Trials@uspto.gov
`571-272-7822
`
`
`Paper 39
`Entered: May 12, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY CORPORATION,
`Petitioner,
`
`v.
`
`RAYTHEON COMPANY,
`Patent Owner.
`____________
`
`Case IPR2015-01201
`Patent 5,591,678
`____________
`
`
`
`Before JO-ANNE M. KOKOSKI, JENNIFER MEYER CHAGNON, and
`JEFFREY W. ABRAHAM Administrative Patent Judges.
`
`CHAGNON, Administrative Patent Judge.
`
`
`DECISION
`Granting Patent Owner’s Motion to Correct and File
`Supplemental/Replacement Exhibits
`37 C.F.R. § 42.5(a)
`
`
`
`
`
`
`
`571-272-7822
`
`
`Paper 39
`Entered: May 12, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY CORPORATION,
`Petitioner,
`
`v.
`
`RAYTHEON COMPANY,
`Patent Owner.
`____________
`
`Case IPR2015-01201
`Patent 5,591,678
`____________
`
`
`
`Before JO-ANNE M. KOKOSKI, JENNIFER MEYER CHAGNON, and
`JEFFREY W. ABRAHAM Administrative Patent Judges.
`
`CHAGNON, Administrative Patent Judge.
`
`
`DECISION
`Granting Patent Owner’s Motion to Correct and File
`Supplemental/Replacement Exhibits
`37 C.F.R. § 42.5(a)
`
`
`
`
`
`
`
`
`IPR2015-01201
`Patent 5,591,678
`
`
`Patent Owner Raytheon Company (“Raytheon”) filed a Motion to
`Correct and File Supplemental and Replacement Exhibits 2019, 2022, 2025–
`2027 (Paper 26, “Mot.”).1 Raytheon attached proposed Exhibits 2019S,
`2022R, 2025R, 2026R, and 2027R to its Motion. Petitioner Sony
`Corporation (“Sony”) filed an Opposition (Paper 36, “Opp.”) and Raytheon
`filed a Reply (Paper 37). For the following reasons, Raytheon’s Motion is
`granted.
`With its Patent Owner Response, Raytheon submitted a Declaration of
`Dr. Eugene A. Fitzgerald (Ex. 1019). In his Declaration, Dr. Fitzgerald cites
`to several publicly available scientific textbooks. Ex. 2019 ¶¶ 35 n.3, 38 n.6,
`41 n.7; Ex. 2022; Ex. 2025; Ex. 2026; Ex. 2027; see Reply 3 (noting the
`textbooks were publicly available). These citations did not include cites to
`particular pages of the textbooks, but appear to cite the textbooks in their
`entirety. Originally-filed Exhibits 2022, 2025, 2026, and 2027 included only
`the cover pages and table of contents of each of these textbooks.2
`Raytheon asserts that “[d]ue to clerical errors, Patent Owner submitted
`incomplete public exhibits 2019, 2022, 2025, 2026, [and] 2027.”3 Mot. 1.
`
`
`1 As we previously noted in Paper 33, the parties are reminded that, pursuant
`to 37 CFR § 42.20(b), authorization is required prior to filing any motions
`not authorized in an order of general applicability or otherwise authorized
`during the proceeding. Raytheon did not seek such authorization prior to
`filing its Motion. For efficiency of the proceeding, we waive the prior
`authorization requirement of 37 CFR § 42.20(b) and consider the Motion.
`See 37 CFR § 42.5(b).
`2 Exhibit 2026 also included pages 151, 159, and 160 of the text.
`3 Although Patent Owner relies on 37 C.F.R. § 42.104(c), which allows for
`correction of a clerical or typographical mistake in a Petition and does not
`apply to a Patent Owner Response, we exercise our discretion to consider
`Raytheon’s Motion under 37 C.F.R. § 42.5(a).
`
`
`
`IPR2015-01201
`Patent 5,591,678
`
`Raytheon seeks to file replacement versions for Exhibits 2022, 2025, 2026,
`and 2027 (proposed Exhibits 2022R, 2025R, 2026R, and 2027R), each of
`which includes the particular pages of the textbook on which Dr. Fitzgerald
`relied. Mot. 1–3. Raytheon also seeks to file a Supplemental Declaration of
`Dr. Fitzgerald (proposed Exhibit 2019S). Id. According to Raytheon,
`“Dr. Fitzgerald unintentionally omitted specific page citations from four
`publicly-available textbooks that he cited in footnotes in his original
`declaration.” Reply 1.
`Sony argues in its Opposition that Raytheon “seeks to supplement the
`record by adding wholly new, substantive content,” rather than correct a
`clerical or typographical mistake. Opp. 2. Sony further argues that the
`proposed supplemental declaration includes “new substantive paragraphs
`characterizing [the] exhibits,” and that there is “no indication that the
`declaration had been prepared before [Raytheon’s] filing deadline but was
`inadvertently not submitted.” Id. at 3. Additionally, Sony asserts that the
`“newly-added pages [of the textbook exhibits] were not cited in the original
`declaration.” Id.
`In Reply, Raytheon asserts that the “corrections significantly reduce
`the size of the original record and focus Dr. Fitzgerald’s testimony without
`prejudice to Petitioner.” Reply 1. According to Raytheon, providing the
`specific page citations from the textbooks reduces the record from the entire
`cited textbook, to only the pages cited thereof. Id. Raytheon also notes that
`the supplemental exhibits were provided to Sony in response to Sony’s
`objections to the original exhibits, and more than one month prior to Sony’s
`deposition of Dr. Fitzgerald. Reply 1–2.
`
`
`
`IPR2015-01201
`Patent 5,591,678
`
`
`We agree with Sony that the evidence presented does not show that
`the character of Raytheon’s unintended omissions was a clerical or
`typographical error. We are persuaded, however, that the requested
`corrections to the textbook exhibits would benefit the Board and the public
`by providing a clearer and more complete record. Because Sony was in
`possession of these exhibits at the time of its cross-examination of
`Dr. Fitzgerald, we do not discern any prejudice to Sony in allowing the
`corrected exhibits to be filed. Accordingly, we exercise our discretion and
`authorize Raytheon to submit the proposed Exhibits 2022R, 2025R, 2026R,
`and 2027R in this proceeding. The document names assigned in PRPS
`should denote that the exhibit has been corrected. Original Exhibits 2022,
`2025, 2026, and 2027, filed on March 11, 2016, will be expunged.
`We are not persuaded, however, that ¶¶ 4, 6, and 7 of proposed
`Exhibit 2019S simply correct any unintended omission. Instead, these
`paragraphs newly characterize the exhibits in a manner not included in
`Dr. Fitzgerald’s original Declaration. Raytheon, thus, is authorized to
`submit a supplemental Declaration of Dr. Fitzgerald limited to setting forth
`the specific pages of the textbook exhibits upon which he relied in his
`original Declaration (i.e., ¶¶ 1–3, 5, 8 of proposed Exhibit 2019S).
`The document name assigned in PRPS should denote that the exhibit is a
`supplemental version.
`Accordingly, it is:
`ORDERED that Raytheon’s Motion to Correct and File Supplemental
`and Replacement Exhibits is granted;
`FURTHER ORDERED that current Exhibits 2022, 2025, 2026, and
`2027, filed on March 11, 2016, are expunged;
`
`
`
`IPR2015-01201
`Patent 5,591,678
`
`
`FURTHER ORDERED that Raytheon is authorized to file corrected
`Exhibits 2022R, 2025R, 2026R, and 2027R. The document names should
`denote that the exhibit has been corrected;
`FURTHER ORDERED that Raytheon is authorized to file a
`Supplemental Declaration of Dr. Fitzgerald in accordance with our
`instructions; and
`FURTHER ORDERED that all corrected and supplemental exhibits
`are to be filed no later than May 19, 2016.
`
`
`
`
`
`IPR2015-01201
`Patent 5,591,678
`
`PETITIONER:
`Matthew A. Smith
`Zhuanjia Gu
`TURNER BOYD LLP
`smith@turnerboyd.com
`gu@turnerboyd.com
`
`Robert Hails
`rhails@bakerlaw.com
`
`PATENT OWNER:
`Thomas J. Filarski
`John L. Abramic
`Brian Fahrenbach
`Stanley A. Schlitter
`Daniel S. Stringfield
`STEPTOE & JOHNSON, LLP
`tfilarski@steptoe.com
`jabramic@steptoe.com
`678IPR@steptoe.com
`sschlitter@steptoe.com
`dstringfield@steptoe.com
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