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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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`K/S HIMPP,
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`Petitioner,
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`v.
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`III HOLDINGS 4, LLC,
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`Patent Owner
`_________________
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`Case IPR2017-00781
`Patent 8,654,999
`_________________
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`Patent Owner’s Reply to Petitioner’s Opposition to
`Patent Owner’s Motion to Exclude
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`I.
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`Introduction
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`III Holdings 4, LLC (“Patent Owner”) properly objected to and moved for
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`exclusion of Exhibit 1009, and Petitioner’s Opposition, Paper 21, relies upon
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`Exhibit 1015 to overcome the objections. However, Exhibit 1015 never addresses
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`Exhibit 1009, and does not cure the defectively filed declaration of Exhibit 1009.
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`Since Petitioner fails to cure the deficiencies identified with respect to Exhibit
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`1009, the Motion to Exclude should be granted. Further, since the Petitioner fails
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`to provide any argument regarding the admissibility of Exhibits 1011 and 1012, the
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`Motion with respect to these Exhibits should be granted.
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`II. The Board Should Exclude Exhibit 1009
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`Petitioner provides no argument, and effectively concedes, that Exhibit 1009
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`is improper evidence and should be excluded. Petitioner’s Opposition, Paper 21.
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`Petitioner provides no argument that Exhibit 1009 should remain part of the record
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`or that the declaration originally filed with Exhibit 1009 was proper.
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`Petitioner attempted, but failed, to cure the objections to Exhibit 1009 by
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`filing Exhibit 1015. The deficiencies identified by the objections timely filed by
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`Patent Owner remain uncured, and Exhibit 1015 has no effect on the admissibility
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`of Exhibit 1009. To cure the identified deficiencies, Petitioner needed to provide
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`evidence that the originally filed translation in Exhibit 1009 was proper. Instead,
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`Petitioner is improperly attempting to add untimely and unrelated new evidence to
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`1
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`this proceeding. Exhibit 1015 never addresses the declaration originally filed in
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`1009, and provides no insight into accuracy of the originally filed translation.
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`Exhibit 1015 at 10. Accordingly, Exhibit 1015 is not supplemental evidence
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`“offered solely to support admissibility of the originally filed evidence” and cannot
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`be used to defeat the Motion to Exclude. Handi Quilter, Inc. v. Bernina
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`International AG, Case IPR2013-00364, Paper 30 at 2-3; Rule 42.64(b)(2).
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`Exhibit 1015 is not “offered solely to support admissibility,” and since
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`Exhibit 1015 makes no mention of Exhibit 1009, it cannot alleviate the need for the
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`Board to have to consider whether the initial evidence needs to be excluded. Handi
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`Quilter, Inc. v. Bernina International AG, Case IPR2013-00364, Paper 30 at 2-3
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`(supplemental evidence is “offered solely to support admissibility of the originally
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`filed evidence and to defeat a motion to exclude that evidence….”); R.J. Reynolds
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`v. Fontem Holdings, Case IPR2016-01272, Paper 27 at 3 (“The intent of
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`supplemental evidence is to alleviate the need for the Board to have to consider
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`whether the initial evidence needs to be excluded….”). On its face, the only
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`connection between Exhibit 1009 and Exhibit 1015 is that the same foreign
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`document
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`is
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`translated. However, beyond
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`this fact, Petitioner makes no
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`representations regarding how Exhibit 1015 is related to Exhibit 1009 and provides
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`no evidence that Exhibit 1009 was true and correct when it was filed. 37 C.F.R.
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`§42.63(b). Accordingly, the deficiencies identified by the objections timely filed
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`2
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`by Patent Owner remain uncured, Exhibit 1015 has no effect on the admissibility
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`of Exhibit 1009, and Exhibit 1015 is not properly before the Board as supplemental
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`evidence in this proceeding. 37 C.F.R. §42.64(b)(2).
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`Since Exhibit 1015 cannot be relied on to show the admissibility of Exhibit
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`1009 and does not alleviate the Board’s need to address this Motion to Exclude, it
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`appears, at best, to be late filed supplemental information under 37 C.F.R.
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`§42.123(a). Supplemental
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`information
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`is “… additional
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`information
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`that
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`potentially may be filed after institution of a trial and ‘must be relevant to a claim
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`for which trial has been instituted’.” R.J. Reynolds, Paper 27 (Decision) at 3
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`(emphasis in original)(citations omitted).
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`When a party files a new declaration to cure failures under 37 C.F.R.
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`§42.63(b), the Board considers these new declarations supplemental information.
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`R.J. Reynolds, Case IPR2016-01272, Paper 27 at 3-4; and Paper 17 at 3-7
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`(supplemental evidence is evidence used to authenticate the foreign patent while
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`supplemental information is evidence that “cures the defect of the lack of an
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`affidavit certifying the authenticity of the translation”); Taiwan Semiconductor v.
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`DSS Tech. Mgmt., Inc., Case IPR2014-01030, Paper 11 at 3 (Board approving
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`filing of declaration to cure deficiencies in originally filed declaration as
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`supplemental information under Rule 42.123).
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`3
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`However, even new declarations filed as supplemental information provide a
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`direct link to the evidence relied upon in the Petition. Id. In Exhibit 1015, that
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`required link is missing. Mr. Loewus states under penalty of perjury that new
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`Exhibit 1015 is a true and correct copy of DE 19542961, without referencing the
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`authenticity of Exhibit 1009. Exhibit 1015 at 10. This is in contravention of
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`previous Board rulings which state that the newly filed Declaration should “attest[]
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`to the accuracy of the translation provided in” the originally filed exhibit. Nestle
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`USA, Inc., Case IPR2014-01235, Paper 26 at 2 (waiving rules to allow filing of
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`appropriate affidavit attesting to accuracy of the translation). Because the
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`Declaration associated with Exhibit 1015 does not attest to the accuracy of the
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`translation originally filed as Exhibit 1009, it is not clear that Exhibit 1015 should
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`even be considered under supplemental information rules. Regardless, Petitioner
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`has failed to argue, much less meet its burden, regarding the propriety of the late
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`filed supplemental information.
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`Instead of providing evidence to cure the deficiencies in Exhibit 1009,
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`Petitioner argues that the Board should enter new Exhibit 1015. Opposition at 1-3.
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`However, Exhibit 1015 fails to cure any deficiencies identified in Patent Owner’s
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`Motion to Exclude because it does not relate to the admissibility of the original
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`Exhibit 1009. Exhibit 1015 never addresses the declaration originally filed in
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`Exhibit 1009 and provides no insight into the accuracy of the originally filed
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`4
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`translation. Accordingly, Patent Owner’s Motion to Exclude Exhibit 1009 should
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`be granted, and Exhibit 1015 should not be considered as it is not appropriately
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`before the Board in this proceeding.
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`III. The Board Should Exclude Exhibits 1011 and 1012
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`Petitioner effectively concedes that Exhibits 1011 and 1012 should be
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`excluded, providing no actual argument that the exhibits are proper, and instead
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`instructs the Board to regard this motion as “moot.” Opposition at 3-4. While it is
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`uncontested that the Board can choose which exhibits to rely on in its Final
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`Decision and dismiss a Motion to Exclude as moot, that is not a defense to using
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`improper evidence as a basis for the Petition. Presumably, these documents are
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`provided to increase the weight the Board gives to Dr. Atlas’ testimony, and to the
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`extent they utilized for that purpose, excluding these documents impacts the Final
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`Decision. While Petitioner states that these documents are “only used by Dr. Atlas
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`in his Declaration as support for his statements regarding parameter settings and
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`how they are set” (Opposition at 3-4), it remains true that the Board should not
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`consider improper evidence in its Final Decision. To the extent that the Board
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`relies on Dr. Atlas’ Declaration in its Final Decision, Exhibits 1011 and 1012
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`should be excluded. Since the Petitioner did not provide any argument that
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`Exhibits 1011 and 1012 are properly a part of this proceeding, the Board should
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`grant this motion and exclude Exhibits 1011 and 1012.
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`5
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`Respectfully submitted,
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`/Henry A. Petri, Jr./
`Henry A. Petri Jr., Reg. No. 33,063
`James P. Murphy, Reg. No. 55,474
`Polsinelli, PC
`1000 Louisiana Street, 53rd Floor
`Houston, Texas 77002
`Tele: (713) 374-1631
`Fax: (713) 374-1601
`
`April 10, 2018
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`6
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing PATENT
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`OWNER’S REPLY TO PETITIONER’S OPPOSITION TO PATENT OWNER’S
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`MOTION TO EXCLUDE was served on April 10, 2018, via email directed to the
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`following counsel of record for the Petitioner:
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`Donald R. Steinberg
`Don.Steinberg@wilmerhale.com
`Yung-Hoon Ha
`Yung-Hoon.Ha@wilmerhale.com
`Haixia Lin
`Haixia.Lin@wilmerhale.com
`Christopher R. O’Brien
`Christopher.O’Brien@wilmerhale.com
`
`
`/Henry A. Petri, Jr./
`Henry A. Petri Jr., Reg. No. 33,063
`Polsinelli, PC
`1000 Louisiana Street, 53rd Floor
`Houston, Texas 77002
`Tele: (713) 374-1631
`Fax: (713) 374-1601
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`7
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