`571-272-7822
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`Paper 18
`Date: August 25, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TRILLER, INC.,
`Petitioner,
`v.
`TIKTOK PTE. LTD.,
`Patent Owner.
`
`IPR2022-00179 (Patent 9,648,132 B2)
`IPR2022-00180 (Patent 9,992,322 B2)1
`
`Before JOHN D. HAMANN, MICHAEL T. CYGAN, and
`JULIET MITCHELL DIRBA, Administrative Patent Judges.
`HAMANN, Administrative Patent Judge.
`
`ORDER
`Denying Petitioner’s Motion to Submit Supplemental Information
`37 C.F.R. § 42.123(a)
`
`
`
`
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`
`
`1 The parties are not permitted to use this style unless authorized by the
`Board.
`
`
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`
`
`IPR2022-00179 (Patent 9,648,132 B2)
`IPR2022-00180 (Patent 9,992,322 B2)
`INTRODUCTION
`I.
`We authorized Triller, Inc. (“Petitioner”) to file a Motion to Submit
`
`Supplemental Information (Paper 11, 2 “Motion”), TikTok Pte. Ltd. (“Patent
`Owner”) to file an Opposition (Paper 12, “Opp.”) to the Motion, and
`Petitioner to file a Reply (Paper 14, “Reply”) to the Opposition. In its
`Motion, Petitioner seeks authorization to submit the Supplemental
`Declaration of Michael Shamos, Ph.D. (Exhibit 1031). Motion 1. Upon
`consideration of the papers, and for the reasons stated below, we deny the
`Motion. 3
`
`II. ANALYSIS
`The requirements for filing a motion for the submission of
`
`supplemental information once an inter partes review (“IPR”) has been
`instituted—as is the case here (Paper 9, “Dec. on Inst.”)—are as follows:
`“(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 must be relevant to a claim for which
`the trial has been instituted.” 37 C.F.R. § 42.123(a). Petitioner meets both
`of these requirements, which is not in dispute. Motion 2; see generally Opp.
`
`These requirements, however, only set forth the conditions to permit
`filing a motion. Section 42.123(a) does not provide that we must grant the
`motion so long as it is timely and relevant. Redline Detection, LLC v. Star
`Envirotech, Inc., 811 F.3d 435, 445 (Fed. Cir. 2015). “Rather, timeliness
`and relevancy provide additional requirements that must be construed within
`
`
`2 The papers cited herein are substantively identical and have the same paper
`numbers for both cases.
`3 We previously informed the parties that Petitioner’s Motion was denied.
`This Order formalizes that denial and provides our reasoning.
`
`2
`
`
`
`IPR2022-00179 (Patent 9,648,132 B2)
`IPR2022-00180 (Patent 9,992,322 B2)
`the overarching context of the PTAB’s regulations governing IPR and
`general trial proceedings.” Id. at 446. Moreover, our “guiding principle
`. . . in making any determination is to ‘ensure efficient administration of the
`Office and the ability of the Office to complete IPR proceedings in a timely
`manner.’” Id. at 445 (citing 35 U.S.C. § 316(b)). Accordingly, when
`determining if a party may submit supplemental information, it is important
`to consider how supplemental information fits within the context of inter
`partes reviews.
`
`Parties generally submit evidence to support positions in a brief.
`What makes supplemental information unique is that it is a submission of
`evidence itself, separate and apart from any brief. Petitioner bears the
`burdening of establishing why we should allow the submission of such
`evidence now. 37 C.F.R. § 42.20(c).
`
`Here, Petitioner submits that the supplemental declaration addresses
`three categories of issues:
`(1) issues unanticipated by Petitioner, raised by Patent Owner for
`the first time in the Patent Owner Preliminary Response, and
`addressed by the Board in the Institution Decision (“Category
`1”), (2) issues of inherency which the Board addressed in the
`Institution Decision and requested the parties to further address
`during trial (“Category 2”), and (3) passages identified for the
`first time in the Patent Owner Preliminary Response (and then
`addressed in the Institution Decision) alleged to disclose claimed
`subject matter in the May 2007 PCT application priority
`document (“Category 3”).
`Motion 1. In short, Petitioner now seeks to provide arguments via the
`supplemental declaration for issues addressed by Patent Owner in its
`Preliminary Response or by us in the Decision on Institution. Id. We view
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`3
`
`
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`IPR2022-00179 (Patent 9,648,132 B2)
`IPR2022-00180 (Patent 9,992,322 B2)
`this as unwarranted.4 See Merck Sharp & Dohme Corp. v. Microspherix
`LLC, IPR2018-00393, Paper 21 at 3 (PTAB Sept. 10, 2018) (“The provision
`for submitting supplemental information is not intended to offer a petitioner
`a routine avenue for bolstering deficiencies in a petition raised by a patent
`owner in a preliminary response.”); American Well Corp. v. TelaDocHealth,
`Inc., IPR2021-00748, Paper 23 at 6–7 (PTAB Feb. 28, 2022) (gathering
`cases and finding that the Board has denied motions for supplemental
`information “where the petitioner sought to use the supplemental
`information to refine or bolster challenges originally presented in the
`petition, based on information in the preliminary response or institution
`decision”) (citations omitted).
`
`Moreover, Petitioner has not shown good cause for submitting
`supplemental information to address these issues. First, we are not
`persuaded by Petitioner’s argument that we should allow the supplemental
`declaration now so that Patent Owner would be able to cross-examine
`Dr. Shamos on both his initial and supplemental declarations at the same
`time. See, e.g., Motion 6 (citing Pacific Market Int’l LLC v. Ignite USA,
`LLC, IPR2014-00561, Paper 23 at 4 (PTAB Dec. 2, 2014)). As Patent
`Owner argues, “there is currently no paper of record that cites to
`Dr. Shamos’s supplemental declaration,” and “[i]t is therefore unclear how
`[Petitioner] plans to rely on this additional testimony.” Opp. 6. Second, we
`are not persuaded that allowing the supplemental declaration now would
`decrease the number of depositions, as Petitioner argues. Motion 6 (citing
`
`
`4 Our Order does not reach whether the proffered supplemental declaration
`(Exhibit 1031) is of a proper scope to be submitted with Petitioner’s Reply.
`Rather, we will address that issue, if needed, based on our Rules concerning
`reply evidence at that time.
`
`4
`
`
`
`IPR2022-00179 (Patent 9,648,132 B2)
`IPR2022-00180 (Patent 9,992,322 B2)
`Pacific Market, Paper 23 at 4). Rather, we agree with Patent Owner that
`Petitioner “has made no assurances that it will not submit additional
`declaration testimony from Dr. Shamos (or another expert) with its
`Petitioner’s Reply,” which “may require further deposition with respect to
`that testimony.” Opp. 7; see also Reply 2 (acknowledging that “there may
`well be two depositions of Dr. Shamos”). Third, we find unavailing
`Petitioner’s argument that by allowing the supplemental declaration now that
`“Patent Owner will have ‘the opportunity to provide testimony from its own
`expert witness in response to [Dr. Shamos’s] testimony as part of its Patent
`Owner Response.’” E.g., Motion 6 (quoting Pacific Market, Paper 23 at 4)
`(alteration in original). Patent Owner’s opposition to Petitioner’s Motion
`shows that Patent Owner does not view this opportunity as a sufficient
`reason for allowing the supplemental declaration now. We will not
`second-guess Patent Owner as to whether it should forego this opportunity.
`
`In addition, we note that although Petitioner relies on reasoning from
`Pacific Market, Petitioner does not address substantive changes to the
`briefing process since Pacific Market was entered. In particular, Petitioner
`does not account for what impact, if any, the following changes have on the
`cited reasoning from Pacific Market: (i) a petitioner, in its reply brief, may
`address issues discussed in the institution decision; and (ii) a patent owner
`may file a sur-reply as a matter of right. See Consolidated Trial Practice
`Guide (“CTPG”) (Nov. 2019)5, 73.
`
`In addition, we do not view our statements in the institution decision
`that the parties should consider addressing certain issues during trial as
`inviting supplemental information, as Petitioner argues. See Motion 9–10;
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`5 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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`5
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`
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`IPR2022-00179 (Patent 9,648,132 B2)
`IPR2022-00180 (Patent 9,992,322 B2)
`Dec. on Inst. 23, 27. Rather, these statements are directed at the normal
`briefing process, and do not justify allowing supplemental information. Dec.
`on Inst. 23, 27.
`
`In addition, we find unavailing Petitioner’s argument that “Patent
`Owner’s reason for opposing this motion is to attempt to preclude Petitioner
`from ever making the contingent obviousness argument.” Reply 3.
`Generally, a petitioner may submit rebuttal evidence (e.g., a new expert
`declaration) in support of its reply, as long as it does not raise a new issue.
`See CTPG 73–74. 6 And to the extent that a new expert declaration
`unjustifiably raises a new issue, we generally would not allow such a
`declaration as supplemental information. Merck, Paper 21 at 3; Laboratoire
`Francais Du Fractionnment et Des Biotechnologies S.A. v. Novo Nordisk
`Healthcare AG, IPR2017-00028, Paper 22 at 4 (PTAB June 13, 2017).
`
`Lastly, we note that the parties dispute whether Petitioner should have
`anticipated the issues that Petitioner now seeks to address via Dr. Shamos’s
`supplemental declaration. We view this issue of anticipation as inapposite
`for purposes of this Order in light of our above findings.
`III. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner’s Motion to Submit Supplemental
`Information (Paper 11) in each of IPR2022-00179 and IPR2022-00180 is
`denied; and
`FURTHER ORDERED that Exhibit 1031 shall be expunged from the
`record in IPR2022-00179 and in IPR2022-00180.
`
`6 We note that a petitioner, in its reply brief, may address issues discussed in
`the institution decision. CTPG, 73. In addition, a petitioner may respond to
`new claim construction issues raised by a patent owner. Id. at 44–45.
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`6
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`
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`IPR2022-00179 (Patent 9,648,132 B2)
`IPR2022-00180 (Patent 9,992,322 B2)
`For PETITIONER:
`Chad E. Nydegger
`Brian N. Platt
`David R. Todd
`WORKMAN NYDEGGER
`cnydegger@wnlaw.com
`bplatt@wnlaw.com
`dtodd@wnlaw.com
`
`For PATENT OWNER:
`W. Karl Renner
`Dan Smith
`Patrick J. Bisenius
`Craig A. Deutsch
`Kim H. Leung
`FISH & RICHARDSON P.C
`IPR50048-0015IP1@fr.com
`PTABInbound@fr.com
`
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`7
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