`Tel: 571-272-7822
`
`Paper No. 34
`Entered: May 2, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`UMICORE AG & CO. KG,
`Petitioner,
`
`v.
`
`BASF CORPORATION,
`Patent Owner.
`
`____________
`
`Cases IPR2015-01121, IPR2015-01123, IPR2015-01124, IPR2015-011251
`Patents 7,601,662 and 8,404,203
`____________
`
`Before CHRISTOPHER L. CRUMBLEY, JO-ANNE M. KOKOSKI, and
`JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`ABRAHAM, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. §§ 42.5, 42.123(b)
`
`
`1 This order addresses similar topics in four cases. We exercise our
`discretion to issue a single Order, to be filed in each case. The parties are
`not authorized to use this style heading for any subsequent papers.
`
`
`
`
`
`IPR2015-01121, IPR2015-01123, IPR2015-01124, IPR2015-01125
`Patents 7,601,662 and 8,404,203
`
`
`On April 29, 2016, a conference call was held between counsel for the
`parties and Judges Crumbley, Kokoski, and Abraham. The purpose of the
`call was to discuss Patent Owner’s request for authorization to file a motion
`to submit supplemental information pursuant to 37 C.F.R. § 42.123(b),
`which pertains to the submission of supplemental information more than one
`month after the date trial is instituted.2 Specifically, Patent Owner seeks to
`submit a copy of U.S. Patent Application No. 2016/0038875 (“the ’875
`application”), published February 11, 2016, the day before Patent Owner’s
`response to the Petition was due. Patent Owner argues that the ’875
`application, filed by Petitioner, contains information that is inconsistent with
`positions taken by Petitioner in these proceedings.
`Petitioner opposes Patent Owner’s request. Specifically, during the
`conference call, Petitioner questioned the relevance of the ’875 application
`and argued that Patent Owner reasonably could have obtained the
`supplemental information earlier. Petitioner also argued that it would be
`prejudiced by allowing Patent Owner to file its motion to submit
`supplemental information at this stage of the proceedings, because, inter
`alia, depositions are over and Petitioner’s Reply is due on May 13, 2016.
`After considering the parties’ arguments, we authorize Patent Owner
`to file an eight-page motion to submit supplemental information by Friday,
`May 13, 2016. Petitioner is authorized to file an eight-page opposition by
`Tuesday, May 24, 2016. No reply is authorized at this time.
`
`
`2 In IPR2015-01121 and IPR2015-01125, we instituted trial on October 29,
`2015. In IPR2015-01123 and IPR2015-01124, we instituted trial on
`November 2, 2015.
`
`2
`
`
`
`IPR2015-01121, IPR2015-01123, IPR2015-01124, IPR2015-01125
`Patents 7,601,662 and 8,404,203
`
`
`Pursuant to section 42.123(b) of our Rules, Patent Owner’s motion
`“must show why 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). Furthermore,
`with regard to Petitioner’s arguments regarding prejudice, because the ’875
`application is currently not part of the record, Petitioner need not address it
`in its Reply, which is currently due May 13, 2016. The Board may, if
`appropriate, permit the parties to submit further briefing addressing the ’875
`application if Patent Owner’s motion to submit supplemental information is
`granted.
`Accordingly, it is
`ORDERED that Patent Owner’s request for authorization to file a
`motion to submit supplemental information under 37 C.F.R. § 42.123(b) is
`granted;
`FURTHER ORDERED that Patent Owner’s motion shall be no more
`than eight (8) pages and filed no later than May 13, 2016;
`FURTHER ORDERED that Petitioner is authorized to file an
`opposition to Patent Owner’s motion, which shall be no more than eight (8)
`pages and filed no later than May 24, 2016; and
`FURTHER ORDERED that no reply is authorized at this time.
`
`
`
`
`
`
`
`3
`
`
`
`IPR2015-01121, IPR2015-01123, IPR2015-01124, IPR2015-01125
`Patents 7,601,662 and 8,404,203
`
`PETITIONER:
`Elizabeth Gardener
`E1APTABDocket@orrick.com
`Richard DeLucia
`rdelucia@orrick.com
`
`PATENT OWNER:
`Brian Ferguson
`brian.ferguson@weil.com
`Anish Desai
`anish.desai@weil.com
`
`4
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