Trials@uspto.gov
`571-272-7822
`
`Paper 14
`Entered: November 10, 2022
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Patent Owner.
`____________
`
`IPR2022-00343
`Patent 9,300,432 B2
`____________
`
`
`
`
`Before SHARON FENICK, STEVEN M. AMUNDSON, and
`STEPHEN E. BELISLE, Administrative Patent Judges.
`
`FENICK, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting Petitioner’s Motion to Submit Supplemental Information
`37 C.F.R. § 42.123(a)
`
`
`
`
`
`
`571-272-7822
`
`Paper 14
`Entered: November 10, 2022
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Patent Owner.
`____________
`
`IPR2022-00343
`Patent 9,300,432 B2
`____________
`
`
`
`
`Before SHARON FENICK, STEVEN M. AMUNDSON, and
`STEPHEN E. BELISLE, Administrative Patent Judges.
`
`FENICK, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting Petitioner’s Motion to Submit Supplemental Information
`37 C.F.R. § 42.123(a)
`
`
`
`
`
`
`
`IPR2022-00343
`Patent 9,300,432 B2
`
`
`
`Apple Inc. (“Petitioner”) filed a petition for inter partes review
`challenging claims 1–18 (“challenged claims”) of U.S. Patent 9,300,432 B2
`(Ex. 1001 (“’432 patent”)). Paper 2 (“Pet.” or “Petition”). Petitioner relied
`on a declaration of Dr. R. Michael Buehrer (Ex. 1003). See, e.g., Pet. 11
`(citing Ex. 1003 ¶¶ 63–68), 14–16 (citing Ex. 1003 ¶¶ 76–84).
`Telefonaktiebolaget LM Ericsson (“Patent Owner”) did not file a
`preliminary response.
`In our Institution Decision, we identified an ambiguity relating to the
`claim term “radio channel,” and noted that “the parties are encouraged to
`examine this issue and determine whether to submit evidence and argument
`regarding this term.” Paper 6 (Institution Decision or “Dec. on Inst.”), 14,
`17–18.
`Petitioner requested and was granted authorization to file a motion to
`submit supplemental information in the form of a supplemental declaration
`of Dr. Buehrer which “would offer discussion of the term ‘radio channel’
`and an explanation of how channels such as CPICH [common pilot channel]
`and HS-DSCH [high speed downlink shared channel], which are referenced
`in the petition . . . are interrelated.” Ex. 3001 (Oct. 13, 2022 email from
`Petitioner); Paper 8 (granting authorization). Patent Owner opposed
`Petitioner’s request and was granted authorization to file an opposition.
`Paper 8. Petitioner filed its Motion to Submit Supplemental Information,
`Paper 9 (“Motion” or “Mot.”), along with the supplemental information it
`desires to submit: a supplemental declaration of Dr. Buehrer (Exhibit 1020)
`and materials cited therein (Exhibits 1021–1028). Patent Owner filed a
`
`2
`
`
`
`IPR2022-00343
`Patent 9,300,432 B2
`
`Response in Opposition to Petitioner’s Motion. Paper 12 (“Opposition” or
`“Opp.”).
`The supplemental information, submitted as Ex. 1020, purports to
`“include[] supplemental testimony regarding how certain features recited in
`claims 1, 11, and 15 of the ’432 patent would be understood by a POSITA in
`view of the ’432 patent and in the context of the prior art combinations
`relied upon in the Petition and in Dr. Buehrer’s original declaration.”
`Mot. 1.
`Upon consideration of the documents and the parties’ arguments, and
`for the reasons stated below, Petitioner’s motion is granted.
`
`
`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 is 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 13, 2022. Petitioner requested
`authorization to file a motion to submit supplemental information on
`October 13, 2022, and thus, 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), the supplemental information Petitioner seeks to admit appears
`to be relevant to the grounds of unpatentability it asserted for claims 1–5 and
`
`3
`
`
`
`IPR2022-00343
`Patent 9,300,432 B2
`
`11–18. While we preliminarily noted an issue with respect to Petitioner’s
`arguments with respect to these claims (see, e.g., Dec. on Inst. 17) we
`instituted trial on the basis of claims 6–10. Dec. on Inst. 15–26; SAS Inst.,
`Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); PGS Geophysical AS v.
`Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting 35 U.S.C. § 314 as
`requiring “a simple yes-or-no institution choice respecting a petition,
`embracing all challenges included in the petition”).
`Petitioner argues that its supplemental information does not change
`the grounds of unpatentability authorized in the proceeding or seek to rely
`on new prior art or uncited portions of relied-on prior art, but only “clarifies
`how a POSITA would have understood the term ‘radio channel’ and how the
`recitation of this term is rendered obvious by the description of and
`reference to the interrelated logical channels, CPICH and HS-DSCH, in the
`Petition and in [Dr. Buehrer’s original declaration].” Mot. 4–5. Petitioner
`further argues that “Patent Owner stands to benefit in being able to address
`the testimony provided” in its Patent Owner Response. Id.
`Patent Owner argues that Petitioner is attempting to cure
`inconsistencies in its prior art mapping. Opp. 1. Patent Owner further
`argues that merely meeting the requirements of § 42.123(a) could not justify
`a grant of leave to supplement, because were we to grant all supplements,
`word constraints would be meaningless, as parties could freely supplement
`with any relevant information. Id. at 2. Patent Owner argues that Petitioner
`could file this supplemental declaration with the Reply, and that the
`declaration exceeds the issue we identified in our Institution Decision and
`attempts to cure deficiencies in the Petition. Id. at 1–5. Patent Owner
`argues that the supplemental information unfairly prejudices Patent Owner’s
`
`4
`
`
`
`IPR2022-00343
`Patent 9,300,432 B2
`
`ability to prepare a responsive filing because of its volume, and because
`Patent Owner must respond within the word constraints for its responsive
`filing. Id. at 4–5.
`Patent Owner’s arguments are not persuasive. Petitioner does not, in
`this supplement, circumvent page limits for the Petition and Reply; our rules
`prohibit incorporation by reference, so if the evidence submitted is not
`explained in the Reply, it may not be considered. 37 C.F.R. § 42.6(a)(3);
`Cisco Sys., Inc. v. C-Cation Techs., LLC, IPR2014-00454, Paper 12 at 10
`(PTAB Aug. 29, 2014) (informative). Additionally, we do not at present
`discern where a new rationale has been raised or evidence provided which
`would only support such a new rationale in the submission. To the extent
`that this supplemental information is used to raise a new issue in Reply,
`Patent Owner can move to strike the brief or the improper parts of it. See
`Patent Trial and Appeal Board Consolidated Trial Practice Guide, 80–81
`(Nov. 2019) (“CTPG”) (available at
`www.uspto.gov/TrialPracticeGuideConsolidated).
`Patent Owner argues that the motion should be denied because
`Petitioner “does not even attempt to explain its failure to include this
`[supplemental] information in its Petition.” Opp. 1 (citing Redline
`Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 445 (Fed. Cir. 2015).
`In Redline Detection, however, the Federal Circuit ruled that whether
`supplemental information reasonably could not have been submitted with the
`petition is a factor that may be considered in evaluating a motion to submit
`the supplemental information; this does not stand for the proposition that a
`petitioner filing a motion under § 42.123(a) must demonstrate the
`supplemental information could not have been submitted with the petition as
`
`5
`
`
`
`IPR2022-00343
`Patent 9,300,432 B2
`
`it would be required to do under § 42.123(b). Redline Detection, 811 F.3d at
`443–45; 37 C.F.R. § 42.123(b) (“A party seeking to submit supplemental
`information more than one month after the date the trial is instituted . . .
`must show why the supplemental information reasonably could not have
`been obtained earlier.”).
`Here, we raised a “possible ambiguity,” and Petitioner seeks to
`supplement the record with additional evidence relating to that subject. Dec.
`to Inst. 14. On the record presently before us, we find that Petitioner is
`attempting to provide evidence relating to arguments made in the Petition,
`not to change its theories of unpatentability.
`For the foregoing reasons, Petitioner has met its burden of proving it
`is entitled to the requested relief. Accordingly, Petitioner’s motion to submit
`supplemental information is granted.
`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; and
`FURTHER ORDERED that Exhibits 1020–1028 shall be entered as
`evidence into the record.
`
`6
`
`
`
`IPR2022-00343
`Patent 9,300,432 B2
`
`For PETITIONER:
`
`Walter Renner
`Jeremy Monaldo
`Hyun Jin In
`Karan Jhurani
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`jjm@fr.com
`in@fr.com
`jhurani@fr.com
`
`
`For PATENT OWNER:
`
`Chad Walters
`Melissa Muenks
`BAKER BOTTS L.L.P.
`chad.walters@bakerbotts.com
`Melissa.muenks@bakerbotts.com
`
`
`
`
`7
`
`
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