`Tel: 571-272-7822
`
`Paper 11
`Entered: February 3, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LTD.
`(TSMC),
`Petitioner,
`
`v.
`
`DSS TECHNOLOGY MANAGEMENT, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-01030
`Patent 5,652,084
`____________
`
`
`
`Before ERICA A. FRANKLIN, JACQUELINE WRIGHT BONILLA, and
`KRISTINA M. KALAN, Administrative Patent Judges.
`
`
`
`BONILLA, Administrative Patent Judge.
`
`
`
`
`DECISION
`Petitioner’s Motion to Submit Supplemental Information
`37 C.F.R. § 42.123(a)
`
`
`
`IPR2014-01030
`Patent 5,652,084
`
`
`On February 2, 2015, a conference call was conducted among counsel for
`Petitioner Taiwan Semiconductor Manufacturing Company, Ltd. (“TSMC”),
`counsel for Patent Owner DSS Technology Management, Inc. (“Patent Owner”),
`counsel for Samsung Electronics Co., Ltd., i.e., Petitioner in IPR2014-01493
`(having a joinder motion pending), and Judges Franklin, Bonilla, and Kalan. The
`purpose of the call was to address TSMC’s request to file a motion to submit
`supplemental information under 37 C.F.R. § 123(a).
`During the call, TSMC explained that its motion would relate to
`supplemental information it wishes to submit in relation to Exhibit 1004, which is
`an English translation of Japanese Patent App. No. H04-71222, published March 5,
`1992 (“Jinbo”) (Ex. 1011). Specifically, TSMC indicated that the supplemental
`information would be a declaration, as required under 37 C.F.R. § 1.68 and
`§ 42.63(b), attesting to the accuracy of the translation of Jinbo.
`During the call, Patent Owner did not object to TSMC filing its proposed
`motion to submit supplemental information. We authorized TSMC to file its
`motion by the end of the day on February 2, 2015, as discussed during the call.
`TSMC filed its unopposed motion as authorized, seeking authorization to file
`Exhibit 1012, which corresponds to a declaration, as discussed above. Paper 10;
`Ex. 1012.
`As the moving party, TSMC bears the burden of proving that it is entitled to
`the requested relief. 37 C.F.R. § 42.20(c). Under 37 C.F.R. § 42.123(a), a party
`may file a motion to submit supplemental information if the following
`requirements are met: (1) a request for authorization to file such motion is made
`within one month of the date the trial was instituted; and (2) the supplemental
`information must be relevant to a claim for which trial has been instituted.
`
`
`
`
`2
`
`
`
`IPR2014-01030
`Patent 5,652,084
`
`
`TSMC filed its motion on February 2, 2015, which is within one month of
`the institution date in this proceeding of December 31, 2015, when one takes into
`account that January 31, 2015, fell on a Saturday. Papers 7 and 10; 37 C.F.R.
`§ 1.7, § 42.1(a). In addition, we instituted trial in relation to three grounds, each
`involving challenges to claims based on Jinbo, either alone or in combination with
`other references. Paper 7, 19. Exhibit 1012, evidence that allegedly confirms that
`Exhibit 1004 is an accurate translation of Exhibit 1011, i.e., references that serve as
`a basis of grounds of unpatentability authorized in this proceeding, is relevant to
`claims of the ’084 patent for which this trial was instituted. Cf. Palo Alto
`Networks, Inc. v. Juniper Networks, Inc., Case IPR2013-00369, slip op. at 2–3
`(PTAB Feb. 5, 2014) (Paper 37) (granting a motion to submit supplement
`information regarding public accessibility of references serving as a basis for
`instituted grounds). Thus, TSMC meets the two requirements of 37 C.F.R.
`§ 42.123(a).
`We also are persuaded that Petitioner has met its burden because the
`supplemental information Petitioner seeks to submit does not change the grounds
`of unpatentability authorized in this proceeding, nor does it change the evidence
`initially presented in the Petition to support those grounds of unpatentability.
`Instead, such information merely constitutes additional evidence that allegedly
`confirms the accuracy of the English translation of Jinbo, as presented in Exhibit
`1004.
`
`
`Accordingly, it is
`ORDERED that TSMC’s motion to submit Exhibit 1012 as supplemental
`information under 37 C.F.R. § 42.123(a) is granted.
`
`
`
`
`3
`
`
`
`IPR2014-01030
`Patent 5,652,084
`
`PETITIONER:
`
`
`David O’Dell
`david.odell.ipr@haynesboone.com
`
`David McCombs
`david.mccombs.ipr@haynesboone.com
`
`4
`
`
`PATENT OWNER:
`
`
`Andriy Lytvyn
`andriy.lytvyn@smithhopen.com
`
`Anton Hopen
`anton.hopen@smithhopen.com
`
`
`
`
`
`
`
`
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