U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`_________________________________________
`Case IPR2017-00700
`Patent 7,421,032
`PETITIONER’S MOTION TO SUBMIT SUPPLEMENTAL
`INFORMATION PURSUANT TO 37 C.F.R. §§ 42.123 and 42.5
`
`
`Apple v. California Institute of Technology
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`_________________________________________
`Case IPR2017-00700
`Patent 7,421,032
`PETITIONER’S MOTION TO SUBMIT SUPPLEMENTAL
`INFORMATION PURSUANT TO 37 C.F.R. §§ 42.123 and 42.5
`
`
`
`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
`
`I.
`
`INTRODUCTION
`On September 18, 2017, the Board issued an order granting Petitioner’s
`
`request to file this motion. Paper 19. Petitioner respectfully moves to submit
`
`Exhibits 1027–1041 as supplemental information under 37 C.F.R. § 42.123 and asks
`
`the Board to exercise its authority under 37 C.F.R. § 42.5 to excuse the three-day
`
`delay requesting authorization to file the motion.
`
`The Board instituted review of claims 11–16 of the ’032 patent on August 4,
`
`2017 on multiple grounds, including that the claims are obvious over Divsalar (Ex.
`
`1017) in combination with other prior art references. Petitioner relied on Frey (Ex.
`
`1010) to demonstrate a motivation to combine the prior art. Patent Owner
`
`challenged the prior art status, including that of Divsalar, in its Preliminary
`
`Response. Petitioner now seeks permission to file supplemental information to
`
`rebut Patent Owner’s challenges and establish the prior art status of Divsalar and
`
`Frey. 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.
`
`Petitioner served the supplemental information on Patent Owner on July 14,
`
`2017 in IPR Nos. 2017-00210 and 2017-00219 directed to a related patent, and then
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`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
`again on August 28, 2017 in the present case and two related cases, IPR2017-00701
`
`and IPR2017-00728. Petitioner asked Patent Owner on August 28, 2017 whether it
`
`intended to oppose a motion to submit the supplemental information. Patent Owner,
`
`however, did not respond regarding its position until September 6, 2017. Petitioner
`
`then promptly submitted requests for authorization to file supplemental information
`
`for all three proceedings on September 7, 2017, meeting the deadlines for
`
`IPR2017-00701 and IPR2017-00728, while inadvertently missing the deadline for
`
`the present proceeding, IPR2017-00700, by three days. In each case, Patent Owner
`
`will have had over three months to consider the supplemental information before it
`
`must file its Patent Owner’s response. As a result, Petitioner’s submission of
`
`supplemental information will neither prejudice Patent Owner nor impact the
`
`Board’s ability to complete the inter partes review in a timely manner. There is
`
`good cause to excuse the three-day delay in the present case and doing so is in the
`
`interests of justice. Petitioner’s motion should therefore be granted.
`
`II. ARGUMENT
`A. Legal Standard
`1.
`37 C.F.R. § 42.123
`Under 37 C.F.R. § 42.123(a), a party may submit supplemental information if:
`
`(1) its “request for the authorization to file a motion to submit supplemental
`
`information is made within one month of the date the trial is instituted;” and
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`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
`(2) “[t]he supplemental information [is] relevant to a claim for which the trial has
`
`been instituted.” If a party seeks to submit supplemental information more than one
`
`month after the date the trial is instituted, the “motion to submit supplemental
`
`information must show why the supplemental information reasonably could not
`
`have been obtained earlier, and that consideration of the supplemental information
`
`would be in the interests-of-justice.” 37 C.F.R. § 42.123(b).
`
`The Board has discretion to grant a motion to submit supplemental
`
`information. South-Tek Sys., LLC v. Eng’rd Corrosion Solutions, LLC,
`
`No. IPR2016-01351, 2017 WL 2609329, at *1 (PTAB June 15, 2017). In exercising
`
`its discretion, the Board’s “guiding principle . . . is to ensure efficient administration
`
`of the Office and the ability of the Office to complete IPR proceedings in a timely
`
`manner.” Id. (internal quotation marks and citation omitted); see also 37 C.F.R.
`
`§ 42.1(b) (requiring the Board to construe its rules “to secure the just, speedy, and
`
`inexpensive resolution of every proceeding”). It is Petitioner’s burden to prove it is
`
`entitled to the requested relief. 37 C.F.R. § 42.20(c).
`
`2.
`37 C.F.R. § 42.5
`Under 37 C.F.R. § 42.5(b): “The Board may waive or suspend a requirement
`
`of parts 1, 41, and 42 and may place conditions on the waiver or suspension.” The
`
`Board has exercised this authority to waive the requirement of 37 C.F.R. § 42.123(b)
`
`that “the supplemental information reasonably could not have been obtained earlier”
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`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
`in the interests of justice. E.g., Biomarin Pharm. Inc. v. Genzyme Therapeutic
`
`Prods. Ltd. P’Ship, Nos. IPR2013-00534, -00537 (PTAB Jan. 7, 2015) (Paper 80);
`
`Gen. Elec. Co. v. Univ. of Virginia Patent Found., Nos. IPR2016-00357, -00358,
`
`-00359 (PTAB Feb. 21, 2017) (Paper 51).
`
`The Board also has authority to excuse a late action under 37 C.F.R. §
`
`42.5(c)(3) for good cause or in the interests of justice. 37 C.F.R. § 42.5(c)(3) (“Late
`
`action. A late action will be excused on a showing of good cause or upon a Board
`
`decision that consideration on the merits would be in the interests of justice.”); H&S
`
`Mfg. Co., Inc. v. Oxbo Int’l Corp., No. IPR2016-00960 (PTAB Dec. 7, 2016) (Paper
`
`8); Universal Remote Control, Inc. v. Universal Elecs., Inc., Nos. IPR2014-01102,
`
`-01103, -01104, -01106 (PTAB July 6, 2015) (Paper 26).
`
`B.
`Petitioner Should Be Granted Relief Under 37 C.F.R. § 42.123.
`Petitioner should be permitted to submit Exhibits 1027–1041 as supplemental
`
`information pursuant to 37 C.F.R. § 42.123. Each exhibit supports the prior art
`
`status of Divsalar and/or Frey—the primary piece of prior art upon which the Board
`
`instituted inter partes review and prior art showing a motivation to combine the
`
`prior art—and are therefore “relevant to a claim for which the [inter partes review]
`
`has been instituted.” 37 C.F.R. § 42.123(a)(2); see South-Tek Sys., 2017 WL
`
`2609329, at *2 (“Based on the above analysis, we determine that Exhibits 1028 and
`
`1029 are relevant to this proceeding. They provide a more complete record of the
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`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
`public availability of the EPRI reference.”); Palo Alto Networks, Inc. v. Juniper
`
`Networks, Inc., No. IPR2013-00369, at 3 (PTAB Feb. 5, 2014) (Paper 37)
`
`(“Evidence that allegedly confirms the public accessibility of references that serve
`
`as the basis of the grounds of unpatentability authorized in this proceeding is
`
`relevant to the claims . . . for which this trial was instituted.”).
`
`Patent Owner challenged the prior art status, including that of Divsalar in its
`
`Preliminary Response. See Paper 13, at 25, fn. 6. As detailed below, Exhibits
`
`1027–1041 counter Patent Owner’s argument and establish the public accessibility
`
`of Divsalar no later than June 3, 1999 and Frey no later than March 20, 2000:
`
`1.
`
`Library Records and Related Declarations. Exhibits 1027–1031
`
`establish the dates by which Divsalar and Frey were published and/or publicly
`
`available at certain libraries.
`
` Exhibits 1027 and 1028 are library records from the Jet Propulsion Laboratory1
`
`indicating that the 37th Annual Allerton Conference Proceedings—in which
`
`Frey appeared—was published in 1999.
`
` Exhibit 1029 is a library record indicating that the 36th Annual Allerton
`
`
`1 Jet Propulsion Laboratory is a division of Patent Owner. See JET PROPULSION LAB
`
`| CALTECH, http://www.caltech.edu/content/jet-propulsion-laboratory (last visited
`
`Aug. 4, 2017).
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`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
`Conference Proceedings—in which Divsalar appeared—was published by June
`
`3, 1999.
`
` Exhibit 1030 is the July 14, 2017, declaration of library expert Theodore A. Fons,
`
`which explains how to interpret the above library records (i.e., Exhibits
`
`1027–1029) and explains why they indicate that (1) Frey was published in 1999
`
`and (2) Divsalar was published by June 3, 1999. Ex. 1030 at ¶¶ 20, 27.
`
` Exhibit 1031 is the affidavit of Pamela Stansbury, an employee in the Original
`
`Cataloging Unit of the Cornell University Library. Ex. 1031 at ¶ 1.
`
`Ms. Stansbury states that Frey “w[as] publicly available at the Cornell University
`
`Library as of March 20, 2000.” Id. at ¶ 4.
`
`2.
`
`36th and 37th Allerton Conferences. Exhibits 1032–1036 establish the
`
`timelines associated with the 36th and 37th Allerton Conferences—at which
`
`Divsalar and Frey were presented—and the subsequent publication of the
`
`conference proceedings—in which Divsalar and Frey were published.
`
` Exhibits 1032, 1033, and 1034 are affidavits from Dr. Bruce Hajek, Dr. Tamer
`
`Basar, and Dr. Ramavarapu Sreenivas. Dr. Hajek is a six-time co-chair of the
`
`Allerton Conference, including the 36th Allerton Conference (at which Divsalar
`
`was presented) and the 37th Allerton Conference (at which Frey was presented),
`
`Ex. 1032 at ¶ 5; Dr. Basar is a six-time co-chair of the Allerton Conference,
`
`including the 36th Allerton Conference (at which Divsalar was presented),
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`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
`Ex. 1033 at ¶ 5; Dr. Sreenivas is a two-time co-chair of the Allerton Conference,
`
`including the 37th Allerton Conference (at which Frey was presented), Ex. 1034
`
`at ¶ 5. Each confirms that (1) the Allerton Conference was well known to those
`
`of skill in the art, well attended by those of skill in the art, and open to the public
`
`for a fee, Ex. 1032 at ¶ 7, Ex. 1033 at ¶ 7, Ex. 1034 at ¶ 7; and (2) copies of the
`
`Allerton Conference Proceedings would have been shipped to conference
`
`attendees no later than the February following the conference—i.e., February
`
`1999 for the 36th Allerton Conference Proceedings in which Divsalar appeared
`
`and February 2000 for the 37th Allerton Conference Proceedings in which Frey
`
`appeared, Ex. 1032 at ¶ 9, Ex. 1033 at ¶ 9, Ex. 1034 at ¶ 9. Drs. Hajek, Basar, and
`
`Sreenivas attach to their affidavits a purchase order for the 37th Allerton
`
`Conference Proceedings dated December 8, 1999.2 Each states that the
`
`Proceedings would have shipped approximately ten weeks after the date of the
`
`purchase order—i.e., on or around February 16, 2000. Ex. 1032 at ¶ 12, Ex. 1033
`
`at ¶ 12, Ex. 1034 at ¶ 12. Dr. Basar further states that “it is quite likely that [he]
`
`received [his] copy of the Conference Proceedings for the 36th Annual Allerton
`
`Conference [which includes Divsalar] in February 1999, and [he] received [his]
`
`copy of the Conference Proceedings for the 37th Annual Allerton Conference
`
`
`2 The purchase order is also submitted as Exhibit 1037.
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`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
`[which includes Frey] in February 2000.” Ex. 1033 at ¶ 9.
`
` Exhibit 1035 is the July 14, 2017, declaration Dr. Brendan Frey, co-author of the
`
`Frey reference. Dr. Frey confirms that (1) he presented the work described in
`
`Frey at the 37th Allerton Conference—a public conference—on September 22,
`
`1999, Ex. 1035 at ¶ 16; (2) Frey was publicly available on the website of
`
`Dr. Frey’s co-author, Dr. David MacKay, by October 1999, id. at ¶ 18; and
`
`(3) Frey was published in the 37th Allerton Conference Proceedings, which Dr.
`
`Frey received in January or February 2000, id. at ¶ 17.
`
` Exhibit 1036 is a screen capture of an archived version of the website for the 37th
`
`Annual Allerton Conference—at which Frey was presented—dated September 9,
`
`1999. The website states that copies of “[f]ull camera-ready versions of accepted
`
`papers [e.g., Frey] will be due the last day of the Conference”—i.e., September
`
`24, 1999.
`
`3.
`
`37th Allerton Conference Proceedings. Exhibits 1037–1038 establish
`
`the dates by which the 37th Allerton Conference Proceedings were ordered and
`
`shipped.
`
` Exhibit 1037 is a purchase order for the 37th Allerton Conference Proceedings
`
`dated December 8, 1999.
`
` Exhibit 1038 is a bill of lading for the 37th Annual Allerton Conference
`
`Proceedings with a ship date of February 21, 2000.
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`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
`4. Witness Testimony. Exhibits 1039–1040 are excerpts from deposition
`
`transcripts of Patent Owner’s experts in the litigation The California Institute of
`
`Technology v. Hughes Communications, Inc., No. 2:13-cv-07245 (C.D. Cal.)
`
`(“Hughes Litigation”), in which the witnesses testified regarding the public
`
`availability of Divsalar and Frey.
`
` Exhibit 1039 is an excerpt from the deposition of Dr. Steven Wicker in the
`
`Hughes Litigation. Dr. Wicker testified that he was “reasonably sure that the
`
`irregular turbo codes paper, Frey ’99, was indeed published as part of the
`
`proceedings of the Allerton conference.” Ex. 1039 at 157:2–5.
`
` Exhibit 1040 is an excerpt from the deposition of Dr. Rüdiger Urbanke in the
`
`Hughes Litigation. Dr. Urbanke suggested that people in the field were looking
`
`at Divsalar in 1999. Ex. 1040 at 168:4–21.
`
`5.
`
`Publication. Exhibit 1041 is a copy of the textbook Forward Error
`
`Correction Based on Algebraic-Geometric Theory by Jafar A. Alzubi, Omar A.
`
`Alzubi, and Thomas M. Chen. The book describes Frey as presented “[i]n 1999,”
`
`Ex. 1041 at 36, and cites Frey as a 1999 publication, id. at 39.
`
`Because Exhibits 1027–1041 establish the public accessibility of Frey no later than
`
`March 20, 2000, and the public accessibility of Divsalar no later than June 3, 1999,
`
`the exhibits support the prior art status of those references. Each exhibit is therefore
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`U.S. Patent No. 7,421,032
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`“relevant to a claim for which the [inter partes review] has been instituted.” 37
`
`C.F.R. § 42.123(a)(2).
`
`The Board consistently grants motions to submit supplemental information
`
`under 37 C.F.R. § 42.123(a) and § 42.123(b) where, as here, the supplemental
`
`information supports the prior art status of a reference upon which the Board
`
`instituted inter partes review. See, e.g., South-Tek Sys., 2017 WL 2609329; Smart
`
`Microwave Sensor GmbH v. Wavetronix LLC, No. IPR2016-00488, 2016 WL
`
`8969973 (PTAB Aug. 26, 2016); Creston Elecs. Inc. v. Intuitive Building Controls,
`
`Inc., No. IPR2015-01379 (PTAB Feb. 2, 2016) (Paper 27); Valeo N. Am., Inc. v.
`
`Magna Elecs., Inc., No. IPR2014-01204 (PTAB Apr. 10, 2015) (Paper 26); Palo
`
`Alto Networks, No. IPR2013-00369; see also TCL Corp. v. Telefonaktiebolaget LM
`
`Ericsson, Nos. IPR2015-01584, -01600, 2016 WL 8969226 (PTAB Aug. 11, 2016)
`
`(granting Petitioner’s motion to submit supplemental information to support prior
`
`art status of reference under stricter 37 C.F.R. § 42.123(b) standard); Biomarin
`
`Pharm. Inc. v. Genzyme Therapeutic Prods. Ltd. P’Ship, Nos. IPR2013-00534,
`
`-00537 (PTAB Jan. 7, 2015) (Paper 80) (same).
`
`C.
`
`Petitioner’s submission of Exhibits 1027–1041 will in no way
`prejudice Patent Owner or negatively impact the Board’s ability to
`complete the inter partes review in a timely manner.
`The Board exercises its discretion and grants motions to submit supplemental
`
`
`
`information under 37 C.F.R. § 42.123(a) where such action promotes “‘the just,
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`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
`speedy, and inexpensive resolution’ [of the] proceeding.” Creston Elecs., No.
`
`IPR2015-01379, at 3 (quoting 37 C.F.R. § 42.1(b)). This is just such an instance.
`
`
`
`Petitioner submitted its Petition on January 20, 2017. It included copies of
`
`Frey and Divsalar as attachments to the Petition. See Exs. 1010, 1017. In view of a
`
`previous Board decision denying the prior art status of Frey,3 Petitioner also
`
`attached a date-stamped copy of the Table of Contents from the Proceedings of the
`
`Thirty-Seventh Annual Allerton Conference on Communication, Control, and
`
`Computing establishing the public accessibility of Frey no later than March 20,
`
`2000. See Ex. 1010. Petitioner had no reason to believe that any information
`
`beyond what was included in the Petition would be necessary to establish the prior
`
`art status of Frey and Divsalar.4 The need for the information Petitioner now seeks
`
`permission to submit did not become apparent until Patent Owner’s Preliminary
`
`Response, in which Patent Owner challenged the prior art status, including that of
`
`Divsalar. See Paper 13 at 25, fn. 6.
`
`
`3 Hughes Network Sys., LLC v. California Inst. of Tech., No. IPR2015-00067, at
`
`8–11 (PTAB Apr. 27, 2015).
`
`4 Indeed, the prior art status of Divsalar had already been confirmed in a prior Board
`
`decision. See Hughes Network Sys., LLC v. California Inst. of Tech.,
`
`No. IPR2015-00059, at 13–22 (PTAB Apr. 21, 2016) (Paper 42).
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`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
`Petitioner acted promptly to address Patent Owner’s arguments. On August
`
`
`
`28, 2017—less than one month after the Institution of Inter Partes Review (Paper
`
`14) and only six business days after Patent Owner’s Notice of Objection to Evidence
`
`(Paper 16)—Petitioner served Patent Owner with Exhibits 1027–1041 and asked
`
`Patent Owner to consent to the submission of these exhibits as supplemental
`
`information or, in the alternative, to meet and confer on the issue. Patent Owner did
`
`not respond. Petitioner emailed Patent Owner again on September 1 and September
`
`6, 2017, but Patent Owner did not reply until September 6. Petitioner promptly
`
`requested authorization to file this motion on September 7, 2017.
`
`
`
`Petitioner’s submission of Exhibits 1027–1041 at this stage of the
`
`proceedings will not prejudice Patent Owner or impact the schedule of this inter
`
`partes review. See South-Tek Sys., 2017 WL 2609329, at *1. Patent Owner
`
`dedicated only a footnote of its twenty-seven-page Preliminary Response to the prior
`
`art status of Divsalar. Paper 13 at 25, fn. 6. Moreover, Patent Owner received the
`
`supplemental information as early as July 14, 2017, when Petitioner served it on
`
`Patent Owner in the related IPR Nos. 2017-00210 and 2017-00219. Patent Owner
`
`will have had possession of Exhibits 1027–1041 for months before Patent Owner’s
`
`Response is due and before Patent Owner has taken any discovery in this
`
`proceeding. Patent Owner has had and will have ample opportunity to address the
`
`reasons it believes the claims of the ’032 patent are valid over Divsalar and other
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`U.S. Patent No. 7,421,032
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`prior art in view of Frey, if any. As such, no change to the schedule is necessary, and
`
`the Board can complete this inter partes review within the statutorily-mandated
`
`eighteen months.
`
`Petitioner’s Updated Exhibit List with replacement exhibits should have no
`
`impact on the Board’s analysis of this motion. See Paper 11. As explained in
`
`Petitioner’s Unopposed Motion to Submit Replacement Exhibits, the replacement
`
`exhibits correct certain clerical errors. See Paper 10 at 3–7. They were not
`
`supplemental information and they did not respond to Patent Owner’s challenge.
`
`Nor could they have. Patent Owner did not challenge the prior art status of Divsalar
`
`and Frey until May 8, 2017, over two months after Petitioner filed the replacement
`
`exhibits. Petitioner’s submission of its Updated Exhibit List is therefore irrelevant.
`
`D. The Board Should Excuse the Three-Day Delay Because There is
`Good Cause and Doing so is in the Interests of Justice
`The Board should excuse Petitioner’s inadvertent three-day delay under 37
`
`C.F.R. § 42.5(b) and/or § 42.5(c)(3). There is good cause and it is in the interests of
`
`justice to excuse the three-day delay and allow submission under 37 C.F.R. §
`
`42.123(a). Additionally, and in the alternative, there is also good cause and it is in
`
`the interests of justice to waive the requirement that “the supplemental information
`
`reasonably could not have been obtained earlier” and to allow late submission under
`
`37 C.F.R. §42.123(b).
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`There is “good cause” to consider Exhibits 1027–1041 because it will
`
`maintain consistency across IPRs on the same patent. Otherwise, IPR2017-00701
`
`and IPR2017-00728 (as well as related IPR2017-00210 and 219) may have more
`
`complete records regarding public accessibility of Divsalar and Frey than
`
`IPR2017-00700. This could lead to an arbitrary result in which the Board finds that
`
`a reference qualifies as art in one proceeding but not another on the same patent.
`
`Such arbitrary discrepancies among IPRs on the same patent would defy the
`
`principle of “just resolution of every proceeding.” See 37 C.F.R. § 42.1(b).
`
`Petitioner’s timely serving of the supplementation information also constitutes
`
`“good cause.” E.g., H&S Mfg. Co., Inc., No. IPR2016-00960, at 2-3 (Petitioner has
`
`shown “good cause” as Petitioner emailed the corresponding documents to Patent
`
`Owner within the required timeframe); Valeo N. Am. Inc. et al. v. Schaeffler Techs.
`
`AG & Co. KG, No. IPR2016-00502, at 3 (PTAB Aug. 7, 2017) (Paper 46).
`
`(Petitioner’s timely serving Patent Owner constitutes “good cause.”).
`
`Considering Exhibits 1027–1041 also furthers the interests of justice. There
`
`will be no prejudice to the Patent Owner because it was timely served the
`
`supplemental information documents and will have been in possession of that
`
`information for months before its Patent Owner Response. In sharp contrast,
`
`Petitioner will suffer substantial prejudice if the supplemental information is not
`
`considered and key prior art references become unavailable. The Board has many
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`U.S. Patent No. 7,421,032
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`times waived a timing requirement or excused a late action by weighing prejudice
`
`against Patent Owner and Petitioner. E.g., Universal Remote Control, Inc. v.
`
`Universal Elecs., Inc., Nos. IPR2014-01102, -01103, -01104, -01106 (PTAB July 6,
`
`2015) (Paper 26); Valeo N. Am. Inc. et al., No. IPR2016-00502; Gen. Elec. Co. v.
`
`Univ. of Virginia Patent Found., Nos. IPR2016-00357, -00358, -00359 (PTAB Feb.
`
`21, 2017) (Paper 51); Motorola Mobility LLC v. Intellectual Ventures I LLC, No.
`
`IPR2014-00500 (PTAB Sept. 9, 2015) (Paper 54); Biomarin Pharm. Inc. v.
`
`Genzyme Therapeutic Prods. Ltd. P’Ship, Nos. IPR2013-00534, -00537 (PTAB Jan.
`
`7, 2015) (Paper 80). Similarly, the late action should be excused here because the
`
`supplemental information will help ensure an accurate and complete record while
`
`Patent Owner will suffer little, if any, prejudice. Finally, refusing to consider the
`
`supplemental information would reward Patent Owner’s delay in responding to
`
`Petitioner’s request for its position on this motion.
`
`III. CONCLUSION
`For the above reasons, Petitioner respectfully requests that the Board grant its
`
`Motion to Submit Supplemental Information Pursuant to 37 C.F.R. 42.5 and 42.123.
`
`
`
`Dated: September 22, 2017
`
`
`
`Respectfully Submitted,
`
`/Michael Smith/
`Michael H. Smith (No. 71,190)
`
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`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
`CERTIFICATE OF SERVICE
`I hereby certify that on September 22, 2017, a true and correct copy of the
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`foregoing PETITIONER’S MOTION TO SUBMIT SUPPLEMENTAL
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`INFORMATION PURSUANT TO 37 C.F.R. § 42. 5 and 42.123 was served via
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`electronic mail upon the following attorneys of record:
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`Michael Rosato (mrosato@wsgr.com)
`Matthew Argenti (margenti@wsgr.com)
`Richard Torczon (rtorczon@wsgr.com)
`
`
`
`
`
`/Michael Smith/
`Michael H. Smith (No. 71,190)
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