TARGET CORPORATION
`Petitioner
`
`v.
`
`DESTINATION MATERNITY CORPORATION
`Patent Owner
`
`__________________
`
`Case IPR2013-00533
`Patent No. RE43,531
`__________________
`
`Before JENNIFER S. BISK, MICHAEL J. FITZPATRICK, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`PETITIONER’S RESPONSE TO PATENT OWNER’S MOTION TO FILE
`SUPPLEMENTAL INFORMATION UNDER 37 C.F.R. § 42.123(b)
`
`
`
`Petitioner
`
`v.
`
`DESTINATION MATERNITY CORPORATION
`Patent Owner
`
`__________________
`
`Case IPR2013-00533
`Patent No. RE43,531
`__________________
`
`Before JENNIFER S. BISK, MICHAEL J. FITZPATRICK, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`PETITIONER’S RESPONSE TO PATENT OWNER’S MOTION TO FILE
`SUPPLEMENTAL INFORMATION UNDER 37 C.F.R. § 42.123(b)
`
`
`
`
`
`
`I.
`
`II.
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`TABLE OF CONTENTS
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`INTRODUCTION AND STATEMENT OF RELIEF REQUESTED ........... 1
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`COUNTER STATEMENT OF MATERIAL FACTS .................................... 2
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`III. LEGAL STANDARDS AND APPLICABLE RULES .................................. 2
`
`IV. ARGUMENT ................................................................................................... 4
`
`A. DMC Fails to Meet the “Reasonably Could Not Have Been
`Obtained Earlier” Element of Rule 42.123(b) ....................................... 4
`
`1.
`
`2.
`
`3.
`
`DMC Possessed the Unfiled Documents, but Simply
`Failed to File them, on Its May 5 Response Deadline ................ 4
`
`DMC Fails to Provide Any Evidence Supporting Its
`Alleged “Clerical Error” ............................................................. 5
`
`The IPR Decisions DMC Cites Are Inapposite Here ................. 7
`
`B.
`
`Permitting Supplementation Under the Circumstances Present
`Here Would Not Be “in the Interests-of-Justice” and Would Set
`a Troublesome Precedent in Other Proceedings Before the
`Board ..................................................................................................... 8
`
`V.
`
`CONCLUSION .............................................................................................. 10
`
`US.54324607.01
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`-i-
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`I.
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`INTRODUCTION AND STATEMENT OF RELIEF REQUESTED
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`Pursuant to the Board’s May 28, 2014 Order, Petitioner, Target Corporation
`
`(“Target” or “Petitioner”), hereby responds to Patent Owner, Destination Maternity
`
`Corporation’s (“DMC” or “Patent Owner”), Motion to File Supplemental
`
`Information Under 37 C.F.R. § 42.123(b) (the “Motion”).
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`DMC has not met the standard for late submission of supplemental
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`information under 37 C.F.R. § 42.123(b). DMC fails to show why it reasonably
`
`could not have earlier obtained the documents in question, which are listed on
`
`pages 2–3 of the Motion (collectively, the “Unfiled Documents”). Indeed, DMC
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`admits that it had possession of those documents when they were due to be filed
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`but simply failed to file them due to a purported “clerical error” for which DMC
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`does not provide any evidentiary support. Permitting late submissions of evidence
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`under the circumstances presented here would not be in the interests-of-justice and
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`would set a troublesome precedent in other proceedings before the Board.
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`Accordingly, Target respectfully requests that the Board deny DMC’s Motion.1
`
`
`1 Subject to the Board’s approval, pursuant to 37 C.F.R. § 42.6(d), Target does
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`not oppose DMC being permitted to file and serve any exhibits that are merely
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`duplicative of exhibits Target previously filed and served in this proceeding;
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`specifically, DMC’s proposed exhibit numbers 2035, 2036, and 2037. Further,
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`US.54324607.01
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`II. COUNTER STATEMENT OF MATERIAL FACTS
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`1.
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`Target disputes DMC’s assertions that the Unfiled Documents:
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`(a) “were either unintentionally not filed [as exhibits] contemporaneously with the
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`[Patent Owner’s] Response, or attached to declarations rather than filed as
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`exhibits,” (Mot. 2), and (b) “reasonably could not have been obtained earlier
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`because of a clerical error,” (id. at 3; see also id. at 3–5).
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`2.
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`The Unfiled Documents are “related to . . . Patent Owner’s Response”
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`and should have been “filed contemporaneously with [it].” (Id. at 2, 3, 7.)
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`3.
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`DMC variously cited the Unfiled Documents—though not by exhibit
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`numbers—within its Patent Owner’s Response and other papers filed with it. (See
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`id. at 7; see also Paper 25 (Response), Ex. 2017 (Brookstein Decl.), Ex. 2022
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`(Green Decl.).)
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`4.
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`DMC possessed the Unfiled Documents no later than, and, in view of
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`the previous sentence, likely before, its May 5, 2014 Response deadline.
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`III. LEGAL STANDARDS AND APPLICABLE RULES
`A motion to submit supplemental information “must show” both (1) “why
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`the supplemental information reasonably could not have been obtained earlier,”
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`and (2) “that consideration of the supplemental information would be in the
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`to the extent that the Board grants any aspect of the Motion, Target does not
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`oppose DMC’s request to file a motion to seal, (see Mot. 2 n.1), as appropriate.
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`US.54324607.01
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`interests-of-justice.” 37 C.F.R. § 42.123(b). Rule 42.123(b)’s use of the word
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`“and” to connect its two elements means that meeting the standard under the rule
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`requires a showing of “not one [element] or the other, but both.” Crooks v.
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`Harrelson, 282 U.S. 55, 58 (1930) (holding that the word “and” in its “ordinary
`
`sense” is a conjunctive word, requiring “not one or the other, but both”); City of
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`Rome v. United States, 446 U.S. 156, 172 (1980) (holding that by using “and” to
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`describe “the elements of discriminatory purpose and effect in the conjunctive,
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`Congress plainly intended that a voting practice not be precleared unless both
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`discriminatory purpose and effect are absent” (emphasis in original)).
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`The trial rules are “construed to secure the just, speedy, and inexpensive
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`resolution of every proceeding.” 37 C.F.R. § 42.1(b). Nonetheless,
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`“[p]ractitioners involved in inter partes review proceedings are expected to know
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`the rules for those proceedings.” Tasco, Inc. v. Pagnani, IPR2013-00103, Paper 7,
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`at 2 (P.T.A.B. July 19, 2013).
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`“Evidence consists of affidavits, transcripts of depositions, documents, and
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`things. All evidence must be filed in the form of an exhibit.” 37 C.F.R. §
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`42.63(a). “Each exhibit must be filed with the first document in which it is cited
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`except as the Board may otherwise order.” Id. § 42.6(c). Further, “[e]vidence that
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`is not taken, sought, or filed in accordance with this subpart [subpart A of 37
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`C.F.R. § 42, which includes §§ 42.1–99] is not admissible.” Id. § 42.61(a).
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`US.54324607.01
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`IV. ARGUMENT
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`A. DMC Fails to Meet the “Reasonably Could Not Have Been
`Obtained Earlier” Element of Rule 42.123(b)
`
`DMC failed to follow the trial rules. The rules are clear that evidence must
`
`be filed as an exhibit, 37 C.F.R. § 42.63(a), and all exhibits “must be filed with the
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`first document in which [they are] cited,” id. § 42.6(c). DMC’s deadline to file the
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`Unfiled Documents, as exhibits, was its May 5, 2014 Response deadline (Due Date
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`1). See Microsoft Corp. v. Surfcast, Inc., IPR2013-00292, Paper 41, at 2 (P.T.A.B.
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`Feb. 19, 2014) (“As the exhibits go to the declarations submitted in support of the
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`Patent Owner Response, the time for filing and discussing the exhibits was the
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`time for filing the Patent Owner Response.”). DMC failed to meet that deadline,
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`and further failed even to serve the Unfiled Documents on Target until May 23,
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`2014, (Mot. 3), “18 calendar days after [DMC] filed its Response,” (id. at 6).
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`DMC claims that a “clerical error” is to blame. But DMC provides no evidence of
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`any form to support that claim. Thus, the Board should deny DMC’s Motion.
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`1. DMC Possessed the Unfiled Documents, but Simply Failed
`to File them, on Its May 5 Response Deadline
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`DMC admits that the Unfiled Documents are “related to its Patent Owner’s
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`Response” and should have been “filed contemporaneously with the Response.”
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`(Mot. 2, 3, 7.) The Unfiled Documents were variously cited—though not by
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`exhibit numbers—within DMC’s Response and other papers filed with it. (See id.
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`US.54324607.01
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`at 7; see also Paper 25 (Response), Ex. 2017 (Brookstein Decl.), Ex. 2022 (Green
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`Decl.).) Thus, DMC not only “reasonably could . . . have . . . obtained” the
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`Unfiled Documents earlier than May 29, when DMC filed its Motion (or even May
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`23, when DMC first served the Unfiled Documents), but DMC in fact had
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`possession of those documents no later than its May 5 Response deadline. Indeed,
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`given DMC’s citations to, and apparent reliance on, the Unfiled Documents in its
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`papers filed on May 5, DMC most likely possessed the Unfiled Documents well
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`before that time. DMC’s Motion should be denied for this reason alone.
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`2. DMC Fails to Provide Any Evidence Supporting Its Alleged
`“Clerical Error”
`
`DMC provides no explanation for its failure to timely file the Unfiled
`
`Documents other than baldly blaming a “clerical error.” DMC claims that the
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`alleged “clerical error” precipitated DMC’s “not including the exhibits in the
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`filing” or “unintentionally excluding certain documents as exhibits” with its
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`Response. (Mot. 3.) But DMC does not provide any actual evidence supporting or
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`even describing the circumstances surrounding the alleged “clerical error”—e.g., a
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`declaration, affidavit, or other documents, see 37 C.F.R. § 42.63(a)—to show that a
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`“clerical error” in fact occurred, or even likely occurred, as DMC alleges. Indeed,
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`DMC provides no evidence demonstrating the ‘who?,’ ‘what?,’ ‘when?,’ ‘how?,’
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`or ‘why?’ underlying the alleged “error.” To the extent any evidence addressing
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`these questions exists, DMC should have filed it with its Motion. See 37 C.F.R. §
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`US.54324607.01
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`42.22(a)(2) (A motion “must include . . . a detailed explanation of the significance
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`of the evidence including material facts.”); id. § 42.23(b); ABB, Inc. v. ROY-G-BIV
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`Corp., IPR2013-00062, Paper 79, at 2 (P.T.A.B. Mar. 24, 2014) (ordering that a
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`motion under § 42.123(b) “must be accompanied by an affidavit or declaration of
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`counsel setting forth the reasons why the information could not reasonably have
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`been obtained earlier”).
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`Although DMC provides a variety of attorney arguments in its Motion, such
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`arguments are not evidence that the Board may consider in assessing DMC’s
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`Motion. Federal Circuit law is clear that “unsworn attorney argument . . . is not
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`evidence.” GemTron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir.
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`2009); see also ElCommerce.com, Inc. v. SAP AG, 745 F.3d 490, 506 (Fed. Cir.
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`2014) (noting that because “[a]ttorney argument is not evidence,” “the district
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`court erred in granting summary judgment without a proper evidentiary basis for
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`its conclusion”); Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d
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`1249, 1260 (Fed. Cir. 2010).
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`DMC’s failure to provide evidence supporting its “clerical error” assertion
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`wholly undermines the basis for its Motion. See In re Heights Melrose Group,
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`LLC, No. 4:11-cv-03531, 2012 WL 439120, at *2 (S.D. Tex. Feb. 09, 2012)
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`(refusing to allow additional evidence where the proponents alleged that the
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`evidence was not timely submitted “due to a clerical error” but failed to provide
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`US.54324607.01
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`“admissible evidentiary support, such as an affidavit or declaration on personal
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`knowledge” to support and explain the alleged “clerical error”); see also Lue-
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`Martin v. The March Grp., No. 03-105, 2008 WL 4329212 (D.V.I. Sept. 16, 2008)
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`(granting defendants’ motion to strike where “plaintiff’s contention that her
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`counter statement of facts was not [timely] filed because of a clerical error is not
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`supported by the record”). Indeed, the fact that DMC’s “clerical error” argument is
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`wholly unsupported by evidence strongly implies that DMC is using “clerical
`
`error” merely as a convenient euphemism for failure to comply with the trial rules.
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`Accordingly, DMC’s Motion should be denied.
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`3. The IPR Decisions DMC Cites Are Inapposite Here
`Citing two IPR decisions, DMC claims that where a “prior oversight” has
`
`occurred, the “reasonably could not have been obtained earlier” element of
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`§ 42.123(b) may be met “with a showing that consideration of the supplemental
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`information would be in the interests of justice.” (Mot. 4.) DMC’s assertion is
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`incorrect at least because it improperly conflates the Rule’s two separate elements.
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`See City of Rome, 446 U.S. at 172; Crooks, 282 U.S. at 58.
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`Further, neither of the IPR decisions DMC cites support its position. (See
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`Mot. 4-5.) First, in IPR2013-00191, Paper No. 39, the Board, pursuant to
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`§ 42.123(b) permitted correction of a citation to a prior art reference. Id. at 2, 5.
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`But the Board noted that “[t]ypically, an oversight may not be a sufficient reason to
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`US.54324607.01
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`submit supplemental evidence.” Id. at 4. Indeed, the Board allowed the correction
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`because it only involved “minor issues.” Id. Second, in IPR2013-00401, Paper
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`No. 41, the Board permitted the patent owner to file supplemental information—
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`two documents that the patent owner had possessed for “several months”—because
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`the documents in question were the “[p]etitioner’s own statements.” Id. at 3.
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`Here, in contrast to those cases, DMC seeks to add to the record dozens of
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`documents it failed to timely file due to an alleged “clerical error,” (see Mot. 3), or
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`“oversight,” (see id. at 4), for which DMC provides no evidentiary support. The
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`cited cases do not support the proposition that a party who fails to meet a filing
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`deadline for dozens of documents without an explanation supported by evidence
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`will be permitted to file those documents as supplemental information pursuant to
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`§ 42.123(b) merely by claiming “clerical error.” DMC’s Motion should be denied.
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`B.
`
`Permitting Supplementation Under the Circumstances Present
`Here Would Not Be “in the Interests-of-Justice” and Would Set a
`Troublesome Precedent in Other Proceedings Before the Board
`
`Granting DMC’s Motion would amount to allowing DMC to twice skirt the
`
`trial rules without consequence. First, it would allow DMC to file, late, the dozens
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`of Unfiled Documents. DMC knew the rules—it does not claim otherwise—or at
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`least is “expected to know” them, Tasco, IPR2013-00103, Paper 7, at 2, but simply
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`missed its deadline to file the Unfiled Documents. Second, it would allow DMC to
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`prevail under § 42.123(b) where DMC has wholly failed to provide evidentiary
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`US.54324607.01
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`-8-
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`support for its alleged “clerical error” and, as such, cannot meet the “reasonably
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`could not have been obtained earlier” element of § 42.123(b). Permitting DMC to
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`prevail under § 42.123(b) without meeting both of its factors would, in and of
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`itself, be contrary not only to the interests-of-justice but to law. See City of Rome,
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`446 U.S. at 172; Crooks, 282 U.S. at 58.
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`Moreover, in claiming that this is essentially a “no-harm, no-foul” situation
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`because the Unfiled Documents were “publicly available,” (Mot. 5-6), previously
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`produced to Target, (id.), or Target was purportedly “aware of the information”
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`they contained, (id. at 8), DMC glosses over the true nature of the harm. Mere
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`possession of, access to, or awareness of information does not make it proper
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`evidence in an IPR proceeding. See 37 C.F.R. § 42.63(a). Thus, in missing its
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`deadline to file the Unfiled Documents as exhibits, DMC prejudiced Target by
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`forcing Target to contend with the uncertainty of whether the Unfiled Documents
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`will be evidence in this proceeding such that Target and its expert(s) will need to
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`substantively address them. Indeed, DMC neither cited the Unfiled Documents as
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`if they were exhibits (i.e., by exhibit number, see id. § 42.63(c)) in its May 5
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`papers nor filed the Unfiled Documents as exhibits, leaving Target to understand,
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`under the trial rules, see id. §§ 42.6(c), 42.61(a), 42.63(a), (c), that the Unfiled
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`Documents were not evidence in this proceeding, (see Mot. 4 (discussing Target’s
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`objections to evidence pursuant to 37 C.F.R. § 42.64(b)(1))).
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`US.54324607.01
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`This uncertainty—in addition to DMC’s failure even to serve the Unfiled
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`Documents until “18 calendar days after [DMC] filed its Response,” (Mot. 6)—has
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`delayed the preparation of Target’s Reply and, until the Board decides DMC’s
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`Motion, will continue to do so. Moreover, due to DMC’s error, Target has been
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`forced to spend time and resources addressing the issue, which has diverted
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`resources from the preparation of Target’s Reply and imposed further delay.
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`Granting DMC’s Motion would communicate to participants in other
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`proceedings before the Board that it is OK to miss deadlines set by the Board or
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`the trial rules—and impose unnecessary prejudice on an opposing party, as Target
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`has experienced here—so long as one files a motion under § 42.123 blaming a
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`“clerical error.” Permitting supplementation under the present circumstances
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`would not be in the interests-of-justice. As such, DMC’s Motion should be denied.
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`V. CONCLUSION
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`
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`For all of the foregoing reasons, Target respectfully requests that the Board
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`deny DMC’s Motion.
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`Dated: June 6, 2014
`
`By:
`
`
`
`/s/ Norman J. Hedges
`Norman J. Hedges (Reg. No. 44,151)
`FAEGRE BAKER DANIELS LLP
`300 N. Meridian St., Ste. 2700
`Indianapolis, IN 46204-1750
`Telephone: 317-237-0300
`Facsimile: 317-237-1000
`Norman.Hedges@FaegreBD.com
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`US.54324607.01
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I hereby certify that I caused a true and
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`correct copy of the foregoing Petitioner’s Response to Patent Owner’s Motion to
`File Supplemental Information Under 37 C.F.R. § 42.123(b) to be served via e-
`mail, as a PDF file attachment, on June 6, 2014, on the following:
`
`Paul A. Taufer
`Michael L. Burns
`DLA PIPER LLP (US)
`One Liberty Place
`1650 Market St., Ste. 4900
`Philadelphia, PA 19103-7300
`Telephone: (215) 656-3385
`Facsimile:
`(215) 606-3385
`Paul.Taufer@dlapiper.com
`Michael.Burns@dlapiper.com
`
`Stuart E. Pollack
`DLA PIPER LLP (US)
`1251 Avenue of the Americas
`27th Floor
`New York, NY 10020-1104
`Telephone: (212) 335-4964
`Facsimile:
`(212) 884-8464
`Stuart.Pollack@dlapiper.com
`
`By:
`
`
`
`/s/ Norman J. Hedges
`Norman J. Hedges (Reg. No. 44,151)
`FAEGRE BAKER DANIELS LLP
`300 N. Meridian St., Ste. 2700
`Indianapolis, IN 46204-1750
`Telephone: 317-237-0300
`Facsimile: 317-237-1000
`Norman.Hedges@FaegreBD.com
`
`
`
`Dated: June 6, 2014
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