Granting Motion to Submit Supplemental Information IPR2013-00540, 541, 544


Takeaway: A challenge to the public availability of a prior art reference should be asserted in a patent owner response while the admissibility of any evidence purportedly establishing the prior art reference’s public availability may be subject to a motion to exclude.

In its Decision, the Board granted Petitioner’s motion to submit supplemental information. The Board also allowed the parties additional briefing based on the supplemental information and reset Due Date 7 (Oral Hearing) to accommodate consideration of the supplemental information.  Petitioner moved to submit the transcript of an interview with Dr. Yamamoto (the author of a prior art reference relied upon in each proceeding), a stipulation associated with the Yamamoto transcript, and a revised certificate regarding the translation of the Yamamoto reference.  The late submission of supplemental information requires “(i) that the information reasonably could not have been obtained earlier, and (ii) that consideration of the supplemental information would be in the interests of justice.”

Patent Owner had objected under 37 C.F.R. § 42.64(b)(1) to the evidence presented in the petitions establishing the public availability of the Yamamoto reference.  In response, Petitioner timely served Patent Owner with supplemental evidence.  Patent Owner again objected to the sufficiency of that supplemental evidence to establish the reference’s public availability.  Petitioner again served supplemental evidence in the form of a certification from the Japan Science and Technology Agency (JIST) attesting to the date the Yamamoto reference was available at the agency.  Thereafter, Patent Owner filed its Patent Owner Response, in which it did not challenge Petitioner’s evidence related to the public availability of Yamamoto and did not challenge Yamamoto’s status as prior art.  However, three months later, Patent Owner filed a Motion to Exclude Evidence in which Patent Owner argued the evidence was insufficient to establish Yamamoto as prior art.

First, the Board held that the issue of the sufficiency of the evidence to establish whether Yamamoto is prior art should have been addressed in the Patent Owner Response rather than a motion to exclude.  A motion to exclude is appropriate to address the admissibility of the evidence underlying the legal determination of whether a document is prior art.  Thus, the Board found it reasonable for Petitioner to conclude that the public availability of Yamamoto was no longer at issue, and therefore, the reasons for the late submission of the Yamamoto transcript were credible.

The Board also found it in the interests of justice to allow the submission of the Yamamoto transcript. In particular, the transcript was agreed by the parties to be treated the same as sworn deposition testimony, and counsel for both parties were present during the interview.  In addition, the Yamamoto reference is relied upon in each proceeding.  To mitigate any prejudice, the Board moved the Oral Hearing date and allowed both parties additional briefing to address the public availability of the Yamamoto reference in light of the transcript.

Finally, the Board also granted the motion with respect to the revised certificate regarding the Yamamoto translation. The revised certificate merely added the “penalty of perjury” language that was missing from the first certificate.  The Board noted that the added language would make a more complete record, Patent Owner was not contesting the translation’s accuracy, and Patent Owner would not be prejudiced.  The Board also waived the requirement “that the supplemental information reasonably could not have been obtained earlier.”

CaptionCall, LLC v. Ultratec, Inc., IPR2013-00540; IPR2013-00541; IPR2013-00544 Paper 63: Decision on Petitioner’s Motion to Submit Supplemental Information Dated: September 24, 2014
Patents: 6,233,314; 5,909,482; 8,213,578
Before: William V. Saindon and Barbara A. Benoit
Written by: Benoit
Related Proceeding: Ultratec, Inc. v. Sorenson Communication, Inc. and CaptionCall, LLC, No. 13-cv-00346 (W.D. Wis.)