Paper 17
`
`
`
` Entered: July 20, 2015
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`ADVANCED MICRO DEVICES, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00324
`Patent 6,895,520 B1
`____________
`
`
`
`Before JONI Y. CHANG, BRIAN J. McNAMARA, and
`RAMA G. ELLURU, Administrative Patent Judges.
`
`
`
`CHANG, Administrative Patent Judge.
`
`
`
`ORDER
`Denying Petitioner’s Request for Authorization to File
`a Motion to Submit Supplemental Information
`37 C.F.R. § 42.123
`
`
`
`
`
`1
`
`SAMSUNG 1044
`Samsung Electronics v. SmartFlash
`CBM2014-00190
`
`
`
`
`
` Entered: July 20, 2015
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`ADVANCED MICRO DEVICES, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00324
`Patent 6,895,520 B1
`____________
`
`
`
`Before JONI Y. CHANG, BRIAN J. McNAMARA, and
`RAMA G. ELLURU, Administrative Patent Judges.
`
`
`
`CHANG, Administrative Patent Judge.
`
`
`
`ORDER
`Denying Petitioner’s Request for Authorization to File
`a Motion to Submit Supplemental Information
`37 C.F.R. § 42.123
`
`
`
`
`
`1
`
`SAMSUNG 1044
`Samsung Electronics v. SmartFlash
`CBM2014-00190
`
`
`
`IPR2015-00324
`Patent 6,895,520 B1
`
`
`On June 15, 2015, we instituted the instant inter partes review as to
`claims 16–18 and 20–23 of U.S. Patent No. 6,895,520 B1. Paper 13
`(“Dec.”). One of the instituted grounds of unpatentability is based, in part,
`on ACPIS.1 Dec. 23. On July 17, 2015, more than one month after the
`institution date, a conference call was held among respective counsel for the
`parties, and Judges Chang, McNamara, and Elluru. During the conference
`call, Petitioner requested the authorization to file a motion to submit
`supplemental information—namely, evidence that purportedly confirms the
`public accessibility of ACPIS. For the reasons discussed below, Petitioner’s
`request is denied.
`A request for authorization to file a motion to submit supplemental
`information under 37 C.F.R. § 42.123(a) is required to be made within one
`month of the date for which the trial has been instituted. Petitioner contends
`that it timely made its request within one month in an e-mail to the Board’s
`administrative staff, requesting a conference call with the Panel. As an
`initial matter, we do not agree that a request for a conference call, itself,
`constitutes a request for authorization for filing a motion to submit
`supplemental information under 37 C.F.R. § 42.123(a). See VTech
`Telecomm., Ltd. v. Spherix Inc., Case IPR2014-01432, slip op. 2 (PTAB
`Mar. 3, 2015) (Paper 14).
`In any event, even if the Petitioner’s request was made timely, nothing
`in 37 C.F.R. § 42.123(a) suggests that a request to submit supplemental
`
`
`1 ADVANCED CONFIGURATION AND POWER INTERFACE SPECIFICATION, INTEL
`MICROSOFT, TOSHIBA, Rev. 1.0b (Feb. 2, 1999) (Ex. 1006, “ACPIS”).
`2
`
`
`
`IPR2015-00324
`Patent 6,895,520 B1
`
`information, if made within one month from institution, automatically would
`be granted no matter the circumstance. Here, Petitioner did not provide a
`persuasive explanation as to why submitting evidence that purportedly
`confirms the public accessibility of ACPIS is warranted at this juncture.
`During the conference call, Petitioner alleged that the evidence was
`obtained in response to an objection made by Patent Owner regarding the
`public accessibility of ACPIS. Petitioner argued that the submission of such
`evidence, as supplemental information, is appropriate.
`Patent Owner countered that it did not make such an objection. More
`specifically, Patent Owner indicated that it did not challenge the public
`accessibility of ACPIS in its Preliminary Response (Paper 12). Rather,
`Patent Owner asserted that its Objection2 (Paper 16) merely challenges the
`admissibility of ACPIS.
`Indeed, the present record before us shows that, notwithstanding
`Petitioner’s assertion in its Petition—ACPIS “qualifies as prior art under 35
`U.S.C. § 103(a) because [it] was published on February 2, 1999 before the
`’520 Patent’s March 2, 2001 filing date” (Paper 2, 9)—Patent Owner did not
`contest the prior art status of ACPIS in its Preliminary Response (Paper 12).
`Notably, Patent Owner’s Objection indicates that “Patent Owner objects to
`
`
`2 Patent Owner indicated that it timely served its Objection, but
`inadvertently failed to file the Objection within ten business days after
`institution, as required by 37 C.F.R. § 42.64. See Amendment to the Rules
`of Practice for Trials Before the Patent Trial and Appeal Board, 80 Fed. Reg.
`28,561, 28,565 (Final Rule) (Effective Date: May 19, 2015). During the
`conference call, we authorized Patent Owner to file the Objection so that we
`would have sufficient information to resolve Petitioner’s request.
`3
`
`
`
`IPR2015-00324
`Patent 6,895,520 B1
`
`[the] contents [of ACPIS] as inadmissible hearsay” and “objects to this
`document as not properly authenticated,” under the Federal Rules of
`Evidence (Paper 16, 2–3). Nothing in this record shows that Patent Owner
`challenges the public accessibility of ACPIS, as alleged by Petitioner.
`Petitioner’s reliance on Palo Alto Networks, Inc v. Juniper Networks,
`Inc., Case IPR2013-00369 (PTAB Feb. 5, 2014) (Paper 37) is misplaced. In
`that case, the Patent Owner contested, in the Preliminary Response, the prior
`art status of the references that served as the basis of the instituted grounds
`of unpatentability, challenging the public accessibility of the references.
`Palo Alto Networks, Case IPR2013-00369, slip op. 7–11, 25–28 (Paper 13).
`Here, in contrast, Patent Owner has not raised such a challenge in the instant
`proceeding. Petitioner conflated two different challenges: (1) the
`admissibility of evidence (e.g., authenticity or hearsay), which requires the
`objecting party to file an objection to evidence under 37 C.F.R. § 42.64(b);
`and (2) the sufficiency of evidence to prove a particular fact (e.g., whether
`the evidence is sufficient to demonstrate that a reference is a printed
`publication under § 102(b)). See Groupon, Inc. v. Blue Calypso, LLC, Case
`CBM2013-00033, slip op. 3–4 (PTAB May 12, 2014) (Paper 29);
`Bloomberg Inc. v. Markets-Alert Pty. Ltd., Case CBM2013-00005, slip op. 5
`(PTAB Nov. 15, 2013) (Paper 56); see also Valeo North America, Inc. v.
`Magna Electronics, Inc., Case IPR2014-00220, slip op. 10–11 (PTAB May
`28, 2015) (Paper 59) (Arguing that a reference is not prior art under
`§ 102(b), as it was not publicly accessible, is a challenge to the sufficiency or
`weight to be given to the reference.).
`
`4
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`IPR2015-00324
`Patent 6,895,520 B1
`
`
`Petitioner also did not explain why the evidence that purportedly
`confirms the public accessibility of ACPIS could not be filed later as
`supporting evidence to its reply, should Patent Owner argue, in the response,
`that ACPIS is not a prior art printed publication under § 102. Furthermore,
`supplemental evidence is not necessary to be filed at this time because the
`admissibility objection may be overcome by the evidence. If Patent Owner
`continues to object to the admissibility of ACPIS and subsequently files a
`motion to exclude ACPIS, Petitioner may file the previously-served
`supplemental evidence as supporting evidence to its Opposition.
`For the foregoing reasons, we do not discern, at this juncture of the
`proceeding, a sufficient basis for authorizing Petitioner to file a motion to
`submit supplemental information under 37 C.F.R. § 42.123(a).
`Accordingly, it is
`ORDERED that Petitioner’s request for authorization to file a motion
`to submit supplemental information under 37 C.F.R. § 42.123(a) is denied;
`and
`
`FURTHER ORDERED that Patent Owner is authorized to file the
`Objection that was served on Petitioner previously regarding ACPIS.
`
`
`
`
`
`
`5
`
`
`
`IPR2015-00324
`Patent 6,895,520 B1
`
`PETITIONERS:
`
`Robert G. Pluta
`Bryon Wasserman
`Amanda Streff
`
`MAYER BROWN LLP
`rpluta@mayerbrown.com
`bwasserman@mayerbrown.com
`astreff@mayerbrown.com
`
`
`
`PATENT OWNER:
`
`Donald Featherstone
`Michael D. Specht
`Michael B. Ray
`Christian Camarce
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`donf-PTAB@skgf.com
`mspecht-PTAB@skgf.com
`mray-PTAB@skgf.com
`ccamarce-PTAB@skgf.com
`
`
`
`6
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