Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`
`
`
` Paper 43
` Entered: June 19, 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
`
`Denying Patent Owner’s Combined Motion for
`Additional Discovery and Late-Filed Objection to Exhibit 1006
`
`37 C.F.R. §§ 42.5(c)(3), 42.224(a)
`
`
`
`
`
`
`
`
`
`571.272.7822
`
`
`
`
`
`
`
`
` Paper 43
` Entered: June 19, 2020
`
`
`
`
`
`
`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
`
`Denying Patent Owner’s Combined Motion for
`Additional Discovery and Late-Filed Objection to Exhibit 1006
`
`37 C.F.R. §§ 42.5(c)(3), 42.224(a)
`
`
`
`
`
`
`
`
`
`
`PGR2019-00046
`Patent 10,221,108 B2
`
`
`INTRODUCTION
`
`We instituted a post-grant review of U.S. Patent No. 10,221,108 B2
`
`(“the ʼ108 patent”) on August 13, 2019 and held an oral hearing on May 14,
`
`2020. Paper 7, 2.
`
`On the eve of the oral hearing, May 13, 2020, 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 of Chinese Patent No. 101200400B (“the
`
`CN400 patent”), and the translator’s affidavit filed by Petitioner in this
`
`proceeding on April 26, 2019 as Exhibit 1006. Ex. 3001. The email
`
`indicated that Petitioner opposed Patent Owner’s request for us to authorize
`
`the motions and opposed a conference call. Id.
`
`Rather than conduct a conference call with the parties, the Board
`
`permitted the parties to address this issue during the oral hearing on May 14,
`
`2020. After hearing arguments from both Patent Owner and Petitioner, we
`
`authorized Patent Owner to file a combined motion for additional discovery
`
`and objection to Exhibit 1006. Paper 39. Patent Owner timely filed its
`
`Motion. Paper 40 (“motion” or “Mot.”). Petitioner timely opposed. Paper
`
`41 (“opposition” or “Opp.”).
`
`In its motion, Patent Owner asserts that a previous translation of the
`
`CN400 patent “had been filed by a third-party in opposition” to an
`
`application in the chain of priority of the ʼ108 patent at issue in this
`
`proceeding, and is in the record of this proceeding as Exhibit 2006. Mot. 1
`
`(citing Ex. 2006, 444–473). Patent Owner asserts that the machine
`
`translation of CN400 contained within Exhibit 2006 is different than the
`
`translation filed as Exhibit 1006. Id. Patent Owner represents that, between
`
`2
`
`
`
`PGR2019-00046
`Patent 10,221,108 B2
`
`May 2, 2020 and the morning of May 4, 2020, Patent Owner’s counsel was
`
`preparing for the oral hearing scheduled for May 14, 2020. Id. at 1–2.
`
`Patent Owner’s counsel states that, during the preparation for oral hearing,
`
`he “performed a search using the Google search engine on Kayla Garcia and
`
`Transperfect,” i.e., the affiant identified in Exhibit 1006, and the company
`
`for which she appears to work, respectively. Id. at 2; Ex. 1006, 11. Patent
`
`Owner’s counsel asserts that he “cannot recall if he had ever performed an
`
`internet search before for Ms. Garcia or, if so, the parameters of such a
`
`search.” Mot. 2. Based on Patent Owner’s internet search for Kayla Garcia
`
`and Transperfect, Patent Owner’s counsel “sent an email to Petitioner’s
`
`counsel with a PDF of Ms. Garcia’s LinkedIn Page, and noted that Ms.
`
`Garcia does not appear to have any Chinese language skills.” Id.
`
`Patent Owner contends that a properly authenticated affidavit attesting
`
`to the accuracy of a translation under the Federal Rules of Evidence must be
`
`signed by the actual translator, and asserts that “[c]ourts have consistently
`
`held that a translation must be accompanied by a certification by the actual
`
`translator of the document.” Mot. 3 (citing Jack v. Trans World Airlines,
`
`Inc., 854 F. Supp. 654, 659 (N.D. Cal. 1994), Townsend Eng’g Co. v. HiTec
`
`Co., 1 USPQ2d 1987, 1988 (N.D. Ill. 1986), Xavier v. Belfor USA Grp., Inc.,
`
`2008 WL 4862533 (E.D. La. Sept. 23, 2008)).
`
`Patent Owner asserts that Ms. Garcia’s LinkedIn page “tends to show
`
`‘beyond speculation that something useful will be uncovered’” because
`
`“there is strong evidence that shows Ms. Garcia did not translate the
`
`document at issue.” Mot. 4–5 (citing Garmin Int’l Inc. v. Cuozzo Speed
`
`Techs., LLC, IPR2012-00001, Paper 20, 2–3 (PTAB Feb. 14, 2013). Thus,
`
`Patent Owner asserts that good cause exists to seek “additional discovery to
`
`3
`
`
`
`PGR2019-00046
`Patent 10,221,108 B2
`
`depose Ms. Garcia to determine if she translated Exhibit 1006 and her
`
`qualifications to do so.” Mot. 5. Patent Owner states “[t]he information
`
`gained from the discovery would be useful, as it goes to the admissibility
`
`and reliability of the translation filed,” asserts that Patent Owner is unable to
`
`generate equivalent information by other means, and that the additional
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`discovery would not be burdensome. Id.
`
`For the reasons that follow, we deny Patent Owner’s combined
`
`motion for additional discovery and objection to Exhibit 1006.
`
`
`
`Motion for Additional Discovery
`
`DISCUSSION
`
`
`
`In a post-grant review, a “good cause” standard is applied to motions
`
`for additional discovery. 37 C.F.R. § 42.224; Bloomberg Inc. v. Markets-
`
`Alert Pty Ltd., CBM2013-00005, Paper 32 (PTAB May 29, 2013)
`
`(precedential). To determine whether good cause for the additional
`
`discovery sought by the moving party has been shown, we weigh the
`
`following factors:
`
`1) More Than A Possibility And Mere Allegation––
`
`The mere possibility of finding something useful, and mere
`allegation that something useful will be found, are insufficient to
`establish a good cause showing. “Useful” means favorable in
`substantive value to a contention of the party moving for
`discovery. A good cause showing requires the moving party to
`provide a specific factual reason for expecting reasonably that
`the discovery will be “useful.”
`
`2) Litigation Positions And Underlying Basis––
`
`Asking for the other party’s litigation positions and the
`underlying basis for those positions is insufficient to demonstrate
`that the additional discovery is necessary for good cause. The
`
`4
`
`
`
`PGR2019-00046
`Patent 10,221,108 B2
`
`
`Board has established rules for the presentation of arguments and
`evidence. There is a proper time and place for each party to make
`its presentation. A party may not attempt to alter the Board’s
`trial procedures under the pretext of discovery.
`
`
`3) Ability to Generate Equivalent Information By Other Means––
`
`A party should not seek information that reasonably can be
`generated without a discovery request.
`
`4) Easily Understandable Instructions––
`
`Instructions and questions should be easily understandable. For
`example, ten pages of complex instructions for answering
`questions is prima facie unclear. Such instructions are counter-
`productive and tend to undermine the responder’s ability to
`answer efficiently, accurately, and confidently.
`
`
`5) Requests Not Overly Burdensome To Answer––
`
`Requests should not be overly burdensome to answer, given the
`expedited nature of a post-grant review. The burden includes
`financial burden, burden on human resources, and burden on meeting
`the time schedule of the trial. Requests should be sensible and
`responsibly tailored according to a genuine need.
`
`
`
`Bloomberg Inc., CBM2013-00005, Paper 32, 5.
`
`Factor 1: More Than a Possibility and Mere Allegation
`
`
`
`Based on our review of Patent Owner’s motion and its oral arguments
`
`related to the additional discovery it now seeks, we are unpersuaded that
`
`Patent Owner, as the moving party, has provided a specific factual reason for
`
`expecting reasonably that the additional discovery would be useful, i.e.,
`
`“favorable in substantive value to a contention of the party moving for
`
`discovery.”
`
`5
`
`
`
`PGR2019-00046
`Patent 10,221,108 B2
`
`
`Patent Owner’s apparent concern with Exhibit 1006 is its reliability
`
`with respect to the translated language of the CN400 patent’s claim 1––in
`
`particular, whether the Exhibit 1006 translation of the CN400 patent teaches
`
`or suggests that a urease inhibitor, such as N-butyl thiophosporic triamide
`
`(“NBPT”), is dissolved by an organic solvent, such as dimethyl sulfoxide
`
`(“DMSO”). See Tr. 35:18–23 (Patent Owner’s counsel arguing that
`
`“Petitioner actually points to the claims [of the CN400 patent] to incorrectly
`
`assert that CN ʼ400 discloses dissolving NBPT in the solvent disclosed in
`
`CN ʼ400.”); id. at 56:12–13 (Patent Owner’s counsel stating “we’re not
`
`disputing that DMSO is disclosed” in Exhibit 1006, but rather “[w]e are
`
`disputing that NBPT is dissolved by DMSO.”).
`
`Furthermore, Patent Owner’s assertion that “Ms. Garcia does not
`
`appear to have any Chinese language skills” (Mot. 2) relies on the premise
`
`that a translation affiant must list any and all language proficiencies on a
`
`professional networking platform such as LinkedIn to be a qualified
`
`translator. We are directed to no authority supporting this premise, and
`
`Patent Owner’s assertion regarding Ms. Garcia’s qualifications is speculative
`
`at best.
`
`
`
`Significantly––and more on point to the additional discovery’s
`
`potential for substantive value––there are two translations of the CN400
`
`patent of record in this proceeding (Ex. 1006; Ex. 2006, 461–69), and Patent
`
`Owner has indicated they would accept the Board’s reliance on the
`
`translation before us contained within Exhibit 2006. See Tr. 55:1–3 (“I
`
`would say that there is another translation that is in the record. It’s in Exhibit
`
`2006 which was also filed by a third party. We would have no problem with
`
`that – that translation being considered by the Board”); see also id. at 70:19–
`
`6
`
`
`
`PGR2019-00046
`Patent 10,221,108 B2
`
`25 (Patent Owner’s counsel affirmatively stating that it would be an
`
`“acceptable remedy” if the Board elected to rely on Exhibit 2006 instead of
`
`Exhibit 1006).
`
`
`
`Based on the information before us, additional discovery regarding
`
`one translation (Exhibit 1006) of the CN400 patent would not be “useful” or
`
`have any “substantive value.” We have a heretofore unobjected-to
`
`translation of the CN400 patent (Ex. 1006), and we have an acceptable
`
`alternative translation (Ex. 2006, 461–469) at our disposal. It is unclear how
`
`the facts presented by Patent Owner rise to the level of even a mere
`
`possibility of finding something “useful.” As stated by Petitioner in its
`
`Opposition, the additional discovery sought regarding Exhibit 1006 “is moot
`
`because Patent Owner has already agreed to the Board relying on Ex[hibit]
`
`2006.” 1 Opp. 1. Thus, this factor weighs heavily against a good cause
`
`showing for the additional discovery.
`
`
`
`Factor 2: Litigation Positions and Underlying Basis
`
`There does not appear to be a related district court proceeding
`
`involving the named parties. The parties, however, identify the following
`
`district court proceeding as related to the ’108 patent: MicroSource, LLC v.
`
`
`
`1 The panel makes no determination here whether it will rely on the machine
`translation of the CN400 patent contained within Exhibit 2006 as a substitute
`for Exhibit 1006. See Tr. 70:16–71:4 (Judge Abraham stating “if we
`substitute the translation in [Exhibit] 2006 for the translation in [Exhibit]
`1006, is that an adequate remedy for Patent Owner?” and, after Patent
`Owner agreed “that is an acceptable remedy,” Judge Abraham stating “just
`to be clear, I’m not saying that that’s our decision.”). Rather, the existence
`of an acceptable alternative translation bears on the issue of the “substantive
`value” of the additional discovery Patent Owner now seeks.
`
`7
`
`
`
`PGR2019-00046
`Patent 10,221,108 B2
`
`Eco World Group, LLC, Case No. 5:19-cv-04016 (N.D. Iowa) (Apr. 18,
`
`2019). Pet. 2; Paper 5, 1.
`
`Although Eco World Group, LLC is identified as one of several
`
`“Patent Owners” on the cover page of the Petition and the Certificate of
`
`Service contained therein, the Petition states “WorldSource Enterprises,
`
`LLC is the assignee of record with the USPTO” and that the “other entities
`
`were included out of an abundance of caution.” See Pet. (cover page) n.1.
`
`Additionally, Patent Owner does not identify Eco World Group, LLC as a
`
`real party in interest in this proceeding in either of its mandatory notices
`
`filings. Paper 5, 1; Paper 22, 1. Further, it is unclear what relationship, if
`
`any, MicroSource LLC has to the other real parties in interest in this post
`
`grant review proceeding––Petitioner Solvay USA Inc. and its parent Solvay
`
`SA. Pet. 2.
`
`
`
`Thus, on this record, there is no evidence that the real parties in
`
`interest in this post grant review are parties to any district court litigation.
`
`As a result, this factor appears to be moot.
`
`
`
`
`
`Factor 3: Ability to Generate Equivalent Information by Other Means
`
`In its motion, “Patent Owner requests additional discovery to depose
`
`Ms. Garcia to determine if she translated Exhibit 1006 and her qualifications
`
`to do so.” Mot. 5. Patent Owner asserts that “[t]here is no ability . . . to
`
`generate equivalent information by other means.” Id.
`
`
`
`We agree with Patent Owner. Because it is unclear how Patent Owner
`
`could reasonably obtain the requested information without additional
`
`discovery, this factor weighs in favor of a good cause showing for the
`
`additional discovery.
`
`8
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`PGR2019-00046
`Patent 10,221,108 B2
`
`
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`Factor 4: Easily Understandable Instructions
`
`
`
`The additional discovery that Patent Owner seeks is a deposition of
`
`Ms. Kayla Garcia. Mot. 5. Patent Owner has not provided a list of specific
`
`questions it proposes to ask Ms. Garcia. Thus, this factor neither weighs in
`
`favor of nor against a good cause showing for the additional discovery.
`
`
`
`
`
`Factor 5: Requests Not Overly Burdensome To Answer
`
`Patent Owner asserts “the additional discovery would not be
`
`burdensome.” Mot. 5. Petitioner argues that the additional discovery sought
`
`“would complicate the limited time remaining in this proceeding” and points
`
`out the “logistical burdens of the ongoing COVID-19 pandemic.” Opp. 4.
`
`
`
`In analyzing this factor, we must consider whether the request is
`
`“sensible and responsibly tailored according to a genuine need.” Bloomberg
`
`Inc., CBM2013-00005, Paper 32, 5. As set forth in our analysis of Factor 1,
`
`supra, however, we are not persuaded of any such “genuine need” for the
`
`additional discovery Patent Owner seeks.
`
`Additionally, we must consider the “financial burden, burden on
`
`human resources, and burden on meeting the time schedule of the trial.” Id.
`
`Here, the belated nature of Patent Owner’s request weighs heavily against
`
`Patent Owner. This proceeding is at an advanced stage, with trial briefing
`
`and oral hearing now complete. Although Patent Owner postulates that “the
`
`deposition could be completed within one week or less of an order allowing
`
`the additional discovery” (Mot. 5), there is no guarantee that the deponent or
`
`Petitioner’s counsel would be available within this compressed timeframe.
`
`Allowing the additional discovery under these circumstances––even if there
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`9
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`PGR2019-00046
`Patent 10,221,108 B2
`
`were a “genuine need” for it––would place an unreasonable burden on
`
`human resources for all parties involved, including the Board which, by
`
`statute, must issue a Final Written Decision no later than August 13, 2020.
`
`35 U.S.C. §§ 326(a)(11), 328(a); 37 C.F.R. § 42.200(c).
`
`Thus, considering the lack of “genuine need” for the additional
`
`discovery sought by Patent Owner, along with the unreasonably high burden
`
`on human resources and that of meeting the time schedule of the trial, this
`
`factor weighs heavily against a good cause showing for the additional
`
`discovery.
`
`
`
`In sum, after weighing the Bloomberg factors relevant to the facts of
`
`this case, we determine that Patent Owner has failed to meet the good cause
`
`standard set forth in 37 C.F.R. § 42.224(a). Patent Owner’s motion for
`
`additional discovery is therefore denied.
`
`
`
`Late-Filed Objection to Exhibit 1006
`
`
`
`Under 37 C.F.R. § 42.5(c)(3), “[a] late action will be excused on a
`
`showing of good cause or upon a Board decision that consideration on the
`
`merits would be in the interests of justice.”
`
`
`
`We determine that the facts presented by Patent Owner in its motion
`
`do not rise to the level of good cause to allow the late filing of an objection
`
`to Exhibit 1006. The internet search that purportedly prompted Patent
`
`Owner’s doubts regarding Ms. Garcia’s qualifications to translate the CN400
`
`patent into what is before us as Exhibit 1006 was conducted mere days
`
`before the May 14, 2020 oral hearing. Mot. 1–2. Patent Owner, however,
`
`was served with Exhibit 1006 on April 26, 2019––i.e., more than a year
`
`before Patent Owner conducted its internet search. Patent Owner fails to
`
`10
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`PGR2019-00046
`Patent 10,221,108 B2
`
`provide sufficient reasons for not conducting this internet search and timely
`
`objecting to Exhibit 1006 prior to the deadline set forth in our rules. 37
`
`C.F.R. § 42.64(b)(1) (“Any objection to evidence submitted during a
`
`preliminary proceeding must be filed within ten business days of the
`
`institution of trial.”). As noted by Petitioner, “[t]hat deadline came and went
`
`on August 27, 2019.” Opp. 1.
`
`
`
`Nor would consideration of Patent Owner’s proposed late-filed
`
`objection to Exhibit 1006 be in the interests of justice. Exhibit 1006 is one
`
`of two translations of the CN400 patent of record in this proceeding. Patent
`
`Owner has affirmed that it would accept our reliance on the alternative
`
`translation of the CN400 patent. See Tr. 55:1–3; 70:19–25. Furthermore,
`
`the Board has broad discretion as to the weight to be accorded to the
`
`evidence contained within Exhibit 1006. Velander v. Garner, 348 F.3d
`
`1359, 1371 (Fed. Cir. 2003) (stating that it is “within the discretion of the
`
`trier of fact to give each item of evidence such weight as it feels
`
`appropriate”).
`
`We also agree with Petitioner that the extremely belated nature of the
`
`requested motion to object to an exhibit that has been in this proceeding
`
`since April 26, 2019 would, as a practical matter, “deprive[] Petitioner of the
`
`opportunity to respond with supplemental evidence” as set forth under the
`
`rules governing post-grant review. Opp. 2; 37 C.F.R. § 42.64(b)(2) (“The
`
`party relying on evidence to which an objection is timely served may
`
`respond to the objection by serving supplemental evidence within ten
`
`business days of service of the objection.”). Such deprivation of Petitioner’s
`
`opportunity to respond and correct any potential deficiency in Exhibit 1006
`
`would not be in the interests of justice.
`
`11
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`PGR2019-00046
`Patent 10,221,108 B2
`
`
`In sum, we determine that Patent Owner’s requested motion to object
`
`to Exhibit 1006 fails to satisfy the “good cause” or the “interests of justice”
`
`standards set forth in 37 C.F.R. § 42.5(c)(3). The motion to object is
`
`therefore denied.
`
`
`
`
`
`
`
`
`
`Accordingly, it is:
`
`ORDERED that Patent Owner’s combined Motion for Additional
`
`Discovery and Motion to Object to Exhibit 1006 is denied.
`
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`12
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`PGR2019-00046
`Patent 10,221,108 B2
`
`
`
`PETITIONER:
`
`Ching-Lee Fukuda
`Michael Franzinger
`John Wisse
`SIDLEY AUSTIN LLP
`clfukuda@sidley.com
`mfranzinger@sidley.com
`jwisse@sidley.com
`
`
`PATENT OWNER:
`
`Thomas Benjamin Schroeder
`BEN SCHROEDER LAW, PLLC
`ben@leak-schroeder.com
`
`
`
`
`13
`
`
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