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`Paper No. 28
`Date: August 18, 2021
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`Trials@uspto.gov
`571.272.7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`SONY INTERACTIVE ENTERTAINMENT LLC,
`Petitioner,
`
`v.
`
`INTELLECTUAL PIXELS LIMITED,
`Patent Owner.
`
`
`IPR2020-01248
`Patent 8,667,093 B2
`
`
`
`Before JENNIFER S. BISK, JENNIFER MEYER CHAGNON, and
`IFTIKHAR AHMED, Administrative Patent Judges.
`
`AHMED, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Patent Owner’s Motion to
`Submit Supplemental Information
`37 C.F.R. § 42.123
`
`
`
`
`
`
`
`
`
`
`
`IPR2020-01248
`Patent 8,667,093 B2
`
`DISCUSSION
`On August 9, 2021, we authorized Patent Owner to file a motion to
`submit supplemental information under 37 C.F.R. § 42.123(b). Paper 24;
`see also Ex. 3001. On August 11, 2021, Patent Owner filed its Motion to
`Submit Supplemental Information. Paper 25 (“Motion” or “Mot.”).
`Petitioner filed an Opposition to the Motion on August 13, 2021. Paper 27
`(“Opposition” or “Opp.”). For the reasons set forth below, we grant the
`Motion.
`
`A. Patent Owner’s Argument
`Patent Owner seeks to submit as supplemental information Exhibits
`2021 and 2022 (collectively, the “New Exhibits”). Mot. 1. Patent Owner
`argues that the New Exhibits “are in direct response to Petitioner’s reliance
`on Exhibit 1034,” which Patent Owner contends supports Petitioner’s
`attempt “to fill the evidentiary gap left by the Petition” as to the version of
`the Ethernet standard employed by Schmidt, Petitioner’s primary reference. 1
`Mot. 1–2 (citing Paper 3 (“Pet.), 70–71; Paper 19 (“PO Resp.”), 59–63;
`Paper 21 (“Pet. Reply”), 23 n.7; Ex. 1006; Ex. 1034). Specifically, Patent
`Owner contends that the Petition “asserted that the IEEE 802.3-1985
`Standard was ‘Ethernet’ used by Schmidt,” while Petitioner’s Reply “relies
`on newly-submitted Exhibit 1034, which is a 1,262-page, 1998 version of
`the IEEE 802.3 Standard for Fast Ethernet.” Id. Patent Owner contends that
`Petitioner’s Reply argument as to Ethernet specifically “relies on Exhibit
`1034’s disclosure of CSMA/CD’s interFrameSpacing used in a particular
`mode (half duplex) in Fast Ethernet.” Id. at 2–3 (citing Ex. 1034, 53–54).
`
`
`1 Petitioner challenges claims 4, 13, and 19 as obvious over the combination
`of Schmidt (Ex. 1004) and the IEEE 802.3 Standard (Ex. 1006). Pet. 68–72.
`2
`
`
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`IPR2020-01248
`Patent 8,667,093 B2
`According to Patent Owner, its New Exhibits are responsive to Petitioner’s
`Reply argument and reasonably could not have been obtained or submitted
`earlier. Id. at 3.
`Patent Owner further argues that granting its request is in the interests
`of justice because Patent Owner was entitled to rely upon Petitioner’s case-
`in-chief and “because the supplemental information would provide a more
`complete record of the use of CSMA/CD’s interFrameSpacing relied upon
`by Petitioner.” Id. at 4–5
`
`B. Petitioner’s Argument
`Petitioner responds that its reliance on Exhibit 1034 in its Reply does
`not constitute a “new theory of invalidity.” Opp. 1. Instead, Petitioner
`contends, Exhibit 1034 “is the full version of Exhibit 2004 cited by Patent
`Owner” in the Patent Owner Response, and is intended to “correct Patent
`Owner’s suggestion that Fast Ethernet lacked ‘interframe spacing.’” Id. at 2
`(citing Pet. Reply 24). Petitioner asserts that “Exhibit 1034 was thus in
`direct response to the incomplete evidence that Patent Owner itself raised in
`its POR as Exhibit 2004, and to corroborate the knowledge a [person of
`ordinary skill in the art] would bring to bear when reading Schmidt.” Id.
`Petitioner argues that it has “always relied on ‘interframe spacing’ as being
`claim 4’s ‘specified elapsed time,’ and interframe spacing is undisputedly
`used in all versions of Ethernet used in Schmidt.” Id. (citing Pet. Reply 22–
`25). Petitioner asserts that Patent Owner, having introduced the Fast
`Ethernet standard in its papers, “cannot now claim surprise that Petitioner
`included the body of the Fast Ethernet CSMA/CD standard in Exhibit 1034.”
`Id. at 4. Petitioner also argues that granting Patent Owner’s request is not in
`the interests of justice because Patent Owner’s reliance on the New Exhibits
`
`3
`
`
`
`IPR2020-01248
`Patent 8,667,093 B2
`is misplaced and also because Patent Owner had full notice of Petitioner’s
`argument but waited till the Sur-reply to address it. Id. at 4–5 (citing Paper
`12, 35). Petitioner therefore asks that the Motion be denied, or in the
`alternative, Petitioner be granted a two-page response to address the New
`Exhibits and any related arguments made in Patent Owner’s Sur-reply. Id. at
`5; Ex. 3001.
`
`C. Analysis
`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”
`and (2) “that consideration of the supplemental information would be in the
`interests-of-justice.” Id. On this record and in the particular circumstances
`of this proceeding, we determine that Patent Owner has met its burden.
`Patent Owner persuasively argues that even though the Petition asserts
`that a person of ordinary skill in the art reading Schmidt would have
`understood that Schmidt’s transmissions were sent in accordance with the
`Ethernet protocol described by the IEEE 802.3 standard (Ex. 1006), the
`
`4
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`
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`IPR2020-01248
`Patent 8,667,093 B2
`Petition does not expressly address the Fast Ethernet standard. Mot. 1;
`Pet. 69–72. As Petitioner acknowledges, Petitioner’s Reply does rely on
`Exhibit 1034 and expressly addresses the Fast Ethernet standard. 2 Opp. 2;
`Pet. Reply 24–25. We are therefore persuaded that Petitioner’s complete
`argument as to what a person of ordinary skill in the art would have
`understood from the earlier IEEE 802.3 standard about the later Fast
`Ethernet standard may not have been entirely clear prior to Petitioner’s
`Reply. Although we agree with Petitioner that Patent Owner could have
`been aware of Petitioner’s position as to the Fast Ethernet standard earlier,
`we do not find it unreasonable that Patent Owner did not submit evidence
`relating to Fast Ethernet with its Patent Owner Response. See General Elec.
`Co. v. United Techs. Corp., IPR2018-01442, Paper 33, 6 (PTAB. Oct. 10,
`2019) (“It is reasonable that Patent Owner should not have to deduce
`Petitioner’s challenges and all of its supporting arguments before they
`develop during the course of a proceeding, without a chance to respond in
`some fashion.”). We also are persuaded that allowing Patent Owner to
`submit the New Exhibits with its Sur-reply is in the interests of justice as it
`allow for a more complete record and will not delay the trial schedule. We
`therefore grant Patent Owner’s motion.
`We also grant Petitioner’s request (Opp. 5) for a two-page response to
`address the New Exhibits and any related arguments made in Patent Owner’s
`Sur-Reply.
`
`
`2 We do not address in this Decision Patent Owner’s argument that
`Petitioner’s reliance on Exhibit 1034 constitutes a new theory of invalidity.
`5
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`
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`IPR2020-01248
`Patent 8,667,093 B2
`
`ORDER
`
`It is:
`ORDERED that Petitioner’s Motion to Submit Supplemental
`Information (Paper 25) is granted;
`FURTHER ORDERED that Exhibits 2021 and 2022 are entered into
`the record of this proceeding;
`FURTHER ORDERED that Petitioner is authorized to file a
`Supplemental Reply addressing Patent Owner’s arguments related to
`Exhibits 2021 and 2022 in Patent Owner’s Sur-reply; and
`FURTHER ORDERED that Petitioner’s Supplemental Reply may be
`no longer than two pages, and filed no later than August 26, 2021.
`
`
`
`6
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`
`
`IPR2020-01248
`Patent 8,667,093 B2
`FOR PETITIONER:
`Joseph Haag
`Daniel Williams
`James M. Dowd
`S. Dennis Wang
`WILMER CUTLER PICKERING HALE & DORR LLP
`joseph.haag@wilmerhale.com
`daniel.williams@wilmerhale.com
`james.dowd@wilmerhale.com
`dennis.wang@wilmerhale.com
`
`FOR PATENT OWNER:
`Douglas R. Wilson
`Michelle E. Armond
`Forrest M. McClellen
`ARMOND WILSON LLP
`doug.wilson@armondwilson.com
`michelle.armond@armondwilson.com
`forrest.mcclellen@armondwilson.com
`litigation@armondwilson.com
`
`
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`7
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