Trials@uspto.gov
`571-272-7822
`
`Paper 12
`Date: October 15, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CUB ELECPARTS INC.,
`Petitioner,
`v.
`ORANGE ELECTRONIC CO., LTD.,
`Patent Owner.
`
`IPR2024-00744
`Patent 8,031,064 C3
`
`
`
`
`
`
`
`
`
`Before PATRICK R. SCANLON, KEVIN C. TROCK, and
`AMBER L. HAGY, Administrative Patent Judges.
`SCANLON, Administrative Patent Judge.
`
`ORDER
`Denying Petitioner’s Motion for Leave to Substitute Exhibits
`37 C.F.R. §§ 42.5(c)(3), 42.20
`
`
`
`
`
`
`571-272-7822
`
`Paper 12
`Date: October 15, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CUB ELECPARTS INC.,
`Petitioner,
`v.
`ORANGE ELECTRONIC CO., LTD.,
`Patent Owner.
`
`IPR2024-00744
`Patent 8,031,064 C3
`
`
`
`
`
`
`
`
`
`Before PATRICK R. SCANLON, KEVIN C. TROCK, and
`AMBER L. HAGY, Administrative Patent Judges.
`SCANLON, Administrative Patent Judge.
`
`ORDER
`Denying Petitioner’s Motion for Leave to Substitute Exhibits
`37 C.F.R. §§ 42.5(c)(3), 42.20
`
`
`
`
`
`
`
`IPR2024-00744
`Patent 8,031,064 C3
`With our prior authorization, CUB Elecparts Inc. (“Petitioner”) filed a
`Motion for Leave to Substitute Exhibits. Paper 8 (“Mot.”). Orange
`Electronic Co., Ltd. (“Patent Owner”) filed an Opposition to Petitioner’s
`Motion. Paper 11 (“Opp.”).
`For the reasons discussed below, we deny Petitioner’s Motion without
`prejudice. Petitioner is authorized to file a Motion for Leave to File New
`Exhibits, as explained below.
`I. BACKGROUND
`Petitioner filed a Petition (Paper 2, “Pet.”) requesting an inter partes
`review of claims 1–19 of U.S. Patent No. 98,031,064 C3 (Ex. 1001) on
`April 4, 2024. Several exhibits, including Exhibits 1005 and 1009, were
`filed with the Petition. Exhibit 1005 is a Japanese patent publication
`accompanied by an English translation. Exhibit 1009 is an English
`translation of an invalidation opinion from the Taiwan Patent Office.
`Petitioner, however, did not file an affidavit attesting to the accuracy of
`either translation, as required by 37 C.F.R. § 42.63(b).
`Patent Owner subsequently filed a Preliminary Response (Paper 6,
`“Prelim. Resp.”) in which Patent Owner argued that Exhibits 1005 and 1009
`are inadmissible and should not be considered because the translations were
`not certified. Prelim. Resp. 23–24, 43–44, 56. On August 21, 2024, without
`explanation or leave from the Board, Petitioner filed a second version of
`Exhibit 1005, accompanied by an English translation and a certification
`attesting to the accuracy of the translation. On August 27, 2024, via an
`email to the Board, Patent Owner objected to the filing of Exhibit 1005 on
`August 21, 2024. See Ex. 2013, 2. Then on August 28, 2024, again without
`leave from the Board, Petitioner filed a third version of Exhibit 1005,
`
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`IPR2024-00744
`Patent 8,031,064 C3
`accompanied by an English translation and a certification attesting to the
`accuracy of the translation, and a second version of Exhibit 1009,
`accompanied by a certification attesting to the accuracy of that Exhibit’s
`translation.
`On August 30, 2024, the Board sent an email to the parties indicating
`that the multiple copies of Exhibits 1005 and 1009 filed by Petitioner
`rendered the record of this proceeding unclear. See Ex. 2013, 1. The Board
`indicated that it would “treat Petitioner’s filings as a request for leave to file
`a motion to substitute exhibits.” Id. The Board directed that “Petitioner
`shall file a motion to substitute new exhibits for the originally filed versions
`of Exhibits 1005 and 1009,” and “Petitioner’s motion should address why
`the proposed substitutions are warranted, differences between the updated
`exhibits and the originally filed versions of Exhibits 1005 and 1009, and
`which files should be expunged to provide a clear record.” Id. The Board
`also authorized Patent Owner to file an opposition to Petitioner’s motion.
`Id.
`
`II. DISCUSSION
`Petitioner requests that original Exhibit 1005 (filed April 4, 2024) be
`replaced with new Exhibit 1010 and original Exhibit 1009 (filed April 4,
`2024) be replaced with new Exhibit 1011. Mot. 3. Petitioner asserts that
`Exhibit 1010 comprises the same Japanese patent publication as Exhibit
`1005 and a certified English translation of the Japanese patent publication,
`and Exhibit 1011 comprises an English translation of the same invalidation
`opinion from the Taiwan Patent Office as Exhibit 1009 and includes a
`translation certification. Id. at 2. According to Petitioner, the machine
`translation of Exhibit 1005 and the new certified translation of Exhibit 1010
`
`3
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`IPR2024-00744
`Patent 8,031,064 C3
`“are nearly identical,” and “[t]he translations differ only with respect to
`grammatical changes due to the large difference between Japanese grammar
`(in which the verb is positioned at the end of the sentence) and English
`grammar.” Id. at 3. Petitioner asserts that Exhibit 1011 is identical to
`Exhibit 1009 except for the addition of the translator’s certification of the
`translation. Id. Petitioner is requesting the substitution “to provide a more
`complete record.” Id. at 3–4.
`In its Opposition, Patent Owner argues that late filings are allowed
`only upon a showing of good cause or where consideration on the merits
`would be in the interests of justice, but Petitioner fails to offer an
`explanation for its request to replace original Exhibits 1005 and 1009 with
`new Exhibits 1010 and 1011. Opp. 1 (citing 37 C.F.R. § 42.5(c)(3);
`Mot. 2 21; Ex. 2013). Patent Owner argues that there is not good cause for
`the requested substitution, asserting that “Petitioner fails to explain why its
`original exhibit Ex-1005 was improperly filed as an unauthenticated and
`uncertified machine translation, in plain violation of the rules. Nor does
`Petitioner allege that it could not have complied with the Board’s rules when
`filing the Petition.” Id. (citations omitted). Patent Owner also argues that
`Petitioner’s assertion that it “is requesting the substitution in order to provide
`a more complete record” does not establish that the requested substitution is
`in the interests of justice. Id. (citing Mot. 3–4).
`Furthermore, Patent Owner argues that, instead of completing or
`clarifying the record, Petitioner’s request has the opposite effect of further
`complicating the record. Id. at 2. For instance, Patent Owner contends that
`the Motion does not indicate clearly whether the several versions of Exhibits
`1005 and 1009 are to be expunged. Id. Patent Owner also contends that the
`
`4
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`IPR2024-00744
`Patent 8,031,064 C3
`requested substitution would create inconsistencies in the record;
`specifically, “the Petition and Patent Owner’s Preliminary Response both
`cite to Ex-1005 and Ex-1009, and do not cite to the later Ex-1010 and
`Ex-1011,” and “[b]oth papers also quote passages from the original
`Ex-1005, which are not reflected verbatim in the replacement Ex-1010.” Id.
`(citing Ex. 1005 ¶ 34; Ex. 1010 ¶ 34; Prelim. Resp. 56–57; Pet. 51).
`We find Patent Owner’s arguments persuasive. Petitioner does not
`establish adequately good cause for the proposed substitution, nor does
`Petitioner explain adequately why the proposed substitution would be in the
`interests of justice. See Mot. 1–4; 37 C.F.R. § 42.5(c)(3). Petitioner merely
`states that the proposed substitution would “provide a more complete
`record” but does not address in detail why the substitution is warranted, as
`directed by the Board in its email of August 30, 2024. Mot. 3–4; Ex. 2013,
`1. In addition, Petitioner’s assertions of large differences in Japanese and
`English grammar (see Mot. 3) do not justify sufficiently the variances
`between the originally-filed translation of Exhibit 1005 and the translation of
`new Exhibit 1010.
`More troubling are the contradictions in the record the proposed
`substitution would create. As Patent Owner notes, the Petition and the
`Preliminary Response both cite to Exhibits 1005 and 1009, but not Exhibits
`1010 and 1011. See Opp. 2. Replacing Exhibits 1005 and 1009 with
`Exhibits 1010 and 1011, respectively, would thus badly muddle the record.
`For these reasons, Petitioner’s Motion is denied. We note, however,
`that Petitioner indicates that “[i]n the alternative, as the current translator has
`indicated that the original translation is technically accurate, Petitioner can
`provide a certification for the originally-filed machine translation regarding
`
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`IPR2024-00744
`Patent 8,031,064 C3
`its accuracy if this is more acceptable to the Board and in order to minimize
`any potential prejudice to the Patent Owner.” Mot. 3. Under these
`circumstances, we are persuaded that it is in the interests of justice for the
`Board to have such a certification of the translation included with original
`Exhibit 1005 (filed April 4, 2024), as well as a certification of the translation
`of original Exhibit 1009 (filed April 4, 2024), because such certifications are
`relevant to Petitioner’s assertions that the challenged claims are
`unpatentable.
`We thus authorize Petitioner to file a Motion for Leave to File New
`Exhibits. This new Motion should request authorization to file: (1) a new
`exhibit (presumably to be identified as Exhibit 1012) comprising an affidavit
`attesting to the accuracy of the translation included with original Exhibit
`1005 (filed April 4, 2024); and (2) another new exhibit (presumably to be
`identified as Exhibit 1013) comprising an affidavit attesting to the accuracy
`of the translation of original Exhibit 1009 (filed April 4, 2024). Petitioner
`should file the proposed new Exhibits with the new Motion. The new
`Motion should also address whether the versions of Exhibit 1005 filed on
`August 21, 2024, and August 28, 2024, the version of Exhibit 1009 filed on
`August 28, 2024, and Exhibits 1010 and 1011 should be expunged.
`Petitioner shall provide its reasoning if maintaining that any of these
`Exhibits should not be expunged. The new Motion is limited to four pages
`and is due within five business days of the date of this Order.
`Patent Owner is authorized to file an Opposition to Petitioner’s new
`Motion. The Opposition is limited to four pages and is due within five
`business days of the new Motion being filed.
`In consideration of the foregoing, it is hereby:
`
`6
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`
`
`IPR2024-00744
`Patent 8,031,064 C3
`ORDERED that Petitioner’s Motion for Leave to Substitute Exhibits
`is denied;
`FURTHER ORDERED that Petitioner is authorized to file a four-page
`Motion for Leave to File New Exhibits, as described above, within five
`business days of the date of this Order; and
`FURTHER ORDERED that Patent Owner is authorized to file a
`four-page Opposition to Petitioner’s Motion for Leave to File New Exhibits
`within five business days of Petitioner’s Motion for Leave to File New
`Exhibits being filed.
`
`7
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`
`
`IPR2024-00744
`Patent 8,031,064 C3
`FOR PETITIONER:
`Margaret Burke
`Sam Yip
`mburke@ideaintellectual.com
`syip@ideaintellectual.com
`
`
`FOR PATENT OWNER:
`Fadi Kiblawi
`John F. Rabena
`William H. Mandir
`SUGHRUE MION, PLLC
`fkiblawi@sughrue.com
`jrabena@sughrue.com
`wmandir@sughrue.com
`
`
`
`
`8
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`
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