Paper Entered: May 5, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD

Transcription

1 Paper Entered: May 5, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD EDMUND OPTICS, INC., Petitioner, v. SEMROCK, INC., Patent Owner. Case IPR Before WILLIAM A. CAPP, TRENTON A. WARD, and DAVID C. McKONE, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION Granting Patent Owner s Request to Submit Supplemental Information 37 C.F.R (b)

2 Semrock, via , requested a teleconference with the Board on April 17, 2015, for the purpose of requesting authorization to file a motion to submit supplemental information. Pursuant to that request, the Board convened a teleconference on April 21, 2015, that was attended by Judges Capp and McKone and counsel for each of the parties. At the conclusion of that teleconference, we authorized Semrock to file a motion to submit supplemental information and authorized Edmund to file an opposition thereto. We also authorized Semrock, on a provisional basis, to file a supplemental declaration of its expert, Dr. Rancourt, subject to further order of the Board after completion of the authorized briefing. Semrock filed the Declaration of Dr. Rancourt as Exhibit 2031 on April 21, Semrock filed its Motion to Submit Supplemental Information on April 22, Paper 39. Edmund filed its Opposition to Patent Owner s Motion to Submit Supplemental Information on April 29, Paper 41. The burden of showing that a motion to submit supplemental information should be granted falls on Semrock as the moving party. See 37 C.F.R (c). For the reasons set forth below, Semrock s motion is GRANTED. ANALYSIS The governing rule for requests to submit supplemental information more than one month after the trial is instated provides as follows: (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 2

3 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 (b). We instituted a trial based, among other things, on a prior art treatise authored by Edmund s expert witness, Professor Angus MacLeod. Paper 9, 11; Ex In its motion to amend the 960 patent, Semrock argues that Exhibit 1002 does not enable a person of ordinary skill in the art to make and use a filter having a transmission of greater than 90% as recited by proposed substitute claim 48. Paper 21, 8. In its Petitioner s Reply, Edmund relies on Exhibit 1025 (Ahrens II) as controverting Semrock s evidence concerning the k value of ZnS used in optical filters as it relates to enablement of the 90% transmission limitation. Paper 27, 2. Semrock alleges that there is a discrepancy in Ahrens II with respect to the k value of ZnS. Paper 39, 2. Specifically, Semrock alleges that there is an order of magnitude discrepancy between the k value for ZnS reported in the text of Ahrens II and the k value of ZnS indicated on an adjacent graph that appears on the same page of Ahrens II. Id. Semrock argues that Edmund s expert opinion of Professor MacLeod relies on the lower k value in the text to the exclusion of the higher k value indicated on the adjacent graph. Id. Semrock argues that Professor MacLeod s testimony that an alleged prior art filter meets the 90% transmission limitation in proposed substitute claim 48 is predicated on using the lower k value. Id. Semrock represents that it did not fully appreciate the significance of the k value discrepancy until Professor MacLeod was deposed on April 7, Id. at 4 5. According to Semrock, Professor MacLeod admitted, during his deposition, that his expert declaration (Exhibit 1034) testimony 3

4 regarding the k value of ZnS relied, at least in part, on a German-language source document (Exhibit 2024) that was not disclosed in his declaration. Id. at 2 3. Edmund argues that allowing the requested supplemental information is not in the interests of justice. Paper 41, 4. Edmund characterizes the Ahrens II reference as only marginally relevant to the issues in the case. Id. Edmund also argues that we should deny Semrock s request as untimely. Id. at 2 3. Edmund argues that Semrock should have been aware Ahrens II prior to April 7, Id. at 3. Edmund argues that Semrock had reason to investigate Ahrens body of work long before Edmund brought Ahrens II to Semrock s attention. Id. Edmund also argues that, since Semrock s expert, Dr. Rancourt, was confronted with Ahrens II at his deposition on March 3, 2015, that Semrock had every incentive to investigate further and attempt to discredit the Ahrens II k values. Id. With respect to the issue of whether submission of the supplemental information is in the interests of justice, we are mindful that a trial is, first and foremost, a search for the truth. See Nix v. Whiteside, 475 U.S. 157, 166 (1986); TechSearch LLC v. Intel Corp., 286 F.3d 1360, 1378 (Fed. Cir. 2002). It is, therefore, in the interest of justice that we discern whether the scientific evidence that is submitted in an IPR is reliable. Without prejudging whether Dr. Rancourt s declaration (Ex. 2031), in fact, establishes that the selected portion of Ahrens II relied on by Edmund is unreliable as scientific evidence, the prospect that Ahrens II may contain an internal inconsistency justifies our consideration of the proposed supplemental information in the interests of justice. 4

5 With respect to Edmund s argument that Ahrens II is only marginally relevant, we note that Edmund challenges the patentability of claim 33 as anticipated by MacLeod (Ex. 1002). Pet. 16. In order to anticipate a claimed invention, a prior art reference must enable one of ordinary skill in the art to make the patented invention without undue experimentation. See Impax Labs., Inc. v. Aventis Pharma, Inc., 545 F.3d 1312, 1314 (Fed. Cir. 2008). As we currently understand Edmund s case, Edmund is the proponent of Ahrens II and is offering Ahrens II, at least in part, as proof that MacLeod (Ex. 1002) is enabled with respect to the 90% transmission limitation in claim 33. With this in mind, we discount Edmund s current characterization of Ahrens II as only marginally relevant and we determine that our consideration of Dr. Rancourt s testimony as to whether Ahrens II is internally inconsistent is in the interest of justice. With respect to Edmund s contention that we should deny Semrock s motion as untimely, we note that Edmund s recital of a factual timeline relies on the point in time when Semrock became aware of the existence of Ahrens II, not the apparent inconsistency within Ahrens II. Edmund apparently did not affirmatively disclose to Semrock that Ahrens II contained an internal inconsistency. Similarly, Edmund s expert witness, Professor MacLeod, apparently did not affirmatively disclose to Semrock that he was relying on only portions of Ahrens II to the possible exclusion of other portions that could be viewed as unfavorable to Edmund s case. Under the circumstances and allowing for a reasonable time to discover the apparent inconsistency and obtain expert witness testimony on the matter, we are of the opinion that Semrock has acted in a reasonable manner with respect to the timeliness criteria imposed by 37 C.F.R (b). 5

6 CONCLUSION Semrock s Request is GRANTED and Semrock is authorized to submit supplemental information in the form of Dr. Rancourt s declaration (Exhibit 2031) as requested. 6

7 PETITIONER: Lynn Rzonca Daniel Nadel John Chionchio PATENT OWNER: James Boyle Anthony Lombardi 7