UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`LG ELECTRONICS INC.,
`Petitioner,
`
`v.
`
`IMMERVISION, INC.,
`Patent Owner.
`____________
`
`Case No. IPR2020-00195
`
`U.S. Patent No. 6,844,990
`____________
`
`PETITIONER’S MOTION TO
`SUBMIT SUPPLEMENTAL INFORMATION
`
`DB1/ 114323002.2
`
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`LG ELECTRONICS INC.,
`Petitioner,
`
`v.
`
`IMMERVISION, INC.,
`Patent Owner.
`____________
`
`Case No. IPR2020-00195
`
`U.S. Patent No. 6,844,990
`____________
`
`PETITIONER’S MOTION TO
`SUBMIT SUPPLEMENTAL INFORMATION
`
`DB1/ 114323002.2
`
`
`
`Petitioner’s Motion to Submit Supp. Information
`Case IPR2020-00195
`U.S. Patent No. 6,844,990
`
`I.
`
`RELIEF REQUESTED
`Pursuant to 37 C.F.R. § 42.123(a), and as authorized by the Board in the
`
`June 15, 2020 Order of the Board (Paper 9), Petitioner LG Electronics Inc.
`
`(“Petitioner” or “LGE”) hereby moves to submit supplemental information
`
`consisting of:
`
`1)
`
`Code V Designer’s Manual: System of Optical Design Programs, 2nd
`
`ed., Optical Research Associates (1978) (Ex. 1014);
`
`2)
`
`Excerpts of the Code V Reference Manual, Version 7.60, Optical
`
`Research Associates (Feb. 1994) (Ex. 1015);
`
`3)
`
`“A Technical Overview of CODE V Version 7” by Bruce R. Irving of
`
`Optical Research Associates, Proceedings Volume 0766 of the
`
`Society of Photo-Optical Instrumentation Engineers (SPIE), Recent
`
`Trends in Optical Systems Design and Computer Lens Design
`
`Workshop (1987) (Ex. 1016); and
`
`4)
`
`a supplemental declaration from Petitioner’s expert (Ex. 1017) that
`
`authenticates the above three additional pieces of evidence and notes
`
`that they corroborate his opinion in his original declaration that the
`
`Code V lens design software would render the same results in 2001 as
`
`it did at the time of his declaration.
`
`DB1/ 114323002.2
`
`1
`
`
`
`Petitioner’s Motion to Submit Supp. Information
`Case IPR2020-00195
`U.S. Patent No. 6,844,990
`
`Petitioner met and conferred with Patent Owner, which indicated that it did
`
`not oppose this motion.
`
`II.
`
`REASONS FOR THE RELIEF
`In its Petition, LGE showed that a prior art reference Tada (Ex. 1007)
`
`disclosed a lens that met all of the elements of claim 21 of U.S. Patent No.
`
`6,844,990 (“the ’990 patent”). See Pet. at 33-57. In order to show that the lens in
`
`Tada had the same characteristics as claimed in the ’990 patent, LGE’s expert, Dr.
`
`Russell Chipman, used industry-standard lens design software called Code V to
`
`determine certain existing characteristics of the disclosed prior art lens. See, e.g.,
`
`id. at 39; Ex. 1008 at ¶ 51. In its Preliminary Response, Patent Owner
`
`ImmerVision, Inc. (“Patent Owner” or “ImmerVision”) argued that Dr. Chipman’s
`
`testimony by itself regarding the availability and capability of Code V circa 2001
`
`was insufficient. See POPR at 19-22. In its Decision on Institution, the Board
`
`noted that Dr. Chipman’s testimony on this point was sufficient at the preliminary
`
`stage of the proceeding and that Patent Owner provided no discernable basis for
`
`any change in the principles and mathematical calculations necessary to apply
`
`those principles in the relevant time period. Paper 6 at 20-21. The Board
`
`concluded that Patent Owner’s arguments raise factual disputes that are best
`
`resolved upon a full record. Id. at 21.
`
`DB1/ 114323002.2
`
`2
`
`
`
`Petitioner’s Motion to Submit Supp. Information
`Case IPR2020-00195
`U.S. Patent No. 6,844,990
`
`A party may submit supplemental information under 37 C.F.R. § 42.123(a)
`
`if: (1) “[a] request for the authorization to file a motion to submit supplemental
`
`information is made within one month of the date the trial is instituted” and (2)
`
`“[t]he supplemental information [is] relevant to a claim for which the trial has been
`
`instituted.” In deciding motions under § 42.123(a), the Board has considered
`
`whether the information changes “the grounds of unpatentability authorized in
`
`[the] proceeding” or “the evidence initially presented in the Petition to support
`
`those grounds of unpatentability.” Palo Alto Networks, Inc. v. Juniper Networks,
`
`Inc., Case IPR2013-00369, Paper 37, slip. op. at 3 (P.T.A.B. Feb. 5, 2014). The
`
`Board has also considered whether granting the motion would prevent the just,
`
`speedy, and inexpensive resolution of the proceeding, id. at 4, or would prejudice
`
`the other party. Unified Patents Inc., v. Dragon Intellectual Property, LLC, Case
`
`IPR2014-01252, Paper 43, slip. op. at 3 (P.T.A.B. Apr. 14, 2015).
`
`Here, Petitioner made the request to submit supplemental information on
`
`June 11, 2020, which is within 30 days of the date of institution (May 13, 2020).
`
`Accordingly, the first requirement is met. 37 C.F.R. § 42.123(a)(1).
`
`All of the information LGE is seeking to add to the proceeding is regarding
`
`the availability of capability of Code V prior to 2001, the alleged priority date of
`
`the ’990 patent (May 11, 2001). This is not a case where the supplemental
`
`DB1/ 114323002.2
`
`3
`
`
`
`Petitioner’s Motion to Submit Supp. Information
`Case IPR2020-00195
`U.S. Patent No. 6,844,990
`
`information is being used to change the grounds of unpatentability or the evidence
`
`initially presented in the petition to support the original grounds of unpatentability.
`
`Rather, this evidence simply buttresses the evidence already included with the
`
`petition on this point and is the additional evidence that Patent Owner specifically
`
`said it wanted. See POPR at 22 (“Neither Petitioner nor Dr. Chipman submitted
`
`any other evidence, such as documentation on Code V (e.g., a user manual or
`
`advertisement), screenshots of a 2001 or earlier version of Code V, or other sworn
`
`testimony.”). Moreover, the supplemental information LGE is seeking to add is
`
`the exact type of information that the Board has routinely permitted. See, e.g.,
`
`Palo Alto Networks, IPR2013-00369, slip op. at 2-3 (allowing documents that
`
`constitute additional evidence to confirm the public accessibility of prior art
`
`references that are the basis of the instituted grounds of unpatentability); R.J.
`
`Reynolds Vapor Co. v. Fontem Holdings 1 B.V., IPR2016-01692, Paper 16, slip op.
`
`at 2-3 (P.T.A.B. April 27, 2017) (allowing supplemental declaration that provided
`
`corroborating evidence for opinions expressed in declaration submitted with
`
`petition); Canfield Scientific, Inc. v. Melanoscan, LLC, IPR2017-02125, Paper 61,
`
`slip op. at 3 (P.T.A.B. March 22, 2019) (allowing supplemental documents and
`
`declarations “in order to support contentions that are set forth in detail in the
`
`Petition”).
`
`DB1/ 114323002.2
`
`4
`
`
`
`Petitioner’s Motion to Submit Supp. Information
`Case IPR2020-00195
`U.S. Patent No. 6,844,990
`
`Because the information Petitioner seeks to add to the proceedings is simply
`
`in response to Patent Owner’s request for more evidence, Petitioner could have
`
`waited to include this information as exhibits to its Reply. However, Petitioner
`
`seeks to add the information now so that Patent Owner has it in ample time before
`
`it prepares its Response. Petitioner has already served the additional information
`
`on Patent Owner.
`
`In light of the foregoing, the second factor is met. 37 C.F.R. § 42.123(a)(2).
`
`III. CONCLUSION
`For the foregoing reasons, LGE respectfully requests that the Board grant
`
`this motion and allow LGE to file the above-identified documents as exhibits in
`
`this proceeding.
`
`Dated: June 19, 2020
`
`
`
`Respectfully Submitted,
`
`
` /Dion M. Bregman/
`Dion M. Bregman (Reg. No. 45,645)
`
`DB1/ 114323002.2
`
`5
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Petitioner’s
`
`Motion to Submit Supplemental Information was served on June 19, 2020 via
`
`email on Patent Owner’s counsel at the email addresses below:
`
`Stephen E. Murray
`smurray@panitchlaw.com
`Keith A. Jones
`kjones@panitchlaw.com
`PANITCH SCHWARZE BELISARIO
`& NADEL LLP
`Two Commerce Square
`2001 Market Street, Suite 2800
`Philadelphia, PA 19103
`(215) 965-1307
`(215) 965-1331 (Fax)
`
`John D. Simmons
`jsimmons@panitchlaw.com
`Dennis J. Butler
`dbutler@panitchlaw.com
`PANITCH SCHWARZE BELISARIO
`& NADEL LLP
`Wells Fargo Tower
`2200 Concord Pike, Suite 201
`Wilmington, DE 19803
`(302) 394-6001
`
`Dated: June 19, 2020
`
`
`
`Respectfully Submitted,
`
`
` /Dion M. Bregman/
`Dion M. Bregman (Reg. No. 45,645)
`
`DB1/ 114323002.2
`
`
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