`571-272-7822
`
`
`
`
`
`Paper: 32
`Entered: September 21, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SPRINT SPECTRUM L.P.,
`Petitioner,
`
`v.
`
`GENERAL ACCESS SOLUTIONS, LTD.,
`Patent Owner.
`____________
`
`Cases1
`IPR2017-01885 (Patent 7,173,916 B2)
`IPR2017-01887 (Patent 6,891,810 B2)
`____________
`
`
`
`Before MELISSA A. HAAPALA, Acting Vice Chief Administrative Patent
`Judge, KALYAN K. DESHPANDE and DAVID M. KOHUT,
`Administrative Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`
`
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`1 This Decision applies to each of the listed cases. The parties are not
`authorized to use a multiple case caption.
`
`
`
`IPR2017-01885 (Patent 7,173,916 B2)
`IPR2017-01887 (Patent 6,891,810 B2)
`
`
`Pursuant to our authorization, Sprint Spectrum L.P. (“Petitioner”)
`filed a Motion to Submit Supplemental Information (Paper 17,2 “Mot.”) and
`General Access Solutions, LTD (“Patent Owner”) filed an Opposition to
`Petitioner Motion to Submit Supplemental Information (Paper 18, “Opp.”).
`For the reasons discussed below, we deny Petitioner’s motion.
`Petitioner argues that
`A party submitting supplemental information under 37 C.F.R.
`§ 42.123(b) must show ‘[1] why the supplemental information
`reasonably could not have been obtained earlier, and [2] that
`consideration of the supplemental information would be in the
`interests-of-justice.’
`Mot. 1. Petitioner argues that its request satisfies both prongs of 37 C.F.R. §
`42.123(b). Specifically, Petitioner argues that Patent Owner represented that
`it intended to swear behind the Ahy ’133 patent, and, because of this
`intervening event, “Petitioner reasonably could not have obtained the Ahy
`’384 patent earlier because Patent Owner had not informed Petitioner of its
`intention to swear behind the Ahy ’133 patent.” Id. at 2–4. Petitioner
`further argues that entry of Ahy ’384 would be in the “‘interest-of-justice’”
`because it “does not change any instituted grounds in this proceeding” and
`Petitioner promptly requested authorization to file Ahy ’384 as supplemental
`information. Id. at 4–5.
`
`Patent Owner argues Petitioner was aware of Ahy ’384 at the time of
`filing the Petition, “Petitioner was aware that there was a risk that the Patent
`Owner could swear behind that art,” and all of “Petitioner’s arguments rely
`
`
`2 Petitioner and Patent Owner filed similar papers in IPR2017-01885 and
`IPR2017-01887. Accordingly, citations are to IPR2017-01885 unless
`otherwise noted.
`
`2
`
`
`
`IPR2017-01885 (Patent 7,173,916 B2)
`IPR2017-01887 (Patent 6,891,810 B2)
`
`on material that was added to the Ahy ’133 patent.” Opp. 2–5.
`
`We are not persuaded by Petitioner’s arguments. Rather, we agree
`with Patent Owner that Petitioner was aware of the existence of Ahy ’384
`and could have complied with 37 C.F.R. § 42.123(a)(1) in order to file Ahy
`’384 as supplemental information. Accordingly, we are not persuaded that
`Patent Owner’s indication of a possible argument is a sufficient reason as to
`why Petitioner did not request authorization earlier, and Petitioner’s prompt
`request thereafter does not cure this deficiency. Accordingly, Petitioner’s
`request to enter Ahy ’384 as supplemental information is denied.
`We, however, do not require Petitioner to anticipate and predict every
`argument that may be submitted by Patent Owner at the time of submitting
`its Petition or within the one moth time period specified by 37 C.F.R.
`§ 42.123(a)(1). Rather, Petitioner may review Patent Owner’s Response
`(Paper 31) and determine whether the entry of Ahy ’384 is appropriate as
`part of its Reply to the Response. That is, while we do not agree with
`Petitioner that the filing of a motion to submit supplemental information is
`appropriate in anticipation of a potential argument, we note that it may be
`appropriate to submit the same evidence in response to an argument that is
`raised and on record.
`
`
`In consideration of the foregoing, it is hereby:
`ORDERED that, pursuant to 37 C.F.R. § 42.123, we deny Petitioner’s
`Motion to file Supplemental Information;
`FURTHER ORDERED that Exhibit 1010 is expunged.
`
`
`
`3
`
`
`
`IPR2017-01885 (Patent 7,173,916 B2)
`IPR2017-01887 (Patent 6,891,810 B2)
`
`PETITIONER:
`Robert C. Hilton
`George B. Davis
`Jason Cook
`MCGUIREWOODS LLP
`rhilton@mcquirewoods.com
`gdavis@mcquirewoods.com
`jcook@mcquirewoods.com
`
`PATENT OWNER:
`Anthony Dowell
`Richard T. McCaulley, Jr.
`McCAULLEY DOWELL
`aedowell@mccaulleydowell.com
`rmccaulley@mccaulleydowell.com
`
`
`4
`
`
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