`Date: September 19, 2014
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`DELL INC., HEWLETT-PACKARD COMPANY, and NETAPP, INC.
`Petitioner
`
`v.
`
`ELECTRONICS AND TELECOMMUNICATIONS RESEARCH
`INSTITUTE
`Patent Owner
`_______________
`
`Case IPR2013-00635
`Patent 6,978,346 B2
`_______________
`
`
`Before MIRIAM L. QUINN, and GREGG I. ANDERSON, Administrative Patent
`Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`IPR2013-00635
`Patent 6,978,346 B2
`
`
`
`
`
`On September 16, 2014, Judges Quinn and Anderson held a conference call
`requested by Patent Owner seeking authorization for a motion to file supplemental
`information under 37 C.F.R. § 42.123(b). The supplemental information consists
`of two documents cited in petitions of different inter partes review proceedings
`(IPRs), all of which are in the preliminary stage. These documents are a prior art
`reference, referred to as DeKoning, and a declaration of Dr. Katz, a third-party
`witness. After careful review of the facts and the parties’ arguments, we denied
`Patent Owner’s request.
`Rule 123(b) addresses late submission of supplemental information. Patent
`Owner, as the proponent of the supplemental information, has the burden of
`showing that the “supplemental information reasonably could not have been
`obtained earlier and that consideration of the supplemental information would be in
`the interests-of-justice. 37 C.F.R. § 42.123(b).
`Patent Owner has had in its possession the proposed supplemental
`information since its filing, at the latest, on June 13, 2014. Patent Owner
`responded to the Petition in this proceeding on June 20, almost three months ago.
`Patent Owner acknowledged the delay, but states it was not until just recently that
`it was able to review the documents filed with the petitions in the other IPRs and
`identify the supplemental information. Further, Patent Owner argues that the
`information involves just a “couple of paragraphs,” but that the filings Patent
`Owner needed to review were large. The Patent Owner’s explanation for the delay
`is not a sufficient showing as to how the interests-of-justice are served.
`The information is alleged to be relevant to support Patent Owner’s claim
`construction for the term “RAID.” Patent Owner, however, is not seeking to
`introduce a new argument on claim construction, but instead seeks to make that
`information available to the record in this proceeding as a housekeeping matter.
`
`2
`
`
`
`
`IPR2013-00635
`Patent 6,978,346 B2
`
`
`
`
`Petitioner objected to the introduction of that evidence in this record because
`it is too late to substantively respond to it. Patent Owner has no further
`opportunity to brief the relevance of the proposed supplemental information. And
`Petitioner has no opportunity to cross-examine a third-party declarant over which
`neither Petitioner nor Patent Owner has control. Petitioner claims prejudice in that
`its Reply is due on September 22, 2014, in less than a week. Resolution of the
`issue would not occur before that deadline, and, therefore, Petitioner would not
`have an opportunity to address the new evidence on claim construction in its Reply
`or elsewhere.
`In our ruling denying the request, we explained that although the proposed
`supplemental information may be relevant to a claim construction position argued
`by Patent Owner in its Response, our consideration of that alleged relevance is
`outweighed by the delay in seeking supplementation of the record and the
`prejudice to Petitioner, had we allowed the introduction of that information at this
`stage. Our mandate is to conduct a just, speedy, and inexpensive resolution of the
`issues. A delay of three months to discover supplemental information with alleged
`relevance and to seek supplementation so close to a deadline for an opponent’s
`response are contrary to that mandate and heavily weigh against consideration of
`that information in the interests-of-justice.
`As stated during the conference call with the parties, we confirm that it is
`hereby
`ORDERED that Patent Owner’s request for authorization to file a motion to
`file supplemental information is denied.
`
`
`
`
`3
`
`
`
`
`
`
`
`
`IPR2013-00635
`Patent 6,978,346 B2
`
`FOR PETITIONERS:
`Lead Counsel
`David McCombs
`david.mccombs.ipr@haynesboone.com
`
`Back-up Counsel
`Andrew S. Ehmke
`andy.ehmke.ipr@haynesboone.com
`Thomas W. Kelton
`Thomas.kelton.ipr@haynesboone.com
`John Russell Emerson
`Russell.emerson.ipr@haynesboone.com
`
`
`
`FOR PATENT OWNER:
`Lead Counsel
`Mathew Phillips
`matthew.phillips@renaissanceiplaw.com
`
`Back-up Counsel
`Alexander Giza
`agiza@raklaw.com
`
`Derek Meeker
`derek.meeker@renaissanceiplaw.com
`
`
`
`
`
`4
`
`
`
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