`571-272-7822
`
`
`
`
`
`
`Paper 29
`Entered: January 7, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`ROKU, INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL ELECTRONICS, INC.,
`Patent Owner.
`___________
`
`IPR2019-01612 (Patent 7,589,642 B1)
`IPR2019-01613 (Patent 8,004,389 B1)
` IPR2019-01614 (Patent 9,911,325 B2)1
`___________
`
`
`Before PATRICK M. BOUCHER, MINN CHUNG, and
`SHARON FENICK, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. §§ 42.5, 42.123(b)
`
`
`
` On December 17, 2020, a conference call was held with the parties
`to discuss Patent Owner’s request for authorization to file a motion to submit
`
`
`1 The parties are not authorized to use this form of caption.
`
`
`
`IPR2019-01612 (Patent 7,589,642 B1)
`IPR2019-01613 (Patent 8,004,389 B1)
`IPR2019-01614 (Patent 9,911,325 B2)
`
`supplemental information. Because of the proximity of the request to the
`scheduled oral hearing in these proceedings on December 22, 2020, we took
`the request under advisement.
`Patent Owner seeks to move to submit a document titled “Rebuttal
`Expert Report of Stuart Lipoff Regarding Non-Infringement and Non-
`Domestic Industry (Technical Prong) of U.S. Patent Nos. 7,589,642,
`9,911,325, and 10,593,196.” Patent Owner informs us that the document
`was served on December 7, 2020 in the parallel ITC proceeding, and
`contends that the document is evidence that Petitioner takes positions before
`the ITC that are inconsistent with positions Petitioner takes before the Board
`in these proceedings. Specifically, Patent Owner identifies positions taken
`by Dr. Lipoff in his “Rebuttal Expert Report” that bear on the “time
`information” and “timing information” limitations recited in certain of the
`challenged claims. Patent Owner contends that the document is relevant,
`could not have been obtained earlier, and that its consideration would be in
`the interest of justice, thereby meeting the requirements of 37 C.F.R.
`§ 42.123(b).
`Petitioner opposes Patent Owner’s request and contends that, because
`the document is a “Rebuttal Expert Report,” its submission as supplemental
`information would require submission of additional documents to provide
`context for Dr. Lipoff’s assertions.
`We deny Patent Owner’s request. At the oral hearing, we explored
`the “time information” and “timing information” limitations with the parties.
`We do not discern that potentially inconsistent positions by Petitioner with
`respect to those limitations would bear significantly on our consideration of
`
`2
`
`
`
`IPR2019-01612 (Patent 7,589,642 B1)
`IPR2019-01613 (Patent 8,004,389 B1)
`IPR2019-01614 (Patent 9,911,325 B2)
`
`the issues before us. Furthermore, we agree with Petitioner that, should the
`document be received into evidence, it would likely be necessary for us to
`receive additional evidence filed in the ITC proceeding, i.e., a proceeding
`before a different tribunal that applies different standards, to provide
`context. We are not persuaded that such additional complexity is warranted
`in light of our understanding of the issues as presented during the oral
`hearing.
`
`Accordingly, it is
`ORDERED that Patent Owner’s request for authorization to file a
`motion to submit supplemental information is denied.
`
`
`
`
`
`
`3
`
`
`
`IPR2019-01612 (Patent 7,589,642 B1)
`IPR2019-01613 (Patent 8,004,389 B1)
`IPR2019-01614 (Patent 9,911,325 B2)
`
`
`
`For PETITIONER:
`
`Jon Wright
`Lestin Kenton
`Daniel Block
`Tim Tang
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`jwright-ptab@sternekessler.com
`lkenton-ptab@sternekessler.com
`dblock-ptab@sternekessler.com
`ttang-ptab@sternekessler.com
`
`
`For PATENT OWNER:
`
`Benjamin Pleune
`Ryan Koppelman
`Thomas Davison
`James Abe
`Caleb Bean
`Derek Neilson
`Nicholas Tsui
`ALSTON & BIRD LLP
`ben.pleune@alston.com
`ryan.koppelman@alston.com
`tom.davison@alston.com
`james.abe@alston.com
`caleb.bean@alston.com
`derek.neilson@alston.com
`nick.tsui@alston.com
`
`
`4
`
`
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