`571.272.7822
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` Paper 39
`Entered: May 21, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SOLVAY USA INC.,
`Petitioner,
`v.
`WORLDSOURCE ENTERPRISES, LLC, ECO AGRO RESOURCES LLC,
`and ECO WORLD GROUP LLC
`Patent Owner.
`____________
`
`PGR2019-00046
`Patent 10,221,108 B2
`____________
`
`
`Before KRISTINA M. KALAN, JEFFREY W. ABRAHAM, and
`SHELDON M. MCGEE, Administrative Patent Judges.
`
`MCGEE, Administrative Patent Judge.
`
`
`
`
`ORDER
`
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
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`
`
`PGR2019-00046
`Patent 10,221,108 B2
`
`On April 26, 2019, Petitioner filed its Petition in this proceeding,
`
`along with Exhibit 1006. Exhibit 1006 is an English translation of Chinese
`Patent CN101200400B (“the CN400 patent”). The certification of Exhibit
`1006 purports to be “a true and accurate translation from Chinese to
`English” of the CN400 patent. Ex. 1006, 11.1
`A post-grant review of U.S. Patent No. 10,221,108 B2 (“the ʼ108
`patent”) was instituted on August 13, 2019 and an oral hearing was held on
`May 14, 2020. Paper 7, 2; Paper 8, 7.
`On May 13, 2020, the eve of the oral hearing, the Board received an
`email from Patent Owner’s counsel requesting a conference call to seek
`authorization to file a motion to object and a motion for additional discovery
`with respect to the translation and translator’s affidavit filed by Petitioner as
`Exhibit 1006. The email indicated that Petitioner opposed Patent Owner’s
`request to file the motions and opposed a conference call. Ex. 3001.
`
`Instead of conducting a conference call with the parties, the Board
`permitted the parties to address this issue during the oral hearing on May 14,
`2020. During the hearing, Patent Owner’s counsel indicated that he recently
`consulted the “LinkedIn” social media webpage for the affiant of Exhibit
`1006, and observed that the affiant does not identify any level of proficiency
`in the Chinese language on that webpage. Patent Owner stated that it wishes
`to conduct additional discovery in this proceeding to determine whether the
`affiant personally translated what is before us as Exhibit 1006, and
`furthermore wishes to file a motion to object to Exhibit 1006.
`
`
`1 Petitioner filed the Chinese language version of Chinese Patent
`CN101200400B as Exhibit 1018 on April 26, 2019. Pet. 21.
`2
`
`
`
`PGR2019-00046
`Patent 10,221,108 B2
`
`Petitioner stated that it opposes Patent Owner’s request for leave to
`
`file motions to object and for additional discovery. For support, Petitioner
`noted that an objection to evidence that is submitted in a preliminary
`proceeding––such as Exhibit 1006 in this post-grant review proceeding––
`must “be filed within ten business days of the institution of trial.” See 37
`C.F.R. § 42.64(b)(1). Petitioner stated that because Patent Owner’s request
`to object to Exhibit 1006 was made so late in this proceeding, it should be
`viewed by the Board as waived.
`
`We have considered the parties’ arguments presented during the oral
`hearing, and authorize Patent Owner to file a combined motion to object to
`Exhibit 1006 and for additional discovery. Patent Owner shall set forth the
`circumstances leading up to its discovery of the affiant’s LinkedIn page, and
`shall further address the “good cause” and “interest of justice” standards set
`forth in our rules regarding late action and additional discovery. See 37
`C.F.R. §§ 42.5(c)(3), 42.224(a). Due to the late stage of this proceeding, we
`stress that time is of the essence. Therefore, Patent Owner’s motion is
`limited to the issues identified during oral argument and may not exceed five
`pages. Patent Owner’s motion must be filed within five business days of the
`date of this Order.
`
`We also authorize Petitioner to file an opposition to Patent Owner’s
`motion. Petitioner’s opposition also may not exceed five pages and must be
`filed within five business days of the date Patent Owner files its motion.
`
`
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`
`3
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`
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`Accordingly, it is:
`
`PGR2019-00046
`Patent 10,221,108 B2
`
`
`
`ORDERED that Patent Owner is authorized to file a combined motion
`
`to object to Exhibit 1006 and for additional discovery;
`FURTHER ORDERED that Patent Owner’s motion shall not exceed
`five pages, and shall be filed no later than May 29, 2020;
`
`FURTHER ORDERED that Petitioner is authorized to file an
`opposition to Patent Owner’s motion; and
`FURTHER ORDERED that Petitioner’s opposition shall not exceed
`five pages, and shall be filed no later than five business days after the date
`Patent Owner files its motion.
`
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`4
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`
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`PGR2019-00046
`Patent 10,221,108 B2
`
`
`PETITIONER:
`
`Ching-Lee Fukuda
`Michael Franzinger
`Jason P. Greenhut
`SIDLEY AUSTIN LLP
`clfukuda@sidley.com
`mfranzinger@sidley.com
`jgreenhut@sidley.com
`
`
`PATENT OWNER:
`
`Thomas Benjamin Schroeder
`BEN SCHROEDER LAW, PLLC
`ben@leak-schroeder.com
`
`
`David M. Wilkerson
`THE VAN WINKLE LAW FIRM
`dwilkerson@vwlawfirm.com
`
`
`5
`
`
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