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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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`—————————————————
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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 IPR2017-00701
`Patent 7,421,032
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`—————————————————
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`PATENT OWNER’S REQUEST FOR REHEARING
`37 CFR §42.71(d)
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`Case IPR2017-00701
`Patent 7,421,032
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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 27) 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`Board’s decision should be withdrawn and the motion denied.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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`places Caltech in a Catch-22 where it has to file its Patent Owner response without
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`the benefit of knowing what, if any, publication dates are being asserted beyond
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`-1-
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`Case IPR2017-00701
`Patent 7,421,032
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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 27, 4), 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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`III. CONCLUSION
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`The Board misapprehended or overlooked the improper nature of the
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`-2-
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`Case IPR2017-00701
`Patent 7,421,032
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`supplementation and the confusion and hardship that its out-of-sequence entry
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`necessarily creates. The relief Petitioner requested was unwarranted and unduly
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`prejudicial. Paper 27 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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`-3-
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`Case IPR2017-00701
`Patent 7,421,032
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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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`
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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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`-4-
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