Paper 28
`Trials@uspto.gov
`Tel: 571-272-7822 Entered: May 8, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`SONOS, INC.,
`Petitioner,
`
`v.
`
`IMPLICIT, LLC,
`Patent Owner.
`
`
`IPR2018-00766 (Patent 7,391,791 B2)1
`IPR2018-00767 (Patent 8,942,252 B2 )
`
`
`
`Before MICHELLE N. WORMMEESTER, SHEILA F. McSHANE, and
`NABEEL U. KHAN, Administrative Patent Judges.
`
`McSHANE, Administrative Patent Judge.
`
`
`DECISION
`Denying Patent Owner’s Motion to Submit Supplemental Information
`37 C.F.R. § 42.123(b)
`
`1 This Order addresses issues that are identical in each of these cases.
`Therefore, we exercise our discretion to issue one order to be filed in each
`case. The parties, however, are not authorized to use this style heading in
`any subsequent papers without prior authorization.
`
`
`
`
`Trials@uspto.gov
`Tel: 571-272-7822 Entered: May 8, 2019
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`SONOS, INC.,
`Petitioner,
`
`v.
`
`IMPLICIT, LLC,
`Patent Owner.
`
`
`IPR2018-00766 (Patent 7,391,791 B2)1
`IPR2018-00767 (Patent 8,942,252 B2 )
`
`
`
`Before MICHELLE N. WORMMEESTER, SHEILA F. McSHANE, and
`NABEEL U. KHAN, Administrative Patent Judges.
`
`McSHANE, Administrative Patent Judge.
`
`
`DECISION
`Denying Patent Owner’s Motion to Submit Supplemental Information
`37 C.F.R. § 42.123(b)
`
`1 This Order addresses issues that are identical in each of these cases.
`Therefore, we exercise our discretion to issue one order to be filed in each
`case. The parties, however, are not authorized to use this style heading in
`any subsequent papers without prior authorization.
`
`
`
`
`
`IPR2018-00766 (Patent 7,391,791 B2)
`IPR2018-00767 (Patent 8,942,252 B2)
`
`
`BACKGROUND
`The Board granted leave for Patent Owner to file a Motion to Submit
`Supplemental Information in each inter partes review. Paper 19. 2 On
`April 4, 2019, Patent Owner filed the Motion (Paper 20, “Mot.”), and on
`April 24, 2019, Petitioner filed an Opposition (Paper 23, “Opp.”).
`In its Motion, Patent Owner argues that it should be permitted to
`submit supplemental information consisting of an October 4, 2001 email
`from Dr. Larry Peterson (“the Peterson email”). Mot. 4. Patent Owner
`argues that the standard under 37 C.F.R. § 42.123(b) for late submission of
`information has been met because this evidence reasonably could not have
`been obtained earlier and consideration of this information would be in the
`interests of justice. Id. Patent Owner alleges that the Peterson email is
`highly relevant to its assertion that it can swear behind the primary invalidity
`reference in the case. Id. at 1–2. Patent Owner argues that the Peterson
`email could not have been reasonably obtained earlier because Patent
`Owner, Implicit, did not have the document in its possession, custody, or
`control. Id. at 4. Patent Owner contends that it only became aware of the
`email through a third-party subpoena in an unrelated litigation, Implicit v.
`NetScout. Id. at 2, 4; Ex. 2091 ¶ 5. Patent Owner further alleges that as
`soon as it became aware of the Peterson email, it diligently acted, produced
`the email to Petitioner, and advised that it sought to supplement the record
`on March 7, 2019. Id. at 4.
`Patent Owner argues that it could not have earlier obtained the
`Peterson email because even though Mr. Edward Balassanian, the record
`
`
`2 We refer to the papers and exhibits filed in Case IPR2018-00767 as
`representative.
`
`2
`
`
`
`IPR2018-00766 (Patent 7,391,791 B2)
`IPR2018-00767 (Patent 8,942,252 B2)
`
`custodian for Patent Owner, was copied on the email, that around the time
`the email was sent there was a migration of email systems that likely
`resulted in the deletion of the email. Mot. 5 (citing Ex. 2091 ¶ 9). Patent
`Owner contends that neither Dr. Peterson, the email recipient, nor Mr. Marc
`Fiuczynski, the email sender, were directly involved in the development that
`led to the invention, so Patent Owner was not aware that they would have
`had potentially relevant information from over 17 years ago. Id. at 4, 6
`(citing Ex. 2091¶¶ 5–6; Ex. 2009, 5). Patent Owner contends that Mr.
`Balassanian as the record custodian and its counsel searched and re-searched
`for all potentially relevant documents and did not find the Peterson email.
`Id. at 4–5.
`Patent Owner also argues that the submission of the Peterson email
`would be in the interests of justice because the evidence would be relevant to
`the actual reduction to practice of the invention, which is an issue in the
`case. Mot. 6–7. Patent Owner states that it notified Petitioner in advance of
`the depositions of Dr. Peterson and Mr. Fiuczynski in the Implicit v.
`NetScout case, which occurred in mid-March and early April, so Petitioner
`has had the opportunity to avoid delays associated with additional discovery.
`Id. at 7–8. Patent Owner also contends that the email is admissible because
`Dr. Peterson authenticated the email in the litigation, and evidentiary
`objections are not a basis to preclude submitting supplemental information.
`Id. at 8.
`Petitioner opposes the Motion because it asserts that Patent Owner did
`not engage in appropriate diligence in its discovery efforts, and its failure to
`do so is unreasonable under the circumstances. Opp. 1–4. Petitioner asserts
`that Patent Owner does not indicate that it could not have obtained the
`
`3
`
`
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`IPR2018-00766 (Patent 7,391,791 B2)
`IPR2018-00767 (Patent 8,942,252 B2)
`
`evidence earlier, and fails to indicate that they asked anyone else, such as
`former employees and advisors, if they had relevant documents. Id. at 2–3.
`Petitioner also argues that it will be unduly prejudiced if the evidence is
`admitted now because the oral hearing is upcoming and there is insufficient
`time to re-open discovery prior to the hearing and permitting post-hearing
`briefing would not cure the prejudice to Petitioner. Id. at 6–7.
`ANALYSIS
`As the movant, Patent Owner bears the burden of demonstrating that it
`meets 37 C.F.R. § 42.123(b) for late submission of evidence. 37 C.F.R.
`§ 42.20(c). Considering the circumstances here, we are not persuaded that
`Patent Owner engaged in a reasonable search for the document at issue.
`As Petitioner argues, Patent Owner was aware that its own electronic
`files from the alleged time of the conception of the invention and its
`reduction to practice were potentially deficient because (1) its email server
`may have been migrated around that time period and emails were lost; (2)
`Mr. Balassanian did not back-up or save emails prior to the migration; and
`(3) Mr. Balassanian deleted emails through the day. Mot. 5 (citing Ex. 2092,
`196:4–203:2, 201:3– 202:2, 201:3–202:2); see also Opp. 3. Additionally,
`although Petitioner bears the burden of establishing that any reference upon
`which it relies constitutes prior art under 35 U.S.C. § 102, Patent Owner
`bears the burden of producing evidence supporting antedating the prior art.
`35 U.S.C. § 316(e); see Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1576–77
`(Fed. Cir. 1996).
`Patent Owner’s Motion does not present sufficient evidence to support
`that it performed a diligent search. The only records that Patent Owner
`appeared to have searched were Implicit’s own document records, which it
`
`4
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`
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`IPR2018-00766 (Patent 7,391,791 B2)
`IPR2018-00767 (Patent 8,942,252 B2)
`
`knew to be likely missing documents from the relevant time frame. Mot. 4–
`6. The record does not indicate that Patent Owner sought any additional
`discovery, including, more specifically, seeking documents from former
`employees and advisors, including those directly involved in the project.
`See id. Under these circumstances, we agree with Petitioner that Patent
`Owner has undercut its assertion that the document at issue reasonably could
`not have been obtained earlier because there has been no demonstration that
`Patent Owner performed a reasonably diligent search under these
`circumstances. And the appropriate time for Patent Owner to perform that
`search was prior to the filing of its Response because it bears the burden for
`antedating.
`
`Considering the interests of justice, we agree that Patent Owner’s
`interests could potentially be served by allowing the submission of this
`information, however, Petitioner will also be prejudiced. The grant of this
`motion would require reopening discovery to potentially allow Petitioner to
`take two depositions,3 as well as entail a supplemental reply with a
`supplemental sur-reply. At this stage of the proceeding, reopening discovery
`would be prejudicial to Petitioner and is contrary to our objective to secure
`the just, speedy, and inexpensive resolution of every proceeding.
`Additionally, Patent Owner has presented other evidence in support of an
`
`
`3 The record is unclear as to whether Petitioner was provided sufficient
`notice of the Dr. Peterson and Mr. Fiucynski depositions in March/early
`April in the Implicit v. NetScout action, including an indication of
`Petitioner’s potential participation in the depositions. Mot. 8; Opp. 6, n.3.
`As Petitioner notes, the depositions were in an unrelated district court where
`it is not a party, and the depositions were being taken pursuant to subpoenas
`that were not issued by Patent Owner. See Opp. 6, n.3.
`
`5
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`
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`IPR2018-00766 (Patent 7,391,791 B2)
`IPR2018-00767 (Patent 8,942,252 B2)
`
`alleged reduction to practice of the invention, which is already in the record,
`for the Board’s consideration. See Paper 13, 15–32.
`
`Thus, Patent Owner has not met its burden to demonstrate that it
`meets 37 C.F.R. § 42.123(b) for late submission of information.
`
`ORDER
`
`It is, therefore,
`ORDERED that Patent Owner’s Motion to Submit Supplemental
`Information is denied.
`
`
`
`
`
`6
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`
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`IPR2018-00766 (Patent 7,391,791 B2)
`IPR2018-00767 (Patent 8,942,252 B2)
`
`PETITIONER:
`
`Rory P. Shea
`Cole B. Richter
`George I. Lee
`Michael P. Boyea
`LEE SULLIVAN SHEA & SMITH LLP
`shea@ls3ip.com
`richter@ls3ip.com
`lee@ls3ip.com
`boyea@ls3ip.com
`
`
`PATENT OWNER:
`
`Christian Hurt
`William E. Davis, III
`THE DAVIS FIRM, PC
`churt@bdavisfirm.com
`www.davisfirm.com
`bdavis@davisfirm.com
`sue@davisfirm.com
`
`7
`
`
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