Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper 34
`Date: September 17, 2021
`
`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 34
`Date: September 17, 2021
`
`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 August 12, 2021, we authorized Petitioner to file a motion to
`
`submit supplemental information under 37 C.F.R. § 42.123(a). Paper 24.
`
`On August 17, 2021, Petitioner filed its Motion to Submit Supplemental
`
`Information. Paper 25 (“Motion” or “Mot.”). On August 24, 2021, Patent
`
`Owner filed an Opposition to the Motion. Paper 30 (“Opposition” or
`
`“Opp.”). For the reasons set forth below, we grant the Motion.
`
`II. DISCUSSION
`
`A. Petitioner’s Contentions
`
`
`
`Petitioner seeks to submit as supplemental information
`
`Exhibits 1015–1019 (collectively, the “New Exhibits”). Mot. 1. Petitioner
`
`argues that the New Exhibits “contain evidence relating to the public
`
`availability of the contents of the Transportation Security Administration
`
`Request for Information (hereinafter ‘TSA RFI’)[1], which was relied upon in
`
`the instituted grounds.” Id.; see also id. at 6.
`
`
`
`Petitioner argues that Exhibits 1015–1017 are Internet Archive
`
`affidavits of authenticity regarding articles archived on March 7, 2008,
`
`March 6, 2008, and March 9, 2008, respectively, that Petitioner asserts quote
`
`TSA RFI. Mot. 6–7. Petitioner argues that Exhibit 1018 is a West
`
`Publishing Corporation affidavit of authenticity regarding an article archived
`
`on March 7, 2008, that Petitioner asserts quotes TSA RFI. Id. at 7.
`
`Petitioner argues that Exhibit 1019 is redacted deposition transcript of
`
`
`1 “Checkpoint Friendly Laptop Bag,” Transportation Security
`Administration Request for Information, March 3, 2008 (Ex. 1003).
`
`2
`
`
`
`IPR2021-00371
`Patent 8,567,578 B2
`
`Mr. Todd Gormick, a named inventor of the ’578 patent, taken during the
`
`course of district court litigation between Patent Owner and Victorinox
`
`Swiss Army, Inc. Id. at 8. Petitioner asserts that the deposition transcript
`
`“shows Mr. Gormick’s admission that he and Patent Owner were aware that
`
`the TSA RFI was published and publicly available prior to the March 13,
`
`2008[,] priority date of the ’578 Patent.” Id. Petitioner asserts that each of
`
`the New Exhibits is “relevant to establishing that the RFI issued by the TSA
`
`was published and publicly available well prior to the ’578 Patent’s earliest
`
`priority date of March 13, 2008,” and, therefore is relevant to this
`
`proceeding. Id. at 9.
`
`B. Patent Owner’s Contentions
`
`
`
`Patent Owner argues that none of the New Exhibits “establish[es] the
`
`public accessibility of the TSA RFI reference.” Opp. 1 (citing Paper 24, 2;
`
`Ex. 1020, 1). Patent Owner argues that “Exhibit 1003 itself indicates that it
`
`was modified over time” and that “[t]he version of the document Petitioner
`
`submitted does not support Petitioner’s theory that it was publicly accessible
`
`on March 3, 2008.” Id. at 3. Patent Owner argues that the New Exhibits
`
`likewise fail to show “that the document submitted as Exhibit 1003 was
`
`itself publicly accessible on the www.fbo.gov website on March 3, 2008.”
`
`Id. Patent Owner argues that none of Exhibits 1015–1018 specifically
`
`identifies TSA RFI or establishes when the reference was posted on a
`
`government website. Id. at 4. Patent Owner argues that, in the testimony of
`
`Exhibit 1019 cited by Petitioner, Mr. Gormick states that “a ‘document
`
`c[a]me out’ on March 4, 2008,” but he “does not indicate what version of the
`
`TSA RFI he recalled or establish that the document submitted as
`
`3
`
`
`
`IPR2021-00371
`Patent 8,567,578 B2
`
`Exhibit 1003 was publicly accessible.” Id. at 5 (alteration in original) (citing
`
`Ex. 1019, 145–47). Patent Owner argues that Petitioner’s reference in the
`
`Motion to the contents of TSA RFI, rather than TSA RFI itself, constitutes a
`
`new theory of unpatentability that is not consistent with the arguments set
`
`forth in the Petition and instituted in the Institution Decision (Paper 21). Id.
`
`at 6–7.
`
`C. Analysis
`
`
`
`As the moving party, Petitioner 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(a), a party may file a motion to submit supplemental information if
`
`the following requirements are met: (1) a request for authorization to file
`
`such motion is made within one month of the date the trial was instituted;
`
`and (2) the supplemental information must be relevant to a claim for which
`
`trial has been instituted.
`
`
`
`With respect to the first requirement of § 42.123(a), trial was
`
`instituted in this proceeding on July 9, 2021. Paper 22. Therefore, because
`
`Petitioner requested authorization to file a motion to submit supplemental
`
`information on August 4, 2021 (see Ex. 1020), Petitioner’s request was
`
`made within one month of the date the trial was instituted.
`
`
`
`With respect to the second requirement of § 42.123(a), information is
`
`relevant if “it has any tendency to make a fact more or less probable than it
`
`would be without the evidence” and “the fact is of consequence in
`
`determining the action.” Fed. R. Evid. 401; see also 37 C.F.R. § 42.62
`
`(“Except as otherwise provided in this subpart, the Federal Rules of
`
`Evidence shall apply to a proceeding.”). Exhibits 1015 and 1016 appear to
`
`4
`
`
`
`IPR2021-00371
`Patent 8,567,578 B2
`
`reference or quote from TSA RFI, and thus appear to be relevant to the
`
`public availability of TSA RFI. See, e.g., Ex. 1015, 5 (summarizing the
`
`performance criteria and high-level design concepts set forth in TSA RFI);
`
`Ex. 1016, 4 (summarizing the performance criteria and high-level design
`
`concepts set forth in TSA RFI). Exhibits 1017 and 1018 also appear to
`
`reference TSA RFI, and thus appear to be relevant to its public availability.
`
`See, e.g., Ex. 1017, 5 (referencing a “‘checkpoint-friendly’ case,” a design
`
`that “unfolds like a book, with a laptop on one side and gear on the other
`
`side,” and the solicitation of prototypes; quoting TSA Technology Chief
`
`Mike Golden); Ex. 1018, 2 (same). In Exhibit 1019, Mr. Gormick discusses
`
`a “Transportation Security Administration[] RFI” that he saw on
`
`“March 4th, 2008.” Ex. 1019, 145, 147. Thus, Exhibit 1019 appears to be
`
`relevant to the public availability of TSA RFI. In the Institution Decision,
`
`we determined that Petitioner had set forth a reasonable likelihood of
`
`prevailing on its assertion that independent claims 17, 21, 22, 28, 42, 50,
`
`and 57 would have been obvious based on the combination of TSA RFI,
`
`Moor, Hollingsworth, and Miller. Paper 21, 33–41. Thus, the public
`
`availability of TSA RFI, and how such availability affects its qualification as
`
`a prior art reference, is relevant to a claim for which trial has been instituted.
`
`
`
`We do not agree that Petitioner’s reference to the contents of TSA RFI
`
`changes the grounds of unpatentability asserted in the Petition. See
`
`Opp. 6–7. As explained above, the New Exhibits appear to reference
`
`TSA RFI, and thus appear to establish that TSA RFI was publicly available
`
`on a website that was well known to the community interested in the subject
`
`matter of the reference.
`
`5
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`
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`IPR2021-00371
`Patent 8,567,578 B2
`
`
`
`In summary, we are persuaded that Petitioner has met its burden
`
`because it satisfies the requirements of § 42.123(a). We also are persuaded
`
`that Petitioner has met its burden because the supplemental information
`
`Petitioner seeks to submit does not change the grounds of unpatentability
`
`authorized in this proceeding, nor does it change the evidence initially
`
`presented in the Petition to support those grounds of unpatentability.
`
`Instead, such information merely constitutes additional evidence that
`
`allegedly confirms the public accessibility of TSA RFI.
`
`
`
`Finally, we note that our decision to grant Petitioner’s motion to
`
`submit supplement information is not an advisory decision on the
`
`admissibility of such evidence.
`
`III. ORDER
`
`
`
`In consideration of the foregoing, it is ORDERED that Petitioner’s
`
`motion to submit supplemental information under 37 C.F.R § 42.123(a) is
`
`granted with respect to Exhibits 1015–1019.
`
`6
`
`
`
`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
`
`Daniel Kadin
`LATHROP GPM LLP
`daniel.kadin@lathropgpm.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
`josepher.li@armondwilson.com
`forrest.mcclellen@armondwilson.com
`
`7
`
`
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