`571-272-7822
`
`
`
`
`Paper No. 27
`
`Date: September 24, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`COREPHOTONICS, LTD.,
`Patent Owner.
`____________
`
`Case IPR2020-00878
`Patent 10,330,897 B2
`
`
`
`Before BRYAN MOORE and MONICA S. ULLAGADDI, Administrative
`Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`
`Conduct of Proceedings
`
`37 C.F.R. § 42.5
`
`
`
`IPR2020-00878
`Patent 10,330,897 B2
`
`
`I.
`
`INTRODUCTION
`
`Petitioner requested a phone conference regarding its request for
`
`authorization to file a motion to submit supplemental information under 37
`
`CFR § 42.123(b) to add the following from the record of IPR2020-00897 to
`
`the record of IPR2020-00878: Petitioner’s Reply, Paper 22, pp. 22-24; Ex.
`
`1037, pp. 17-19; Ex. 1038; Ex. 1039; Ex. 1040; Sur-Reply, Paper 23, pp. 12-
`
`14; Ex. 2012, pp. 39-40. Petitioner asserts these documents relate to a
`
`position taken by Patent Owner in IPR2020-00897 which it alleges is
`
`inconsistent with the position taken by Patent Owner in this inter partes
`
`review.
`
`On September 23, 2021, we held a conference call with Judges Moore
`
`and Ullagaddi and counsel for the parties, in which we denied, by oral order,
`
`Petitioner’s request for authorization to file a motion to submit supplemental
`
`information. See 37 C.F.R. § 42.20(b) (“A motion will not be entered
`
`without Board authorization”); see also 37 C.F.R. § 42.123(b) (explaining
`
`that the late submission of supplemental information must be in the interests
`
`of justice).
`
`A party seeking to submit supplemental information more than
`one month after the date the trial is instituted, must request
`authorization to file a motion to submit the information. The
`motion to submit supplemental information must show why the
`supplemental information reasonably could not have been
`obtained earlier, and that consideration of the supplemental
`information would be in the interests-of-justice.
`
`
`
`37 C.F.R. § 42.123(b)
`
`Below we provide a brief summary of the result of that call.
`
`Petitioner agreed on the call that, although it was aware of the documents
`
`prior to the oral hearing, the documents requested were not included in any
`
`2
`
`
`
`IPR2020-00878
`Patent 10,330,897 B2
`
`demonstratives at the hearing nor were they specifically discussed at the oral
`
`hearing in this inter partes review. Petitioner asserted that it wanted the
`
`documents entered into this proceeding to provide a “complete record” on an
`
`issue which it believes Patent Owner has taken inconsistent positions in
`
`IPR2020-00897 from its positions in IPR2020-00878. Given the many
`
`similarities and subtle differences in the proceedings at issue, we find that
`
`rather than providing a “complete” record, such documents may introduce
`
`unnecessary confusion between the two proceedings into the record.
`
`Additionally, Petitioner did not request further briefing on any issue in
`
`the case. We note that if we were to rely on these documents in the Final
`
`Written Decision without briefing, Patent Owner would not have had an
`
`opportunity to respond to them.
`
`In sum, we would not and will not rely, in the Final Written Decision
`
`in this inter partes review, on these documents, i.e. documents from another
`
`proceeding about which there is no briefing or testimony in this proceeding.
`
`Additionally, each of the documents except the Sur-Reply and expert
`
`testimony (Ex. 2012) reasonably could have been obtained earlier and
`
`submitted in this proceeding. For at least those reasons, it was apparent on
`
`the call that the interest of justice would not be served by allowing these
`
`documents in the record and that the briefing of such an apparent issue at
`
`this late stage of the proceeding would prejudice the Patent Owner and waste
`
`the Board’s resources.
`
`Neither Petitioner nor Patent Owner requested or provided a court
`
`reporter to record the proceedings and, as such, no transcript of the
`
`proceeding is in the record. On the call, Petitioner indicated it wishes its
`
`3
`
`
`
`IPR2020-00878
`Patent 10,330,897 B2
`
`denial of authorization to file late evidence to be memorialized, this paper
`
`serves such purpose.
`
`
`
`
`
`
`
`For PETITIONER:
`
`Michael S. Parsons
`Andrew S. Ehmke
`Jordan Maucotel
`HAYNES AND BOONE, LLP
`michael.parsons.ipr@haynesboone.com
`andy.ehmke.ipr@haynesboone.com
`jordan.maucotel.ipr@haynesboone.com
`
`
`For PATENT OWNER:
`
`Neil Rubin
`C. Jay Chung
`RUSS AUGUST & KABAT
`nrubin@raklaw.com
`jchung@raklaw.com
`
`
`
`4
`
`
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