`Trials@uspto.gov
`571-272-7822
`
`
`
`Paper No. 22
`Entered: October 19, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`SCHUL INTERNATIONAL COMPANY, LLC,
`Petitioner,
`
`v.
`
`EMSEAL JOINT SYSTEMS, LTD.,
`Patent Owner.
`____________
`
`Case PGR2017-00053 (Patent 9,528,262 B2)
`Case PGR2018-00034 (Patent 9,644,368 B1)1
`
`____________
`
`
`
`Before GEORGE R. HOSKINS, JAMES A. WORTH, and
`SCOTT C. MOORE, Administrative Patent Judges.
`
`HOSKINS, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. §§ 42.5 and 42.223
`
`
`
`
`
`1 This Order applies to both proceedings. The proceedings have not been
`consolidated, and the parties are not authorized to use a consolidated caption
`unless a paper contains a footnote indicating that the identical paper has
`been filed in each proceeding.
`
`
`
`
`
`Case PGR2017-00053 (Patent 9,528,262 B2)
`Case PGR2018-00034 (Patent 9,644,368 B1)
`
`
`INTRODUCTION
`On October 1, 2018, we entered an Order authorizing Petitioner to
`file, in the ’053 PGR and the ’034 PGR, a Motion to Submit Supplemental
`Information. ’053 PGR Paper 19 & ’034 PGR Paper 9 (“Authorizing Order”
`or “Auth. Ord.”). The Authorizing Order authorized Patent Owner to file
`Oppositions to those Motions. Id. The authorized briefing has now been
`filed. The present Order rules on the Motions. However, the present Order
`first addresses a separate issue relating to the parties’ communications with
`the Board.
`
`COMMUNICATIONS WITH THE BOARD
`Pursuant to the Authorizing Order, Patent Owner’s Oppositions were
`required to be filed “at or before 5:00 p.m. Eastern Time on October 10,
`2018.” Auth. Ord. 4. According to the Board’s filing system audit trail
`information, the ’053 PGR Opposition was filed at about 5:18 p.m. on the
`due date, and the ’034 PGR Opposition was filed at about 5:25 p.m. on the
`due date. Shortly before 6:00 p.m. on the due date, Patent Owner’s counsel
`sent e-mail communications to the Board concerning these late filings. The
`following communication concerning the ’053 PGR is representative:
`Counsel for Patent Owner writes to inform the Board that due to
`technical issues related to an internet browser incompatibility
`that required assistance of the PTAB’s help desk to overcome,
`Counsel for Patent Owner’s filing of its Opposition to
`Petitioner’s Motion to Submit Supplemental Information was
`officially loaded to the PTAB’s E2E shortly after 5:00 pm today,
`October 10, 2018. The Board had requested filing by 5:00 pm
`Eastern Time. Counsel for Patent Owner apologizes for any
`inconvenience and respectfully requests consideration of this
`filing.
`
`2
`
`
`
`Case PGR2017-00053 (Patent 9,528,262 B2)
`Case PGR2018-00034 (Patent 9,644,368 B1)
`
`Thus, Patent Owner’s counsel failed to indicate whether Patent Owner’s
`counsel had attempted to confer with Petitioner’s counsel concerning the late
`filing, before writing to the Board to request that we consider the late filing.
`Petitioner’s counsel previously engaged in similar conduct in its
`September 11, 2018, e-mail communications to the Board, seeking
`authorization to file the Motions that are considered below. See, e.g.,
`Auth. Ord. 2. That is, Petitioner’s counsel failed to indicate whether
`Petitioner’s counsel had attempted to confer with Patent Owner’s counsel
`concerning the proposed Motions, before writing to the Board to request
`authorization to file the Motions.
`This common practice of counsel in this proceeding is inefficient.
`The Board expects counsel to confer with each other in an attempt to resolve
`disputed issues, or, if resolution is not achieved, to crystallize the issue(s)
`which are disputed, before contacting the Board to seek Board action.
`Therefore, from this date forward, pursuant to the Order entered below,
`before communicating with the Board (via e-mail or otherwise) to request
`the Board to take action, the requesting counsel shall confer with opposing
`counsel concerning the requested action. The requesting counsel must then,
`in the succeeding communication to the Board, either (1) certify that the
`conference took place, and describe the results of the conference, or (2) if no
`conference took place, describe the action(s) taken by the requesting counsel
`attempting to schedule a conference.
`
`3
`
`
`
`Case PGR2017-00053 (Patent 9,528,262 B2)
`Case PGR2018-00034 (Patent 9,644,368 B1)
`
`
`’053 PGR SUPPLEMENTAL INFORMATION
`In the ’053 PGR, Petitioner’s Motion to Submit Supplemental
`Information was filed as Paper 20 (“’053 Motion” or “’053 Mot.”), and
`Patent Owner’s Opposition was filed as Paper 21.
`Petitioner initially sought authorization to file the ’053 Motion via an
`e-mail communication to the Board dated September 11, 2018. ’053 PGR,
`Paper 19, 2. Because that date came more than one month after trial was
`instituted in the ’053 PGR on April 9, 2018, the ’053 Motion “must show
`[i] why the supplemental information reasonably could not have been
`obtained earlier, and [ii] that consideration of the supplemental information
`would be in the interests-of-justice.” 37 C.F.R. § 42.223(b); ’053 PGR,
`Paper 19, 3. We determine Petitioner has not made showing [ii], so we deny
`the ’053 Motion.
`The ’053 Motion seeks to submit one document, which Petitioner
`describes as: “Non-Party UL LLC’s Opposition to Emseal Joint Systems,
`Ltd.’s Motion To Compel; Civil Action No. 1:18-mc-91331 in the
`US District Court; District of Massachusetts, August 30, 2018”
`(“UL Opposition”).
`Petitioner contends the UL Opposition “further bolsters” Ground 5 of
`the ’053 Petition. ’053 Motion, 2–3. That ground asserts lack of written
`description for an expansion joint system having an ability to withstand
`exposure to a specified temperature (540 or 1010° C) at about a specified
`time (five minutes or two hours). ’053 Pet. 50–53; ’053 Ex. 1001, 8:2–4
`(representative claim 1 of the ’262 patent). Specifically, Petitioner contends
`the UL Opposition states “a proposed deposition question relating to the
`time and temperature requirements listed in the UL 2079 test standard bears
`
`4
`
`
`
`Case PGR2017-00053 (Patent 9,528,262 B2)
`Case PGR2018-00034 (Patent 9,644,368 B1)
`
`no relation to the phrase ‘pass testing mandated by UL 2079.’”
`’053 Motion, 2 (emphasis added) (citing UL Opposition, 12–14). Thus, in
`Petitioner’s view, the UL Opposition “relates to Petitioner’s rebuttal
`argument . . . that it is improper to presume that the time/temperature
`limitations are part of the ‘pass’ UL 2079” as claimed (see, e.g.,
`’053 Ex. 1001, 8:4–6), because “it would render these limitations
`superfluous.” ’053 Motion, 2–3 (citing Petitioner’s Reply, ’053 Paper 17, at
`31–32). Petitioner’s view is that submission of the UL Opposition is in the
`interests of justice, “because it provides independent, third party verification
`of Petitioner’s arguments regarding Ground 5 from a reliable source:
`UL LLC.” Id. at 3.
`We first conclude the UL Opposition, when viewed in a light most
`favorable to Petitioner, at best presents only attorney argument. It is not
`evidence, such as witness testimony under oath, or contemporaneous
`documentation, probative of how a person of ordinary skill in the art would
`have understood the claim term “to pass testing mandated by UL 2079.”
`Further, the argument comes from an attorney opposing discovery sought
`from the attorney’s client. It is, therefore, advocacy rather than evidence as
`to the scope of the ’262 patent claims. Thus, we are not persuaded the
`UL Opposition would aid the Board in resolving any issues of fact or law in
`considering Ground 5 of the ’053 Petition.
`Moreover, Petitioner’s counsel was aware of the UL Opposition, at
`the latest, on September 11, 2018, when the e-mail requesting authorization
`to file the ’053 Motion was sent to the Board. Thus, Petitioner’s counsel
`was aware of the UL Opposition before Petitioner’s Reply in the ’053 PGR
`was filed on September 17, 2018. See ’053 Paper 17. Petitioner therefore
`
`5
`
`
`
`Case PGR2017-00053 (Patent 9,528,262 B2)
`Case PGR2018-00034 (Patent 9,644,368 B1)
`
`had the opportunity to incorporate the UL Opposition’s arguments into
`Petitioner’s Reply in this proceeding. Granting leave to submit the
`UL Opposition would effectively grant leave for Petitioner to exceed the
`word count limitation of 37 C.F.R. § 42.24(c)(1), without a sound reason,
`and therefore is not in the interests of justice.
`Finally, the ’053 PGR is now at a late stage, with the briefing on the
`merits having been completed on September 17, 2018. The relevance (if
`any) of the UL Opposition to only one out of eight total grounds does not
`justify its introduction into the proceeding at this late stage, which would
`require additional briefing to discuss the UL Opposition. See Redline
`Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 446 (Fed. Cir. 2015)
`(considering 37 C.F.R. § 42.123(a), the IPR corollary regulation to
`§ 42.223(b), and stating “timeliness and relevancy provide additional
`requirements that must be construed within the overarching context of the
`PTAB’s regulations governing IPR and general trial proceedings”).
`For the foregoing reasons, we determine the ’053 Motion does not
`show that consideration of the UL Opposition would be in the interests of
`justice. We therefore deny the ’053 Motion. 37 C.F.R. § 42.223(b).
`
`’034 PGR SUPPLEMENTAL INFORMATION
`In the ’034 PGR, Petitioner’s Motion to Submit Supplemental
`Information was filed as Paper 10 (“’034 Motion” or “’034 Mot.”), and
`Patent Owner’s Opposition was filed as Paper 11 (“’034 Opposition” or
`“’034 Opp.”).
`Petitioner initially sought authorization to file the ’034 Motion via an
`e-mail communication to the Board dated September 11, 2018. ’034 PGR,
`
`6
`
`
`
`(2)
`
`Case PGR2017-00053 (Patent 9,528,262 B2)
`Case PGR2018-00034 (Patent 9,644,368 B1)
`
`Paper 9, 2. Because that date falls within one month after trial was instituted
`in the ’034 PGR on August 22, 2018, the ’034 Motion must show the
`information is “relevant to a claim for which trial has been instituted.”
`37 C.F.R. § 42.223(a); ’034 PGR, Paper 9, 3. We determine Petitioner has
`made the required showing as to four of the five documents at issue.
`The ’034 Motion seeks to submit five documents, as follows:
`(1)
`an expert report prepared by Dr. Vytenis Babrauskas, on behalf
`of Patent Owner, dated July 31, 2018;
`a transcript of Dr. Babrauskas’s deposition testimony, dated
`August 13, 2018;
`a written deposition of Luke C. Woods, a representative of
`UL LLC, dated July 12, 2018;
`a transcript of expert witness Lester Hensley’s deposition
`testimony, on behalf of Patent Owner, on an unspecified date;
`and
`the UL Opposition (discussed above).
`(5)
`’034 Motion, 2.
`According to Petitioner, these documents are relevant to Ground 6 of
`the Petition. ’034 Motion, 2–3. That ground asserts the ’368 patent claims
`are indefinite because the meaning of “pass testing mandated by UL 2079”
`is vague and indefinite. ’034 Pet. 62–64; ’034 Ex. 1001, 8:4–5
`(representative claim 1 of the ’368 patent). Petitioner contends the five
`documents “each . . . highlights the indefiniteness of this claim term by
`identifying that UL 2079 has numerous features, and/or that it is unclear
`which of these is intended to be met by the standard.” ’034 Motion, 2–3.
`
`(3)
`
`(4)
`
`7
`
`
`
`Case PGR2017-00053 (Patent 9,528,262 B2)
`Case PGR2018-00034 (Patent 9,644,368 B1)
`
`
`Documents (1)–(4)
`As to documents (1), (2), and (4), Petitioner contends they “confirm[]
`that there are numerous tests and input requirements for UL 2079.”
`’034 Motion, 3, 4.
`As to document (3), Petitioner contends it “state[s] essentially that
`‘pass testing mandated by UL 2079’ did not have any formal meaning to
`UL LLC as of the filing date sought [for the ’368 patent].” ’034 Motion, 3.
`The ’034 Opposition argues documents (1)–(4) together in one group.
`’034 Opp. 1–5. Patent Owner asserts Petitioner’s intended reliance on these
`documents improperly seeks to cure deficiencies in Ground 6 (indefiniteness
`of “pass testing mandated by UL 2079”) by incorporating a modified
`Ground 5 (lack of written description of “capable of withstanding [or
`‘configured to maintain fire resistance upon’] exposure to a temperature of
`about 540° C. at about five minutes”). ’034 Opp. 1–4 (citing Nevro Corp. v.
`Boston Sci. Neuromodulation Corp., Case IPR2017-01812 (PTAB May 30,
`2018), Paper 30). Patent Owner also argues Petitioner has not explained
`sufficiently why documents (1)–(4) were not presented earlier with the
`’034 Petition. Id. at 1, 3, 4. Patent Owner further contends granting the
`’034 Motion would disrupt the case schedule, to the prejudice of Patent
`Owner. Id. at 1, 4–5.
`We determine declarant testimony concerning the testing
`requirements for UL 2079 (documents (1), (2), and (4)) is relevant to
`whether the term “pass testing mandated by UL 2079” in the ’368 patent is
`indefinite. Likewise, the testimony of a UL representative concerning UL’s
`own understanding of the testing requirements for UL 2079 (document (3))
`
`8
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`Case PGR2017-00053 (Patent 9,528,262 B2)
`Case PGR2018-00034 (Patent 9,644,368 B1)
`
`is relevant to the same issue. This testimony, further, may very well aid the
`Board in resolving issues of fact in considering Ground 6 of the Petition.
`We acknowledge Patent Owner’s concern that Petitioner’s intended
`reliance on these documents seeks to present new arguments in support of
`unpatentability, outside of the reasoning presented in the ’034 Petition for
`Ground 6. However, that concern is premature, as Petitioner has not yet
`presented its full argument concerning how documents (1)–(4) fit into the
`reasoning presented in the ’034 Petition for Ground 6. At this time, the only
`issue to be decided is whether to allow Petitioner to submit supplemental
`evidence in support of arguments already made in the ’034 Petition.
`Our present decision is not inconsistent with the Nevro Board decision
`cited by Patent Owner. In that decision, the Board denied a request for
`authorization to file a motion to submit supplemental information. IPR2017-
`01812, Paper 30, at 3. The information was proffered to “demonstrate[] that
`nearly all prior art implantable pule generators (IPGs) included detachable
`connections.” Id. at 4. The Board determined, however, that such
`information was not relevant to the specific prior art Holsheimer reference,
`which the Petition had cited as disclosing a detachable connection. Id. at 4–
`5. By contrast, in this case, the proffered supplemental information directly
`concerns the testing disclosures of UL 2079, which are at issue in this
`proceeding.
`As to why documents (1)–(4) were not presented earlier with the
`Petition, we note documents (1)–(3) are each dated in July or August of
`2018, after the Petition was filed in February of 2018. There is no date
`provided for document (4), but as we are allowing documents (1)–(3) into
`evidence, we see little harm in allowing document (4) too.
`
`9
`
`
`
`Case PGR2017-00053 (Patent 9,528,262 B2)
`Case PGR2018-00034 (Patent 9,644,368 B1)
`
`
`Finally, as to the case schedule, the ’034 PGR is now at an early stage,
`with the Patent Owner Response not due until November 21, 2018. Thus
`there is ample room in the case schedule for consideration of documents (1)–
`(4).
`
`For the foregoing reasons, we grant the ’034 Motion as to
`documents (1)–(4). 37 C.F.R. § 42.223(a). We authorize Petitioner to file
`documents (1)–(4) as Exhibits in the ’034 PGR. We determine we do not
`need to schedule a telephone conference with the parties to establish a
`briefing schedule for consideration of this information. Instead, we
`authorize Petitioner to file a Supplement to the Petition to explain the
`relevancy of documents (1)–(4) to Ground 6 of the ’034 Petition, as set forth
`below. We caution Petitioner’s counsel that we will not consider any new
`arguments for indefiniteness that are not fairly presented in the ’034 Petition
`for Ground 6, namely, at pages 62–64. We also authorize Patent Owner to
`file a Response to the Supplement to the Petition, as set forth below.
`Document (5)
`As to document (5) — the UL Opposition discussed above in
`connection with the ’053 PGR —Petitioner contends it is relevant to the
`’034 PGR “because according to UL, the[] time/temperature [limitations of
`the claims] bear no relation to [the] pass testing mandated by UL 2079
`[limitation of the claims], further making it unclear as to what the term
`means to one of skill in the art and what of the many test features are
`intended by the claim language.” ’034 Motion, 3.
`For substantially the same reasons set forth above, we determine the
`’034 Motion does not show the UL Opposition is relevant to a claim for
`which trial has been instituted in the ’034 PGR. In short, the UL Opposition
`
`10
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`
`
`Case PGR2017-00053 (Patent 9,528,262 B2)
`Case PGR2018-00034 (Patent 9,644,368 B1)
`
`contains only attorney argument, and is not evidence, so we are not
`persuaded the UL Opposition would aid the Board in resolving any issues of
`fact or law in considering Ground 6 of the ’034 Petition. Moreover,
`Petitioner has the opportunity to incorporate the UL Opposition’s arguments
`into Petitioner’s Reply in the ’034 PGR, which is not yet due for some time.
`Thus, we deny the ’034 Motion as to document (5). 37 C.F.R.
`§ 42.223(a).
`
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that, before communicating with the Board (via e-mail or
`otherwise) to request the Board to take action, the requesting counsel shall
`confer with opposing counsel concerning the requested action; and
`FURTHER ORDERED that, the requesting counsel shall then, in the
`succeeding communication to the Board, either (1) certify that the
`conference took place, and describe the results of the conference, or (2) if no
`conference took place, describe the action(s) taken by the requesting counsel
`attempting to schedule a conference;
`FURTHER ORDERED that, the ’053 Motion is denied;
`FURTHER ORDERED that, the ’034 Motion is granted as to
`documents (1)–(4), and denied as to document (5);
`FURTHER ORDERED that, Petitioner may file documents (1)–(4) as
`Exhibits in the ’034 PGR;
`FURTHER ORDERED that, Petitioner is authorized to file a
`Supplement to the ’034 Petition to explain the relevancy of documents (1)–
`(4) to Ground 6 of the Petition, as presented in the ’034 Petition at pages 62–
`
`11
`
`
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`Case PGR2017-00053 (Patent 9,528,262 B2)
`Case PGR2018-00034 (Patent 9,644,368 B1)
`
`64, not to exceed ten pages in length, within two weeks of the entry date of
`this Order; and
`FURTHER ORDERED that, Patent Owner is authorized to file a
`Response to the Supplement to the Petition, not to exceed ten pages in
`length, on or before December 5, 2018.
`
`PETITIONER:
`
`Gary E. Lambert
`David J. Connaughton, Jr.
`LAMBERT & ASSOCIATES
`lambert@lambertpatentlaw.com
`connaughton@lambertpatentlaw.com
`
`James E. Hudson III
`CRAIN, CATON & JAMES
`jhudson@craincaton.com
`
`
`PATENT OWNER:
`
`Michael K. Kinney
`MKG, LLC
`kinney@mkgip.com
`
`
`12
`
`
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