Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper No. 42
`Entered: June 8, 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.
`
`DECISION
`Patent Owner’s Motion for Late Submission of Supplemental Information
`37 C.F.R. §§ 42.25(b) and 42.123(b)
`
`
`1 This Decision addresses similar motions in four cases. We exercise our
`discretion to issue a single decision, to be filed in each case. The parties are
`not authorized to use this style heading for any subsequent papers.
`
`
`
`
`Tel: 571-272-7822
`
`Paper No. 42
`Entered: June 8, 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.
`
`DECISION
`Patent Owner’s Motion for Late Submission of Supplemental Information
`37 C.F.R. §§ 42.25(b) and 42.123(b)
`
`
`1 This Decision addresses similar motions in four cases. We exercise our
`discretion to issue a single decision, 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 May 2, 2016, the Board granted Patent Owner’s request for
`authorization to file a motion for late submission of supplemental
`information pursuant to 37 C.F.R. § 42.123(b).2 Paper 34.3 Patent Owner
`filed its motion on May 13, 2016. Paper 35. In its motion, Patent Owner
`seeks to submit a copy of U.S. Patent Application Publication No.
`2016/0038875 A1 (“the ’875 publication”). On May 24, 2016, Petitioner
`filed its opposition to Patent Owner’s motion. Paper 39.
`The ’875 publication is titled “CuCHA Material for SCR Catalysis,”
`and lists Frank-Walter Schuetze as the inventor and UMICORE AG & Co.
`KG (Petitioner) as both the applicant and assignee. The ’875 publication
`published in English on February 11, 2016, and is the U.S. national stage
`application of an earlier international application, published on October 9,
`2014 as WO2014/161860 (PCT/EP2014/056537) in German.
`Patent Owner states that it first learned of the ’875 publication on
`February 11, 2016, the date it published in English and the day before Patent
`Owner’s Response was due. Paper 35, 2. Patent Owner asserts that
`statements made by Petitioner in the ’875 publication “directly contradict
`[Petitioner’s] contention that the claimed Cu/Al ratio and SAR in the 662
`Patent are insignificant and produce expected results.” Id. at 1–2.
`According to Patent Owner, it notified Petitioner of its intention to submit
`the ’875 publication to the Board on April 21, 2016, “[a]fter examining the
`
`
`2 In IPR2015-001121 and 2015-001125, we instituted trial on October 29,
`2015, and in IPR2015-001123 and IPR2015-001124, we instituted trial on
`November 2, 2015.
`3 Citations herein are to the record in IPR2015-01121; similar papers may be
`found in the records of IPR2015-01123, IPR2015-1124, and IPR2015-
`01125.
`
`2
`
`
`
`IPR2015-01121, IPR2015-01123, IPR2015-01124, IPR2015-01125
`Patents 7,601,662 and 8,404,203
`
`history of the 875 Publication and comparing it to the positions taken by
`[Petitioner] in this IPR.” Id. at 2.
`Patent Owner correctly notes that a motion for late submission of
`supplemental information is governed by 37 C.F.R. § 42.123(b), which
`requires the movant to 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. This rule’s
`requirement that the movant show why the supplemental information “could
`not have been obtained earlier” underscores the importance of avoiding
`unwarranted delays in introducing such information into the proceeding.
`Consistent with the idea of avoiding unwarranted delays with respect to not
`only the late submission of supplemental information, but also to the entire
`IPR proceeding in general, 37 C.F.R. § 42.25(b) states that “[a] party should
`seek relief promptly after the need for relief is identified. Delay in seeking
`relief may justify a denial of relief sought.” See Illumina, Inc. v. The
`Trustees of Columbia Univ., IPR2012-00006, Paper 87, 4–5 (PTAB Oct. 30,
`2013).
`The record indicates that Patent Owner waited over two months
`between the time it became aware of the ’875 publication (on February 11,
`2016), and the time it contacted the Board to seek authorization to file a
`motion to submit the ’875 publication as supplemental information (on April
`25, 2016). Petitioner argues that Patent Owner “has not even attempted to
`explain why the ’875 publication could not have been reasonably introduced
`earlier in the proceeding.” Paper 39, 1. Petitioner argues that Patent Owner
`should have “immediately raise[d] any purported relevance of the
`
`3
`
`
`
`IPR2015-01121, IPR2015-01123, IPR2015-01124, IPR2015-01125
`Patents 7,601,662 and 8,404,203
`
`publication to this IPR,” but instead Petitioner “delayed more than two
`months until April 21, 2016.” Id. at 1–2. According to Petitioner,
`[t]his two month delay occurred during a very critical period.
`During this time, [Patent Owner] filed its response brief.
`[Petitioner] assessed [Patent Owner’s] opposition briefing and
`exhibits, deposed [Patent Owner’s] technical expert witness
`(who offered opinions on unexpected results), and was heavily
`engaged in finalizing its own IPR replies. By waiting to raise the
`’875 publication, [Patent Owner] deprived [Petitioner] of the
`ability to cross examine [Patent Owner’s] expert on the
`publication.
`Id. at 2.
`The record is consistent with Petitioner’s position, as it shows that
`Petitioner filed and served its Notice of Cross Examination by Deposition of
`Dr. Michael Tsapatsis (Patent Owner’s “technical expert witness”) on March
`23, 2016, setting April 12, 2016, as the date for the deposition (Paper 28),
`and that the deposition took place on that date (Ex. 1019). The record also
`indicates that Patent Owner waited over one week after that deposition
`before notifying Petitioner of its intention to submit the ’875 publication as
`supplemental information. Paper 35, 2; Paper 39, 2 n.1.
`Patent Owner does not state when, after becoming aware of the ’875
`publication, it arrived at its conclusion that Petitioner was taking inconsistent
`positions. If, as Patent Owner contends, the ’875 publication “plainly
`contradicts” Petitioner’s position in these proceedings (Paper 35, 3), it is
`unclear why two months passed between the time Patent Owner allegedly
`first became aware of the ’875 publication and the time Patent Owner
`requested authorization to file a motion to submit supplemental information.
`Thus, in the absence of an explanation for Patent Owner’s delay other than
`that Patent Owner was “examining the history of the 875 Publication and
`
`4
`
`
`
`IPR2015-01121, IPR2015-01123, IPR2015-01124, IPR2015-01125
`Patents 7,601,662 and 8,404,203
`
`comparing it” to Petitioner’s positions, we determine that Patent Owner
`failed to promptly seek the relief it requests in the present motion. For this
`reason, we deny Patent Owner’s motion pursuant to 37 C.F.R. § 42.25(b).
`Additionally, in connection with Patent Owner’s Motion for Late
`Submission of Supplemental Information, Patent Owner filed a copy of the
`’875 publication as Exhibit 2036, and a copy of a declaration accompanying
`the ’875 publication as Exhibit 2037. In view of our decision denying Patent
`Owner’s motion, these exhibits will be expunged from the record pursuant to
`37 C.F.R. § 42.7(a).
`Accordingly, it is
`ORDERED that Patent Owner’s Motion for Late Submission of
`Supplemental Information under 37 C.F.R. § 42.123(b) is denied; and
`FURTHER ORDERED that Exhibits 2036 and 2037 be expunged
`from the record.
`
`
`
`
`
`
`
`5
`
`
`
`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
`
`6
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