Trials@uspto.gov
`571-272-7822
`
`Paper 18
`Date: August 25, 2022
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TRILLER, INC.,
`Petitioner,
`v.
`TIKTOK PTE. LTD.,
`Patent Owner.
`
`IPR2022-00179 (Patent 9,648,132 B2)
`IPR2022-00180 (Patent 9,992,322 B2)1
`
`Before JOHN D. HAMANN, MICHAEL T. CYGAN, and
`JULIET MITCHELL DIRBA, Administrative Patent Judges.
`HAMANN, Administrative Patent Judge.
`
`ORDER
`Denying Petitioner’s Motion to Submit Supplemental Information
`37 C.F.R. § 42.123(a)
`
`
`
`
`
`
`
`1 The parties are not permitted to use this style unless authorized by the
`Board.
`
`
`
`
`571-272-7822
`
`Paper 18
`Date: August 25, 2022
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TRILLER, INC.,
`Petitioner,
`v.
`TIKTOK PTE. LTD.,
`Patent Owner.
`
`IPR2022-00179 (Patent 9,648,132 B2)
`IPR2022-00180 (Patent 9,992,322 B2)1
`
`Before JOHN D. HAMANN, MICHAEL T. CYGAN, and
`JULIET MITCHELL DIRBA, Administrative Patent Judges.
`HAMANN, Administrative Patent Judge.
`
`ORDER
`Denying Petitioner’s Motion to Submit Supplemental Information
`37 C.F.R. § 42.123(a)
`
`
`
`
`
`
`
`1 The parties are not permitted to use this style unless authorized by the
`Board.
`
`
`
`
`
`IPR2022-00179 (Patent 9,648,132 B2)
`IPR2022-00180 (Patent 9,992,322 B2)
`INTRODUCTION
`I.
`We authorized Triller, Inc. (“Petitioner”) to file a Motion to Submit
`
`Supplemental Information (Paper 11, 2 “Motion”), TikTok Pte. Ltd. (“Patent
`Owner”) to file an Opposition (Paper 12, “Opp.”) to the Motion, and
`Petitioner to file a Reply (Paper 14, “Reply”) to the Opposition. In its
`Motion, Petitioner seeks authorization to submit the Supplemental
`Declaration of Michael Shamos, Ph.D. (Exhibit 1031). Motion 1. Upon
`consideration of the papers, and for the reasons stated below, we deny the
`Motion. 3
`
`II. ANALYSIS
`The requirements for filing a motion for the submission of
`
`supplemental information once an inter partes review (“IPR”) has been
`instituted—as is the case here (Paper 9, “Dec. on Inst.”)—are as follows:
`“(1) [a] request for the authorization to file a motion to submit supplemental
`information is made within one month of the date the trial is instituted,” and
`“(2) [t]he supplemental information must be relevant to a claim for which
`the trial has been instituted.” 37 C.F.R. § 42.123(a). Petitioner meets both
`of these requirements, which is not in dispute. Motion 2; see generally Opp.
`
`These requirements, however, only set forth the conditions to permit
`filing a motion. Section 42.123(a) does not provide that we must grant the
`motion so long as it is timely and relevant. Redline Detection, LLC v. Star
`Envirotech, Inc., 811 F.3d 435, 445 (Fed. Cir. 2015). “Rather, timeliness
`and relevancy provide additional requirements that must be construed within
`
`
`2 The papers cited herein are substantively identical and have the same paper
`numbers for both cases.
`3 We previously informed the parties that Petitioner’s Motion was denied.
`This Order formalizes that denial and provides our reasoning.
`
`2
`
`
`
`IPR2022-00179 (Patent 9,648,132 B2)
`IPR2022-00180 (Patent 9,992,322 B2)
`the overarching context of the PTAB’s regulations governing IPR and
`general trial proceedings.” Id. at 446. Moreover, our “guiding principle
`. . . in making any determination is to ‘ensure efficient administration of the
`Office and the ability of the Office to complete IPR proceedings in a timely
`manner.’” Id. at 445 (citing 35 U.S.C. § 316(b)). Accordingly, when
`determining if a party may submit supplemental information, it is important
`to consider how supplemental information fits within the context of inter
`partes reviews.
`
`Parties generally submit evidence to support positions in a brief.
`What makes supplemental information unique is that it is a submission of
`evidence itself, separate and apart from any brief. Petitioner bears the
`burdening of establishing why we should allow the submission of such
`evidence now. 37 C.F.R. § 42.20(c).
`
`Here, Petitioner submits that the supplemental declaration addresses
`three categories of issues:
`(1) issues unanticipated by Petitioner, raised by Patent Owner for
`the first time in the Patent Owner Preliminary Response, and
`addressed by the Board in the Institution Decision (“Category
`1”), (2) issues of inherency which the Board addressed in the
`Institution Decision and requested the parties to further address
`during trial (“Category 2”), and (3) passages identified for the
`first time in the Patent Owner Preliminary Response (and then
`addressed in the Institution Decision) alleged to disclose claimed
`subject matter in the May 2007 PCT application priority
`document (“Category 3”).
`Motion 1. In short, Petitioner now seeks to provide arguments via the
`supplemental declaration for issues addressed by Patent Owner in its
`Preliminary Response or by us in the Decision on Institution. Id. We view
`
`3
`
`
`
`IPR2022-00179 (Patent 9,648,132 B2)
`IPR2022-00180 (Patent 9,992,322 B2)
`this as unwarranted.4 See Merck Sharp & Dohme Corp. v. Microspherix
`LLC, IPR2018-00393, Paper 21 at 3 (PTAB Sept. 10, 2018) (“The provision
`for submitting supplemental information is not intended to offer a petitioner
`a routine avenue for bolstering deficiencies in a petition raised by a patent
`owner in a preliminary response.”); American Well Corp. v. TelaDocHealth,
`Inc., IPR2021-00748, Paper 23 at 6–7 (PTAB Feb. 28, 2022) (gathering
`cases and finding that the Board has denied motions for supplemental
`information “where the petitioner sought to use the supplemental
`information to refine or bolster challenges originally presented in the
`petition, based on information in the preliminary response or institution
`decision”) (citations omitted).
`
`Moreover, Petitioner has not shown good cause for submitting
`supplemental information to address these issues. First, we are not
`persuaded by Petitioner’s argument that we should allow the supplemental
`declaration now so that Patent Owner would be able to cross-examine
`Dr. Shamos on both his initial and supplemental declarations at the same
`time. See, e.g., Motion 6 (citing Pacific Market Int’l LLC v. Ignite USA,
`LLC, IPR2014-00561, Paper 23 at 4 (PTAB Dec. 2, 2014)). As Patent
`Owner argues, “there is currently no paper of record that cites to
`Dr. Shamos’s supplemental declaration,” and “[i]t is therefore unclear how
`[Petitioner] plans to rely on this additional testimony.” Opp. 6. Second, we
`are not persuaded that allowing the supplemental declaration now would
`decrease the number of depositions, as Petitioner argues. Motion 6 (citing
`
`
`4 Our Order does not reach whether the proffered supplemental declaration
`(Exhibit 1031) is of a proper scope to be submitted with Petitioner’s Reply.
`Rather, we will address that issue, if needed, based on our Rules concerning
`reply evidence at that time.
`
`4
`
`
`
`IPR2022-00179 (Patent 9,648,132 B2)
`IPR2022-00180 (Patent 9,992,322 B2)
`Pacific Market, Paper 23 at 4). Rather, we agree with Patent Owner that
`Petitioner “has made no assurances that it will not submit additional
`declaration testimony from Dr. Shamos (or another expert) with its
`Petitioner’s Reply,” which “may require further deposition with respect to
`that testimony.” Opp. 7; see also Reply 2 (acknowledging that “there may
`well be two depositions of Dr. Shamos”). Third, we find unavailing
`Petitioner’s argument that by allowing the supplemental declaration now that
`“Patent Owner will have ‘the opportunity to provide testimony from its own
`expert witness in response to [Dr. Shamos’s] testimony as part of its Patent
`Owner Response.’” E.g., Motion 6 (quoting Pacific Market, Paper 23 at 4)
`(alteration in original). Patent Owner’s opposition to Petitioner’s Motion
`shows that Patent Owner does not view this opportunity as a sufficient
`reason for allowing the supplemental declaration now. We will not
`second-guess Patent Owner as to whether it should forego this opportunity.
`
`In addition, we note that although Petitioner relies on reasoning from
`Pacific Market, Petitioner does not address substantive changes to the
`briefing process since Pacific Market was entered. In particular, Petitioner
`does not account for what impact, if any, the following changes have on the
`cited reasoning from Pacific Market: (i) a petitioner, in its reply brief, may
`address issues discussed in the institution decision; and (ii) a patent owner
`may file a sur-reply as a matter of right. See Consolidated Trial Practice
`Guide (“CTPG”) (Nov. 2019)5, 73.
`
`In addition, we do not view our statements in the institution decision
`that the parties should consider addressing certain issues during trial as
`inviting supplemental information, as Petitioner argues. See Motion 9–10;
`
`5 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`5
`
`
`
`IPR2022-00179 (Patent 9,648,132 B2)
`IPR2022-00180 (Patent 9,992,322 B2)
`Dec. on Inst. 23, 27. Rather, these statements are directed at the normal
`briefing process, and do not justify allowing supplemental information. Dec.
`on Inst. 23, 27.
`
`In addition, we find unavailing Petitioner’s argument that “Patent
`Owner’s reason for opposing this motion is to attempt to preclude Petitioner
`from ever making the contingent obviousness argument.” Reply 3.
`Generally, a petitioner may submit rebuttal evidence (e.g., a new expert
`declaration) in support of its reply, as long as it does not raise a new issue.
`See CTPG 73–74. 6 And to the extent that a new expert declaration
`unjustifiably raises a new issue, we generally would not allow such a
`declaration as supplemental information. Merck, Paper 21 at 3; Laboratoire
`Francais Du Fractionnment et Des Biotechnologies S.A. v. Novo Nordisk
`Healthcare AG, IPR2017-00028, Paper 22 at 4 (PTAB June 13, 2017).
`
`Lastly, we note that the parties dispute whether Petitioner should have
`anticipated the issues that Petitioner now seeks to address via Dr. Shamos’s
`supplemental declaration. We view this issue of anticipation as inapposite
`for purposes of this Order in light of our above findings.
`III. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner’s Motion to Submit Supplemental
`Information (Paper 11) in each of IPR2022-00179 and IPR2022-00180 is
`denied; and
`FURTHER ORDERED that Exhibit 1031 shall be expunged from the
`record in IPR2022-00179 and in IPR2022-00180.
`
`6 We note that a petitioner, in its reply brief, may address issues discussed in
`the institution decision. CTPG, 73. In addition, a petitioner may respond to
`new claim construction issues raised by a patent owner. Id. at 44–45.
`
`6
`
`
`
`IPR2022-00179 (Patent 9,648,132 B2)
`IPR2022-00180 (Patent 9,992,322 B2)
`For PETITIONER:
`Chad E. Nydegger
`Brian N. Platt
`David R. Todd
`WORKMAN NYDEGGER
`cnydegger@wnlaw.com
`bplatt@wnlaw.com
`dtodd@wnlaw.com
`
`For PATENT OWNER:
`W. Karl Renner
`Dan Smith
`Patrick J. Bisenius
`Craig A. Deutsch
`Kim H. Leung
`FISH & RICHARDSON P.C
`IPR50048-0015IP1@fr.com
`PTABInbound@fr.com
`
`
`
`7
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
