Trials@uspto.gov
`571.272.7822
`
`
`
`
`
` Paper 13
`
` Date: October 19, 2021
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CQV CO., LTD.,
`Petitioner,
`
`v.
`
`MERCK PATENT GMBH,
`Patent Owner.
`____________
`
`PGR2021-00054
`Patent 10,647,861 B2
`____________
`
`
`Before ERICA A. FRANKLIN, JO-ANNE M. KOKOSKI, and
`JON B. TORNQUIST, Administrative Patent Judges.
`
`FRANKLIN, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Petitioner’s Motion to Submit Supplemental Information
`37 C.F.R. § 42.223(a)
`
`
`
`
`
`
`
`
`571.272.7822
`
`
`
`
`
` Paper 13
`
` Date: October 19, 2021
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CQV CO., LTD.,
`Petitioner,
`
`v.
`
`MERCK PATENT GMBH,
`Patent Owner.
`____________
`
`PGR2021-00054
`Patent 10,647,861 B2
`____________
`
`
`Before ERICA A. FRANKLIN, JO-ANNE M. KOKOSKI, and
`JON B. TORNQUIST, Administrative Patent Judges.
`
`FRANKLIN, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Petitioner’s Motion to Submit Supplemental Information
`37 C.F.R. § 42.223(a)
`
`
`
`
`
`
`
`
`
`PGR2021-00054
`Patent 10,647,861 B2
`
` INTRODUCTION
`With our authorization, CQV Co., Ltd. (“Petitioner”) filed a motion to
`submit supplemental information in the form of a test report characterizing
`an additional property of previously tested Xirallic® product samples, and
`two declarations, wherein one addresses those results, and the other attests to
`the chain of custody for the samples tested. Paper 11 (“Mot.”). Merck
`Patent GMBH (“Patent Owner”) filed an opposition to the motion. Paper 12
`(“Mot. Opp.”).
`
`II. DISCUSSION
`Under 37 C.F.R. § 42.223(a), a party may file a motion to submit
`supplemental information if: (1) the request for authorization to file the
`motion is made within one month of the date the trial was instituted; and (2)
`the supplemental information is relevant to a claim for which trial has been
`instituted. As the moving party, Petitioner bears the burden of proving that
`it is entitled to the requested relief in its motion. 37 C.F.R. § 42.20(c).
`Based upon our review, we find that Petitioner’s request for
`authorization to file the motion was timely, as it was submitted within one
`month of the institution decision.
`Additionally, we find that the supplemental information which
`Petitioner seeks to submit is relevant to a claim for which trial has been
`instituted. Petitioner explains that it seeks to submit three documents.
`Mot. 1. The first submission would be a test report authored by Professor
`Kyeong Youl Jung detailing the results of the x-ray powder diffraction tests
`on the commercially available Xirallic® product samples, identified as
`samples A, B, D, and H in the Petition and in the Declaration and
`Experimental Report of Seunghoon Mo, submitted with the Petition. Id.
`Petitioner explains that because those samples were not subjected to acid
`
`2
`
`
`
`PGR2021-00054
`Patent 10,647,861 B2
`treatment to remove the metal oxide layers from the alumina flakes, they are
`“in the condition as sold by Merck KGaA.” Id. at 1–2. Petitioner asserts
`that the results of the x-ray powder diffraction tests will be relevant to the α-
`Al2O3 structure of the Xirallic® product samples. Id. at 2. The second
`submission would be a declaration from Professor Jung addressing the
`authenticity and reliability of his test report. Id. The third submission would
`be a declaration from Mr. Byung-Ki Choi of CQV addressing only the chain
`of custody of the tested samples from CQV to Professor Jung. Id. Because
`the supplemental information may confirm the α-alumina structure of the
`Xirallic® flakes previously characterized and relied upon by Petitioner, and
`such structure is required by the challenged claims, we find that the
`requested supplemental information is relevant to a claim for which
`institution has been granted.
`Thus, Petitioner has met the timing and relevancy requirements for its
`motion to submit supplemental information under 37 C.F.R. § 42.223(a).
`Next, we consider whether Petitioner has met its burden under
`37 C.F.R. § 42.20(c) to show that the motion should be granted. In doing so,
`we consider whether the request is in line with the principle that guides our
`determination, i.e., “to ensure the efficient administration of the Office and
`the ability of the Office to complete . . . proceedings in a timely manner,”
`Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 445 (Fed.
`Cir. 2015); see also 35 U.S.C. §316(b); 37 C.F.R. §42.1(b).
`Petitioner asserts that “the proposed supplemental evidence does not
`change any of the evidence initially presented in the Petition. Rather, the
`proposed supplemental information is additional evidence that Xirallic® that
`was publicly available prior to the effective filing date comprised α-Al2O3.”
`Mot. 5.
`
`3
`
`
`
`PGR2021-00054
`Patent 10,647,861 B2
`Petitioner asserts also that the supplemental information will not
`prejudice Patent Owner or delay the proceedings. In support of that
`assertion, Petitioner explains that Professor Jung’s test report is limited to “a
`single type of test (x-ray powder diffraction) to evaluate a single feature of
`the Xirallic® samples (α-Al2O3 structure).” Id. at 6. Petitioner asserts that
`any deposition of Professor Jung will, therefore, be limited to the narrow
`scope of his test report and declaration. Id. Additionally, Petitioner asserts
`that Mr. Choi has already submitted a declaration in this proceeding and has
`not yet been deposed, so his supplemental declaration will not require an
`additional deposition. Id.
`Finally, Petitioner contends that Dr. Jung’s test results are appropriate
`under the circumstances because Petitioner could not have reasonably
`expected Patent Owner to dispute the evidence that Petitioner relies upon in
`the Petition to demonstrate that Xirallic® pigments are based on α-Al2O3
`flakes, i.e., a disclosure in the ’861 patent and a disclosure in the cited prior
`art, Pfaff. Id. at 6–7 (citing Pet. 42; Ex. 1001, 1:10–12; Ex. 1034, 72).
`Petitioner asserts that, although not required to support its timely motion,
`“the proposed supplemental information is in the interest of justice because
`the information is intended to confirm an admission in the disclosure of the
`’861 patent, on which the public is entitled to rely.” Id. at 7.
`Patent Owner asserts that Petitioner’s motion should be denied
`because it is allegedly based on improper gamesmanship as it seeks to
`bolster deficiencies in the Petition identified by Patent Owner, and
`exemplifies a “wait-and-see” opportunity to supplement the Petition after
`such arguments have been made by Patent Owner. Mot. Opp. 5–6. In
`particular, Patent Owner asserts also that although Petitioner “obtained and
`tested many properties of the Xirallic® samples prior to filing its petition, . . .
`
`4
`
`
`
`PGR2021-00054
`Patent 10,647,861 B2
`Petitioner has not explained why it failed to test whether the samples
`included ‘α-alumina flakes,’ nor provided any reason such testing could not
`have been performed and submitted with the Petition.” Id. at 6.
`Additionally, Patent Owner asserts that the proposed supplemental
`information “would substantially, and improperly, change the evidence
`relied on by Petitioner.” Id. at 7. According to Patent Owner, “[u]nlike
`information to shore up publication of a document . . . the new evidence
`[here] bears no relation to the ’861 patent or the Pfaff article[s] themselves.”
`Id. According to Patent Owner, “neither the ’861 patent nor the Pfaff article
`discuss the specific pigment products (T50-10, F60-50SW, and F60-51SW)
`within the Xirallic® product line that Petitioner now proposes testing.” Id.
`Further, Patent Owner asserts that the proposed supplemental information is
`a different type of evidence than what the Petition relied upon. Id.
`Patent Owner contends also that Petitioner’s motion should be denied
`because “receiving such new, complex, and potentially voluminous testing
`and declarations on a central issue of the proceeding within weeks of
`Merck’s Response deadline is highly burdensome and prejudicial to Merck.”
`Id. at 9. Additionally, Patent Owner asserts that “Petitioner’s requests runs
`counter to the PTAB’s goal of securing the just, speedy, and inexpensive
`resolution of this proceeding, and should be denied.” Id. at 10.
`Based on our consideration of the arguments and evidence, we
`determine that Petitioner’s proposed supplemental information would
`efficiently and expeditiously serve to supplement evidence that has already
`been presented by Petitioner and may prove beneficial to the Board in
`reaching a decision with respect to the trial. Specifically, as discussed in our
`Institution Decision, Petitioner has shown, sufficiently for institution, that “a
`person of ordinary skill in the art would have understood that, prior to the
`
`5
`
`
`
`PGR2021-00054
`Patent 10,647,861 B2
`effective filing date, Xirallic® comprised α-alumina flakes,” as required by
`the challenged claims. Paper 7, 16. In reaching that finding, we considered
`Petitioner’s showing that the ’861 patent states that “[p]earlescent pigments
`based on α-Al2O3 flakes are well-known in the literature and commercially
`available under the trademark XIRALLIC® from Merck KGaA.” Id. at 4
`(quoting Ex. 1001, 1:10–12 (emphasis added)). We also considered
`Petitioner’s documentary and testimonial evidence that the Xirallic®
`pigments products that it sampled and tested were commercially available
`under the trademark Xirallic® from Merck. Id. at 22. Additionally, we
`considered Petitioner’s showing that Pfaff describes Xirallic® pigments
`available on the market as alumina flakes being “formed in the corundum
`structure (α-Al2O3).” Id. at 16–17.
`Thus, we agree with Petitioner that its proposed supplemental
`information serves only to confirm what the previously submitted evidence
`reasonably demonstrates, i.e., that Petitioner’s sampled and tested Xirallic®
`products are “based on α-Al2O3 flakes.” As such, we do not agree with
`Patent Owner that the circumstances involved here suggest any
`gamesmanship involving a “wait-and-see” strategy or that the proposed
`supplemental information would improperly change the evidence relied
`upon in the Petition.
`Insofar as the supplemental information may require Patent Owner
`additional time to review such information and to conduct an additional
`deposition, we resolve that issue by extending the deadline for filing the
`Patent Owner’s Response by four weeks. We also extend the deadline for
`Petitioner’s Reply to the Patent Owner’s Response and the deadline for
`
`6
`
`
`
`PGR2021-00054
`Patent 10,647,861 B2
`Patent Owner’s Sur-reply by the same amount of time.1 Those extensions
`should alleviate any burden or prejudice asserted by Patent Owner. Also, by
`extending those deadlines, while maintaining our statutory deadline for
`issuing a final written decision in this proceeding, we “ensure the efficient
`administration of the Office and the ability of the Office to complete [this
`proceeding] in a timely manner,” and “secure the just, speedy, and
`inexpensive resolution” of this proceeding.
`III. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner’s Motion to Submit Supplemental
`Information is granted;
`FURTHER ORDERED that Petitioner shall submit the supplemental
`information by October 21, 2021;
`FURTHER ORDERED that the due dates for the Patent Owner’s
`Response, Petitioner’s Reply to Patent Owner’s Response, and Patent
`Owner’s Sur-reply are extended by four weeks from the dates in the
`Scheduling Order (Paper 8);
`FURTHER ORDERED that the due dates for a request oral argument,
`motion to exclude evidence, opposition to a motion to exclude, and reply to
`an opposition to a motion to exclude are extended by two weeks from the
`
`
`1 At this time, we do not extend the due dates relating to a motion to amend,
`opposition to a motion to amend, and reply to an opposition to a motion to
`amend (or Patent Owner’s revised motion to amend). We extend by two
`weeks the deadlines to request oral argument, motion to exclude evidence,
`opposition to a motion to exclude, request for prehearing conference, and
`reply to an opposition to a motion to exclude. Additionally, we reschedule
`the reserved oral argument date to June 1, 2022. A Modified Scheduling
`Order will be entered reflecting these changes.
`7
`
`
`
`PGR2021-00054
`Patent 10,647,861 B2
`dates in the Scheduling Order, and the reserved oral argument date is
`rescheduled for June 1, 2022; and
`FURTHER ORDERED that no other due dates are extended at this
`time.
`
`PETITIONER:
`Andrew C. Ryan
`Grant M. Ehrlich, Ph.D.
`CANTOR COLBURN LLP
`aryan@cantorcolburn.com
`gehrlich@cantorcolburn.com
`
`
`
`PATENT OWNER:
`
`Joshua A. Griswold
`Christopher C. Bowley, Ph.D.
`Kim Leung
`FISH & RICHARDSON P.C.
`griswold@fr.com
`ccb@fr.com
`leung@fr.com
`
`
`
`
`
`
`
`8
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
