Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`
` Paper 45
` Entered: September 14, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PNC BANK, N.A.,
`Petitioner,
`
`v.
`
`UNITED SERVICES AUTOMOBILE ASSOCIATION,
`Patent Owner.
`____________
`
`IPR2021-01077
`Patent 10,621,559 B1
`___________
`
`
`
`Before KRISTEN L. DROESCH, TERRENCE W. McMILLIN, and
`JULIET MITCHELL DIRBA, Administrative Patent Judges.
`
`DIRBA, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting Patent Owner’s Motion to Submit Supplemental Information
`37 C.F.R. § 42.123(b)
`
`
`
`
`
`
`
`
`
`
`

`

`IPR2021-01077
`Patent 10,621,559 B1
`
`
`On August 23, 2022, pursuant to our authorization, Patent Owner filed
`a Motion to Submit Supplemental Information. Paper 40 (“Mot.”). When
`requesting authorization to file its Motion via email, Patent Owner attached
`proposed Exhibits 2032 and 2033, which include testimony from co-pending
`district court litigations between the parties. Specifically, Exhibit 2032
`consists of 22 pages of trial testimony of Omid Kia, Ph.D., and nine
`demonstrative slides from United Services Automobile Association v. PNC
`Bank, N.A., No. 2:20-cv-319-JRG (E.D. Tex.), and Exhibit 2033 consists of
`21 pages of deposition testimony of David Peterson from United Services
`Automobile Association v. PNC Bank, N.A., No. 2:21-cv-246-JRG (E.D.
`Tex.). Petitioner filed an Opposition to Patent Owner’s Motion. Paper 42
`(“Opp.”).
`According to Patent Owner, Dr. Kia and Mr. Peterson are validity
`expert witness for Petitioner in the district court litigations. Mot. 1. Patent
`Owner contends that the testimony it requests to submit relates to “patents in
`the same family as the ’559 patent” and contradicts the arguments Petitioner
`makes in this proceeding regarding motivation to combine and reasonable
`expectation of success. Id.
`According to our rules,
`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). Additionally, “[t]he supplemental information must
`be relevant to a claim for which the trial has been instituted.” Id. at
`§ 42.123(a)(2). As noted above, Patent Owner requested, and received,
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`IPR2021-01077
`Patent 10,621,559 B1
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`authorization to file a motion to submit supplemental information. The
`parties dispute whether the supplemental information reasonably could have
`been obtained earlier, whether it is relevant to a claim for which we
`instituted trial, and whether our consideration of this information would be
`in the interests-of-justice.
`As to whether the information could have been obtained earlier,
`Patent Owner argues that Dr. Kia’s testimony was elicited on May 12, 2022,
`and Mr. Peterson’s testimony was obtained on June 1, 2022, after Patent
`Owner’s Response was filed on May 5, 2022. Mot. 3. Patent Owner argues
`that Petitioner’s Reply, filed on August 11, 2022, cites to the trial transcript
`and an expert deposition from one of the district court litigations. Id. at 5
`(citing Exs. 1163, 1164). Patent Owner also argues that, prior to filing the
`Reply, Petitioner notified Patent Owner of its intent to submit those exhibits
`and Patent Owner notified Petitioner that it would seek to submit proposed
`Exhibits 2032 and 2033 as supplemental information to provide us with
`context. Id.
`Petitioner responds that Patent Owner’s delay in seeking to submit
`this information is unjustified because it is cumulative of Dr. Kia’s and
`Mr. Peterson’s expert reports from the district court litigations, which were
`served on Patent Owner before it filed the Patent Owner Response. Opp. 1,
`3–4. Petitioner argues that Patent Owner introduced parts of Dr. Kia’s
`report in this proceeding and cited “opinions consistent with” the testimony
`sought to be introduced now. Id. at 4 (citing Exs. 2018, 2030). Petitioner
`states that Mr. Peterson’s testimony is consistent with his expert report. Id.
`We are persuaded that Patent Owner timely seeks to introduce
`supplemental information. Dr. Kia’s trial testimony and Mr. Peterson’s
`deposition testimony did not exist at the time Patent Owner filed its Patent
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`IPR2021-01077
`Patent 10,621,559 B1
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`Owner Response. Thus, Patent Owner could not have submitted them at that
`point. 1 See Ultratec, Inc. v. CaptionCall, LLC, 872 F.3d 1267, 1272 (Fed.
`Cir. 2017) (Jury trial testimony elicited after briefing before the Board “is
`not evidence that could have been located earlier through a more diligent or
`exhaustive search; it did not exist during the IPR discovery period. . . . That
`inconsistent testimony did not exist sooner and thus could not have been
`proffered to the Board sooner.”). Patent Owner also cannot, as a matter of
`right, submit such information along with its sur-reply. See Consolidated
`Trial Practice Guide (“TPG”)2, 73 (“The sur-reply may not be accompanied
`by new evidence other than deposition transcripts of the cross-examination
`of any reply witness.”). Thus, Patent Owner was correct to seek to submit
`this information as supplemental information. Moreover, Patent Owner
`states that this information provides context for other testimony submitted
`with Petitioner’s Reply, which was filed on August 11, 2022. See Mot. 5.
`As to the relevance of the proposed supplemental information, Patent
`Owner argues that “it involves expert testimony offered by [Petitioner]
`regarding whether a [person of ordinary skill in the art] would have been
`able to solve the challenges with capturing check images using a mobile
`device in 2006.” Mot. 3. Patent Owner argues that Dr. Kia testified that
`capturing check images with a mobile phone was a “paradigm shift” that
`involved certain specific problems, and an ordinary artisan would not have
`
`
`1 That Patent Owner had the corresponding expert reports does not detract
`from the fact that the testimony at issue did not exist when the Response was
`filed on May 5, 2022. In particular, we are not persuaded that the testimony
`is cumulative of those reports, and we question whether the expert reports
`would be inadmissible hearsay in this proceeding.
`2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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`IPR2021-01077
`Patent 10,621,559 B1
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`had the knowledge to deal with these challenges. Id. at 3–4 (emphasis
`omitted). Patent Owner argues that Mr. Peterson admitted that the primary
`reference in this proceeding “did not teach how to solve problems associated
`with using a handheld digital camera” and testified that replacing a scanner
`with a mobile camera was not predictable. Id. at 4.
`Petitioner responds that the testimony relates to different patents with
`different claims. Opp. 2. In addition, Petitioner submits that the testimony
`relates to enablement, which is not at issue in this proceeding, and a
`reference need not be enabled under 35 U.S.C. § 315. Id. Petitioner also
`contends that Dr. Kia opined that the ’559 patent was obvious over the prior
`art asserted in this proceeding. Id. at 3 (citing Ex. 2018, 13).
`Having considered the parties’ arguments, we determine that Patent
`Owner has met the threshold required to show that the proposed
`supplemental information has relevance in this proceeding, and that Patent
`Owner has shown that it would be in the interests of justice to grant the
`Motion. Although we will not be able to discern the relevance of this
`information (and the weight to assign to it) until the conclusion of trial, we
`are persuaded that we should allow Patent Owner to introduce this evidence
`so that it can be evaluated, as we are persuaded that the testimony may be
`inconsistent with contentions advanced by Petitioner in this proceeding.
`Moreover, we recognize that neither Dr. Kia nor Mr. Peterson offer expert
`testimony in this proceeding, but if Petitioner is offering conflicting
`testimony in two fora, albeit by different experts, that might impact the
`credibility of the testimony of Petitioner’s declarant in this proceeding. We
`recognize that Dr. Kia’s and Mr. Peterson’s testimony was not offered on the
`precise point on which Patent Owner seeks to use that testimony.
`Nevertheless, the state of the art and the skill level and knowledge of an
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`IPR2021-01077
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`ordinarily skilled artisan is relevant to the parties’ obviousness arguments in
`this proceeding. Finally, we determine that reviewing the testimony would
`place minimal additional burden on the Board. Cf. Ultratec, 872 F.3d at
`1273.
`In sum, Patent Owner has explained sufficiently why the supplemental
`information reasonably could not have been obtained earlier and has shown
`that it is in the interests-of-justice to allow submission of the supplemental
`information.
`Consistent with Ultratec, we have not reviewed in detail or weighed
`the supplemental information Patent Owner seeks to introduce, as it is not
`yet part of the record. Cf. Ultratec, 872 F.3d at 1273 (“In this case, the
`Board denied a request to admit evidence without ever seeing the evidence it
`was denying; it never reviewed Mr. Occhiogrosso’s testimony because
`Ultratec was not allowed to submit that evidence with its request to file a
`motion to supplement the record.”), 1274 (“We are also prohibited from
`viewing Mr. Occhiogrosso’s testimony because it is not part of the record.”).
`Thus, this decision should not be construed as commenting on the credibility
`of any of the declarants, the weight that we ultimately will give to their
`testimony, or the admissibility of any such evidence properly challenged.
`We also take this opportunity to remind Patent Owner that “[s]ur-
`replies should only respond to arguments made in reply briefs, comment on
`reply declaration testimony, or point to cross-examination testimony.”
`TPG 73.
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`IPR2021-01077
`Patent 10,621,559 B1
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`Accordingly, it is:
`ORDERED that Patent Owner’s Motion to Submit Supplemental
`Information (Paper 40) is granted; and
`FURTHER ORDERED that Patent Owner is authorized to file
`proposed Exhibits 2032 and 2033.
`
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`IPR2021-01077
`Patent 10,621,559 B1
`
`
`
`For PETITIONER:
`
`Monica Grewal
`David L. Cavanaugh
`Jonathan Knight
`R. Gregory Israelsen
`Scott Bertulli
`Amy L. Mahan
`WILMER CUTLER PICKERING HALE AND DORR LLP
`monica.grewal@wilmerhale.com
`david.cavanaugh@wilmerhale.com
`jonathan.knight@wilmerhale.com
`greg.israelsen@wilmerhale.com
`scott.Bertulli@wilmerhale.com
`amy.mahan@wilmerhale.com
`
`
`
`For PATENT OWNER:
`
`Anthony Q. Rowles
`Michael R. Fleming
`IRELL & MANELLA LLP
`trowles@irell.com
`mfleming@irell.com
`
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