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`Paper No. ___
`Filed: November 13, 2017
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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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`APPLE INC.,
`Petitioner,
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`v.
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`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
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`—————————————————
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`Case IPR2017-00219
`Patent 7,116,710
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`PATENT OWNER’S REQUEST FOR REHEARING
`37 CFR §42.71(d)
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`Case IPR2017-00219
`Patent 7,116,710
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`I.
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`PRECISE RELIEF REQUESTED
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`Patent Owner California Institute of Technology (“Caltech”) requests the
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`Board to reconsider and withdraw its decision (Paper 31) granting the motion of
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`Petitioner Apple Inc. (“Petitioner”) to file supplemental information (Paper 21).
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`The decision is inconsistent with Board decisions on similar motions and is deeply
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`prejudicial to Caltech in both its timing and its scope. Because the Board
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`misapprehended or overlooked these issues in granting Petitioner’s motion, the
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`Board’s decision should be withdrawn and the motion denied. See 37 C.F.R.
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`§ 42.71(d).
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`II. MATTERS MISAPPREHENDED OR OVERLOOKED
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`A. Improper purpose misapprehended
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`Petitioner candidly admitted that it wished to introduce supplemental
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`evidence to preempt any Caltech attempt at antedating. Paper 22, 2-3. Such
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`preemption is improper, however. Medtronic, Inc. v. Endotach LLC, IPR2014-
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`00100, Paper 18, 4 (2014) (explaining that preempting future argument and
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`shifting the ground of unpatentability are not proper uses of supplemental
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`information); see also Paper 22, 2-4, 12.
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`The Board’s decision to grant Petitioner’s supplemental information request
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`placed Caltech in a Catch-22 where it had to file its Patent Owner response without
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`the benefit of knowing what, if any, publication dates were being asserted beyond
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`-1-
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`Case IPR2017-00219
`Patent 7,116,710
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`those specifically identified in the petition. It is not Caltech’s or the Board’s
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`burden to figure out whether an unspecified date is or is not supported by the
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`record. See Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1364 (Fed.
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`Cir. 2015) (“A brief must make all arguments accessible to the judges, rather than
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`ask them to play archaeologist with the record.”) (citing DeSilva v. DiLeonardi,
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`181 F.3d 865, 866-67 (7th Cir. 1999).
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`While the Board cites relevance as its reason to admit this supplemental
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`evidence (Paper 31, 3), relevance is a necessary but not sufficient condition. After
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`all, even relevant evidence may be unfairly prejudicial or confusing. See, e.g., FRE
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`403. Petitioner has been permitted to shift its theory of unpatentability long after
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`the institution decision. Caltech is left to assess this evidence without the benefit of
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`analysis from the petition or the institution decision. Inevitably, Petitioner will
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`raise arguments in its reply that it will insist Caltech should have anticipated from
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`the supplemental evidence. The Board should require Petitioner to present its
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`evidence in the ordinary course of the proceeding (evidence supporting the petition
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`with the petition; evidence supporting the reply with the reply). Medtronic,
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`IPR2014-00100, Paper 18, 4. Petitioner should not be repeatedly permitted to
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`change the record during Caltech’s response periods.
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`B. Prejudicial timing overlooked
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`Petitioner waited until the very end of the one-month period (or longer in
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`Case IPR2017-00219
`Patent 7,116,710
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`IPR2016-00700) to submit evidence that it should have provided with its petition.
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`Petitioner’s only justification for not providing the evidence with its petition was
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`that it did not believe it needed to do so. Paper 21, 10. “The Board may take into
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`account whether the supplemental information was reasonably available to the
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`petitioner at the time the petition was filed.” Lab. Francais du Fractionnement v.
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`Novo Nordisk Healthcare, IPR2017-00028, Paper 22, 4 (2017). Petitioner’s choice
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`not to file (or brief) this evidence with its petition but wait until after institution has
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`yielded Petitioner a windfall in the form of (1) avoiding the petition word limits,
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`(2) bolstering its challenge by shifting away from the publication dates asserted in
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`the petition, and (3) limiting the time between the decision on the motion and the
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`due date for Caltech’s response. Id. (explaining bolstering is an improper use of
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`supplemental information).
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`Remarkably, Petitioner argued “Patent Owner will have had over two
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`months to consider the supplemental information before it must file its Patent
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`Owner’s response.” Paper 21, 2. Petitioner’s argument assumes that Caltech is
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`responsible for addressing the information from the time it was proffered rather
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`than from the time the Board granted its entry, which effectively shifts Petitioner’s
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`burden as movant to Caltech to assume the motion will be granted and prepare
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`accordingly. 37 CFR §42.20(c). In any event, the motion was not granted until
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`October 27, four months after institution, leaving only a single business day (the
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`-3-
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`Case IPR2017-00219
`Patent 7,116,710
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`following Monday) for cross-examination. Paper 27, 1. What’s more, Petitioner
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`did not actually file the exhibits until after the discovery period had closed. 37 CFR
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`§42.53(d)(2).
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`The Board overlooked how prejudicial the extremely late addition of this
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`evidence to the record would be to Caltech. See, e.g., Paper 22, 11. The decision
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`left scant time to assess the impact of the supplemental information on Caltech’s
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`defense and no time for cross examination or related discovery.
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`III. CONCLUSION
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`The Board overlooked the extreme prejudice created by the tardy seeking
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`and granting of supplemental evidence. The Board misapprehended the improper
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`nature of the supplementation and the confusion and hardship that its out-of-
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`sequence entry necessarily creates. The relief Petitioner requested was unwarranted
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`and unduly prejudicial. Paper 31 should be withdrawn.
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`Date: November 13, 2017
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`Respectfully submitted,
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`/ Michael T. Rosato /
`Michael T. Rosato, Lead Counsel
`Reg. No. 52,182
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`Case IPR2017-00219
`Patent 7,116,710
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`CERTIFICATE OF SERVICE
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`I certify that the foregoing Patent Owner’s Request for Rehearing was
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`served on this 13th day of November, 2017, on the Petitioner at the electronic
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`service addresses of the Petitioner as follows:
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`Richard Goldenberg
`Dominic Massa
`Michael H. Smith
`WILMER CUTLER PICKERING HALE AND DORR LLP
`richard.goldenberg@wilmerhale.com
`dominic.massa@wilmerhale.com
`michaelh.smith@wilmerhale.com
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`Date: November 13, 2017
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`Respectfully submitted,
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`/ Michael T. Rosato /
`Michael T. Rosato, Lead Counsel
`Reg. No. 52,182
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`-5-
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