`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`
`TCT MOBILE (US), INC.; TCT MOBILE (US) HOLDINGS, INC.;
`HUIZHOU TCL MOBILE COMMUNICATION CO. LTD.; AND
`TCL COMMUNICATION, INC.,
`Petitioner,
`
`v.
`
`FUNDAMENTAL INNOVATION SYSTEMS INTERNATIONAL LLC,
`Patent Owner.
`
`
`___________________
`
`Case IPR2021-00599
`Patent No. 7,834,586
`___________________
`
`FUNDAMENTAL INNOVATION SYSTEMS INTERNATIONAL LLC's
`OPPOSITION TO PETITIONERS' MOTION TO SUBMIT
`SUPPLEMENTAL INFORMATION UNDER 37 CFR § 42.123(A)
`
`
`
`
`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2021-00599
`Patent No. 7,834,586
`
`The PTAB rules require that "[w]hen a party relies on a document or is
`
`required to produce a document in a language other than English, a translation of the
`
`document into English and an affidavit attesting to the accuracy of the translation
`
`must be filed with the document." 37 C.F.R. § 42.63(b). Petitioners rely on the
`
`Japanese patent application, Morita, as its primary reference. Petitioners allege that
`
`their original certificate of accuracy has met all the requirements. Mot. 1, 3. If true,
`
`there is no need for Petitioners to supplement the record with the new certificate. If
`
`not, Petitioners should acknowledge that they made a mistake and are submitting the
`
`new certificate to correct that mistake. Regardless, because the new certificate is on
`
`its face inaccurate, the Board should deny Petitioner's motion to supplement.
`
`Petitioners first suggest that their original certificate was not deficient because
`
`Consortra Translations had used the same form of certification without objections
`
`and that another law firm representing an unrelated client allegedly used a similar
`
`certificate in another proceeding. Mot. 1, 3. Petitioners do not explain, however,
`
`why Patent Owner was/is bound by arguments or inactions of unrelated parties or
`
`why the original certificate actually meets the requirements of 37 C.F.R. § 42.63(b).
`
`Indeed, that Petitioners are concerned enough to secure a second Certificate of
`
`Accuracy and seek its submission suggests the opposite.
`
`Regarding the new certificate of accuracy, Patent Owner opposes its
`
`submission because the certificate is on its face inaccurate and/or false. As is clear
`
`
`
`
`
`- 1 -
`
`
`
`
`
`Case IPR2021-00599
`Patent No. 7,834,586
`
`from the reproduced images below, the new certificate shows a signature date earlier
`
`than the one shown on the original certificate, even though Petitioners supposedly
`
`obtained the new certificate only in response to the POPR(s) filed this year. Mot. 1.
`
`Ex. 1015
`(original
`certificate)
`with a signature
`date of
`11/13/2020
`
`Ex. 1019
`(updated
`certificate) with
`a signature date
`of 9/15/2020,
`before
`11/30/2020
`
`
`
`
`
`- 2 -
`
`
`
`
`
`
`
`
`
`Case IPR2021-00599
`Patent No. 7,834,586
`
`It is also suspicious that the two certificates purportedly signed on two
`
`different dates have the same signatures as well as spacing between the notary stamp
`
`and the words "Notary Public." See blue boxes above. In fact, when the undersigned
`
`printed the two certificates out and overlaid them, nearly everything aligned
`
`perfectly. Yet Petitioners do not explain how this can be the case if the two
`
`certificates were signed on two different occasions and the notary public affixed the
`
`stamp and his signature after Ms. Smith swore and signed before him.
`
`For these reasons, the new certificate is on its face inaccurate and suspect, and
`
`the parties should not knowingly rely on such a certificate. Admitting the new
`
`certificate will be prejudicial to Patent Owner because it compounds the defects in
`
`the certificate of accuracy and will force Patent Owner to investigate and litigate
`
`issues that may be tangential to the patentability of the '586 patent. As such, Patent
`
`Owner respectfully requests that the Board denies Petitioners' motion to supplement.
`
`
`Dated: October 4, 2021
`
`Respectfully submitted,
`
`/Hong Zhong/
`H. Annita Zhong (Reg. No. 66,530)
`Jason Sheasby (pro hac vice)
`Irell & Manella LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, CA 90067
`Tel: (310) 277-1010
`Fax: (310) 203-7199
`Email: HZhong@irell.com
`Email: JSheasby@irell.com
`
`
`
`
`
`- 3 -
`
`
`
`
`
`CERTIFICATE OF SERVICE
`I hereby certify, pursuant to 37 C.F.R. section 42.6, that on October 4, 2021,
`
`Case IPR2021-00599
`Patent No. 7,834,586
`
`
`a complete copy of the foregoing was served upon the following, by
`
`ELECTRONIC MAIL:
`
` ORRICK, HERRINGTON & SUTCLIFFE, LLP
`
` Jeffrey Johnson, Reg. No. 53,078
`3J6PTABDocket@orrick.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Robert J. Benson
`R75PTABDocket@orrick.com
`
`
`Jeremy Jason Lang
`PTABDocketJJL2@Orrick.com
`
`TCL-FISI_OHS@orrick.com
`
`
`
`
`
`
`
` /Susan M. Langworthy/
` Susan M. Langworthy
`
`- 4 -
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
