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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
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`GLOBAL TEL*LINK CORPORATION
`Petitioner
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`v.
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`SECURUS TECHNOLOGIES, INC.
`Patent Owner
`____________________
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`Case IPR2016-01362
`Patent No. 9,083,850 B1
`_____________________
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`PETITIONER’S MOTION TO SUBMIT
`SUPPLEMENTAL INFORMATION
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
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`In this proceeding, trial has been instituted for claims 6, 7, 10-12, 19, and 20
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`Case IPR2016-01362
`U.S. Patent No. 9,083,850 B1
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`
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`based on, in part, the article titled “Remote Controlled DSP Based Image Capturing
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`and Processing System Featuring Two-Axis Motion” by Gotsopoulos et al. (Exhibit
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`1008). Pursuant to 37 C.F.R. § 42.123(a) and as authorized by the Board during a
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`teleconference on February 16, 2017, Petitioner moves to submit the following
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`supplemental information:
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`1.
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`Declaration of Gerard P. Grenier, Custodian of Records for IEEE, dated
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`January 27, 2017, attesting to the public accessibility of Exhibit 1008
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`as of at least December 2, 2010, and the public accessibility online as
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`of at least February 13, 2012; and
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`2.
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`The entire European DSP in Education and Research Conference
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`(EDERC2010) proceeding papers downloaded from the IEEE
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`electronic digital library;
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`This supplemental information was also served on Patent Owner on February
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`7, 2017. This motion complies with the requirements of rule 42.123(a): a request for
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`the authorization to file a motion to submit supplemental information was timely
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`made by Petitioner within one month of the trial institution date, and the
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`supplemental information is relevant to a claim for which the trial has been
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`instituted, namely institution for claims 6, 7, 10-12, 19, and 20.
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`Exhibit 1008 includes the publication dates for the papers at the IEEE
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`- 1 -
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`European DSP in Education and Research Conference (EDERC2010), which
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`Case IPR2016-01362
`U.S. Patent No. 9,083,850 B1
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`occurred prior to the earliest priority date of U.S. Patent No. 9,083,850 (“the ’850
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`patent”), and lists the article titled “Remote Controlled DSP Based Image Capturing
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`and Processing System Featuring Two-Axis Motion” in its table of contents. Exhibit
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`1008 includes this article, which is relied on to support the instituted grounds of
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`unpatentability for claims 6, 7, 10-12, 19, and 20. Patent Owner did not challenge
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`the public accessibility of Exhibit 1008 prior to institution of this proceeding, and
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`the Board found the evidence of record sufficient to institute grounds based on
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`Exhibit 1008. (See Paper 9, Paper 11.) However, in its objections to evidence filed
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`after institution, Patent Owner asserted that the evidence of record did not
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`demonstrate that Exhibit 1008 was publicly accessible before the earliest priority
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`date of the ’850 patent. (Paper 13, p. 1.) In response to Patent Owner’s evidentiary
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`challenge to public accessibility, Petitioner seeks to submit supplemental
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`information further confirming the public accessibility of Exhibit 1008 prior to the
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`earliest priority date of the ’850 patent.
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`This supplemental information does not change the grounds of unpatentability
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`instituted in this proceeding, nor does it change the evidence or arguments initially
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`presented in the Petition to support those grounds. Rather, such information merely
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`constitutes additional evidence that confirms public accessibility of Exhibit 1008.
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`The supplemental information was neither withheld intentionally nor would it limit
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`- 2 -
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`or frustrate the Board’s ability to complete this proceeding in a timely manner,
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`Case IPR2016-01362
`U.S. Patent No. 9,083,850 B1
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`providing sufficient time for Patent Owner to address the submitted supplemental
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`information in its Patent Owner Response due March 30, 2017. See IPR2015-01290,
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`Paper 19, p. 6 (finding that submission of supplemental information prior to Patent
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`Owner’s Response was the most expedient manner of handling evidence that is
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`relevant to whether a reference is a prior art printed publication).
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`Petitioner further notes that rule 42.123(a) does not require the movant to
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`demonstrate that the supplemental information proffered could not have been
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`obtained earlier. See IPR2014-01204, Paper 26, pp. 3-4. Nevertheless, the Board has
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`denied such a motion when the supplemental information acts to bolster arguments
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`in the petition, particularly when this information was reasonably available at the
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`time of filing the petition. See IPR2013-00106, Paper 24, pp. 3-5. This is not the
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`case here, as the supplemental information Petitioner seeks to submit does not
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`change the evidence or arguments presented in the Petition to support the instituted
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`grounds of unpatentability. There is no burden or prejudice to Patent Owner that will
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`result from submitting this supplemental information, which Patent Owner can
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`address in its Patent Owner Response. See IPR2013-00369, Paper 37, p. 5 (finding
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`no prejudice to Patent Owner by allowing submission of supplemental information
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`already served on Patent Owner and provided with sufficient time for Patent Owner
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`to address in its Patent Owner Response).
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`- 3 -
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`Therefore, for the reasons set forth above, the Board should grant this motion.
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`Case IPR2016-01362
`U.S. Patent No. 9,083,850 B1
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`Respectfully submitted,
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`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`/Lori A. Gordon/
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`Lori A. Gordon (Reg. No. 50,633)
`Attorney for Petitioner
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`Date: February 17, 2017
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
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`- 4 -
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`Case IPR2016-01362
`U.S. Patent No. 9,083,850 B1
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`CERTIFICATION OF SERVICE
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`The undersigned hereby certifies that on February 17, 2017, a true and
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`correct copy of the foregoing PETITIONER’S MOTION TO SUBMIT
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`SUPPLEMENTAL INFORMATION was served in its entirety on the following
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`parties via electronic email:
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`Justin B. Kimble
`Terry A. Saad
`Nicholas C. Kliewer
`BRAGALONE CONROY PC
`Jkimble-IPR@bcpc-law.com
`tsaad@bcpc-law.com
`nkliewer@bcpc-law.com
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`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
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`/Lori A. Gordon/
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`Lori A. Gordon, Reg. No. 50,633
`Attorney for Petitioner
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`Date: February 17, 2016
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`1100 New York Avenue, N.W.
`Washington, D.C.20005-3934
`(202) 371-2600
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`
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