`571-272-7822
`
`
`
`
`
`
`Paper 24
`Entered: January 18, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EVAPCO DRY COOLING, INC.,
`Petitioner,
`
`v.
`
`SPG DRY COOLING USA LLC,
`Patent Owner.
`
`____________
`
`IPR2021-00687 (Patent 10,551,126 B2)
`IPR2021-00688 (Patent 10,527,354 B2)1
`____________
`
`
`
`Before NEIL T. POWELL, GEORGE R. HOSKINS, and
`SEAN P. O’HANLON, Administrative Patent Judges.
`
`O’HANLON, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`1 This Order applies to each of the listed cases. The parties are not
`authorized to use this caption for any subsequent papers absent prior
`authorization from the Board.
`
`
`
`
`
`IPR2021-00687 (Patent 10,551,126 B2)
`IPR2021-00688 (Patent 10,527,354 B2)
`
`
`I. INTRODUCTION
`On October 26, 2021, we authorized Petitioner via email to file a
`
`motion to submit supplemental information under 37 C.F.R. § 42.123(a).
`See Ex. 3002. 2 On November 9, 2021, Petitioner filed its Motion to Submit
`Supplemental Information. Paper 14 (“Motion” or “Mot.”). Patent Owner
`did not file an opposition to the Motion. For the reasons set forth below, we
`grant the Motion.
`
`II. DISCUSSION
`Petitioner seeks to submit as supplemental information Exhibit 1021,
`
`a second declaration of Jacob Robert Munford. Mot. 1. Petitioner argues
`that “Exhibit 1021 provides further testimony supporting the public
`accessibility and authenticity of the [Kröger] reference relied upon in the
`challenges set forth in the . . . Petition, with supporting appendices.” Id.
`at 2. Petitioner asserts that “Patent Owner does not oppose this motion.” Id.
`at 1.
`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 September 24, 2021. Paper 11. Petitioner
`requested authorization to file the Motion via email sent on Monday,
`
`2 Citations herein refer to papers and exhibits filed in IPR2021-00687.
`Corresponding documents were filed in IPR2021-00688.
`
`2
`
`
`
`IPR2021-00687 (Patent 10,551,126 B2)
`IPR2021-00688 (Patent 10,527,354 B2)
`
`October 25, 2021. See Ex. 3002. Therefore, 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.”). Exhibit 1021 is a declaration of
`Jacob Robert Munford, who provides testimony regarding the publication
`date of the Kröger reference relied upon in the Petition. See, e.g., Ex. 1021
`¶¶ 8–9. We agree with Petitioner that Exhibit 1021 is relevant to a claim for
`which trial has been instituted.
`
`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.
`
`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 Exhibit 1021.
`
`3
`
`
`
`IPR2021-00687 (Patent 10,551,126 B2)
`IPR2021-00688 (Patent 10,527,354 B2)
`
`For PETITIONER:
`Hyun Jin In
`Timothy W. Riffe
`Ralph Phillips (Pro Hac Vice)
`Sun Young Park (Pro Hac Vice)
`Fish & Richardson P.C.
`IPR48153-0002IP1@fr.com
`PTABInbound@fr.com
`in@fr.com
`riffe@fr.com
`RPhillips@fr.com
`APark@fr.com
`For PATENT OWNER:
`Timothy J. May
`Houtan K. Esfahani
`Joshua L. Goldberg
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`timothy.may@finnegan.com
`houtan.esfahani@finnegan.com
`joshua.goldberg@finnegan.com
`
`4
`
`
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