Trials@uspto.gov
`571-272-7822
`
`
`Paper 45
`Date: June 9, 2023
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WALMART INC. and CURRENT LIGHTING SOLUTIONS, LLC,
`Petitioners,
`v.
`POWER CONCEPTS, LLC
`Patent Owner.
`____________
`
`IPR2022-00534 (Patent 10,837,628 B2)
`IPR2022-00569 (Patent 10,429,041 B2)
`____________
`
`Before KEVIN F. TURNER, JEFFREY S. SMITH, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`SMITH, Administrative Patent Judge.
`
`
`ORDER
`Granting Petitioner’s Motion to Strike
`37 C.F.R. § 42.5
`
`Denying Patent Owner’s Request to File a Motion
`to Submit Supplemental Information
`37 C.F.R § 42.123(b)
`
`
`
`

`

`IPR2022-00534 (Patent 10,837,628 B2)
`IPR2022-00569 (Patent 10,429,041 B2)
`In an email to the Board on May 8, 2023, Patent Owner requested
`authorization to file a motion for additional discovery in IPR2022-00534 and
`IPR2022-00569. Ex 3006. 1 Petitioner opposed Patent Owner’s request because
`“the discovery is being requested just over 1-month before the scheduled oral
`hearings for these matters.” Id. We granted Patent Owner’s request and
`authorized Patent Owner to file a five-page motion for additional discovery. Id.
`Patent Owner filed its five-page Motion on May 12, 2023, Petitioner filed a five-
`page Opposition on May 19, 2023, and Patent Owner filed a two-page Reply on
`May 23, 2023. Papers 26, 29, 31. We denied Patent Owner’s motion for
`additional discovery. Paper 43.
`Along with its Motion, Patent Owner filed, without authorization from the
`Board, two declarations (Exs. 2080 and 2086) and 25 new exhibits (Exs. 2081–
`2085, 2087–2106). On May 15, 2023, Patent Owner filed a Reply in support of its
`contingent Motion to Amend, which cites to several of the unauthorized exhibits.
`Paper 27, Section VI. On June 2, 2023, Patent Owner filed a Sur-Reply to the
`Petition, which cites to several of the unauthorized exhibits. Paper 40, Section III.
`Patent Owner also filed updated lists of exhibits which identify the citation
`information of the unauthorized exhibits. Paper 28; Paper 39.
`In an email to the Board on May 17, 2023, Petitioner requested authorization
`to file a motion to strike the unauthorized declarations (exhibits 2080 and 2086)
`and the unauthorized exhibits. Ex. 3007. Petitioner also requested authorization to
`file a motion to strike paragraph 118 of exhibit 2111 in IPR2022-00534 and
`paragraph 127 of exhibit 2111 in IPR2022-00569, each of which incorporates by
`
`
`
` 1
`
`
`
`
` We reference the record in IPR2022-00534. Similar documents were filed in
`IPR2022-00569.
`
`2
`
`

`

`IPR2022-00534 (Patent 10,837,628 B2)
`IPR2022-00569 (Patent 10,429,041 B2)
`reference exhibits 2080 and 2085. Id. Patent Owner opposed the request. Id. We
`granted Petitioner’s request and authorized Petitioner to file a five-page motion to
`strike. Id. Petitioner filed a Motion to Strike, Patent Owner filed an Opposition to
`the Motion to Strike, and Petitioner filed a Sur-Reply to that Opposition. Papers
`33, 38, 44 (additionally, a confidential version of the Opposition (Paper 37), for
`Board and parties only, was also filed).
`Along with its Opposition, Patent Owner filed unauthorized exhibit 2112
`and a motion to seal unauthorized exhibit 2112 and portions of its Opposition.
`Papers 37, 38. In an email to the Board on June 2, 2022, Petitioner requested
`authorization to file a motion to strike exhibit 2112 and arguments and evidence
`submitted in the Opposition. Ex. 3010. In another email to the Board on June 2,
`2022, Patent Owner requested permission to file a motion to submit supplemental
`information. Ex. 3012. In an additional email to the Board on June 7, 2023, the
`parties agreed to expunge exhibit 2112 and to expunge Patent Owner’s confidential
`opposition to Petitioner’s motion to strike (Paper 37). Ex. 3013. The parties also
`agreed that the Motion to Strike applies to the exhibits cited and relied upon in
`Patent Owner’s Sur-Reply to the Petition, which are the same as those addressed
`by Patent Owner’s Reply to the Motion to Amend, namely, exhibits 2080–2106,
`paragraph 118 of exhibit 2111 in the ’534 Proceeding, and paragraph 127 of
`exhibit 2111 in the ’569 proceeding. Id. Per this Order, Exhibit 2112 and Paper 37
`will be expunged. The Board held a conference call with the parties to discuss
`Patent Owner’s request to file a Motion to Submit Supplemental Information on
`June 8, 2023.
`Turning to exhibits 2080–2106, Petitioner contends that the Board only
`authorized Patent Owner to file a five-page motion for additional discovery, and
`did not authorize Patent Owner to file new declarations and exhibits with its
`3
`
`
`
`
`

`

`IPR2022-00534 (Patent 10,837,628 B2)
`IPR2022-00569 (Patent 10,429,041 B2)
`motion. Paper 33, 1. Patent Owner contends that, because it was authorized to
`submit a five-page motion for additional discovery, its submission of 27 exhibits in
`support of its five-page motion for additional discovery “was authorized to
`substantiate its position that such discovery is in the interests of justice.” Paper 37,
`1; Paper 38, 1.
`Patent Owner is incorrect. We did not authorize Patent Owner to submit 27
`new exhibits at this late stage of the proceedings. Patent Owner never requested
`permission to file the 27 exhibits, despite the opportunity to do so. 2 We therefore
`find that the 27 exhibits were unauthorized and improperly exceeded the scope of
`what we authorized. The 27 unauthorized exhibits are stricken on that basis.
`Petitioner further contends that Patent Owner improperly relies on the
`unauthorized exhibits to support new arguments regarding secondary
`considerations in its Reply in support of the Motion to Amend, which was filed on
`May 15, 2023, only three days after filing the unauthorized exhibits. Paper 33, 4.
`Petitioner also assumes that Patent Owner will improperly rely on the unauthorized
`exhibits in its Sur-Reply to the Petition. 3 Id. Petitioner contends that Dr.
`Bretschneider improperly relies on some of the unauthorized exhibits in his fourth
`declaration. Id. at 3, 5 (citing IPR2022-00534, Ex. 2111 ¶ 118 and IPR2022-
`00569, Ex. 2111 ¶ 127).
`
`
`
` 2
`
`
`
`
` Patent Owner, in order to submit supplemental information at this late stage of
`the proceedings, needed to request authorization to file a motion to submit
`supplemental information, which it did not do. See 37 C.F.R. § 42.123(b); PTAB
`Consolidated Trial Practice Guide at 75–76.
`3 Patent Owner’s Sur-Reply does in fact rely on the unauthorized exhibits. Paper
`40, 20–22; Ex. 3013.
`
`4
`
`

`

`IPR2022-00534 (Patent 10,837,628 B2)
`IPR2022-00569 (Patent 10,429,041 B2)
`Patent Owner contends that its argument regarding secondary considerations
`in its Reply for the Motion to Amend is the same as that in its Motion to Amend.
`Paper 37, 3–4; Paper 38, 3–4. Patent Owner contends that Petitioner has had an
`opportunity, in Petitioner’s Sur-Reply, to respond to the Reply for the Motion to
`Amend. Paper 37, 4; Paper 38, 4. According to Patent Owner, relying on the
`unauthorized exhibits in the Reply for the Motion to Amend was proper because
`Petitioner had notice of the evidence and an opportunity to respond. Paper 37, 3;
`Paper 38, 3.
`Our rules state that the scope of a reply is limited and “may only respond to
`arguments raised in the corresponding opposition.” 37 C.F.R. § 42.23(b).
`Consistent with our rules, our Trial Practice Guide states
`The sur-reply may not be accompanied by new evidence other than
`deposition transcripts of the cross-examination of any reply witness.
`Sur-replies should only respond to arguments made in reply briefs,
`comment on reply declaration testimony, or point to cross-examination
`testimony. . . .
`Generally, a reply or sur-reply may only respond to arguments raised
`in the preceding brief. 37 C.F.R. § 42.23, except as noted above.
`“Respond,” in the context of § 42.23(b), does not mean proceed in a
`new direction with a new approach as compared to positions taken in a
`prior filing. While replies and sur-replies can help crystalize issues for
`decision, a reply or sur-reply that raises a new issue or belatedly
`presents evidence may not be considered. . . .
`It is also improper for a reply to present new evidence (including new
`expert testimony) that could have been presented in a prior filing.
`PTAB Consolidated Trial Practice Guide November 2019 (CTPG), 73–74.
`Because a reply (or sur-reply) is not an opportunity to raise new arguments or
`present belated evidence that could have been (and should have been) provided
`earlier, the Board need not consider such arguments and evidence. Id. In view of
`
`
`
`
`5
`
`

`

`IPR2022-00534 (Patent 10,837,628 B2)
`IPR2022-00569 (Patent 10,429,041 B2)
`these instructions, we expressly cautioned the parties that “[n]o new evidence may
`accompany the reply or sur-reply.” Paper 9, 6.
`
`Our practice guide permits a motion to strike for the very sort of conduct
`that Petitioner complains of here—when “a brief filed by the opposing party [i.e.,
`Patent Owner] raises new issues, is accompanied by belatedly presented evidence,
`or otherwise exceeds the proper scope of reply or sur-reply.” CTPG, at 80. Patent
`Owner’s Reply for the Motion to Amend and Sur-Reply to the Petition do all three.
`With respect to Reply to the Motion to Amend and the Sur-Reply relying on
`the belatedly presented evidence of exhibits 2080–2106, Patent Owner (a) did not
`file a motion to submit additional information, and (b) did not show why the
`unauthorized exhibits reasonably could not have been obtained earlier. Patent
`Owner does not identify any facts or issues in the unauthorized exhibits that did
`not already exist at the time of institution on September 19, 2022. In fact, Patent
`Owner could have submitted the unauthorized exhibits, without permission from
`the Board, between institution and filing the contingent Motion to Amend on
`December 9, 2022, or between institution and filing the Patent Owner Response on
`February 21, 2023. Thus, Patent Owner had sufficient time to submit the
`unauthorized exhibits previously. Indeed, the parties agreed to two extensions of
`the due date for the Patent Owner Response that extended the deadline by over two
`months from December 9, 2022, as set forth in the scheduling order (Paper 9), to
`February 21, 2023. Papers 12, 16. At this late stage of the proceedings, Patent
`Owner does not identify any sufficient reason as to why it did not submit the
`unauthorized exhibits sooner.
`With respect to raising new issues and exceeding the proper scope of the
`Reply for the Motion to Amend and the proper scope of the Sur-Reply to the
`Petition, Patent Owner relies exclusively on the unauthorized exhibits to allege
`6
`
`
`
`
`

`

`IPR2022-00534 (Patent 10,837,628 B2)
`IPR2022-00569 (Patent 10,429,041 B2)
`nexus between Patent Owner’s product and the claims, commercial success, and
`copying. Paper 27, Section VI; Paper 40, Section III. The arguments regarding
`secondary considerations raised by Patent Owner in the Reply for the Motion to
`Amend and the Sur-Reply to the Petition, by virtue of relying exclusively on
`belatedly presented evidence, are new arguments and exceed the proper scope of a
`reply or a sur-reply. Therefore, the “reply (in support of the motion to amend)”
`and the “sur-reply (to the Petition) . . . may not be considered.” CTPG at 74; See
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70
`(Fed. Cir. 2016) (holding that the Board did not err in refusing the reply brief as
`improper under 37 C.F.R. § 42.23(b) because petitioner relied on an entirely new
`rationale to explain why one of skill in the art would have combined the references
`at issue).
`We are fully aware of the importance that objective indicia of
`nonobviousness can play in assessing patentability. See WBIP, LLC v. Kohler Co.,
`829 F.3d 1317, 1328 (Fed. Cir. 2016). But “a patentee bears the burden of
`production with respect to evidence of secondary considerations of
`nonobviousness.” ZUP, LLC v. Nash Mfg., Inc., 896 F.3d 1365, 1373 (Fed. Cir.
`2018); see also Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir.
`2019) (“In order to accord substantial weight to secondary considerations . . . the
`evidence of secondary considerations must have a nexus to the claims. . . . The
`patentee bears the burden of showing that a nexus exists.”). As such, the
`appropriate time for Patent Owner to meaningfully raise such evidence and present
`arguments that incorporate such evidence is in its initial post-institution Response
`and in its Motion to Amend, so as to afford Petitioner time to prepare an adequate
`rebuttal. Our Institution Decision, our Scheduling Order, our rules, and our
`practice guide gave Patent Owner ample notice of the need to explain any objective
`7
`
`
`
`
`

`

`IPR2022-00534 (Patent 10,837,628 B2)
`IPR2022-00569 (Patent 10,429,041 B2)
`indicia of non-obviousness meaningfully in its post-institution Response to the
`Petition, rather than wait until the Sur-Reply to the Petition, and in its Motion to
`Amend, rather than wait until the Reply for the Motion to Amend.
`The reason for limiting the scope of a reply (and a sur-reply) is to promote
`procedural fairness, prevent sandbagging, and mark an end to motion practice.
`Parties are charged with bringing their best arguments forward in a manner that
`provides the opposing party an opportunity to fairly test those arguments.
`Belatedly raising arguments for the first time in the final brief (i.e., here in the
`Reply to the Motion to Amend and the Sur-Reply to the Petition) does not permit
`occasion to challenge those arguments in the absence of an endless parade of
`additional briefing. At this stage in the proceeding—with only days before the
`final hearing—there is no time for Petitioner to cross-examine Patent Owner’s
`declarants or muster its own rebuttal evidence. Accordingly, under the
`circumstances of this case, we are not persuaded that allowing Patent Owner’s new
`arguments and new evidence outweighs the prejudice to Petitioner in having to
`respond to such arguments and evidence on such short notice.
`Finally, with respect to Patent Owner’s request for authorization to file a
`Motion to Submit Supplemental Information, Patent Owner contends that “[b]ased
`on the Confidentiality Order in the underlying litigation, neither Patent Owner nor
`its IPR Counsel were authorized to access or use the confidential documents in this
`proceeding without permission from the District Court.” Ex. 3012. Patent Owner
`contends that because the District Court ordered that “IPR Counsel for Patent
`Owner can access and use the subject documents” on May 31, 2023, “Patent
`Owner could not have reasonably obtained the additional information earlier.” Id.
`However, during the conference call with the parties on June 8, 2023, the parties
`stated that the subject documents were produced to Patent Owner in the District
`8
`
`
`
`
`

`

`IPR2022-00534 (Patent 10,837,628 B2)
`IPR2022-00569 (Patent 10,429,041 B2)
`Court litigation about six months before these IPRs were filed. The parties also
`stated on the call that Patent Owner did not request permission from the District
`Court to access and use the subject documents until early May, 2023, which was
`well after Patent Owner filed its Motion to Amend on December 9, 2022, and well
`after Patent Owner filed its Response to the Petition on February 21, 2023. At this
`late stage of the proceedings, Patent Owner does not identify any sufficient reason
`as to why it did not request permission from the District Court to access and use
`the subject documents sooner. For the reasons discussed in the previous
`paragraph, under the circumstances of this case, we are not persuaded that granting
`Patent Owner’s request outweighs the prejudice to Petitioner in having to respond
`to such evidence on such short notice. Accordingly, we deny Patent Owner’s
`request to file a Motion to Submit Supplemental Information.
`
`
`
`
`
`
`9
`
`

`

`IPR2022-00534 (Patent 10,837,628 B2)
`IPR2022-00569 (Patent 10,429,041 B2)
`ORDER
`It is ORDERED that Petitioner’s Motion to Strike is granted;
` FURTHER ORDERED that Exhibits 2080–2106 and 2112 are stricken and
`will not be considered;
`FURTHER ORDERED that Patent Owner’s request for authorization to file
`a motion to submit exhibit 2112 as supplemental information is denied;
`FURTHER ORDERED that paragraph 118 of Exhibit 2111 in IPR2022-
`00534 is stricken and will not be considered;
`FURTHER ORDERED that paragraph 127 of Exhibit 2111 in IPR2022-
`00569 is stricken and will not be considered;
`FURTHER ORDERED that the confidential version of Patent Owner’s
`opposition to Petitioner’s Motion to Strike (IPR2022-00534, Paper 37; IPR2022-
`00569, Paper 37) is stricken and will not be considered;
`FURTHER ORDERED that, in rendering our Final Written Decision in
`IPR2022-00534, Section VI of Patent Owner’s Reply in support of the Motion to
`Amend (IPR2022-00534, Paper 27) and Section III of Patent Owner’s Sur-Reply to
`the Petition (IPR2022-00534, Paper 40) will not be considered;
`FURTHER ORDERED that, in rendering our Final Written Decision in
`IPR2022-00569, Section V of Patent Owner’s Reply in support of the Motion to
`Amend (IPR2022-00569, Paper 26) and Section III of Patent Owner’s Sur-Reply to
`the Petition (IPR2022-00569, Paper 41) will not be considered; and
`FURTHER ORDERED that Patent Owner’s request for authorization to file
`a Motion to Submit Supplemental Information is denied.
`
`
`
`
`10
`
`

`

`IPR2022-00534 (Patent 10,837,628 B2)
`IPR2022-00569 (Patent 10,429,041 B2)
`FOR PETITIONER:
`Frank Angileri
`John Rondini
`Thomas Cunningham
`BROOKS KUSHMAN P.C.
`fangileri@brookskushman.com
`jrondini@brookskushman.com
`tcunningham@brookskushman.com
`
`FOR PATENT OWNER:
`Timothy St. Clair
`Tasneem Dharamsi
`Amy Allen Hinson
`PARKER POE ADAMS & BERNSTEIN LLP
`timstclair@parkerpoe.com
`tasneemdharamsi@parkerpoe.com
`amyhinson@parkerpoe.com
`lb
`
`
`
`
`11
`
`