`571.272.7822
`
`
`
`
`
`
`
` Paper No. 16
`
` Entered: January 3, 2024
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`
`SMA SOLAR TECHNOLOGY AMERICA, LLC,
`Petitioner,
`v.
`TIGO ENERGY, INC.,
`Patent Owner.
`___________________
`
`IPR2023-00879
`Patent 9,584,021 B2
`___________________
`
`
`Before KRISTINA M. KALAN, ELIZABETH M. ROESEL, and
`JULIA HEANEY, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Petitioner’s Motion for Late Submission of
`Supplemental Information
`37 C.F.R. § 42.123(b)
`
`
`
`
`
`
`
`
`
`
`IPR2023-00879
`Patent 9,584,021 B2
`
`
`On December 20, 2023, with Board authorization, Petitioner filed a
`Motion to Submit Supplemental Information more than one month after the
`date of institution of the present inter partes review. Paper 13 (“Mot.” or
`“Motion”). Patent Owner, although authorized to do so, did not file an
`opposition to the Motion.
`Petitioner explains that United States District Court for the District of
`Delaware, in a related proceeding involving U.S. Patent No. 9,584,021 B2
`(“the ’021 Patent”), “issued a Markman opinion and order that included
`claim construction of claim terms from the ’021 Patent” on December 4,
`2023. Mot. 1. The Board instituted this inter partes proceeding on
`November 6, 2023. Paper 9. Petitioner seeks to submit “an exhibit for the
`Markman opinion, and the Markman order, and an updated exhibit list” in
`the present proceeding. Id.
`A motion for the late submission of supplemental information is
`governed by 37 C.F.R. § 42.123(b), which requires the movant to 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.” Moreover, as stated in 37 C.F.R. § 42.1(b), trial
`rules are construed to secure the just, speedy, and inexpensive resolution of
`every proceeding.
`Petitioner contends that the “three requirements of § 42.123(b) are
`met.” Mot. 2. First, “Petitioner requested authorization from the Board on
`December 12, 2023, to file the Motion which the Board approved on
`December 15, 2023.” Id. Second, “the Markman opinion and order ‘could
`not have been obtained earlier’ because the Court issued the opinion and
`order after institution of IPR2023-00879.” Id. Third, “consideration of the
`
`2
`
`
`
`IPR2023-00879
`Patent 9,584,021 B2
`
`Markman opinion and Markman order would be ‘in the interest-of-justice’ to
`aid the Board’s claim construction and comply with claim construction rules
`that provide ‘[a]ny prior claim construction determination concerning a term
`of the claim in a civil action . . . that is timely made of record in the . . .
`proceeding will be considered.’” Id. (citing 37 C.F.R §§ 42.100(b),
`42.200(b), 42.300(b)).
`Based on Petitioner’s representations, we are persuaded that the
`Markman opinion and order “could not have been obtained earlier” because
`the Court issued the opinion and order after institution of the present inter
`partes review. Submission of the Markman opinion, the Markman order,
`and an updated exhibit list would be in the interests of justice, because the
`Board and parties will benefit from the inclusion of the District Court’s
`claim construction in the record of this proceeding. See also Patent Trial
`and Appeal Board Consolidated Trial Practice Guide1 48 (Nov. 2019)
`(discussing filing of prior claim construction determinations by a federal
`court as supplemental information: “Normally, the Board will permit such
`[supplemental] information to be filed, as long as the final oral hearing has
`not taken place . . . parties should submit a prior claim construction as soon
`as the decision is available.”). This also comports with our objective to
`secure the just, speedy, and inexpensive resolution of every proceeding. For
`these reasons, and because the Motion is unopposed, Petitioner’s Motion to
`Submit Supplemental Information is granted.
`It is therefore
`ORDERED that Petitioner’s Motion to Submit Supplemental
`Information (Paper 13) is granted; and
`
`1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`3
`
`
`
`IPR2023-00879
`Patent 9,584,021 B2
`
`
`FURTHER ORDERED that, within five business days of this
`Decision, Petitioner shall file the Markman order and the Markman opinion
`as two separately numbered exhibits in the record of this proceeding, and an
`updated Exhibit List.
`
`
`
`
`4
`
`
`
`IPR2023-00879
`Patent 9,584,021 B2
`
`FOR PETITIONER:
`
`Thomas Eschweiler
`Nathanael Smith
`James Potashnik
`Ningjiao Zhang
`ESCHWEILER & POTASHNIK LLC
`docketing@eschweilerlaw.com
`njsmith@epiplaw.com
`jpotashnik@eschweilerlaw.com
`nzhang@epiplaw.com
`
`Philip Marsh
`ARNOLD & PORTER KAYE SCHOLER LLP
`philip.marsh@apks.com
`
`
`
`FOR PATENT OWNER:
`
`Heath Briggs
`Trenton Ward
`Leif Olson
`Stephen Ullmer
`GREENBERG TRAURIG, LLP
`briggsh@gtlaw.com
`trenton.ward@gtlaw.com
`olsonl@gtlaw.com
`ullmers@gtlaw.com
`
`5
`
`
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