Trials@uspto.gov
`571-272-7822
`
`Paper 32
`Date: December 21, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`OCADO GROUP PLC,
`Petitioner,
`
`v.
`
`AUTOSTORE TECHNOLOGY AS,
`Patent Owner.
`
`IPR2021-00274
`Patent 10,294,025 B2
`
`Before FRANCES L. IPPOLITO, SCOTT B. HOWARD, and
`ALYSSA A. FINAMORE, Administrative Patent Judges.
`
`IPPOLITO, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`Granting Petitioner’s Motion to File Supplemental Information
`37 C.F.R. §§ 42.5(a), 42.123(a)
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 32
`Date: December 21, 2021
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`OCADO GROUP PLC,
`Petitioner,
`
`v.
`
`AUTOSTORE TECHNOLOGY AS,
`Patent Owner.
`
`IPR2021-00274
`Patent 10,294,025 B2
`
`Before FRANCES L. IPPOLITO, SCOTT B. HOWARD, and
`ALYSSA A. FINAMORE, Administrative Patent Judges.
`
`IPPOLITO, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`Granting Petitioner’s Motion to File Supplemental Information
`37 C.F.R. §§ 42.5(a), 42.123(a)
`
`
`
`
`
`
`
`
`IPR2021-00274
`Patent 10,294,025 B2
`
`I.
`
`INTRODUCTION
`
`Petitioner requested authorization to file a motion to submit
`
`supplemental information under 37 C.F.R. § 42.123(a) within one month of
`
`our institution of trial. On July 2, 2021, by email correspondence, we
`
`authorized Petitioner to file the motion. Petitioner filed a Motion to Submit
`
`Supplemental Information (Paper 14, “Mot.”) on July 9, 2021. Patent
`
`Owner filed an Opposition (Paper 17, “Opp.”) on July 16, 2021.
`
`II. DISCUSSION
`
`Section 42.123(a) requires (1) that any party filing a motion to request
`
`supplemental information do so “within one month from the date the trial is
`
`instituted;” and (2) that “[t]he supplemental information must be relevant to
`
`a claim for which the trial has been instituted.” 37 C.F.R. § 42.123(a).
`
`Section 42.123(a) “does not connote the PTAB must accept supplemental
`
`information so long as it is timely and relevant.” Redline Detection, LLC v.
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`Star Envirotech, Inc., 811 F.3d 435, 445 (Fed. Cir. 2015) (citation omitted).
`
`Our guiding principle in evaluating a motion to submit supplemental
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`information is “to ensure the efficient administration of the Office and the
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`ability of the Office to complete IPR proceedings in a timely manner.” Id.
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`(citations and internal quotations omitted).
`
`In its Motion, Petitioner provides a table, reproduced below, which
`
`lists the exhibits that Petitioner seeks to submit as supplemental information.
`
`Mot. iv.
`
`2
`
`
`
`IPR2021-00274
`Patent 10,294,025 B2
`
`
`
`The table from Petitioner’s Motion identifies, by number and a brief
`
`description, the exhibits which Petitioner seeks to enter as supplemental
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`information. Mot. iv. Petitioner contends that on March 8, 2021, months
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`after the Petition was filed in this proceeding, Patent Owner served
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`contentions in the related ITC matter alleging that Lindbo ’1781, is not
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`entitled to claim priority to Lindbo ’3132 under 35 U.S.C. § 119(a) “because
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`they were filed by two different affiliated entities—Lindbo ’178 was filed by
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`Ocado Innovation Limited and GB ’313 was filed by Ocado Limited—and
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`the latter was not a ‘legal representative[] or assign[]’ of the former as the
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`ITC Complainants contend is required by § 119(a).” Id. at 2–3. Because the
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`priority of Lindbo ’178 is also an issue in this inter partes review, Petitioner
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`seeks to submit Exhibits 1017–1023 as supplemental information relevant to
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`the claims challenged under instituted grounds based on Lindbo ’178. See
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`id. at 4 (“[T]he supplemental information is ‘relevant to a claim for which
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`the trial has been instituted’ because it pertains to the priority status of a
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`prior art reference—Lindbo ’178—on which the Petition and the Board’s
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`institution decision rely.”).
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`Petitioner adds that it could not have reasonably anticipated this
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`argument prior to filing the Petition because Patent Owner did not raise this
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`
`1 US 10,577,178 B2, issued Mar. 3, 2020. Ex. 1003.
`2 GB 1314313.6, published Feb. 12, 2015. Ex. 1004.
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`3
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`
`
`IPR2021-00274
`Patent 10,294,025 B2
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`argument at the ITC until after the Petition was filed. Mot. 5. Further,
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`Petitioner contends that Patent Owner will not be prejudiced by the
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`admission of the supplemental information because Petitioner produced the
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`same information contained in Exhibits 1017–1023 to the Patent Owner at
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`the ITC on May 2, 2021. Id.
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`In response, Patent Owner contends that the information in Exhibits
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`1017–1023 changes the evidence presented in the Petition and that there is
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`no presumption Lindbo ’178 is entitled to priority to Lindbo ’313. Opp. 2–
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`4.
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`Based on our consideration of the arguments and evidence, we
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`determine that Petitioner’s proposed supplemental information would
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`efficiently and expeditiously serve to supplement evidence that has already
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`been presented by Petitioner and may prove beneficial to the Board in
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`reaching a decision with respect to the trial. In particular, the supplemental
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`information Petitioner seeks to submit in Exhibits 1017–1023 relates to the
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`priority of Lindbo ’178, which is relied upon by Petitioner for grounds of
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`unpatentability in this instituted proceeding. See Paper 12, 8. The priority
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`date of Lindbo ’178 was raised at the pre-institution stage and continues to
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`be an issue that the panel has invited the parties to address during trial. Id. at
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`25–26. That being the case, we disagree with Patent Owner that Exhibit
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`1017–1023 changes or alters the evidence presented in the Petition. Rather,
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`the supplemental information does not change the grounds of unpatentability
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`based on Lindbo ’178 that have been authorized in this proceeding, but
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`rather develops the record on an issue we have asked the parties to address.
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`Id.
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`We further note that Patent Owner will have sufficient time to address
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`the supplemental information before filing the deadline of its Patent Owner
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`4
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`
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`IPR2021-00274
`Patent 10,294,025 B2
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`Sur-Reply, due January 3, 2022. Paper 13, 10. Indeed, Petitioner has
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`previously presented to Patent Owner the information contained in Exhibits
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`1017–1023, along with its arguments regarding the same. See Paper 29, 2–
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`5; Mot. 5. Nonetheless, the parties are reminded that either may request
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`authorization to submit additional briefing on particular issues (e.g., priority)
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`for the panel’s consideration.
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`Accordingly, Petitioner’s Motion is GRANTED.
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`III. ORDER
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`In consideration of the foregoing, it is hereby:
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`ORDERED that Petitioner’s Motion is granted and the supplemental
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`information at Exhibits 1017–1023 are entered.
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`
`
`For PETITIONER:
`
`Stephen Elliott
`Raffaele DeMarco
`SULLIVAN & CROMWELL LLP
`elliotts@sullcrom.com
`demarcor@sullcrom.com
`
`
`For PATENT OWNER:
`
`W. Todd Baker
`Joseph Loy
`Arun Swain
`KIRKLAND & ELLIS LLP
`todd.baker@kirkland.com
`jloy@kirkland.com
`arun.swain@kirkland.com
`
`
`
`
`5
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`
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