Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper 76
` Date: March 28, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GROUP III INTERNATIONAL, INC. and EVERKI USA, INC.,
`Petitioner,
`
`v.
`
`TARGUS INTERNATIONAL LLC,
`Patent Owner.
`______________________________
`
`IPR2021-00371
`Patent 8,567,578 B2
`______________________________
`
`
`
`
`Before JAMES J. MAYBERRY, FREDERICK C. LANEY, and
`SEAN P. O’HANLON, Administrative Patent Judges.
`
`O’HANLON, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`Paper 76
` Date: March 28, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GROUP III INTERNATIONAL, INC. and EVERKI USA, INC.,
`Petitioner,
`
`v.
`
`TARGUS INTERNATIONAL LLC,
`Patent Owner.
`______________________________
`
`IPR2021-00371
`Patent 8,567,578 B2
`______________________________
`
`
`
`
`Before JAMES J. MAYBERRY, FREDERICK C. LANEY, and
`SEAN P. O’HANLON, Administrative Patent Judges.
`
`O’HANLON, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`IPR2021-00371
`Patent 8,567,578 B2
`
`
`I. INTRODUCTION
`On January 20, 2022, we authorized Patent Owner to file a motion to
`
`submit supplemental information under 37 C.F.R. § 42.123(b). Ex. 3007, 1.
`On January 27, 2022, Patent Owner filed its Motion to Submit Supplemental
`Information. Paper 61 (“Motion” or “Mot.”). On February 3, 2022,
`Petitioner filed an Opposition to the Motion. Paper 64 (“Opp.”). For the
`reasons set forth below, we grant the Motion.
`
`II. DISCUSSION
`
`A. Patent Owner’s Contentions
`
`Patent Owner seeks to submit as supplemental information
`Exhibits 2211 and 2217 (collective, the “New Exhibits”). Mot. 1. Patent
`Owner asserts that the New Exhibits are “from the cross-examination of
`Petitioner’s expert Mr. Godshaw” and that, “[w]hen confronted with [the
`New Exhibits] during cross-examination on January 17, 2022, Mr. Godshaw
`impeached himself.” Id. Patent Owner asserts that “[Exhibit 2217] is
`Mr. Godshaw’s own patent” and “[Exhibit 2211] is a webpage from
`Mr. Godshaw’s company Travelon.” Id. at 2, 4. Patent Owner argues that
`the New Exhibits “show[] that the prior art could, contrary to
`Mr. Godshaw’s reply declaration, include metal that would disrupt a scanner
`even though it included a zipper.” Id. at 4; see also id. at 2 (“Mr. Godshaw
`testified for the first time on reply that the sides of the Hollingsworth and
`Miller cases ‘are not and cannot be made of a metal’ because they include
`zippers.” (citing Ex. 1040 ¶¶ 101, 105)).
`
`2
`
`
`
`IPR2021-00371
`Patent 8,567,578 B2
`
`B. Petitioner’s Contentions
`
`Petitioner argues that we should deny entry of the New Exhibits
`because “they are irrelevant.” Opp. 1. Petitioner asserts that in both
`Mr. Godshaw’s original declaration (Exs. 1001, 1014) and supplemental
`declaration (Ex. 1040), Mr. Godshaw opined that, in order to be configured
`to allow a scanning device to scan through a bag, the bag must be made of “a
`non-metallic material” but “did not require the absence of any metallic
`material whatsoever.” Id. at 2–4. Petitioner asserts that “Mr. Godshaw
`never said, at any time, that just the ‘inclusion’ of a piece of metal could
`disrupt a scanner, let alone that it ‘would’ do so.” Id. at 5.
`
`C. Analysis
`
`As the moving party, Patent Owner bears the burden of proving that it
`is entitled to the requested relief. 37 C.F.R. § 42.20(c). Under 37 C.F.R.
`§ 42.123(b), a party seeking to submit supplemental information later than
`one month after the date on which the trial was instituted must show:
`(1) why the supplemental information reasonably could not have been
`obtained earlier, and (2) consideration of the supplemental information
`would be in the interests of justice.
`
`1. Whether the New Exhibits Reasonably Could Not Have Been
`Obtained Earlier
`
`With respect to the first requirement of § 42.123(b), Patent Owner
`asserts that Mr. Godshaw “submitted new unpatentability opinions” in his
`supplemental declaration filed on December 23, 2021. Mot. 1 (citing
`Ex. 1040 ¶¶ 101–106). Patent Owner asserts that it presented the New
`Exhibits to Mr. Godshaw during a deposition on January 17, 2022, and
`
`3
`
`
`
`IPR2021-00371
`Patent 8,567,578 B2
`
`sought authorization to file the New Exhibits as supplemental information in
`this proceeding on January 18, 2022. Id.
`
`We agree with Patent Owner that the New Exhibits reasonably could
`not have been obtained earlier. The New Exhibits are directed to bags
`having zippers and security features in the form of a mesh or matrix of cut-
`resistant material such as wires. Ex. 2211, 2; Ex. 2217, code (57). The first
`instance of argument regarding whether or not a material is metallic based
`on the presence of zippers appears to be in Mr. Godshaw’s supplemental
`declaration filed on December 23, 2021. See Ex. 1040 ¶¶ 101–103,
`105–106. Petitioner does not apprise us of an earlier instance of such
`argument in this proceeding. See generally Opp. Accordingly, we do not
`think it is reasonable to have expected Patent Owner to foresee the specific
`issues raised here prior to December 23, 2021, and to submit the New
`Exhibits before now.
`
`2. Whether Consideration of the New Exhibits Would Be in the
`Interests of Justice
`
`With respect to the second requirement of § 42.123(b), Patent Owner
`asserts that entry of the New Exhibits into the record is in the interests of
`justice because the New Exhibits contradict Mr. Godshaw’s testimony in the
`supplemental declaration that the Hollingsworth and Miller cases cannot be
`made of metal because they include zippers and, thus, the New Exhibits
`would allow us to weigh the credibility of such testimony. Mot. 2. We
`agree. The New Exhibits also provide a more complete record, as they were
`discussed during the deposition of Mr. Godshaw. See Ex. 2218, 11–31.
`Petitioner’s arguments that the New Exhibits are not relevant (Opp. 4–5) fail
`
`4
`
`
`
`IPR2021-00371
`Patent 8,567,578 B2
`
`to persuade us that entry of the New Exhibits would not be in the interests of
`justice.
`
`III. ORDER
`In consideration of the foregoing, it is ORDERED that Patent
`
`Owner’s motion to submit supplemental information under 37 C.F.R
`§ 42.123(b) is granted with respect to Exhibits 2211 and 2217.
`
`5
`
`
`
`IPR2021-00371
`Patent 8,567,578 B2
`
`For PETITIONER:
`Scott D. Smiley
`Robert Kain
`THE CONCEPT LAW GROUP, P.A.
`scott@conceptlaw.com
`rkain@conceptlaw.com
`IPR@conceptlaw.com
`
`Marc Karish
`Karish & Bjorgum, PC
`marc.karish@kb-ip.com
`
`For PATENT OWNER:
`Michelle E. Armond
`Douglas R. Wilson
`Josepher Li
`Forrest M. McClellen
`ARMOND WILSON LLP
`michelle.armond@armondwilson.com
`doug.wilson@armondwilson.com
`forrest.mcclellen@armondwilson.com
`
`6
`
`
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