CBM2016-00064
`Patent 8,266,432
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`36137-0007CP2
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`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,
`v.
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`NADER ASGHARI-KAMRANI and KAMRAN ASGHARI-KAMRANI,,
`Patent Owner
`______________________
`
`Case CBM2016-00064
`Patent 8,266,432
`______________________
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`PETITIONER’S REPLY TO PATENT OWNER’S OPPOSITION TO
`MOTION TO EXCLUDE EVIDENCE
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`Patent 8,266,432
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`36137-0007CP2
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`United Services Automobile Association,
`Petitioner,
`v.
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`NADER ASGHARI-KAMRANI and KAMRAN ASGHARI-KAMRANI,,
`Patent Owner
`______________________
`
`Case CBM2016-00064
`Patent 8,266,432
`______________________
`
`PETITIONER’S REPLY TO PATENT OWNER’S OPPOSITION TO
`MOTION TO EXCLUDE EVIDENCE
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`CBM2016-00064
`Patent 8,266,432
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`36137-0007CP2
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`PO’s Opposition (Opp’n) to Petitioner’s Motion to Exclude (Mot.) fails to
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`address the evidentiary issues concerning Ex. 2008 and Ex. 2010. The Opp’n also
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`mischaracterizes the Mot. as a request to invalidate Ex. 2008. Petitioner’s Mot.
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`should be granted.
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`I. PO’s Opp’n Does Not Seek To Address Evidentiary Issues Raised By Mot.
`PO asserts that “the COC is not evidence that is subject to exclusion” be-
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`cause “the COC is part of the ‘432 Patent itself.” Opp’n at 1. PO misses the point.
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`35 U.S.C. 255, as cited by PO, states: “Such patent, together with the certificate,
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`shall have the same effect and operation in law on the trial of actions for causes
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`thereafter arising as if the same had been originally issued in such corrected
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`form.” Id. (emphasis added). Trial institution was on 9/21/2016, more than two
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`months before PO sought to enter the COC (Ex. 2008) on 12/5/2016. Paper 14.
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`The instituted trial is not a cause arising thereafter, as required by 35 U.S.C. 255.
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`The Opp’n offers no support for the overbroad assertion that “the corrections iden-
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`tified in the COC have the same effect as if the ‘432 Patent had been originally is-
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`sued in such corrected form.” Opp’n 1-2. Such overstatement directly contradicts
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`35 U.S.C. 255.
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`The issue raised by Petitioner’s Mot. is the admissibility of the exhibits in dis-
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`pute when they were submitted more than two months after trial institution and the
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`1
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`CBM2016-00064
`Patent 8,266,432
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`parties still dispute whether the inexplicable delay of nearly 8 years for PO to re-
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`36137-0007CP2
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`quest the COC (Ex. 2008) to amend priority is unintentional. See e.g., Ex. 1069. In
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`asserting, without legal support, that “the COC is not evidence that is subject to ex-
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`clusion,” the Opp’n does not address evidentiary issues raised by Mot. Opp’n at 1.
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`II. PO’s Opp’n Mischaracterizes The Mot.
`PO’s Opp’n mischaracterizes the Mot. as inviting the Board to decide on the
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`validity of the COC (Ex. 2008). Opp’n at 2. To reiterate, Petitioner’s Mot. invites
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`the Board to exercise its discretionary power to exclude evidence. See 37 C.F.R. §
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`42.104(b)(5) (“The Board may exclude or give no weight to the evidence….”)
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`(cited by USPTO in Ex. 1070 at 10) (emphasis in original).
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`III. Petitioner’s Motion Remains In Full Force And Effect
`A. Exhibit 2008 Should Be Excluded
`1. Exhibit 2008 should be excluded as unduly prejudicial
`As stated, “the entry of this Exhibit 2008 creates a moving target for the in-
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`stant CBM proceeding” that is “unfairly prejudicial” to the Petitioner and the Board.
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`Mot. at 2-3. PO does not dispute knowledge of (i) letter from Petitioner’s litigation
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`counsel (Ex. 1046); (ii) terminal disclaimer (Ex. 1041); (iii) powers of attorney (Ex.
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`1053); (iv) non-publication request (Ex. 1047); and (v) interviews conducted on the
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`same day with the same Examiner (Ex. 2015 ¶63). PO’s only response is that one
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`(but not all) of its three previous patent counsels, Mr. Fortkort “who signed and filed
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`the terminal disclaimer,” “was not aware that a priority should have been claimed to
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`CBM2016-00064
`Patent 8,266,432
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`the ‘400 application.” Opp’n at 3 (citing newly introduced Ex. 2016). To downplay
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`36137-0007CP2
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`this conspicuous failure, PO cites to the newly introduced Expert Report of Q. Todd
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`Dickinson (Ex. 2015) proffered in litigation over the same ‘432 patent. See e.g., Ex.
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`2015 at ¶¶152-53 (discussing that Mr. Godici concluded “Mr. Fortkort knew, or
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`should have recognized….”) and ¶67 (discussing that Petitioner’s technical expert
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`concluded “the specification … does not fully support any claim of the ‘432 Pa-
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`tent.”). PO conspicuously fails to reveal that, while they cite his Expert Report, the
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`Court found Mr. Dickinson’s testimony untruthful. Ex. 1072 at 1033:24-1034:9 (“I
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`did not find Mr. Dickinson's testimony truthful.”). Further, these newly introduced
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`exhibits reinforce Petitioner’s position that “the entry of this Exhibit 2008 creates a
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`moving target for the instant CBM proceeding,” (Mot. at 2), necessitating additional
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`fact-finding inquiries that runs afoul of the Congressional mandate for “speedy, and
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`inexpensive resolution of a proceeding.” 37 C.F.R. § 42.1(b), § 42.5(a) and (b);
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`Ex.1072 at 1036:11-1039:22.
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`In prior proceedings, the Board has foiled the moving-target strategy em-
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`ployed by the PO. In IPR 2015-00559, the Board instituted two IPRs for the same
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`patent on 4/15/2015 and 5/11/2015, respectively. 00559 Paper 44 at 3 (cited by
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`Mot. at 3). The Patent Owner there waited until 7/2015 to request their COC. Id.
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`Noting that “the parties … prepared their papers based upon the present language
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`of the claims,” the Board concluded that “changes to the claims at this stage could
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`CBM2016-00064
`Patent 8,266,432
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`lead to a moving target that is unfair to Petitioner given the circumstances dis-
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`36137-0007CP2
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`cussed above.” Id. Here, the Petitioner “prepare[d] the CBM petition based on the
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`original priority chain” and the Board instituted trial on 9/21/2016. See Paper 14.
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`PO waited until 12/5/2016 to seek entry of the COC (Ex. 2008) that introduces a
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`new priority chain involving the ‘400 application. See Paper 22. “To reach con-
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`sistent and fair outcomes in performing its duties, the Board similarly must follow
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`set rules and conduct its proceedings in an orderly fashion.” Ex. 1071 at 15-16
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`(exercising discretion to deny entry of “new evidence advanced in the Reply.”)
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`2. PO mischaracterized the facts and the rule
`PO asserts that Petitioner mischaracterized the relevant rules by suggesting
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`that 37 CFR 1.78 “requires the patent owner’s statement that the entire delay was
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`unintentional [but] does not require personal knowledge of the patent owner’s cur-
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`rent counsel who filed the petition [to request COC].” Opp’n at 4-5. (emphasis in
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`original). PO does not point to any legal support, and Petitioner is unaware of any,
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`for this reading. See 37 CFR 1.78(e)(3) (“A statement that the entire delay be-
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`tween the date the benefit claim was due under paragraph (d)(3) of this section and
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`the date the benefit claim was filed was unintentional.”) Indeed, in the instant
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`case, with respect to this COC, the Office recognized the need for information
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`from sources other than current counsel to determine whether the delay was unin-
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`tentional. Ex. 2005 at 4-5 (“the entire delay…was not unintentional if Law Firm 1,
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`4
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`CBM2016-00064
`Patent 8,266,432
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`Law Firm 2, or Law Firm 3 made the choice ….”). Nevertheless, the COC (Ex.
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`36137-0007CP2
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`2008) was obtained and furnished without such information. See Paper 22. On the
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`contrary, the record shows that PO’s counsel, when signing the statement regarding
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`unintentional delay, questioned only individual prior attorneys rather than the prior
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`law firms, and, one of those prior attorneys refused to sign a declaration while an-
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`other would sign only an unsworn statement in exchange for a malpractice release.
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`See Ex. 1069 at 231:8 – 234:12, 225:10 - 226:12 (cited by Mot. 5-8). Moreover,
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`PO fails to reveal that the Court reviewing these same issues found as a fact that
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`Mr. Kim’s COC request “wasn’t correct.” Ex. 1072 at 1019:6-11.
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`3. Ex. 2008 should be excluded as hearsay, irrelevant, and unauthorized
`Petitioner notes that Ex. 2008 is hearsay because the Opp’n does not disa-
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`vow that it is offered for the truth of the statement re priority date. Opp’n at 6. PO
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`does not refute that Ex. 2008 would have been irrelevant if it indeed does not
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`change the purported priority date of the challenged claims, as alleged; otherwise
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`its entry more than two months after trial institution would have been unduly preju-
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`dicial (Mot. at 2) besides lacking express authorization (Opp’n at 7, Mot. at 12).
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`B. Exhibit 2010, Section VII, Paragraphs 41 To 61, Should Be Excluded
`PO does not dispute that the portions should be excluded on grounds of rele-
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`vancy (opining on inadmissible evidence), reliability (failure to analyze “each
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`claim limitation.”), and the Daubert standard. See e.g., Id., Mot. at 12-15.
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`36137-0007CP2
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`Respectfully submitted,
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`/Thomas A. Rozylowicz/
`Thomas A. Rozylowicz
`Reg. No. 50,620
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
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`Attorney for Petition
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`CBM2016-00064
`Patent 8,266,432
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`Dated: 5/1/2017
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`(Control No. CBM2016-00064)
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`6
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.6(e)(4), the undersigned certifies that on May 1,
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`2017, a complete and entire copy of this Petitioner’s Reply to Patent Owner’s Op-
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`position to Motion to Exclude Evidence and its exhibit were provided via email to
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`the Petitioner by serving the correspondence email address of record as follows:
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`Jae Youn Kim
`Harold L. Novick
`Sang Ho Lee
`Novick, Kim & Lee, PLLC
`1604 Spring Hill Rd. Suite 320
`Vienna, VA 22182
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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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`Email: skim@nkllaw.com
`Email: hnovick@nkllaw.com
`Email: slee@nkllaw.com
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`/Susan Johnson/
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`Susan Johnson
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`(202) 626-6420
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