Paper No. 29
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`TARGET CORPORATION
`Petitioner
`
`v.
`
`DESTINATION MATERNITY CORPORATION
`Patent Owner
`_____________
`
`Case No. IPR2013-00533
`(U.S. Patent No. RE43,531)
`_____________
`
`Dated: May 29, 2014
`
`Before JENNIFER S. BISK, MICHAEL J. FITZPATRICK, and
`MITCHELL G. WEATHERLY Administrative Patent Judges.
`
`PATENT OWNER’S MOTION TO FILE SUPPLEMENTAL
`INFORMATION UNDER 37 C.F.R. § 42.123(b)
`
`EAST\76780594.1
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`TARGET CORPORATION
`Petitioner
`
`v.
`
`DESTINATION MATERNITY CORPORATION
`Patent Owner
`_____________
`
`Case No. IPR2013-00533
`(U.S. Patent No. RE43,531)
`_____________
`
`Dated: May 29, 2014
`
`Before JENNIFER S. BISK, MICHAEL J. FITZPATRICK, and
`MITCHELL G. WEATHERLY Administrative Patent Judges.
`
`PATENT OWNER’S MOTION TO FILE SUPPLEMENTAL
`INFORMATION UNDER 37 C.F.R. § 42.123(b)
`
`EAST\76780594.1
`
`
`
`Pursuant to 37 C.F.R. § 42.123(b) and the Board’s May 28, 2014 Order,
`
`Patent Owner Destination Maternity Corporation (“Patent Owner”) hereby moves
`
`to file exhibits related to its Patent Owner's Response to Corrected Petition for
`
`Inter Partes Review of U.S. Patent No. RE43,531 (“Response”).1 (Paper Nos. 24-
`
`25, May 5, 2014).
`
`The exhibits were either unintentionally not
`
`filed
`
`contemporaneously with the Response, or attached to declarations rather than filed
`
`as exhibits.
`
`The exhibits that Patent Owner seeks to file are the following: (a) five
`
`publicly available patents, three of which were exhibits in the April 24, 2014
`
`deposition of Petitioner Target Corporation’s (“Petitioner”) expert (Exhibit Nos.
`
`2030-34); (b) five publicly available 10K reports of Patent Owner (Exhibit Nos.
`
`2038-42)2; (c) seven documents produced in the underlying litigation (Exhibit
`
`Nos. 2043-49); (d) five publicly available websites (Exhibit Nos. 2050-53, 2083);
`
`(e) four confidential Patent Owner spreadsheets not previously produced to
`
`1 Patent Owner further requests permission to file a motion to seal, should the
`
`Board grant this Motion.
`
`2 The gaps in exhibit numbers are for exhibits filed only in related proceedings and
`
`served exhibits that Patent Owner does not seek to file, such as supplemental
`
`expert declarations, which include cites to the new exhibit numbers and some
`
`additional language in response to Petitioner’s evidentiary objections.
`
`EAST\76780594.1
`
`2
`
`
`
`Petitioner also exhibited as redacted (Exhibit Nos. 2056-63); (f) figures, tables,
`
`pictures, and exhibits from expert declarations, which were included in Patent
`
`Owner’s original filing (Exhibit Nos. 2064-73, 2075-80); (g) Patent Owner’s
`
`publicly available Complaint against Petitioner
`
`in the underlying litigation
`
`(Exhibit No. 2081); and (h) publicly available MPEP § 2111.01 (Exhibit No.
`
`2084).
`
`The unfiled exhibits reasonably could not have been obtained earlier
`
`because of a clerical error of not including the exhibits in the filing and attaching
`
`exhibits to declarations rather than filing them separately. And it is in the interests
`
`of justice to consider the supplemental information, which was already served on
`
`Petitioner on May 23, 2014, was generally either publicly available or already in
`
`Petitioner’s possession in connection with Patent Owner’s Response, or
`
`underlying District Court litigation, does not give rise to any new arguments, will
`
`avoid future administrative issues, and will not affect
`
`the trial schedule or
`
`prejudice Petitioner.
`
`I. The supplemental information reasonably could not have been obtained
`earlier
`
`The unfiled exhibits reasonably could not have been obtained earlier
`
`because of a clerical error of not including the exhibits in the filing and attaching
`
`exhibits to declarations rather than filing them separately. On May 5, 2014, Patent
`
`Owner filed its Response unintentionally excluding certain documents as exhibits.
`
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`
`3
`
`
`
`(Paper Nos. 24-25). On May 12, 2014, Petitioner served objections to evidence
`
`pursuant to 37 C.F.R. § 42.64(b)(1). Petitioner’s objections included “37 C.F.R. §
`
`42.63 et seq. (not evidence in these proceedings before the PTAB; purported
`
`evidence not filed as an exhibit)” for almost 50 paragraphs of Patent Owner’s
`
`expert declarations, the attachments to Patent Owner’s expert declarations, and
`
`generally for Patent Owner’s Response.
`
`On May 16, 2014, after reviewing Petitioner’s objections and attempting to
`
`identify the missing exhibits, Patent Owner contacted Petitioner to give notice that
`
`Patent Owner would request permission to file the documents as exhibits.
`
`Between May 16, 2014 and May 20, 2014, Patent Owner communicated with
`
`Petitioner in an attempt to reach agreement on the filing, but the parties came to an
`
`impasse. On May 23, 2014, the parties discussed the issue with the Board, which
`
`precipitated this filing. That same day, Patent Owner served supplemental
`
`information on Petitioner pursuant to 37 C.F.R. § 42.64(b)(2), which included the
`
`exhibits at issue.
`
`It has been considered sufficient to submit supplemental information as a
`
`result of a prior oversight with a showing that consideration of the supplemental
`
`information would be in the interests of justice. See IPR2013-00191, Paper No.
`
`39, at 4 (granting a motion to submit supplemental information for an oversight in
`
`citing to the wrong patent given “the minor impact on the trial schedule, Patent
`
`EAST\76780594.1
`
`4
`
`
`
`Owner’s assertion that the two references are similar substantively, as well as
`
`Petitioners’ expert was not cross-examined yet and Patent Owner has the
`
`opportunity to cross-examine on the supplemental information”); IPR2013-00401,
`
`Paper No. 41, at 3 (granting motion to submit supplemental information when the
`
`movant possessed the information for several months before a filing because “the
`
`interests of justice are served by permitting entry of the supplemental information”
`
`and prejudice to the respondent was negligible). Here, it is in the interests of
`
`justice to consider the supplemental information as shown below.
`
`II. Consideration of the supplemental information would be in the interests
`of justice
`
`It is in the interests of justice to consider the supplemental information
`
`because (1) the supplemental information was already served on Petitioner on
`
`May 23, 2014 pursuant
`
`to 37 C.F.R. § 42.64(b)(2); (2) almost all of the
`
`supplemental
`
`information was either publicly available, already produced to
`
`Petitioner in connection with Patent Owner’s Response, or produced to Petitioner
`
`in the underlying District Court litigation; (3) Petitioner never requested copies of
`
`the information; (4) the proposed supplemental information does not give rise to
`
`any new arguments; to the contrary, it offers support to Patent Owner’s already-
`
`filed argument; (5) filing the exhibits will avoid potential administrative issues
`
`such as any future exhibit numbering, and use of exhibits during depositions and
`
`in future filings such as Petitioner’s Reply to Patent Owner Response to Petition;
`
`EAST\76780594.1
`
`5
`
`
`
`and (6) the filing will not affect the trial schedule and will not prejudice Petitioner.
`
`First, it is in the interests of justice to consider the supplemental information
`
`because the supplemental information was already served on Petitioner on May
`
`23, 2014 pursuant to 37 C.F.R. § 42.64(b)(2). Even if Petitioner could not locate
`
`copies of the referenced documents, Petitioner received the information more than
`
`50 days before its replies are due July 14, 2014, and before any attempt by
`
`Petitioner to schedule depositions.
`
`Petitioner also received the information 18
`
`calendar days after Patent Owner filed its Response, and 11 calendar days after
`
`Petitioner served its objections on Patent Owner thereby notifying Patent Owner
`
`that some information in objected-to paragraphs were not in evidence.
`
`Second,
`
`it
`
`is in the interests of justice to consider the supplemental
`
`information because almost all of the supplemental
`
`information was either
`
`publicly available, already produced to Petitioner in connection with Patent
`
`Owner’s Response, or produced to Petitioner in the underlying District Court
`
`litigation. Only four documents were neither produced to Petitioner nor publicly
`
`available at the time of Patent Owner’s filing. These documents were four
`
`confidential Patent Owner spreadsheets, which were summarized in a spreadsheet
`
`previously produced to Petitioner, and which were also numbered as redacted
`
`exhibits (Exhibit Nos. 2056-63).
`
`Third,
`
`it
`
`is in the interests of
`
`justice to consider
`
`the supplemental
`
`EAST\76780594.1
`
`6
`
`
`
`information because Petitioner never requested copies of the information. As
`
`shown above, Petitioner brought the unfiled exhibits to Patent Owner’s attention
`
`via a general objection that identified paragraph numbers. Even after Patent
`
`Owner discussed filing the exhibits, Petitioner did not request the documents.
`
`Rather, Petitioner objected to the filing and argued that the exhibits could only be
`
`filed in response to a motion to exclude. As such, it does not appear that the
`
`Petitioner will be prejudiced by the filing.
`
`Fourth,
`
`it
`
`is in the interests of justice to consider the supplemental
`
`information because the proposed supplemental information does not give rise to
`
`any new arguments; to the contrary, it offers support to Patent Owner’s already-
`
`filed argument. Patent Owner’s supplemental information is merely copies of
`
`documents upon which Patent Owner based some of
`
`its arguments for
`
`patentability.
`
`Patent Owner served these exhibits pursuant
`
`to 37 C.F.R. §
`
`42.64(b)(2) in accordance with that provision’s purpose of curing objections to
`
`exhibits. As such, filing the underlying documents will not add any new
`
`arguments to Patent Owner’s Response.
`
`Fifth,
`
`it
`
`is in the interests of
`
`justice to consider
`
`the supplemental
`
`information because filing the exhibits will avoid potential administrative issues
`
`such as any future exhibit numbering, and use of exhibits during depositions and
`
`in future filings such as Petitioner’s Reply to Patent Owner Response to Petition.
`
`EAST\76780594.1
`
`7
`
`
`
`If patent owner is not permitted to file the exhibits, Patent Owner will have the
`
`dilemma of whether to number any future exhibits sequentially after the exhibits
`
`of record or starting after the last-numbered served exhibit.
`
`If Patent Owner is
`
`permitted to file the exhibits,
`
`the parties can use the exhibits of record in
`
`depositions and future filings, which will also avoid Petitioner’s dilemma of
`
`whether to file any of the exhibits in its replies. Filing the exhibits may also avoid
`
`exhibit numbering mistakes in future filings.
`
`Finally,
`
`it
`
`is in the interests of justice to consider the supplemental
`
`information because the filing will not affect the trial schedule and will not
`
`prejudice Petitioner. Petitioner was already aware of the information in the
`
`unfiled exhibits, and filing them now will not affect Petitioner’s ability to meet
`
`Due Date 2 on July 14, 2014. Moreover, Petitioner has not contacted Patent
`
`Owner regarding depositions of its declarants and no depositions have been
`
`scheduled, and filing now will only help Petitioner in its preparations for these
`
`depositions. As such, Patent Owner’s filing of supplemental evidence should have
`
`no effect on the trial schedule or Petitioner’s preparation of its case.
`
`III. Conclusion
`
`Accordingly, Patent Owner’s requests to file supplemental evidence should
`
`be granted.
`
`EAST\76780594.1
`
`8
`
`
`
`Date: May 29, 2014
`
`DLA PIPER LLP (US)
`s/ Paul A. Taufer
`
`Paul A. Taufer (Reg. No. 35,703)
`Michael L. Burns (Reg. No. 57,593)
`DLA Piper LLP (US)
`One Liberty Place
`1650 Market Street, Suite 4900
`Philadelphia, PA 19103
`Phone: (215) 656-3385
`Facsimile: (215) 606-3385
`paul.taufer@dlapiper.com
`michael.burns@dlapiper.com
`
`Stuart Pollack (Reg. No. 43,862)
`DLA Piper LLP (US)
`1251 Avenue of the Americas
`27th Floor
`New York, NY 10020-1104
`Phone: (212) 335-4964
`Facsimile: (212) 884-
`stuart.pollack@dlapiper.com
`
`Attorneys for Patent Owner, Destination
`Maternity Corporation
`
`EAST\76780594.1
`
`9
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that on May 29, 2014, a complete and entire copy
`
`of the Patent Owner’s Motion to File Supplemental Information under 37 C.F.R. §
`
`42.123(b) was provided via email to the Petitioner by serving the email
`
`correspondence address of record as follows:
`
`Norman J. Hedges
`R. Trevor Carter
`Daniel M. Lechleiter
`Faegre Baker Daniels LLP
`300 N. Meridian Street, Suite 2700
`Indianapolis, Indiana 46204-1750
`Phone: (317) 237-0300
`Fax: (317) 237-1000
`Norman.Hedges@FaegreBD.com
`trevor.carter@FaegreBD.com
`daniel.lechleiter@FaegreBD.com
`
`/s/ Paul Taufer
`Paul A. Taufer
`
`EAST\76780594.1
`
`10
`
`
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