Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`Paper: 32
`Date: October 27, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`_______________
`
`Cases IPR2017-00210 and IPR2017-002191
`Patent 7,116,710 B1
`_______________
`
`Before KEN B. BARRETT, TREVOR M. JEFFERSON, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`ORDER
`Granting Petitioner’s Motion to File Supplemental Information
`37 C.F.R. §§ 42.5 and 42.123
`
`
`
`
`1 This order addresses issues that are the same in the identified cases. We
`exercise our discretion to issue one order to be filed in each case. The
`parties are not authorized to use this style of heading.
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`Paper: 32
`Date: October 27, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`_______________
`
`Cases IPR2017-00210 and IPR2017-002191
`Patent 7,116,710 B1
`_______________
`
`Before KEN B. BARRETT, TREVOR M. JEFFERSON, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`ORDER
`Granting Petitioner’s Motion to File Supplemental Information
`37 C.F.R. §§ 42.5 and 42.123
`
`
`
`
`1 This order addresses issues that are the same in the identified cases. We
`exercise our discretion to issue one order to be filed in each case. The
`parties are not authorized to use this style of heading.
`
`
`
`IPR2017-00210 and IPR2017-00219
`Patent 7,116,710 B1
`
`
`
`Petitioner moves to submit supplemental information related to prior
`art references in accordance with 37 C.F.R. § 42.123 in IPR2017-00210 and
`IPR2017-00219. Paper 21 (“Mot. to Supp.”).2 Patent Owner opposes
`Petitioner’s motion. Paper 22 (“Opp. to Mot. to Supp.”). Under 37 C.F.R.
`§ 42.123(a), supplemental information may be submitted if the information
`is “relevant to a claim for which trial has been instituted” and if the party
`seeking to submit it requests authorization “within one month of the date the
`trial is instituted.”
`In both IPR2017-00210 and IPR2017-00219, Petitioner argues that
`“Patent Owner challenged the prior art status of Frey and Divsalar in its
`Preliminary Response,” and seeks to submit Exhibits 1027–1041 as
`supplemental information “to rebut Patent Owner’s challenges and establish
`the prior art status of Divsalar and Frey.” Mot. to Supp. 1. Petitioner
`maintains that:
`The supplemental information Petitioner requests authorization
`to submit takes the form of fifteen exhibits—consisting of
`affidavits, declarations, deposition transcripts, library records, a
`purchase order, shipping information, and other publications—
`that establish (1) the public accessibility of Divsalar no later than
`June 3, 1999, and (2) the public accessibility of Frey no later than
`March 20, 2000.
`
`Id.
`
`Patent Owner argues that Petitioner’s intended supplemental
`information “fail[s] to support the specific allegations made in the petition
`regarding the publication dates of Frey and Divsalar.” Opp. to Mot. to Supp.
`
`
`2 Similar papers were filed in the two subject cases. For clarity and
`expediency, we treat IPR2017-00219 as representative. Unless indicated
`otherwise, all citations are to IPR2017-00219.
`
`2
`
`
`
`IPR2017-00210 and IPR2017-00219
`Patent 7,116,710 B1
`
`
`at 5. Patent Owner contends that Petitioner’s proposed supplemental
`exhibits are confusing and duplicative, contain speculation and hearsay, and
`promise to turn the proceedings into an evidentiary morass. Id.
`Patent Owner further argues that Frey is not a reference asserted in
`any instituted ground in IPR2017-00219 and that Petitioner has made no
`effort to qualify Frey as a prior art printed publication. Opp. to Mot. to
`Supp. 2, 5. Patent Owner further argues that Petitioner’s intended
`supplemental information “fail[s] to support the specific allegations made in
`the petition regarding the publication date of Divsalar.” Id. at 5.
`Each of the subject inter partes reviews includes at least one instituted
`ground in which Divsalar is asserted. Thus, Divsalar is relevant to a claim
`for which trial has been instituted and, therefore, so is evidence directed to
`its status as prior art. Notwithstanding Patent Owner’s argument that the
`Divsalar related evidence fails to support the specific allegations in the
`Petition, we wish to consider the totality of the evidence concerning the
`publication date, and will consider any inconsistencies at the appropriate
`time. In a similar way, Frey is an asserted reference in an instituted grounds
`in IPR2017-00210, so evidence directed to Frey’s status as prior art is
`relevant to a claim for which trial has been instituted in that case.
`Patent Owner is correct to the extent it contends that Frey is not
`asserted specifically as a reference in any instituted ground in IPR2017-
`00219. See Opp. to Mot. to Supp. 1 (“To begin with, Frey is not a reference
`asserted in any instituted ground.”). However, Petitioner asserts that it
`“relied on Frey (Ex. 1202) to demonstrate a motivation to combine the prior
`art,” Mot. to Supp. 1, and we note the Petition and Petitioner’s declarant do
`cite Frey in the context of at least the asserted ground of obviousness. See,
`
`3
`
`
`
`IPR2017-00210 and IPR2017-00219
`Patent 7,116,710 B1
`
`
`e.g., Paper 5 (“Petition”), 35, 55 (IPR2017-00219); Ex. 1206 ¶¶ 401, 458
`(IPR2017-00219). Petitioner cites Frey as evidence that researchers were
`specifically motivated to incorporate specific teachings into Divsalar.
`Paper 5, 35 (IPR2017-00219). Evidence pertaining to such motivations is
`relevant to a claim for which trial has been instituted and, therefore, also is
`Frey’s status as prior art.
`Patent Owner’s arguments against the Frey evidence are also based
`upon the assertion that Petitioner identified “a publication date of March 20,
`2000” as the publication date of Frey. Opp. to Mot. to Supp. 1. With
`respect to Frey, the Petition’s Table of Exhibits identifies Frey as “published
`on or before March 20, 2000.” Paper 5, i (IPR2017-00219). Contrary to
`Patent Owner’s arguments, Petitioner’s supplemental evidence directed to
`dates before March 20, 2000, are not necessarily irrelevant. See, e.g., Opp.
`to Mot. to Supp. 5–7 (“Exhibits 1027 and 1028 are identified as library
`records that allegedly show a 1999 date of publication for the conference
`proceedings containing Frey . . . [and] are irrelevant to the March 20, 2000
`date asserted in the Motion.”). In sum, Petitioner provides sufficient
`evidence that the Exhibits 1027–1041 as supplemental information are
`relevant to the Petitioner’s contentions.
`Accordingly, it is:
`ORDERED that Petitioner’s Motions to Submit Supplemental
`Information are granted.
`
`
`
`
`
`4
`
`
`
`
`
`IPR2017-00210 and IPR2017-00219
`Patent 7,116,710 B1
`
`PETITIONER:
`Richard Goldenberg
`Brian M. Seeve
`Dominic E. Massa
`WILMER CUTLER PICKERING HALE AND DORR LLP
`richard.goldenberg@wilmerhale.com
`brian.seeve@wilmerhale.com
`dominic.massa@wilmerhale.com
`
`PATENT OWNER:
`
`Michael T. Rosato
`Matthew A. Argenti
`Richard Torczon
`WILSON SONSINI GOODRICH & ROSATI
`mrosato@wsgr.com
`margenti@wsgr.com
`rtorczon@wsgr.com
`
`Todd M. Briggs
`Kevin P.B. Johnson
`QUINN EMANUEL URQUHART & SULLIVAN LLP
`toddbriggs@quinnemanuel.com
`kevinjohnson@quinnemanuel.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
