Trials@uspto.gov Paper No. 27
`571-272-7822 Entered: 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.
`____________
`
`Case IPR2017-00700 (Patent 7,421,032 B2)
`Case IPR2017-00701 (Patent 7,421,032 B2)
`Case IPR2017-00728 (Patent 7,421,032 B2)1
`____________
`
`
`Before KEN B. BARRETT, TREVOR M. JEFFERSON, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Petitioner’s Motion to File Supplemental Information
`37 C.F.R. §§ 42.5 and 42.123
`
`
`
`
`
`1 This Decision will be entered in each case. The parties are not authorized
`to use this caption style.
`
`
`571-272-7822 Entered: 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.
`____________
`
`Case IPR2017-00700 (Patent 7,421,032 B2)
`Case IPR2017-00701 (Patent 7,421,032 B2)
`Case IPR2017-00728 (Patent 7,421,032 B2)1
`____________
`
`
`Before KEN B. BARRETT, TREVOR M. JEFFERSON, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Petitioner’s Motion to File Supplemental Information
`37 C.F.R. §§ 42.5 and 42.123
`
`
`
`
`
`1 This Decision will be entered in each case. The parties are not authorized
`to use this caption style.
`
`
`
`IPR2017-00700 (Patent 7,421,032 B2)
`IPR2017-00701 (Patent 7,421,032 B2)
`IPR2017-00728 (Patent 7,421,032 B2)
`
`Petitioner moves to submit supplemental information related to prior
`
`art references in accordance with 37 C.F.R. § 42.123. Paper 212 (“Mot. to
`Supp.”). In IPR2017-00700, Petitioner also requests that “the Board . . .
`exercise its authority under 37 C.F.R. § 42.5 to excuse the three-day delay
`requesting authorization to file the motion.” IPR2017-00700, Mot. to
`Supp., 1. 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.” That rule further
`provides:
`(b) Late submission of supplemental information. A party
`seeking to submit supplemental information more than one
`month after the date the trial is instituted, must request
`authorization to file a motion to submit the information. 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.
`Petitioner argues that “Patent Owner challenged the prior art status,
`including that of 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 [Ex. 1017] and Frey
`[Ex. 1010].” Mot. to Supp. 1. Petitioner maintains that:
`
`2 Similar papers were filed in the three subject cases. For clarity and
`expediency, we treat IPR2017-00700 as representative. Unless indicated
`otherwise, all citations are to IPR2017-00700.
`
`2
`
`
`
`IPR2017-00700 (Patent 7,421,032 B2)
`IPR2017-00701 (Patent 7,421,032 B2)
`IPR2017-00728 (Patent 7,421,032 B2)
`
`
`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 Frey is not a reference asserted in any
`instituted ground, and that Petitioner has made no effort to qualify Frey as a
`prior art printed publication. Opp. to Mot. to Supp. 2, 9. 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 9.
`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 Petitioner’s
`supplemental information directed to its status as prior art. Notwithstanding
`Patent Owner’s argument that the Divsalar-related supplemental information
`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.
`Regarding Petitioner’s intended supplemental information directed to
`Frey, Patent Owner is correct that Frey is not listed specifically as a
`reference in any instituted ground. See Opp. to Mot. to Supp. 2 (“To begin
`with, Frey is not a reference asserted in any instituted ground.”). However,
`Petitioner asserts that it “relied on Frey (Ex. 1010) to demonstrate a
`
`3
`
`
`
`IPR2017-00700 (Patent 7,421,032 B2)
`IPR2017-00701 (Patent 7,421,032 B2)
`IPR2017-00728 (Patent 7,421,032 B2)
`
`motivation to combine the prior art,” Mot. to Supp. 1, and we note the
`Petition and Petitioner’s expert cite Frey in the context of at least the
`asserted ground of obviousness over Ping, MacKay, and Divsalar, see, e.g.,
`IPR2017-00700, Pet. 44; Ex. 1004 ¶ 120. Specifically, Petitioner cites Frey
`for the proposition that “the use of a repeater in implementing an outer coder
`was common in the prior art.” IPR2017-00700, Pet. 44. As such,
`Petitioner’s intended supplemental information pertaining to whether such
`subject matter was common in the prior art is relevant to a claim for which
`trial has been instituted.
`
`Furthermore, many of Patent Owner’s arguments against the Frey
`evidence are based upon the assertion that Petitioner identified “a date of
`March 20, 2000” as the publication date of Frey. Opp. to Mot. to Supp. 2
`n.1 (referring to the Petition’s table of exhibits); see also, e.g., id. at 9 (“the
`proposed supplemental evidence fails to support the March 20, 2000 date
`now asserted.”). However, the Petition’s Table of Exhibits actually
`identifies Frey as “published on or before March 20, 2000.” Contrary to
`Patent Owner’s arguments, Petitioner’s intended supplemental information
`directed to dates before March 20, 2000, is not necessarily irrelevant. See,
`e.g., Opp. to Mot. to Supp. 9–10 (“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.”).
`For these reasons, we determine that Exhibits 1027–1041 are
`“relevant to a claim for which trial has been instituted” in accordance with
`§ 42.123(a).
`
`4
`
`
`
`IPR2017-00700 (Patent 7,421,032 B2)
`IPR2017-00701 (Patent 7,421,032 B2)
`IPR2017-00728 (Patent 7,421,032 B2)
`
`
`Regarding the timing of Petitioner’s request for authorization in
`IPR2017-00700, Petitioner contends there is good cause for us to excuse
`Petitioner’s late request and to allow Petitioner’s intended supplemental
`information “because it will maintain consistency across IPRs on the same
`patent.” Mot. to Supp. 14. Petitioner also notes it timely served the
`intended supplemental information. Id. at 1–2, 14. Patent Owner argues
`that the delay in knowing whether the exhibits will be placed in the record
`has prejudiced Patent Owner and that there is no reasonable excuse for
`Petitioner’s three-day lateness in requesting authorization to file the present
`motion in IPR2017-00700. Opp. to Mot. to Supp. 1, 7–8.
`
`Petitioner sought, via an email to the Board on September 7, 2017, a
`conference call with the panel seeking authorization to file the present
`motion. In IPR2017-00701 and IPR2017-00728, Petitioner timely sought
`authorization to file the motion within one month of institution (August 8,
`2017, and August 21, 2017, respectively). In IPR2017-00700, the email was
`sent one month and three days after the date of institution (August 4, 2017).
`We excuse Petitioner’s three-day-late request to file a motion in
`IPR2017-00700. Petitioner represents that it served on Patent Owner the
`subject exhibits in July and August of 2017, months prior to the due date for
`Patent Owner’s Response. Mot. 1–2. We are not persuaded that the
`three-day delay resulted in undue prejudice to Patent Owner. We also are
`persuaded that it is the interests of justice to maintain consistency across the
`inter partes reviews in this family of cases.
`
`5
`
`
`
`IPR2017-00700 (Patent 7,421,032 B2)
`IPR2017-00701 (Patent 7,421,032 B2)
`IPR2017-00728 (Patent 7,421,032 B2)
`
`Accordingly, it is:
`
`ORDERED that Petitioner’s request for authorization to file in
`
`IPR2017-00700 a Motion to Submit Supplemental Information is granted,
`and
`FURTHER ORDERED that Petitioner’s Motions to Submit
`
`Supplemental Information are granted.
`
`
`
`6
`
`
`
`IPR2017-00700 (Patent 7,421,032 B2)
`IPR2017-00701 (Patent 7,421,032 B2)
`IPR2017-00728 (Patent 7,421,032 B2)
`
`PETITIONER:
`Richard Goldenberg
`Brian M. Seeve
`WILMER, CUTLER, PICKERING, HALE AND DORR, LLP
`richard.goldenberg@wilmerhale.com
`brian.seeve@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
`
`7
`
`
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