`571-272-7822
`
`Paper No. 27
`Date: May 19, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`EXTRACTIONTEK SALES LLC,
`Petitioner,
`v.
`GENE POOL TECHNOLOGIES, INC.,
`Patent Owner.
`
`IPR2022-00832 (Patent 9,145,532 B2)
`IPR2022-01011 (Patent 9,144,751 B2)1
`
`
`
`
`
`
`
`
`
`Before JEFFREY N. FREDMAN, CYNTHIA M. HARDMAN, and
`JAMIE T. WISZ, Administrative Patent Judges.
`HARDMAN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Dismissing as Moot Petitioner’s Motion
`to Submit Supplemental Information
`37 C.F.R. § 42.123
`
`
`
`
`
`
`1 This Order addresses the same issues in each of the above-listed
`proceedings. We issue one Order to be filed in each proceeding. The parties
`are not authorized to use this heading style in any subsequent papers.
`
`
`
`
`
`IPR2022-00832 (Patent 9,145,532 B2)
`IPR2022-01011 (Patent 9,144,751 B2)
`
`
`On May 2, 2023, Petitioner filed an authorized, unopposed motion to
`submit as supplemental information excerpts of a deposition transcript of
`Patent Owner’s declarant, Dr. Gregory Miller, taken in a related proceeding
`(IPR2022-00625). See IPR2022-00832, Paper 24 (“Mot.”), at 1. 2 Petitioner
`attached the transcript excerpts as Exhibit A to its motion.
`We dismiss the motion as moot because the transcript excerpts
`Petitioner seeks to submit as supplemental information are already of record.
`Specifically, on April 18, 2023, Petitioner filed the exact same transcript
`excerpts in support of its Reply to Patent Owner’s Response. See Exhibit
`1021.
`To the extent Petitioner is asking the Board to address the propriety of
`Petitioner using in the instant proceeding a deposition transcript taken in a
`related proceeding, the Board declines to do so in the context of this motion.
`See Mot. 1–2 (discussing case law addressing propriety of using a deposition
`transcript in one proceeding that was taken in a co-pending proceeding),
`2 (arguing that “requiring Petitioner to conduct separate depositions to elicit
`the same information from the same witness would place an undue financial
`burden on both parties”). Typically, a motion to submit as supplemental
`information is used to submit evidence “separate and apart from any brief.”
`See IPR2018-01499, Paper 19, at 3. Here, the evidence in question is
`already of record, and was submitted together with Petitioner’s Reply brief.
`We note that Petitioner’s cited case law, in contrast, considered the propriety
`of using the transcript in the context of a motion to exclude. See IPR2016-
`
`
`2 For convenience we cite only to the record in IPR2022-00832. Petitioner
`filed a substantively similar motion in IPR2022-01011. See IPR2022-
`01011, Paper 26 (Mot.).
`
`2
`
`
`
`IPR2022-00832 (Patent 9,145,532 B2)
`IPR2022-01011 (Patent 9,144,751 B2)
`
`01245, Paper 56, at 97–100. The current record does not reflect any
`objections to or motion to exclude the transcript excerpts. See 37 C.F.R.
`§ 42.64.
`
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner’s motion to submit supplemental
`information is dismissed.
`
`3
`
`
`
`IPR2022-00832 (Patent 9,145,532 B2)
`IPR2022-01011 (Patent 9,144,751 B2)
`
`FOR PETITIONER:
`Clement Hayes
`Mark Emde
`BLOCK45 LEGAL
`clement@block45legal.com
`mark.emde@block45legal.com
`
`FOR PATENT OWNER:
`Ryan R. Owens
`SPEARHEAD LEGAL LLP
`ryan.owens@spearheadlegal.com
`
`Daniel C. Pierron
`WIDERMAN MALEK, PL
`dpierron@uslegalteam.com
`
`
`
`
`4
`
`