Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 53
`Entered: July 28, 2021
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`YITA LLC,
`Petitioner,
`
`v.
`
`MACNEIL IP LLC,
`Patent Owner.
`____________
`
`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)1
`____________
`
`
`Before MITCHELL G. WEATHERLY, JAMES A. WORTH,
`MICHAEL L. WOODS, and ARTHUR M. PESLAK,
`Administrative Patent Judges.
`
`WOODS, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting Motion to Submit Supplemental Information
`37 C.F.R. §§ 42.5, 42.123
`
`
`
`
`1 This Order applies to both proceedings. The parties are not authorized to
`use this heading without express permission from the Board.
`
`
`Tel: 571-272-7822
`
`Paper 53
`Entered: July 28, 2021
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`YITA LLC,
`Petitioner,
`
`v.
`
`MACNEIL IP LLC,
`Patent Owner.
`____________
`
`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)1
`____________
`
`
`Before MITCHELL G. WEATHERLY, JAMES A. WORTH,
`MICHAEL L. WOODS, and ARTHUR M. PESLAK,
`Administrative Patent Judges.
`
`WOODS, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting Motion to Submit Supplemental Information
`37 C.F.R. §§ 42.5, 42.123
`
`
`
`
`1 This Order applies to both proceedings. The parties are not authorized to
`use this heading without express permission from the Board.
`
`
`
`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)
`
`
`INTRODUCTION
`I.
`On June 9, 2021, the Board authorized Patent Owner to file a motion
`to submit supplemental information under 37 C.F.R. § 42.123(b). Paper 32.2
`On June 10, 2021, Patent Owner filed its Motion to Submit Supplemental
`Information Pursuant to 37 C.F.R. § 42.123(b). Paper 36 (“Motion” or
`“Mot.”). Petitioner filed an Opposition to the Motion on June 24, 2021.
`Paper 41 (“Opposition” or “Opp.”).
`For the reasons set forth below, we grant the Motion.
`
`
`II. OUR RULES
`Patent Owner bears the burden of proving that it is entitled to the
`requested relief. 37 C.F.R. § 42.20(c). Because Patent Owner seeks to
`submit supplemental information more than one-month after institution of
`trial, the following Rule also governs:
`(b) Late submission of supplemental information. A party
`seeking to submit supplemental information more than one
`month after the date the trial is instituted, must request
`authorization to file a motion to submit the information. The
`motion to submit supplemental information must show why the
`supplemental information reasonably could not have been
`obtained earlier, and that consideration of the supplemental
`information would be in the interests-of-justice.
`37 C.F.R. § 42.123(b).
`Accordingly, Patent Owner bears the burden of showing (1) “why the
`supplemental information reasonably could not have been obtained earlier”
`
`
`2 The parties filed similar papers in each of IPR2020-01139 and IPR2020-
`01142. For purposes of this Order, IPR2020-01142 is representative and all
`citations are to filings in IPR2020-01142, unless otherwise noted.
`
`2
`
`
`
`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)
`
`and (2) “that consideration of the supplemental information would be in the
`interests-of-justice.” Id.
`
`
`III. ANALYSIS
`Patent Owner seeks to submit as supplemental information Exhibits
`2114, 2115, 2126–2129, and 2132–2137 (collectively, the “New Exhibits”).
`Mot. 1.
`Patent Owner filed its Patent Owner Response along with several
`exhibits on May 5, 2021. Paper 28 (“Response” or “Resp.”). Petitioner
`objected to eighty-seven of Patent Owner’s exhibits on May 12, 2021.
`Paper 29; Mot. 1. Upon reviewing Petitioner’s objections, Patent Owner
`“became aware of certain informalities and filing oversights” and now
`“seeks to submit as supplemental information” the New Exhibits, which
`include corrections to earlier-filed exhibits. See Mot. 1. Patent Owner also
`served the New Exhibits as supplemental evidence on either May 26, 2021,
`or June 2, 2021. Id.
`
`
`Exhibit 2137
`a.
`Patent Owner submitted a translation of a foreign patent document
`(“Yung”) from one of its translators, Mr. Li. Resp. viii, 40 (citing
`Ex. 2023); see also Mot. 2, 3–4. On May 25, 2021, Petitioner sought the
`deposition of Mr. Li. Mot. 2. The next day, on May 26, 2021, Patent Owner
`discovered that “Mr. Li is in China and [Mr. Li] believes he cannot lawfully
`give a deposition in China under Chinese Law.” Id.
`Two days after discovering Mr. Li’s unavailability, May 28, 2021,
`Patent Owner informed Petitioner that Mr. Li is unavailable for deposition
`
`3
`
`
`
`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)
`
`and that Patent Owner would provide a new translation from a different
`translator and would seek to submit the new translation as supplemental
`information. Id. On June 2, 2021, Patent Owner served the New Translation
`on Petitioner (Ex. 2137, “New Translation”). Mot. 2.
`Patent Owner moves to have the New Translation entered as
`supplemental information. See id. at 3–8. Patent Owner submits that the
`New Translation could not reasonably have been obtained earlier, as Patent
`Owner commissioned the New Translation within a few days after learning
`that Mr. Li was unavailable for cross examination. See id. at 2, 4. Patent
`Owner further submits that allowing the New Translation to be entered as
`supplemental information would be in the interests-of-justice, as the
`translation “is highly relevant” to Patent Owner’s argument that a skilled
`artisan “would have understood Yung to teach compression molding, which
`impacts both grounds in the Petition” (id. at 4) and that “[b]ecause discovery
`is ongoing, Petitioner has the opportunity to depose the new translator” (id.
`at 5).
`In its Opposition, Petitioner submits that Patent Owner “should have
`either secured Mr. Li’s availability for a deposition when obtaining his
`translation, or hired an available U.S.-based translator during its extensive
`search window.” Opp. 7 (citation omitted). Petitioner further submits that
`the “Board routinely denies submitting a new translation as supplemental
`information, particularly when it could have been submitted earlier or when
`a declarant is unavailable for deposition.” Id. at 8 (citations omitted).
`Petitioner argues that “[t]here is no reason a translation by an available
`translator could not have been reasonably obtained earlier” (id. at 9) and
`
`4
`
`
`
`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)
`
`Patent Owner “does not establish that a new translation is in the interests-of-
`justice” (id. at 10).
`We disagree with Petitioner.
`As to the first prong, Patent Owner could not have reasonably
`submitted the information earlier. Patent Owner commissioned the New
`Translation on May 27, 2021, one-day after learning that Mr. Li was
`unavailable. See Mot. 2. The New Translation was promptly served on
`Petitioner on June 2, 2021, and Patent Owner filed its Motion on June 10,
`2021. Nothing in the record supports a finding that Patent Owner should
`have known that one of its translators would be unavailable for cross
`examination under Chinese law.
`As to the second prong, granting the Motion as to the New Translation
`is in the interests-of-justice. Patent Owner served the New Translation on
`Petitioner on June 2, 2021, and Patent Owner submits that the New
`Translation “is only nine pages (excluding figures) [and] is materially
`identical to the previously-filed translation that Petitioner has had since
`March 2, 2021, and does not change the substance of [Patent Owner’s]
`arguments.” Mot. 7. We agree with Patent Owner that “Petitioner has
`ample time to analyze the new translation and depose” the new translator, if
`it wishes, before the Petitioner’s reply is due. Id.
`As to Petitioner’s argument that the “Board routinely denies
`submitting a new translation as supplemental information, particularly when
`it could have been submitted earlier or when a declarant is unavailable for
`deposition” (Opp. 8), we note that the Board has granted entry of a new
`translation as supplemental information under similar facts. See, e.g.,
`Quanergy Sys., Inc. v. Velodyne LiDar, Inc., IPR2018-00255, Paper 23
`
`5
`
`
`
`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)
`
`at 2–3 (PTAB Aug. 8, 2018) (granting an unopposed motion to submit as
`supplemental information a new translation due to the translator’s
`unavailability for cross examination).
`Accordingly, we authorize Patent Owner to submit Exhibit 2137 as
`supplemental information.
`
`
`Exhibits 2114 and 2126
`b.
`Exhibit 2114 contains a corrected affidavit from Patent Owner’s
`translator, Mr. Li, that attests to the accuracy of the translation. Mot. 8.
`Patent Owner submits that it first became aware of an omission of the
`affidavit after Petitioner’s objections to evidence were served. Id.; see also
`id. at 1. Patent Owner further submits that entry of Exhibit 2114 is in the
`interests-of-justice, as the exhibit corrects Patent Owner’s oversight with its
`initial filing and that the exhibit “does not change the substance” of Patent
`Owner’s arguments. Id. at 8.
`“Exhibit 2126 is a corrected declaration of Ryan Granger that is
`identical to Exhibit 2042, already of record, except that it contains a
`corrected signature page.” Id. at 10. Patent Owner submits that it did not
`become aware that Mr. Granger’s signature page contained a mistake until
`Petitioner served its objections. Id. Patent Owner further submits that
`Exhibit 2126 “does not change the substance of [Patent Owner’s] arguments
`or Mr. Granger’s testimony and would not prejudice Petitioner.” Id.
`at 10–11.
`In its Opposition, Petitioner counters that these exhibits are
`“supplemental evidence, not supplemental information” (Opp. 14) and the
`
`6
`
`
`
`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)
`
`“Board should not allow [Patent Owner] to fix its mistakes under the guise
`of supplemental information” (id. at 15).
`Petitioner’s argument is not persuasive. “Nothing in the Board’s rules
`prohibits a party from filing, as supplemental information, evidence which
`also is responsive to evidentiary objections.” Valeo N. Am., Inc. v. Magna
`Elecs., Inc., IPR2014-01204, Paper 26 at 5 (PTAB Apr. 10, 2015).
`Furthermore, the Board has allowed entry of such supplemental information
`in analogous situations. See, e.g., Uber Tech., Inc. v. X One, Inc., IPR2017-
`01255, Paper 20 at 2–3, 5 (PTAB Dec. 21, 2017) (granting Petitioner’s
`motion to file an affidavit attesting to the accuracy of a translation as
`supplemental information).
`For the reasons stated by Patent Owner in its Motion (see Mot. 1, 8–9,
`10–11), Patent Owner adequately shows why Exhibits 2114 and 2126
`reasonably could not have been obtained earlier and that consideration of
`these exhibits would be in the interests-of-justice. 37 C.F.R. § 42.123(b).
`Accordingly, we authorize Patent Owner to submit Exhibits 2114 and 2126
`as supplemental information.
`
`
`Exhibits 2115 and 2128
`c.
`Exhibit 2115 is a declaration from another one of Patent Owner’s
`translators, Dr. Popp, “that contains further French-to-English translations of
`words for which no French-to-English translation is already provided.”
`Mot. 9 (emphasis added). Patent Owner submits that it “did not believe”
`that further translation was needed. Id. at 10. Patent Owner explains that
`the “information in Exhibit 2115 could not reasonably have been obtained
`
`7
`
`
`
`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)
`
`earlier and its consideration is in the interests-of-justice.” Id. at 9–10; see
`also id. at 1.
`Exhibit 2128 is a “certified English translation of . . . a German
`operating manual relied upon” by one of Patent Owner’s experts,
`Mr. Granger, for showing the vehicle identification number of a particular
`vehicle at issue in our proceeding. See id. at 11. Patent Owner
`acknowledges, “Due to an oversight, no translation of [a] few sentences . . .
`relied upon by Mr. Granger was filed with” Patent Owner’s Response. Id.
`Patent Owner submits that “[i]n response to Petitioner’s objections, [Patent
`Owner] promptly obtained the translation” and that “Petitioner is not
`prejudiced because Exhibit 2128 does not change [Patent Owner’s]
`arguments or Mr. Granger’s testimony.” Id.
`Petitioner contends that “[c]learly, a complete translation, as required
`by the Rules, could have reasonably been obtained earlier because [Patent
`Owner] had partial translations completed.” Opp. 12.
`We disagree with Petitioner’s position that complete translations
`could have reasonably been obtained earlier. Patent Owner sought
`correction of the mistakes in the translation immediately after Patent Owner
`discovered the mistakes. See Mot. 1, 9–10, 11. Petitioner’s position that
`Patent Owner could have corrected mistakes before discovering them is
`unreasonable. We do not expect Patent Owner to have prescient powers.
`Rather, Patent Owner adequately shows that Exhibits 2115 and 2128
`(1) “reasonably could not have been obtained earlier” and (2) that
`consideration of these exhibits “would be in the interests-of-justice.” Mot.
`9–10, 11–12; 37 C.F.R. § 42.123(b). Accordingly, we grant Patent Owner’s
`motion to submit Exhibits 2115 and 2128 as supplemental information.
`
`8
`
`
`
`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)
`
`
`Exhibit 2129
`d.
`“Exhibit 2129 is U.S. Customs and Border Protection forms that
`provide corroborating detail regarding the model year” of a vehicle
`addressed in Patent Owner’s Response and in Mr. Granger’s declaration.
`Mot. 12 (citation omitted). Patent Owner “did not become aware of these
`documents until it began investigating Petitioner’s objections and promptly
`served them as supplemental evidence.” Id.; see also id. at 1.
`Petitioner contends that Patent Owner “did not even attempt to explain
`why it could have not obtained [these] forms[] earlier in the proceeding.”
`Opp. 13.
`We disagree with Petitioner. Patent Owner explains that it was not
`until after Petitioner raised its numerous objections (to eighty-seven
`exhibits) that Patent Owner became aware of the missing information. See
`Mot. 1, 12. Shortly after learning of Petitioner’s objections, Patent Owner
`promptly served Exhibit 2129 as supplemental evidence and sought entry of
`the exhibit as supplemental information. See id. at 1, 12. Furthermore, we
`agree with Patent Owner that Exhibit 2129 “does not change the substance
`of [Patent Owner’s] arguments” and “its consideration is in the interests-of-
`justice and does not prejudice Petitioner.” Id. at 12.
`Accordingly, Patent Owner adequately shows why Exhibit 2129
`reasonably could not have been obtained earlier and (2) that consideration of
`this exhibit would be in the interests-of-justice. Mot. 12; 37 C.F.R.
`§ 42.123(b). As such, we authorize Patent Owner to submit Exhibit 2129 as
`supplemental information.
`
`
`9
`
`
`
`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)
`
`
`Exhibits 2132–2136 and 2127
`e.
`“Exhibits 2132-2136 are corrected claim charts demonstrating how
`certain of [Patent Owner’s] products embody and are coextensive with the
`claimed inventions.” Mot. 12. Patent Owner submits that these exhibits
`“correct inadvertent errors in the photographs . . . that were identified while
`investigating Petitioner’s objections.” Id. at 12–13.
`“Exhibit 2127 is a supplemental declaration of Mr. Granger that
`addresses the inadvertent errors.” Id. at 13. Patent Owner acknowledges
`that “Mr. Granger’s declaration also explains the source of the sales and
`revenue figures supporting his previously-submitted testimony regarding the
`commercial success of [Patent Owner’s] products.” Id.
`Patent Owner submits that “Exhibits 2132-2136 and 2127 could not
`have reasonably been obtained earlier [because Patent Owner] did not
`discover the inadvertent errors . . . until after Petitioner served its
`objections.” Id. Patent Owner further submits that “[c]onsideration of
`Exhibits 2132-2136 and 2127 is in the interests-of-justice . . . [as it is]
`relevant to [Patent Owner’s] arguments concerning secondary considerations
`of non-obviousness.” Id.
`Petitioner disputes Patent Owner’s assertion that these exhibits merely
`correct “inadvertent errors” and argues that supplemental information may
`not bolster deficiencies in Patent Owner’s Response. See Opp. 10–12 (citing
`in relevant part Pacific Market Int’l, LLC, v. Ignite USA, LLC, IPR2014-
`00561, Paper 23 (PTAB Dec. 2, 2014)).
`Petitioner’s argument has merit. Indeed, the parties appear to agree
`that the supplemental information should not change the substance of Patent
`Owner’s arguments, but disagree as to whether these exhibits do just that.
`
`10
`
`
`
`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)
`
`Compare Mot. 14 (“the Board consistently interprets 37 C.F.R. § 42.123(b)
`to permit the filing of supplemental information to correct minor errors”),
`with Opp. 10 (“[Patent Owner] alleges the exhibits fix errors . . . but hides
`that its exhibits provide new analysis and new testimony”) (citation
`omitted)). Having considered the parties’ positions, and Patent Owner’s
`burden as the moving party, we determine that Patent Owner satisfies the
`requirements of Rule 42.123(b).
`As to prong (1), Patent Owner could not have reasonably submitted
`Exhibits 2132–2136 and 2127 earlier. Patent Owner sought correction of the
`“inadvertent errors” shortly after learning of them, promptly served these
`exhibits (correcting the errors) as supplemental evidence on May 26, 2021,
`and filed its Motion on June 10, 2021, seeking entry of these exhibits as
`supplemental information. See Mot. 1, 12–13.
`As to prong (2), Patent Owner has shown that consideration of these
`exhibits “would be in the interests-of-justice.” Although Petitioner relies on
`Pacific Market in support of its position (see Opp. 12), we find this case to
`instead support Patent Owner’s Motion.
`In Pacific Market, the Board granted petitioner’s motion to submit
`supplemental information. Pacific Market, IPR2014-00561 at 5. In
`particular, the panel explained,
`In this case, the supplemental information that PMI [the
`petitioner] seeks
`to enter
`is additional
`testimony from
`Mr. Dahlgren directed to reasons to combine the particular prior
`art references that formed the underlying basis for instituting
`trial. The supplemental testimony does not operate to change any
`grounds of unpatentability
`that were authorized
`in
`this
`proceeding, nor does it change the type of evidence initially
`presented
`in
`the Petition
`to support
`those grounds of
`unpatentability. Rather, as urged by PMI, the supplemental
`
`11
`
`
`
`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)
`
`
`testimony is offered simply as “additional evidence that [in
`PMI’s view] confirms
`the prima facie obviousness of
`claims 16–19 as set forth in PMI’s petition.”
`Id. at 3–4 (citation omitted). The Board further determined,
`The panel believes that Mr. Dahlgren’s Supplemental
`Declaration may be useful in determining the patentability or
`unpatentability of the claims of the ’442 patent at issue.
`Moreover, Ignite [the patent owner] is not prejudiced unfairly by
`the entry of Mr. Dahlgren’s Supplemental Declaration now
`because: (1) it was filed promptly; (2) Ignite has full opportunity
`to cross examine Mr. Dahlgren with respect to that testimony;
`and (3) Ignite may submit testimony of its own expert witness
`that responds to, or otherwise addresses, the Supplemental
`Declaration.
`Id. at 4–5.
`As with Pacific Market, we find Exhibits 2132–2136 and 2127 may
`be useful in determining the patentability or unpatentability of the claims
`challenged in our proceeding. See id. As also with Pacific Market,
`Petitioner will have ample time to cross examine Mr. Granger and respond
`to Mr. Granger’s testimony before Petitioner’s reply is due to be filed. See
`id. Accordingly, we agree with Patent Owner that consideration of these
`exhibits would be in the interests-of-justice. See Mot. 12–14.
`For the foregoing reasons, we authorize Patent Owner to submit
`Exhibits 2132–2136 and 2127 as supplemental information.
`
`
`12
`
`
`
`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)
`
`
`IV. ORDER
`
`Accordingly, it is
`ORDERED that Patent Owner’s Motion to Submit Supplemental
`Information in IPR2020-01139 (Paper 37) is granted;
`FURTHER ORDERED that Patent Owner’s Motion to Submit
`Supplemental Information in IPR2020-01142 (Paper 36) is granted;
`FURTHER ORDERED that within seven (7) days of this Order,
`Patent Owner shall file Exhibits 2114, 2115, 2126–2129, and 2132–2137 in
`IPR2020-01139; and
`FURTHER ORDERED that within seven (7) days of this Order,
`Patent Owner shall file Exhibits 2114, 2115, 2126–2129, and 2132–2137 in
`IPR2020-01142.
`
`
`
`
`13
`
`
`
`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)
`
`PETITIONER:
`Mark Walters
`LOWE GRAHAM JONES PLLC
`walters@lowegrahamjones.com
`
`Ralph Powers
`Jason Fitzsimmons
`Stephen Merrill
`STERNE, KESSLER, GOLDSTEIN & FOX PLLC
`tpowers-ptab@sternekessler.com
`jfitzsimmons-ptab@sternekessler.com
`smerrill-ptab@sternekessler.com
`
`PATENT OWNER:
`David G. Wille
`Chad C. Walters
`Clarke W. Stavinoha
`BAKER BOTTS LLP
`david.wille@bakerbotts.com
`chad.walters@bakerbotts.com
`clarke.stavinoha@bakerbotts.com
`
`Jefferson Perkins
`PERKINS IP LAW GROUP LLC
`jperkins@perkinsip.com
`
`14
`
`
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