UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`United Services Automobile Association,
`Petitioner,
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`NADER ASGHARI-KAMRANI and KAMRAN ASGHARI-KAMRANI,,
`Patent Owner
`______________________
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`Case CBM2016-00063
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`Patent 8,266,432
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`PETITIONER’S NOTICE OF OBJECTIONS TO EVIDENCE
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`UNDER 37 C.F.R. § 42.64(b)(1)
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`United Services Automobile Association,
`Petitioner,
`v.
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`NADER ASGHARI-KAMRANI and KAMRAN ASGHARI-KAMRANI,,
`Patent Owner
`______________________
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`Case CBM2016-00063
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`Patent 8,266,432
`______________________
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`PETITIONER’S NOTICE OF OBJECTIONS TO EVIDENCE
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`UNDER 37 C.F.R. § 42.64(b)(1)
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`CBM2016-00063
`Patent 8,266,432
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`Pursuant to 37 C.F.R. § 42.64(b)(1), Petitioner, United Services Automobile
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`Association, (“Petitioner”), hereby submits its notice of objections to evidence that
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`Patent Owner, NADER ASGHARI-KAMRANI and KAMRAN ASGHARI-
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`KAMRANI, submitted as Patent Owner’s Exhibits 2008 and 2010 on 12/5/2016.
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`Petitioner objects to Exhibit 2008 (Certificate of Correction) in its entirety on
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`grounds of prejudice, confusion, and waste of time (FRE 403), relevancy (FRE 401
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`and 402), foundation and personal knowledge (FRE 602 and 701), and hearsay not
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`subject to any exceptions (FRE 801). Petitioner further objects to Section VII,
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`paragraphs 41 to 61 of Exhibit 2010 (Declaration of Alfred Weaver) on grounds of
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`prejudice, confusion, and waste of time (FRE 403), and relevancy (FRE 401 and
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`402).
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`The following chart tabulates Petitioner’s objections to Exhibit 2008.
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`Petitioner objects to Exhibit 2008 under FRE 403 on grounds of unfair
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`FRE 403:
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`prejudice, confusion of issues, and undue delay. This Exhibit was served
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`on the Petitioner on 12/5/2016, more than two months after the Board
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`had instituted the current CBM Review (CBMR). To the extent that
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`CBM2016-00063
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`Patent 8,266,432
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`Patent Owner (PO) argues that this filing was authorized by the Board,
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`an issued that remains unclear1, PO essentially seeks a new chain of
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`priority (i.e., the chain that includes application No. 11/333,400 (the ‘400
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`application), now Pat. No. 8,281,129) so that even if the original priority
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`chain (i.e., the chain that includes application No. 11/239,048, now Pat.
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`No. 7,444,676) fails, the challenged claims may still be supported by the
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`new priority chain. The entry of this Exhibit leads to a moving target for
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`the instant proceeding that is unduly prejudicial to the Petitioner who had
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`incurred great expenses in preparing the CBM Petition based on the
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`original priority chain, which is all that is included on the face of the
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`1 See Paper 10 at 9 (“FURTHER ORDERED that when a decision is rendered on
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`any request for certificate of correction and petition filed by Patent Owner, Patent
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`Owner shall file a copy of the document as an exhibit in the instant proceedings.”).
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`(emphases added). Pursuant to this order, PO had already filed Exhibit 2005
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`(Decision to Dismiss Petition under 37 C.F.R. 1.78(c) and 1.78(e) to Request a
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`Certificate of Correction and to Accept an Unintentionally Delayed Benefit Claim)
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`and Exhibit 2006 (Decision to Grant a Renewed Petition under 37 C.F.R. 1.78(c)
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`and 1.78(e) to Request a Certificate of Correction and to Accept an Unintentionally
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`Delayed Benefit Claim).
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`CBM2016-00063
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`Patent 8,266,432
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`’432 Patent. PO, on the other hand, had ample notice of amending its
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`priority claim.2 Indeed, Petitioner even alerted PO of the priority defect
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`on 2/8/2016, long before the instant CBMR Petition was filed, and
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`specifically advised PO that it intended to file a petition relying on the
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`present priority chain, yet PO failed to add priority to the ‘400
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`application. See USAA-1046.3 In addition, by signing and filing a non-
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`publication request (NPR) for the ’400 application, PO admitted that the
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`2 The prosecution record of the ‘432 Patent indicates that, on 12/12/2011, PO
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`terminally disclaimed Application No. 11/333,400 (the ‘400 application) to the
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`application for the ’432 Patent. Even if PO had no knowledge of its own ’400
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`application while filing for the ’432 Patent, the double-patenting rejection put the
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`PO on notice of the existence of both the ‘400 application and the potential
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`relationship to the application under examination. Yet, PO chose to file the
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`terminal disclaimer in the ’400 application without amending the priority statement
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`in the application for the ’432 Patent.
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`3 PO filed a Request for Certificate of Correction to the’432 Patent on 2/22/16 that
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`only sought to change the original claim to priority from a “continuation” to a
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`“continuation-in-part”, without seeking to add a priority claim to the ‘400
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`application.
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`4
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`CBM2016-00063
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`Patent 8,266,432
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`‘400 application discloses a different invention than the Grandparent;
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`and thus, PO has expressly disclaimed the existence of priority extending
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`through the ’400 application and confirmed that the failure to claim
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`priority was intentional. See USAA-1047
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`This attempted entry of Exhibit 2008 would also require additional fact
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`finding by the Board who had instituted the current CBMR, thereby
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`leading to a slow-down that runs afoul of the Congressional mandate for
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`“speedy, and inexpensive resolution of a proceeding.” 37 C.F.R. §
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`42.1(b); § 42.5(a) and (b). If the challenged claims are only supported by
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`the new priority chain, allowing PO to amend priority chain ex post facto
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`would be unfairly prejudicial as PO would have a free pass to torpedo a
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`proceeding with new evidence after it has been instituted. See e.g., IPR
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`2015-00559, Paper 44 (denying PO’s motion for Filing a Request for
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`Certificate of Correction after institution on grounds of prejudice). If the
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`claims are indeed supported by the original priority chain, PO is not
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`disadvantaged in the absence of the new priority chain for the purpose of
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`the instant proceeding; while Petitioner is greatly prejudiced by the
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`introduction of such new evidence at this late timing.
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`FRE 401
`and 402:
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`Petitioner objects to Exhibit 2008 under FRE 401 and 402 for being
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`irrelevant. The Petitioner prepared the CBM petition and the Board
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`CBM2016-00063
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`Patent 8,266,432
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`instituted this proceeding based on the original priority chain. If the
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`challenged claims are indeed supported by the original priority chain—as
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`contended by the PO, this new priority chain from Exhibit 2008 would
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`not have any tendency to make the fact of support more or less probable
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`than it would be without Exhibit 2008.
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`FRE 602
`and 701:
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`Petitioner objects to Exhibit 2008 under FRE 602 and 701 for lacking
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`foundation and personal knowledge. This Exhibit includes a purported
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`Certificate of Correction that was issued in response to PO’s renewed
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`Petition to Accept an Unintentionally Delayed Benefit Claim under §§
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`1.78(c) and 1.78(e). See Exhibit 1054 at 4 (summarily stating that the
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`entire delay in claiming the second priority chain was completely
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`unintentional). To the extent that the Office relied on the statements
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`made by PO’s counsel in this renewed petition filed 8/30/2016 (Exhibit
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`1054), the personal knowledge of PO’s counsel is imputed to the issuing
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`officer at the Petitions Branch. See PO’s Exhibit 2006 at 1 (concluding
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`that “[t]he instant renewed petition corrects the deficiencies identified in
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`the prior decision); see also PO’s Exhibit 2005 (denying PO’s earlier
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`petition for certificate of correction). Yet, PO’s counsel is not privy to
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`privileged communications between PO and its previous law firms when
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`they were prosecuting the instant application and Application No.
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`CBM2016-00063
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`Patent 8,266,432
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`11/333,400 (the ‘400 application in the new priority chain purporting to
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`be newly discovered). No foundation has been laid regarding PO’s
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`counsel’s personal knowledge of what had transpired between PO and its
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`previous law firms during prosecution of the instant application and the
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`‘400 application.
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`FRE 801:
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`Petitioner objects to Exhibit 2008 for falling under FRE 801 as hearsay
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`not subject to any exception. In dismissing its 8/8/2016 Petition to
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`Accept an Unintentionally Delayed Benefit Claim, the Office recognized
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`that at least one prosecuting firm knew of both the instant application and
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`the Application No. 11/333,400 (the ‘400 application) purported as
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`newly discovered. As the Office notes, powers of attorney were filed on
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`the same day by the same patent counsel in both the ’400 application and
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`the application that issued as the ’432 Patent, and both were signed by
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`Applicants Nader Asghari-Kamrani and Kamran Asghari-Kamrani:
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`the entire delay…was not unintentional if Law Firm 1, Law Firm
`2, or Law Firm 3 made the choice not to file any of the claims at
`any point when handling prosecution of the application. At least
`one of the prior law firms was aware of the existence of both the
`instant application and Application No. 11/333,400. Specifically, a
`power of attorney to Law Firm 3 was filed on the same date in the
`instant application and in Application No. 11/333,400.
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`CBM2016-00063
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`Patent 8,266,432
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`PO’s Exhibit 2005 at 4-5. In submitting the renewed Petition on
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`8/30/2016, PO did not even address, among others, the above question.
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`As this question goes to the heart of the inexplicable delay of about eight
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`years in amending the priority claim and yet the issuing officer is not
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`available for deposition or oral hearing, the Certificate of Correction—as
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`included in Exhibit 2008—falls under hearsay without exceptions.
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`The following chart tabulates Petitioner’s objections to Section VII
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`(paragraphs 41 to 61) of Exhibits 2010 (Declaration from Dr. Alfred Weaver).
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`Section VII (paragraphs 41 to 61) of Exhibit 2010 solely discusses
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`FRE 403:
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`application no. 11/333,400 (the 400 application), which issued as U.S.
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`Patent 8,281,129 (the ‘129 patent). The 400 application is included in
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`the new priority chain from Exhibit 2008 (Certificate of Correction). For
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`at least the same reasons above, Petitioner objects to this portion of
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`Exhibit 2010 under FRE 403 on grounds of unfair prejudice, confusion
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`of issues, and undue delay. See Petitioner’s Objections to Exhibit 2008,
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`FRE 403, supra.
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`FRE 401
`and 402:
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`Petitioner objects to Section VII (paragraphs 41 to 61) of Exhibit 2010
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`under FRE 401 and 402 for being irrelevant. This portion solely
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`addresses support from the newly discovered ‘400 application. If the
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`CBM2016-00063
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`Patent 8,266,432
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`challenged claims are indeed supported by the original priority chain—as
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`contended by the PO, this portion of Exhibit 2010 would not have any
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`tendency to make the fact of support more or less probable than it would
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`be without this portion.
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`For at least these reasons, Petitioner objects to Exhibit 2008 in its entirety as
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`well as Section VII (paragraphs 41 to 61) of Exhibit 2010. Petitioner further
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`reserves the right to move to exclude Exhibit 2008 in its entirety as well as Section
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`VII (paragraphs 41 to 61) of Exhibit 2010.
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`Respectfully submitted,
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`/Thomas A. Rozylowicz/
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`Thomas A. Rozylowicz
`Reg. No. 50,620
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` 12/12/2016
`Date:
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`CBM2016-00063
`Patent 8,266,432
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4) and 42.205(b), the undersigned certifies
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`that on December 12, 2016, a complete and entire copy of this Petitioner’s Notice
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`of Objections to Evidence was provided via email to the Patent Owner by serving
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`the correspondence email addresses of record as follows:
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`Jae Youn Kim
`Harold L. Novick
`Sang Ho Lee
`Novick, Kim & Lee, PLLC
`3251 Old Lee Highway, Suite 404
`Fairfax, VA 22030
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`Steven L. Ashburn
`Timothy M. Hsieh
`MH2 Technology Law Group, LLP
`1951 Kidwell Drive, Suite 550
`Tysons Corner, VA 22182
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`Emails: docket@nkllaw.com, skim@nkllaw.com, slee@nkllaw.com
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`10
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`/Christine Rogers/
`Christine Rogers
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(650) 839-5092
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