Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 17
`Entered: December 17, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`EXOCAD GMBH AND EXOCAD AMERICA, INC.,
`Petitioner,
`
`v.
`
`3SHAPE A/S,
`Patent Owner.
`
`____________
`
`Case IPR2018-00788
`Patent 9,336,336 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, IRVIN E. BRANCH, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`BRANCH, Administrative Patent Judge.
`
`
`ORDER
`Granting-in-Part Petitioner’s Motion to Submit Supplemental Information
`37 C.F.R. § 42.123
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`Paper 17
`Entered: December 17, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`EXOCAD GMBH AND EXOCAD AMERICA, INC.,
`Petitioner,
`
`v.
`
`3SHAPE A/S,
`Patent Owner.
`
`____________
`
`Case IPR2018-00788
`Patent 9,336,336 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, IRVIN E. BRANCH, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`BRANCH, Administrative Patent Judge.
`
`
`ORDER
`Granting-in-Part Petitioner’s Motion to Submit Supplemental Information
`37 C.F.R. § 42.123
`
`
`
`
`
`
`
`IPR2018-00788
`Patent 9,336,336 B2
`
`
`I. INTRODUCTION
`We authorized Petition to file a motion to submit supplemental
`information and Patent Owner to file an opposition. Paper 12 (“Order”), see
`Ex. 1021. Petitioner filed its Motion to Submit Supplemental Information
`under 37 C.F.R. § 42.123(a) (Paper 9, “Motion”) and corresponding Exhibits
`1014–1019 on November 16, 2018. Patent Owner filed an Opposition to
`Petitioner’s motion (Paper 13, “Opposition”) on November 30, 2018.
`Upon consideration of the documents and the parties’ arguments, and
`for the reasons stated below, Petitioner’s motion is granted-in-part.
`II. PETITIONER’S MOTION TO SUBMIT SUPPLEMENTAL
`INFORMATION AND PATENT OWNER’S OPPOSITION
`Petitioner’s Motion seeks to submit the following as supplemental
`information: 1) a declaration confirming the accuracy of the translation of
`Wiedmann (Ex. 1014); 2) exhibits about the public accessibility of
`Wiedmann, including declarations of Oliver and Manfred Wiedmann (Exs.
`1016 and 1017); 3) letters from the German National Library of Medicine
`(Ex. 1018) and German National Library (Ex. 1019); 4) a webpage from
`Livivo.com (Ex. 1020); and 5) a supplemental declaration of Dr. Mundy
`(Ex. 1015). The relevance of each Exhibit is discussed below.
`Patent Owner’s Opposition specifically addresses only the
`supplemental declaration of Dr. Mundy (Ex. 1015). See Opposition.
`Analysis
`A.
`As the moving party, Petitioner bears the burden of proving that it is
`entitled to the requested relief. 37 C.F.R. § 42.20(c). Under 37
`C.F.R.§ 42.123(a), a party may file a motion to submit supplemental
`information if the following requirements are met: (1) a request for
`2
`
`
`
`IPR2018-00788
`Patent 9,336,336 B2
`
`authorization to file such motion is made within one month of the date the
`trial was instituted; and (2) the supplemental information must be relevant to
`a claim for which trial has been instituted.
`With respect to the first requirement of § 42.123(a), trial was
`instituted in this proceeding on October 3, 2018. Paper 7. Petitioner
`requested authorization to file a motion to submit supplemental information
`on November 2, 2018, and thus, Petitioner’s request was made within one
`month of the date the trial was instituted. See Paper 12.
` Declaration Confirming the Accuracy of the Translation of
`a.
`Wiedmann (Ex. 1014)
`Petitioner argues that “[t]he declaration about the accuracy of the
`Wiedmann translation (Ex. 1014) is relevant because it is offered to clarify
`or cure the issue of whether the affidavit originally attached to the
`Wiedmann translation (Ex. 1007 at 0009) complies with 37 C.F.R. § 42.63,
`and it does not change any grounds of unpatentability.” Motion 2.
`Petitioner contends that Patent Owner failed to timely object to the
`translation accuracy and that allowing the declaration would “nonetheless
`cure[] any potential issues with the translation.” Id. at 2–3 (citing LG
`Display Co. v. Surpass Tech Innovation LLC, IPR2015-00885, Paper 9 at 10
`(Sept. 8, 2015); 37 C.F.R. § 42.64(b)(1); Volkswagen Group of Am., Inc. v.
`Emerachem Holdings, LLC, IPR2014-01555, Paper 20 at 4–7 (Mar. 16,
`2015); Ford Motor Co. v. Cruise Control Techs. LLC, IPR2014-00281,
`Paper 17 at 6–7 (July 2, 2014)).
`As discussed above, we are persuaded that Petitioner’s request is
`timely (see 37 C.F.R. 42.123(a)(1)) and that it is relevant to a claim for
`which the trial has been instituted. Accordingly, we grant Petitioner’s
`3
`
`
`
`IPR2018-00788
`Patent 9,336,336 B2
`
`Motion with respect to Exhibit 1014. Exhibit 1014 is allowed into the
`record.
`b.
`
`Exhibits Concerning the Publication and Public Availability of
`Wiedmann (Exs. 1016, 17, 18, 19, and 20)
`The supplemental information in Exhibits 1016–1020 consists of
`evidence relating to the public availability of Wiedmann1, which is a prior
`art reference in instituted grounds in this proceeding. See Paper 7. Exhibits
`1016 and 1017 are declarations from Oliver Wiedmann and Manfred
`Wiedmann, respectively, which according to Petitioner attest to the
`publication and public availability of Wiedmann in April 2008. Mot. 4–5;
`Exs. 1016–1017. Exhibits 1018 and 1018 are letters from the German
`National Library of Medicine (Ex. 1018) and German National Library (Ex.
`1019), which Petitioner contends shows that Digital_Dental.News journal
`was available at these libraries. Motion. 5. Exhibit 1020 is a webpage from
`Livivo.com, which Petitioner asserts further shows the dates the journal was
`received there. Id.
`Petitioner contends that Exhibits 1016–1020 concerning the
`publication and public availability of Wiedmann are relevant, do not change
`any grounds of unpatentability, and “do not change the evidence initially
`presented in the proceeding because they merely confirm public
`accessibility.” Motion 5 (citing Palo Alto Networks, Inc v. Juniper
`Networks, Inc., IPR2013-00369, (Feb. 5, 2014) and Creston Elecs., Inc. v.
`Intuitive Building Controls, Inc., IPR2015-01379, (Feb. 26, 2016) as
`
`
`1 Wiedmann, Oliver, “According to the Laws of Harmony … to find the
`right tooth shape with the assistance of the computer,” Digital Dental News,
`2nd Volume, April 2008 (Ex. 1007, “Wiedmann”).
`4
`
`
`
`IPR2018-00788
`Patent 9,336,336 B2
`
`precedent that “[s]uch evidence has repeatedly been found to be proper
`supplemental information”).
`With respect to the second requirement of § 42.123(a), the
`supplemental information Petitioner seeks to admit generally relates to the
`public accessibility of the Wiedmann reference, which is a basis for the
`grounds of unpatentability in this proceeding, and is therefore relevant to the
`claims of the ’336 patent for which this trial was instituted. Accordingly, we
`grant Petitioner’s Motion with respect to Exhibits 1016–20. These Exhibits
`are allowed into the record.
`Supplemental Declaration of Dr. Mundy (Ex. 1015)
`c.
`Regarding Exhibit 1015, Petitioner argues “[t]he Supplemental
`Mundy Declaration (Ex. 1015) is relevant because it addresses the Board’s
`statement in its Institution Decision that the 3D model depicted in the figures
`in Wiedmann is not of ‘at least part of an oral cavity of the patient’ because
`the 3D model is from a database search, rather than the patient’s pre-
`restoration oral cavity.” Motion 3 (citing Paper 7, 31). Petitioner contends
`“[s]ubmitting the supplemental information now, rather than with a reply,
`means that the Patent Owner will have an opportunity to cross-examine Dr.
`Mundy relating to the supplemental information and will have time to
`review and respond to the supplemental information in the Patent Owner
`Response.” Id. at 2.
`Patent Owner opposes the Motion because “Petitioner provides no
`explanation as to why it could not have presented the contents of the
`Supplemental Mundy Declaration with its Petition” and “because the
`unpatentability theory offered in the Supplemental Mundy Declaration is not
`relevant to the theories set forth in the Petition.” Opposition 3, 5.
`5
`
`
`
`IPR2018-00788
`Patent 9,336,336 B2
`
`
`In accordance with our updated Trial Practice Guide, “the Board will
`permit the petitioner, in its reply brief, to address issues discussed in the
`institution decision.” Trial Practice Guide Update, 83 Fed. Reg. 39989
`(August 13, 2018) 14 (emphasis added). Petitioner will have an opportunity
`to address both the Institution Decision and the Patent Owner Response, if
`submitted, in its Reply as provided in the Scheduling Order. Thus, we
`determine that the submission of this supplemental Declaration from
`Petitioner’s expert is premature and would not promote “the just, speedy,
`and inexpensive resolution” of this proceeding. Motion 2; 37 C.F.R.
`§ 42.1(b); see 37 C.F.R. § 42.22(a).
`Accordingly, we deny Petitioner’s Motion with respect to Exhibit
`1015. Exhibit 1015 shall be expunged from the record.
`III. CONCLUSION
`For the reasons above, Petitioner’s Motion with respect to Exhibits
`1014 and 1016–120 is granted and Petitioner’s Motion with respect to
`Exhibit 1015 is denied.
`
`V. ORDER
`
`Accordingly, it is:
`ORDERED that Petitioner's Motion to Submit Supplemental
`Information is granted-in-part;
`FURTHER ORDERED that Exhibits 1014, 1016, 1017, 1018, 1019,
`and 1020 shall be entered into the record; and
`FURTHER ORDERED that Exhibit 1015 shall be expunged from the
`record.
`
`
`
`
`6
`
`
`
`IPR2018-00788
`Patent 9,336,336 B2
`
`PETITIONER:
`
`Matthew B. Lowrie
`Christopher J. McKenna
`FOLEY & LARDNER LLP
`mlowrie@foley.com
`cmckenna@foley.com
`
`
`PATENT OWNER:
`
`Todd R. Walters, Esq.
`Roger H. Lee, Esq.
`BUCHANAN INGERSOLL & ROONEY PC
`todd.walters@bipc.com
`roger.lee@bipc.com
`
`
`
`7
`
`
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