Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 18
`Entered: March 31, 2016
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`ROBERT BOSCH LLC and DAIMLER AG,
`Petitioner,
`
`v.
`
`ORBITAL AUSTRALIA PTY LTD,
`Patent Owner.
`____________
`
`Case IPR2015-01258 (Patent 5,655,365)
`Case IPR2015-01259 (Patent 5,655,365)1
`____________
`
`Before KEN B. BARRETT, JEREMY M. PLENZLER, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`AUTHORIZATION FOR PETITIONER TO FILE A MOTION
`TO SUBMIT SUPPLEMENTAL INFORMATION
`37 C.F.R. § 42.123
`
`
`
`
`1 The parties are not authorized to use a joint caption.
`
`
`Tel: 571-272-7822
`
`Paper 18
`Entered: March 31, 2016
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`ROBERT BOSCH LLC and DAIMLER AG,
`Petitioner,
`
`v.
`
`ORBITAL AUSTRALIA PTY LTD,
`Patent Owner.
`____________
`
`Case IPR2015-01258 (Patent 5,655,365)
`Case IPR2015-01259 (Patent 5,655,365)1
`____________
`
`Before KEN B. BARRETT, JEREMY M. PLENZLER, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`AUTHORIZATION FOR PETITIONER TO FILE A MOTION
`TO SUBMIT SUPPLEMENTAL INFORMATION
`37 C.F.R. § 42.123
`
`
`
`
`1 The parties are not authorized to use a joint caption.
`
`
`
`IPR2015-01258 and -01259
`Patent 5,655,365
`
`On June 16, 2015, Robert Bosch LLC and Daimler AG (collectively
`“Petitioner”) filed in the above-captioned cases petitions requesting inter
`partes review of U.S. Patent No. 5,655,365. IPR2015-01258, Paper 3;
`IPR2015-01259, Paper 3. Patent Owner, Orbital Australia Pty Ltd, filed
`Preliminary Responses. IPR2015-01258, Paper 10; IPR2015-01259,
`Paper 8. In its Preliminary Responses, Patent Owner argued that Petitioner
`failed to establish Bernhardt2 as prior art. E.g., IPR2015-01258, Prelim.
`Resp. 29.
`On October 20, 2015, and prior to the issuance of decisions on the
`petitions, Petitioner, through an email to the Board, “request[ed] permission,
`under 37 C.F.R. § 42.5(b), to submit additional documents relating to the
`publication of the Bernhardt paper in the 1970s.” IPR2016-00083,
`Ex. 1017.3 In that email, Petitioner represented “Patent Owner has had the
`opportunity to review the three documents.” Id.
`The Board responded to the request on October 21, 2015, stating:
`“The Board, having considered Petitioner’s email of October 20, 2015,
`denies Petitioner’s request to submit additional documents at this time, and
`declines to schedule a telephone conference to discuss the matter.” Id.
`On November 10, 2015, Petitioner filed a third petition requesting
`inter partes review of U.S. Patent No. 5,655,365. IPR2016-00083, Paper 3.
`According to Petitioner:
`Out of an abundance of caution and in view of the approaching
`time bar under 35 U.S.C. § 315(b), Petitioner has filed the Third
`’365 IPR consolidating the existing Bernhardt-related grounds
`
`2 Bernhardt is Exhibit 1002 in IPR2015-01258 and Exhibit 1007 in
`IPR2015-01259 (collectively the “Bernhardt Exhibits”).
`3 The cited rule, 37 C.F.R. § 42.5, provides that the Board may determine the
`proper course of conduct in situations not specifically covered by the rules.
`
`2
`
`
`
`IPR2015-01258 and -01259
`Patent 5,655,365
`
`with additional evidence showing the publication and public
`accessibility of Bernhardt well before the critical date.
`IPR2016-00083, Paper 4 (Motion for Joinder) 5.
`The Board instituted an inter partes review in the two earlier cases on
`December 30, 2015. IPR2015-01258, Paper 11; IPR2015-01259, Paper 9.
`Subsequently, Patent Owner filed authenticity and hearsay objections to the
`Bernhardt Exhibits. IPR2015-01258, Paper 14; IPR2015-01259, Paper 12.
`Our rules provide that “[t]he party relying on evidence to which an objection
`is timely served may respond to the objection by serving supplemental
`evidence within ten business days of service of the objection.” 37 C.F.R.
`§ 42.64(b)(2). We understand Petitioner to have served on Patent Owner
`supplemental evidence directed to the Bernhardt objections. See
`IPR2015-01258, Paper 15 (Petitioner’s Updated Exhibit List identifying
`certain exhibits served but not filed); IPR2015-01259, Paper 13 (same).
`Although not explicit in the Board’s response to Petitioner’s email
`requesting authorization to submit additional documents, the request was
`denied as premature because trial had not been instituted, yet. See
`IPR2016-00083, Ex. 1017 (“The Board . . . denies Petitioner’s request to
`submit additional documents as at this time.”); see also 37 C.F.R. §
`42.123(a) (“Once a trial has been instituted, a party may file a motion to
`submit supplemental information in accordance with [certain]
`requirements.”) (emphasis added). For purposes of these proceedings, we
`treat Petitioner’s email of October 20, 2015, as a timely request for
`authorization to file supplemental information. See 37 C.F.R. § 42.123.
`
`It is:
`ORDERED that the parties will meet and confer in good faith to
`discuss Patent Owner’s objections to the Bernhardt Exhibits in light of the
`
`3
`
`
`
`IPR2015-01258 and -01259
`Patent 5,655,365
`
`supplemental evidence and to discuss any potential resolution of the issue of
`admissibility of the Bernhardt Exhibits;
`
`FURTHER ORDERED that, should no agreement be reached
`regarding the issue, Petitioner is authorized to file a motion to submit
`supplemental information pursuant to 37 C.F.R. § 42.123;
`
`FURTHER ORDERED that Petitioner’s motion is due April 8, 2016,
`and is limited to five (5) pages;
`
`FURTHER ORDERED that Patent Owner’s opposition to the motion,
`if any, is due April 18, 2016, and is limited to five (5) pages;
`
`FURTHER ORDERED that a reply by Petitioner is not authorized at
`this time;
`
`FURTHER ORDERED that, should the parties reach an agreement
`regarding the admissibility of the Bernhardt Exhibits, they shall file on or
`before April 8, 2016, a paper so indicating; and
`
`FURTHER ORDERED that each party shall file substantively
`identical respective papers in both IPR2015-01258 and IPR2015-01259.
`
`
`
`
`
`
`
`
`
`
`4
`
`
`
`IPR2015-01258 and -01259
`Patent 5,655,365
`
`PETITIONER:
`
`Lionel M. Lavenue
`Aaron L. Parker
`Joshua L. Goldberg
`David C. Reese
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`lionel.lavenue@finnegan.com
`aaron.parker@finnegan.com
`joshua.goldberg@finnegan.com
`david.reese@finnegan.com
`Bosch-Orbital-IPR@finnegan.com
`
`Edward DeFranco
`Brett Watkins
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`eddefranco@quinnemanuel.com
`brettwatkins@quinnemanuel.com
`MB_Orbital_IPR@quinnemanuel.com
`
`
`
`
`
`PATENT OWNER:
`
`David Magee
`Andrew Schultz
`PEPPER HAMILTON LLP
`mageed@pepperlaw.com
`schultza@pepperlaw.com
`
`
`5
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
