`
`
`
`
`
`
`
`
`Before JOHN G. NEW, SHERIDAN K. SNEDDEN, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`NEW, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Petitioner’s Motion to Submit
`Supplemental Information
`37 C.F.R. § 42.123(a)
`
`
`
`
`1 This Order applies to both cases. We exercise our discretion to issue one
`Order to be docketed in each case. The parties may only use this caption
`when authorized by Board. The parties are instructed to use this heading
`for the consolidated filings authorized in this Order.
`
`
`
`
`
`IPR2020-00901, Patent 10,485,896 B2
`IPR2020-00902, Patent 10,391,202 B2
`
`
`On January 11, 2021, Petitioner Prollenium US Inc. (“Petitioner”)
`timely requested, via email, authorization to file a motion to submit
`supplemental information (“Motion”) for each of the captioned proceedings.
`Ex. 3002. The Board granted authorization to file the Motion on January 15,
`2021. Paper 18. Petitioner filed its motion on January 22 2021. Paper 19.
`Patent Owner Allergan Industrie SAS (“Patent Owner”) filed an opposition
`to the Motion on January 29, 2021 (“Opposition” or “Opp.”). Paper 20.
`In its Motion, Petitioner, pursuant to 37 C.F.R. § 42.123(a), seeks to
`file supplemental information consisting of Declaration testimony from
`Dr. Glenn Prestwich (the “Prestwich Declaration, proposed Exhibit 1106), as
`well as accompanying documentary exhibits supporting the Declaration
`(proposed Exhibits 1102, 1103, 1111–1117, 1210, 1216, and 1301–1303).
`Motion 1.
`According to Petitioner, the Prestwich Declaration is substantially the
`same as the testimony offered in the copending related IPRs2, although some
`testimony has been revised and added to conform the testimony to the
`procedural posture and issues presented in the Grounds in the present IPRs.
`Motion 5. Petitioner also states that some additional testimony also
`addresses disputes about the evidence between the parties in the related IPRs
`that are likely to recur here. Id. Petitioner also provides a redline
`comparison between the earlier declaration and the one presently submitted
`as supplemental information. Id. (citing IPR2019-01505 et al. Ex. 1304).
`
`
`
`
`2 The “copending related IPRs” are IPR2019-01505, -01506, -01508, -
`01509, -01617, -01632, and IPR2020-00084.
`2
`
`
`
`
`IPR2020-00901, Patent 10,485,896 B2
`IPR2020-00902, Patent 10,391,202 B2
`
`
`Patent Owner opposes Petitioner’s motion, pointing to the Board’s
`prior motion decision in ClearOne, Inc. v. Shure Acquisition Holdings, Inc.,
`IPR2019-00683 (PTAB Nov. 6, 2019). Opp. 6. In ClearOne, the Board
`considered a number of factors in deciding whether to allow filing of
`supplemental information, including whether the supplemental information:
`(1) “change[s] the grounds of unpatentability” or “the evidence
`initially presented in the Petition to support those grounds”;
`
`
`(2) constitutes evidence that could have been submitted with the
`petition rather than as supplemental information;
`
`
`(3) interferes with the Board’s mandate to secure the “just,
`speedy, and inexpensive resolution” of the; or
`
`
`(4) would otherwise prejudice the non-moving party.
`
`Id. (citing ClearOne, Paper 32 at 5–6; see also Redline Detection, LLC v.
`Star Envirotech, Inc., 811 F.3d 435, 446–447 (Fed. Cir. 2015); Palo Alto
`Networks, Inc. v. Juniper Networks, Inc., IPR2013-00369, Paper 37 at 3–5
`(PTAB Feb. 5, 2014); B/E Aerospace, Inc. v. MAG Aerospace Indus., LLC,
`IPR2014-01510, Paper 37 at 3) (PTAB May 26, 2015)). Consideration of
`the above factors is discretionary, and not required. See, e.g., Redline
`Detection, 8111 F.3d at 446–447.
`Patent Owner contends that Petitioner seeks to add nearly double the
`amount of expert testimony (72 pages) and 13 new exhibits, to “change its
`evidence and patch over gaps in its obviousness arguments … such as the
`POSA being motivated to combine certain references with a reasonable
`expectation of success. Opp. 8. Patent Owner points to Yamaha Golf Car
`Company v. Club Car, LLC, IPR2017-02142, (PTAB Dec. 7, 2018), in
`which the Board denied a motion to file supplemental information because
`3
`
`
`
`
`IPR2020-00901, Patent 10,485,896 B2
`IPR2020-00902, Patent 10,391,202 B2
`
`the new evidence “amount[ed] to a substantial change in [Petitioner’s]
`original showing” on those issues in the petition, adding that “the sheer
`volume of new evidence that [the petitioner] proposes to submit renders the
`request immediately suspect” and “gives rise to a presumption of a change in
`the basis of the expert’s opinions, effectively amounting to a change in the
`evidence and perhaps even a change in the grounds of the petition.” Id. at 8
`(quoting Yamaha Golf Car, Paper 43 at 5–6).
`Patent Owner argues that Petitioner makes no effort to justify the
`submission of each proposed exhibit, but rather asserts that the exhibits as a
`whole are “focused” on issues of motivation to combine and reasonable
`expectation of success, issues that Patent Owner asserts “go to the very core
`of [Petitioner’s] challenge.” Opp. (citing Motion 5–6, and quoting Yamaha
`Golf Car, Paper 43 at 6). Patent Owner similarly argues that Petitioner’s
`Motion: (1) “does not even try to explain why it could not have submitted
`this evidence with its petitions”; and (2) “conflicts with the PTAB’s
`statutory mandate to ensure efficient administration of the Office.” Opp.
`10–11.
`Finally, Patent Owner asserts that it is unfairly prejudiced by
`Petitioner’s Motion because Petitioner would receive an opportunity to
`amend its Petition before Patent Owner submits its Response to the Petition.
`Opp. 14. Patent Owner contends that, contrary to Petitioner’s argument,
`advancing its submission of new evidence before Patent Owner’s Responses
`are due is not “efficient.” Id. (citing Motion 8). According to Patent Owner,
`even if the supplemental information were proper rebuttal evidence,
`accepting it now effectively gives Petitioner two opportunities to submit
`rebuttal evidence without a corresponding expansion of proceedings for
`4
`
`
`
`
`IPR2020-00901, Patent 10,485,896 B2
`IPR2020-00902, Patent 10,391,202 B2
`
`Patent Owner. Id. (citing Sling TV L.L.C. v. Realtime Adaptive Streaming,
`LLC, IPR2018-01342, Paper 17 at 3–4 (PTAB May 7, 2019). Patent Owner
`further argues that permitting Petitioner to essentially double its Petition
`would require Patent Owner to address both the Petition and the Prestwich
`Declaration as though it were, in toto, part of the Petition, prejudicing Patent
`Owner’s ability to fully respond. Id.
`Section 42.123 states that:
`(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 the trial is instituted.
`
`(2) The supplemental information must be relevant to a
`claim for which the trial has been instituted.
`
`As noted above, Petitioner has timely filed its request for
`authorization to file a motion to submit supplemental information.
`Furthermore, the requested supplemental information is clearly relevant as it
`relates to a skilled artisan’s motivation to combine, with a reasonable
`expectation of success, the prior art references cited in Petitioner’s Grounds.
`Petitioner’s Motion thus satisfies the requirements of 37 C.F.R. § 42.123(a).
`
`Furthermore, the supplemental information Petitioner seeks to add to
`the record has largely been produced as exhibits in the prior related IPRs.
`See, e.g., IPR2019-01617, Exs. 1102, 1103, 1105, 1111–1117, 1210, 1216.
`Proposed supplemental Exhibits 1302 and 1303 are excerpts from standard
`textbooks in the field of endeavor, and do not appear to alter or expand the
`5
`
`
`
`
`IPR2020-00901, Patent 10,485,896 B2
`IPR2020-00902, Patent 10,391,202 B2
`
`grounds upon which the present trials were instituted, but rather support the
`Prestwich Declaration, which has been modified (with redlining to show the
`revisions) to address the present grounds of the trials. See Proposed
`supplemental Exs. 1301, 1304. Patent Owner is therefore already in
`possession of the supplemental information sought to be entered in these
`cases.
`
`For this reason, we are not persuaded that granting Petitioner’s
`Motion changes “the grounds of unpatentability” or “the evidence initially
`presented in the Petition to support those grounds.” Nor are we persuaded
`that the introduction of evidence largely familiar to both parties and the
`Board in the copending related IPRs would interfere with the Board’s
`mandate to secure the “just, speedy, and inexpensive resolution” of these
`proceedings. We agree with Patent Owner that the supplemental
`information could have been submitted with the Petition, rather than as
`supplemental information, but, again, this information was already available
`to Patent Owner in the related IPRs. Having been put on notice that
`Petitioner was likely to use these same references again, given the
`similarities between the present cases and the related IPRs, we conclude that
`Patent Owner’s case is not unduly prejudiced by introduction of the
`supplemental information, particularly since (as in the related IPRs) such
`information would very likely be introduced by Petitioner in the reply to
`Patent Owner’s response to the Petition. We therefore conclude that the
`balance of the Redline factors do not weigh against granting Petitioner’s
`Motion. Patent Owner may, of course, reserve the right to move to exclude
`the supplemental exhibits at the appropriate point of these proceedings.
`
`6
`
`
`
`
`IPR2020-00901, Patent 10,485,896 B2
`IPR2020-00902, Patent 10,391,202 B2
`
`
`We consequently grant Petitioner’s Motion to submit supplemental
`information. Petitioner will submit its motion no later than January 22,
`2021. We also extend DUE DATE 1 for Patent Owner’s response by one
`week to March 10, 2021. A modified Scheduling Order accompanies this
`Order.
`
`ORDER
`It is therefore,
`ORDERED that Petitioner’s Motion to submit supplemental
`information is GRANTED, and
`FURTHER ORDERED that DUE DATE 1 for Patent Owner’s
`response is extended to March 10, 2021.
`
`
`7
`
`
`
`
`IPR2020-00901, Patent 10,485,896 B2
`IPR2020-00902, Patent 10,391,202 B2
`
`FOR PETITIONER:
`Christopher L. Curfman (Reg. No. 52,787)
`William W. Cutchins (Reg. No. 63,451)
`Warren J. Thomas (Reg. No. 70,581)
`MEUNIER CARLIN & CURFMAN LLC
`999 Peachtree St, NE Suite 1300 Atlanta, GA 30309
`ccurfman@mcciplaw.com
`wcutchins@mcciplaw.com
`wthomas@mcciplaw.com
`
`
`FOR PATENT OWNER:
`Anthony M. Insogna (Reg. No. 35,203)
`Tamera M. Weisser, Ph.D. (Reg. No. 47,856)
`S. Christian Platt (Reg. No. 46,998)
`JONES DAY
`4655 Executive Drive, Suite 1500
`San Diego, CA 92121-3134
`Tel.: (858) 314-1200
`Fax.: (844) 345-3178
`aminsogna@jonesday.com
`tweisser@jonesday.com
`cplatt@jonesday.com
`
`Sarah A. Geers (Reg. No. 69,123)
`JONES DAY
`250 Vesey Street
`New York, NY 10281
`Tel.: (212) 326-3939
`Fax.: (212) 755-7306
`sgeers@jonesday.com
`
`Jennifer M. Hartjes (Reg. No. 77,687)
`JONES DAY
`90 S 7th Street
`Minneapolis, MN 55402
`Tel.: (612) 217-8914
`Fax.: (844) 345-3178
`jhartjes@jonesday.com
`
`8
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
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.
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.
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
