Trials@uspto.gov Paper No. 22
`571.272.7822 Filed: April 2, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY CORPORATION,
`Petitioner,
`
`v.
`
`FUJIFILM CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2018-00876 (Patent 6,462,905 B1)
`Case IPR2018-00877 (Patent 6,462,905 B1)1
`____________
`
`Before SALLY C. MEDLEY, GREGG I. ANDERSON, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Conduct of the Proceedings
` 37 C.F.R. § 42.5
`
`
`
`
`
`1 The parties are not authorized to use this caption. The parties will continue
`to use the individual case captions.
`
`
`571.272.7822 Filed: April 2, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY CORPORATION,
`Petitioner,
`
`v.
`
`FUJIFILM CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2018-00876 (Patent 6,462,905 B1)
`Case IPR2018-00877 (Patent 6,462,905 B1)1
`____________
`
`Before SALLY C. MEDLEY, GREGG I. ANDERSON, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Conduct of the Proceedings
` 37 C.F.R. § 42.5
`
`
`
`
`
`1 The parties are not authorized to use this caption. The parties will continue
`to use the individual case captions.
`
`
`
`IPR2018-00876 (Patent 6,462,905)
`IPR2018-00877 (Patent 6,462,905)
`
`
`INTRODUCTION
`In an email dated March 29, 2019, Fuji Corporation (“Patent Owner”)
`requested a conference call for authorization to file a motion under 37 C.F.R.
`§ 42.123 to submit supplemental information in the above identified
`proceedings, IPR No. 2018-00876 (“’876 IPR”) and IPR No. 2018-00877
`(“’877 IPR”). On April 1, 2019, a conference call was held with counsel for
`Patent Owner, Sony Corporation (“Petitioner”), and Judges Medley,
`Anderson, and McShane participating.
`In the March 29 email and confirmed during the conference call, the
`supplemental information Patent Owner seeks to file is a “corrected version
`of William Vanderheyden’s declaration (Ex. 2008) in both IPRs to include a
`sworn statement in accordance with 37 C.F.R. § 1.68, with no other
`changes.” As stated in the March 29 email, Petitioner confirmed during the
`call that it opposes the request.
`BACKGROUND FACTS
`The Vanderheyden declarations were filed as part of Patent Owner’s
`Response (’876 IPR, Paper 21; ’877 IPR, Paper 17). The Vanderheyden
`declarations are signed and dated but do not include an oath or declaration.
`See Ex. 2008 ¶ 283, signature block. Patent Owner states the omission was
`inadvertent, i.e., a mistake. Petitioner does not contest that a mistake was
`made. Petitioner is not aware of any other reason or bad faith associated
`with the omission.
`Petitioner first raised the issue in its Reply filed on March 27, 2019, in
`both IPRs, two days prior to the March 29 email. Both Replies include the
`same argument with slight differences in wording. The argument from the
`’876 IPR is set out below in its entirety.
`
`2
`
`
`
`IPR2018-00876 (Patent 6,462,905)
`IPR2018-00877 (Patent 6,462,905)
`
`
` Exhibit 2008 fails to meet the requirements of either 37 C.F.R.
`§ 1.68 and 28 U.S.C. § 1746. Ex-2008 ¶¶282-283. The Board
`affords such “declarations” no weight because they lack
`necessary safeguards to ensure credibility. ZTE (USA) Inc. v.
`Evolved Wireless LLC, IPR2016-00757, 2017 WL 6206107, *10
`(P.T.A.B. Nov. 30, 2017); Int’l Bus. Machines Corp. v.
`Intellectual Ventures II LLC, IPR2015-01323, Paper 38, 9-12
`(P.T.A.B. Sept. 27, 2015).
`
` ’876 IPR, Paper 25, 26; see also ’877 IPR, Paper 21, 26 (same argument
`with different wording).
`
`DISCUSSION
`The policy behind our rules for inter partes review is “to secure the
`just, speedy, and inexpensive resolution of every proceeding.” 37 C.F.R.
`§ 42.1 (b). It is incumbent on the parties to “act with courtesy and decorum
`in all proceedings before the Board, including in interactions with other
`parties.” 37 C.F.R. § 42.1 (c).
`The circumstances which bring this dispute to us are not exemplary of
`the policies which govern these proceedings. Dr. Vanderhayden’s
`deposition was taken on February 27, 2019, a month before Petitioner’s
`Replies were filed. See ’876 and ’877 IPR, Ex. 1037. Dr. Vanderhayden’s
`testimony was taken under oath (Ex. 1037, 4:1–4) and he was subjected to
`cross-examination regarding his original declaration. During the conference
`call, Petitioner suggested that only those portions of Dr. Vanderhayden’s
`original declaration (Ex. 2008) covered in the deposition could be
`considered. Such a piecemeal approach is unworkable, unnecessary, and
`inconsistent with the argument in the Reply. That Dr. Vanderhayden’s
`testimony was taken removes any doubt concerning affording weight to his
`original statement.
`
`3
`
`
`
`IPR2018-00876 (Patent 6,462,905)
`IPR2018-00877 (Patent 6,462,905)
`
`
`Petitioner, however, chose to wait to raise the issue that is now before
`us in its Reply. Neither did Petitioner object to the evidence, as was done in
`one of the cases it cites. See International Business Machines, Paper 38, 9.
`The absence of an oath or declaration is not so trivial, however, as to
`be unnecessary. Testimonial evidence usually requires an oath or
`declaration as provided by our rules and statute. See 37 C.F.R. § 1.68; 28
`U.S.C. § 1746. We also expect the parties to follow the rules and procedures
`under which inter partes review is conducted.
`Nonetheless, unintentional, easily and quickly corrected mistakes are
`not a basis for what is essentially a request to exclude the Vanderhayden
`declarations by giving them no weight as requested in the Reply. The
`prejudice to Patent Owner would significantly outweigh any perceived
`prejudice Petitioner believes it has suffered. Patent Owner is able to timely
`correct the omission and we are presented with no reason not to permit it to
`do so.
`The ZTE and International Business Machines cases cited by
`Petitioner are consistent with our decision. Neither case supports
`Petitioner’s position. ZTE is similar to this case in that Petitioner raised the
`issue in its reply, giving Patent Owner notice. ZTE, Paper 42, 24. Despite
`notice, “Patent Owner took no affirmative steps to cure the defect.” Id.
`International Business Machines related to evidence where Patent Owner
`timely served objections to a declaration and Petitioner did not serve
`supplemental evidence in response to Patent Owner’s objections.
`International Business Machines, Paper 38, 9. Unlike ZTE or International
`Business Machines, Patent Owner here acted immediately upon notice of the
`omission.
`
`4
`
`
`
`IPR2018-00876 (Patent 6,462,905)
`IPR2018-00877 (Patent 6,462,905)
`
`
`Patent Owner seeks relief pursuant to 37 C.F.R. § 42.123. The rule
`provides a party must file a motion to submit supplemental information and,
`if more than one month after institution of trial, as is the case here, the
`following showing is required.
`(b) Late submission of supplemental information. 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). Although under these facts Patent Owner
`could make the required showing under Rule 123, to require it to do
`so would unnecessarily add expense and time for the parties, requiring
`additional Board resources.
`Based on the facts before us, Patent Owner will be given ten
`business days from the date of the conference or April 1, 2019, to
`serve and file supplemental information in the form of a corrected
`Vanderhayden declaration. The same exhibit number should be used
`and the original declaration will be expunged.
`ORDER
`
`It is accordingly
`ORDERED that Patent Owner will be given ten business days from
`the date of the conference or until April 15, 2019, to serve and file
`supplemental information in the form of a corrected Vanderhayden
`declaration Exhibit 2008;
`
`5
`
`
`
`IPR2018-00876 (Patent 6,462,905)
`IPR2018-00877 (Patent 6,462,905)
`
`
`FURTHER ORDERED that upon the filing of a corrected Exhibit
`2008 originally filed Exhibit 2008 will be expunged; and
`FURTHER ORDERED that a copy of this Order shall be filed in each
`of the ’876 and ’877 IPRs.
`
`PETITIONER:
`Richard Giunta
`Michael Rader
`Randy Pritzker
`WOLF, GREENFIELD & SACKS, P.C.
`rgiunta-ptab@wolfgreenfield.com
`mrader-ptab@wolfgreenfield.com
`rpritzker-ptab@wolfgreenfield.com
`
`PATENT OWNER:
`Eliot Williams
`Robert Scheinfeld
`Robert Maier
`Jennifer Tempesta
`Margaret Welsh
`BAKER BOTTS L.L.P.
`eliot.williams@bakerbotts.com
`robert.scheinfeld@bakerbotts.com
`robert.maier@bakerbotts.com
`jennifer.tempesta@bakerbotts.com
`margaret.welsh@bakerbotts.com
`
`
`
`
`
`6
`
`
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