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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________________________________
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`HP INC., DELL TECHNOLOGIES INC., DELL INC.,
`ASUSTEK COMPUTER INC., and ASUS GLOBAL PTE. LTD.,
`Petitioner
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`v.
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`LITL LLC,
`Patent Owner
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`____________________
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`IPR2024-00404
`U.S. Pat. No. 8,624,844
`_____________________
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`PETITIONER’S MOTION TO SUBMIT SUPPLEMENTAL
`INFORMATION PURSUANT TO 37 C.F.R. §42.123(a)
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`1611252448
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`I.
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`INTRODUCTION
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`Petitioner respectfully moves to submit EX1036 as supplemental
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`information pursuant to 37 C.F.R. § 42.123(a). EX1036 contains
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`evidence relating to the public availability of EX1007 (“Pogue”) and EX1010
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`(“MIT”). Pogue and MIT are relied on in multiple grounds in this proceeding,
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`including Grounds 1 and 4, and are therefore clearly relevant to the claims at issue
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`in this IPR as required by § 42.123(a)(2). Accordingly, Petitioner respectfully
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`requests that its motion be granted.
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`II. BACKGROUND
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`A. Legal Standard
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`A party may submit supplemental information under 37 C.F.R. § 42.123(a)
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`if: (1) a “request for the authorization to file a motion to submit supplemental
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`information is made within one month of the date the trial is instituted,” and (2) the
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`“supplemental information [is] relevant to a claim for which the trial has been
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`instituted.”
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`Unlike supplemental information submitted later in trial (§ 42.123(b)) or
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`information not relevant to a claim for which trial was instituted (§ 42.123(c)), a
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`motion under § 42.123(a) need not “show why the supplemental information
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`reasonably could not have been obtained earlier…” Compare 37 C.F.R. §
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`42.123(c) (where a motion to supplement not filed under subpart (a) “must show
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`why the supplemental information reasonably could not have been obtained earlier,
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`and that consideration of the supplemental information would be in the interests-
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`of-justice”).
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`Instead, the focus of a motion under subpart (a) of the Rule merely requires
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`the Board to ensure that the proffered supplemental information does not seek to:
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`(i) alter “the grounds of unpatentability authorized in this proceeding”; or (ii)
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`change “the evidence initially presented in the Petition to support those grounds of
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`unpatentability.” Palo Alto Networks, IPR2013- 00369, Paper 37 at 3; see also
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`Biomarin Pharma. Inc., v. Genzyme Therapeutic Prods Limited Partnership,
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`IPR2013-00534, Paper 80 at 5 (Jan. 7, 2015) (considering the same factors under
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`§ 42.123(b)). Conducting such an evaluation, the Board also considers whether
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`granting the motion would prevent the just, speedy, and inexpensive resolution of
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`the proceeding, Palo Alto, IPR2013-00369, Paper 37 at 4, or would unfairly
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`prejudice the other party, Unified Patents Inc., v. Dragon Intellectual Property,
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`LLC, IPR 2014-01252, Paper 43 at 3 (Apr. 14, 2015).Palo Alto Networks, Inc. v.
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`Juniper Networks, Inc., IPR2013-00369, slip op. at 2-5 (PTAB Jan. 17, 2014)
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`(Paper 37), Hayward Industries, Inc. v. Pentair Water Pool and Spa, Inc.,
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`IPR2013-00287, slip op. at 2-5 (PTAB Jan. 27, 2014) (Paper 24).
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`B.
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`This Proceeding
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`On June 10, 2024, the Board instituted trial in this proceeding. Patent Owner
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`has not yet filed its Response to the Petition.
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`III. ARGUMENT
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`A.
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`Petitioner’s Motion Is Timely and the Supplemental
`Information Is Relevant as Required by 37 C.F.R. § 42.123(a)
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`Petitioner timely requested authorization from the Board by e-mail on July
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`8, 2024, which was within one month of the trial institution date of June 10, 2024.
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`Thus, this motion satisfies the timeliness requirement under § 42.123(a)(1). In
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`addition, the information Petitioner requests to submit into the record is
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`unquestionably “relevant to a claim [at issue in] the trial” as required by
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`§ 42.123(a)(2). As explained below, the supplemental exhibits are relevant because
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`they support Petitioner’s assertions, do not seek to alter “the grounds of
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`unpatentability authorized in this proceeding,” and do not attempt to change “the
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`evidence initially presented in the Petition to support those grounds of
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`unpatentability.” Moreover, acceptance of the proffered material will promote the
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`search for truth in this matter and will thus serve to foster a fair and just final
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`adjudication of the issues involved in these proceedings. For the foregoing reasons,
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`Petitioner submits that the supplemental information should properly be permitted
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`under § 42.123(a)(1) and entered into the record.
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`B.
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`The Public Availability of Pogue and MIT
`Are Relevant to the Challenges In This IPR
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`In its Institution Decision, this Board concluded that “Petitioner has
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`established a reasonable likelihood of prevailing on has demonstrated a reasonable
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`likelihood of success in proving that claims 1, 3, 4, 7–10, 13, 14, 16, 18, and 22
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`would have been obvious over Lane and Pogue.” Institution Decision at 14
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`(emphasis added). The Board further noted that the Petition included additional
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`challenges including a challenge that relies on MIT and determined that
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`“Petitioner sufficiently demonstrates a reasonable likelihood of succeeding in these
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`additional obviousness challenges.” Institution Decision at 19-20. Pogue and MIT
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`are therefore clearly relevant to this proceeding.
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`EX1036 is an Internet Archive declaration establishing that Exhibit A
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`thereto includes true and accurate copies of printouts of archived web pages
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`showing that (1) Pogue was listed as being on sale on the O’Reilly Safari website
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`as of July 28, 2006; (2) Pogue had been reviewed multiple times on the
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`Amazon.com website as of January 4, 2007, and (3) the content of MIT was
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`publicly available on a C|Net “news.com” website as of October 13, 2005. All of
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`these dates are more than one year prior to the earliest claimed priority date of
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`April 1, 2008 for the ’844 patent at issue in this IPR. Thus, EX1036 confirms the
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`prior art status of Pogue and MIT and thus also is relevant to this proceeding.
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`Entry of EX1036 would not impede "the just, speedy, and inexpensive
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`resolution" to this proceeding because it does not change the instituted grounds of
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`unpatentability or alter the initially-presented evidence in the Petition; to the
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`contrary, consideration of such exhibits will indisputably promote the fair, “just,
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`speedy and inexpensive resolution” of these proceedings. 37 C.F.R. §42.1(b).
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`Moreover, where a party seeks to submit information confirming the public
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`accessibility of a prior art reference at issue in the instituted trial, the Board has
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` repeatedly found such evidence to be proper supplemental information. Group III
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`Int’l, Inc. v. Targus Int’l LLC, IPR2021-00371, Paper 34, at 4-6 (September 17,
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`2021) (Valeo North America, Inc. v. Magna Electronics, Inc., IPR2014-01204,
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`Paper 26 at 4-5 (Apr. 10, 2015); 1964 Ears, LLC v. Jerry Harvey Audio Holdings,
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`LLC, IPR2017-01084, Paper 17 (Dec. 14, 2017) (Board granting motion to file
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`supplemental information of Internet Archive affidavit to prove publication of
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`reference); Crestron Electronics, Inc. v. Intuitive Building Controls, Inc., IPR2015-
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`01379, Paper 27 at 4-5 (Feb. 2, 2016) (Board granting motion to file supplemental
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`information of Internet Archive affidavit to prove publication of reference for
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`which trial was instituted); Samsung Electronics Co., Ltd. v. Ibex PT Holdings Co.,
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`Ltd., IPR2018-00094, Paper 14 at 3-6 (July 24, 2018) (Board granting motion to
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`file supplemental information regarding public availability of references).
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`CONCLUSION
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`Petitioner respectfully requests that this motion be granted for the reasons
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`discussed above.
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`July 10, 2024
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`Respectfully submitted,
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`/s/ James M. Heintz
`James M. Heintz
`Reg. No. 41,828
`DLA Piper LLP (US)
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`One Fountain Square
`11911 Freedom Drive, Suite 300
`Reston, VA 20190-5602
`Phone: + 1 703 773 4000
`Fax: + 1 703 773 5000
`Jim.Heintz@us.dlapiper.com
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`Attorney for Petitioner
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`1611252448
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(b), the undersigned hereby
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`certifies that a copy of the foregoing, Petitioner’s Motion to Submit Supplemental
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`Information Pursuant to 37 C.F.R. §42.123(a), was provided to the Patent Owner
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`by emailing a copy of same (by agreement) to the following attorneys of record for
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`the Patent Owner:
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`Richard F. Giunta (RGiunta-PTAB@WolfGreenfield.com)
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`Gerald B. Hrycyszyn (GHrycyszyn-PTAB@WolfGreenfield.com)
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`July 10, 2024
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`Respectfully submitted,
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`/s/ James M. Heintz
`James M. Heintz
`Reg. No. 41,828
`DLA Piper LLP (US)
`One Fountain Square
`11911 Freedom Drive, Suite 300
`Reston, VA 20190-5602
`Phone: + 1 703 773 4000
`Fax: + 1 703 773 5000
`Jim.Heintz@us.dlapiper.com
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`Attorney for Petitioner
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`1611252448
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