CBM2016-00064
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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,
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`Petitioner
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`v.
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`NADER ASGHARI-KAMRANI and KAMRAN ASGHARI-KAMRANI,
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`Patent Owners
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`U.S. PATENT NO. 8,266,432
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`CBM2016-00064
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`PATENT OWNERS’ OPPOSITION TO PETITIONER’S
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`MOTION TO EXCLUDE EVIDENCE
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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,
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`Petitioner
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`v.
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`NADER ASGHARI-KAMRANI and KAMRAN ASGHARI-KAMRANI,
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`Patent Owners
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`U.S. PATENT NO. 8,266,432
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`CBM2016-00064
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`PATENT OWNERS’ OPPOSITION TO PETITIONER’S
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`MOTION TO EXCLUDE EVIDENCE
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`CBM2016-00064
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`EXHIBIT
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`Exhibit 2015
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` EXPERT REPORT OF Q. TODD DICKENSON, ESQ.
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`Exhibit 2016
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` DECLARATION OF ATTORNEY MICHAEL P. FORTKORT
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`CBM2016-00064
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`I.
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`INTRODUCTION
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`Petitioner moved to exclude the Certificate of Correction (“COC”) submitted
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`as Exhibit 2008 by Patent Owner (“PO”) and the expert arguments in Section VII,
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`paragraphs 41 to 61, Declaration of Alfred Weaver, Exhibit 2010.
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`Petitioner’s Motion to Exclude (“Motion”) should be denied as Petitioner
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`failed to meet its burden of proof to establish that it is entitled to the relief
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`requested. Moreover, the Motion is nonsensical and baseless as discussed below.
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`II. ARGUMENTS
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`Petitioner’s Motion has at least two fundamental flaws. First, the COC is
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`not evidence that is subject to exclusion. 35 U.S.C. 255 states, “Such patent,
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`together with the certificate, shall have the same effect and operation in law on the
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`trial of actions for causes thereafter arising as if the same had been originally
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`issued in such corrected form” (emphasis added). Thus, the COC is part of the
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`‘432 Patent itself. As such, the ‘432 Patent, including the COC, is being tried in
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`this CBM proceeding for validity.
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`Petitioner’s argument at page 12 of the Motion regarding authorization to
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`file the COC relies on the fact that the Director of the USPTO issued the COC.
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`However, this fact is not relevant to whether the COC should be admitted or
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`excluded because the corrections identified in the COC have the same effect as if
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`1
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`CBM2016-00064
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`the ‘432 Patent had been originally issued in such corrected form. Thus,
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`Petitioner’s motion to exclude the COC is nonsensical.
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`Second, the Motion is flawed because the Board does not have jurisdiction
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`to decide on various issues raised in the Motion. On pages 2-12 of the Motion,
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`Petitioner challenges the Decision made by the Office of Petition at the USPTO.
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`However, the issue of whether the petition for the COC should have been granted
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`is outside the Board’s jurisdiction. See the Board’s Decision, paper 10, page 6,
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`which is reproduced below.
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`Petitioner’s argument, however, is misplaced here because, in the
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`instant Decision, we are not deciding whether a request for a
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`certificate of correction should be granted pursuant to 35 U.S.C. §
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`255, as Patent Owner merely is seeking authorization for filing such a
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`request. Moreover, we are not the deciding official for a request for a
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`certificate of correction. See 35 U.S.C. § 255; 37 C.F.R. §§ 1.323 and
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`1.78(e); MPEP §§ 1002.02(b) and 1003.
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`Hence, the Board confirmed that it has no jurisdiction to decide on the validity of
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`the COC issued by the Director of the USPTO.
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`Because of the fundamental flaws identified above, Petitioner’s arguments
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`for excluding the COC and the corresponding arguments of Dr. Weaver should be
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`denied.
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`For the above reasons, PO believes that detailed opposing arguments to
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`Petitioner’s arguments on pages 2-15 are unnecessary. Nevertheless, assuming
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`CBM2016-00064
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`arguendo that the COC can be considered evidence subject to exclusion, PO
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`submits that Petitioner’s arguments in the Motion are incorrect for the reasons
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`detailed below.
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`A.
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`Exhibit 2008 Should be Admitted
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`1. Exhibit 2008 Should be Admitted under Rule 403
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`Petitioner alleged that the COC is unduly prejudicial because PO had ample
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`notice of amending its priority claim based on PO’s previous filing of a terminal
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`disclaimer. Motion, p. 2 and f.n. 2. However, Mr. Fortkort, PO’s prosecution
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`counsel, who signed and filed the terminal disclaimer, declared that “I was not
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`aware that a priority should have been claimed to the ‘400 application.” See Mr.
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`Fortkort Declaration, Exhibit 2016, para. 2. See also, Expert Report of Todd
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`Dickinson, a former Director of the USPTO, Exhibit 2015, paras. 64, and 152-155.
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`In addition, Petitioner alleged that PO’s correction of the ‘432 Patent’s
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`priority ex post facto is unfairly prejudicial. Motion, page 3. However, such
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`attempts are authorized by statute. Further, Petitioner was given an opportunity to
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`fully discuss the written description support issue based on this corrected claim of
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`priority during this CBM proceeding. Moreover, the IPR 2015-00559, paper 44
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`(denying a PO’s motion for filing a request for a Certificate of Correction) cited by
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`Petitioner is not relevant to the facts and issues of this CBM. In that IPR, the PO
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`attempted to correct the claim language, which would have changed the scope at a
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`3
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`late stage of that proceeding where an oral hearing was scheduled less than two
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`months away. Thus, Petitioner was not unfairly prejudiced by the entry of Exhibit
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`CBM2016-00064
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`2008.
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`2.
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`Petitioner Mischaracterized the Fact and Law
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`Petitioner asserted that the COC should be excluded because it was issued
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`by the USPTO based on a conclusory statement without foundation under Rules
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`602 and 701. Motion, pages 3-8. Rule 602 states: “A witness may testify to a
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`matter only if evidence is introduced sufficient to support a finding that the witness
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`has personal knowledge of the matter.” Rule 701 states: “If a witness is not
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`testifying as an expert, testimony in the form of an opinion is limited to one ….”
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`In other words, Rules 602 and 701 are applicable to opinion testimony by a lay
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`witness. However, the COC is not testimony by a lay witness. Accordingly, Rules
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`602 and 702 do not apply to the COC. Consequently, Petitioner’s assertion that the
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`COC should be excluded under Rules 602 and 702 is baseless.
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`With regard to the Decision by the Office of Petitions, Exhibit 2005,
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`Petitioner asserted that “PO’s original statement regarding unintentional delay was
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`deficient … .” Motion, page 4. However, Petitioner mischaracterized the
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`Decision. In that paper, the petition examining attorney advised that PO’s
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`statement should be corrected to include the benefit claims to the provisional
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`application as well as the non-provisional application under 37 C.F.R. 1.78(a)(4)
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`4
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`CBM2016-00064
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`and 1.78(d)(3) because PO’s claims of benefits also included the prior filed
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`provisional application.
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`Further, Petitioner asserted that “No foundation has been laid regarding the
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`personal knowledge of PO’s current counsel over what had transpired between PO
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`and any of its previous law firms during prosecution.” Motion, pages 4 and 5.
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`However, here again, Petitioner mischaracterized the relevant rules. 37 C.F.R.
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`1.78 requires the patent owner’s statement that the entire delay was unintentional.
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`The rule does not require personal knowledge of the patent owner’s current
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`counsel who filed the petition.
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`Further, Petitioner asserted that PO’s counsel conceded in a deposition,
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`Exhibit 1069, that he had done no investigation regarding the unintentional delay.
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`Motion, pages 5-8. However, Petitioner twisted and mischaracterized the
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`deposition testimonies of the PO’s counsel. Contrary to Petitioner’s assertion,
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`PO’s counsel filed the first petition after receiving confirmation from the PO. See
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`Exhibit USAA 1069, page 156, lines 14-18. See also Exhibit 2015, paras. 145-
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`147. Further, PO’s counsel filed the second petition which was granted to issue
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`the COC after a thorough investigation on the previous prosecution patent
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`attorneys or agent. See Exhibit 2015, paras. 148-158. See also Exhibit USAA
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`1069, page 221, lines 11-19, and page 225, lines 12-20. Further, this Exhibit
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`USAA 1069 shows that PO’s counsel thoroughly investigated on the prior three
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`CBM2016-00064
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`prosecution law firms before filing the granted petition. Thus, the USPTO
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`properly granted the petition and issued the COC.
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`3.
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`Exhibit 2008 is Not Hearsay
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`Petitioner asserted that Exhibit 2008 should be excluded as hearsay. Motion,
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`pages 8-9. However, the Federal Rules of Evidence, Rule 801 defines hearsay as “a
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`statement that: (1) the declarant does not make while testifying at the current trial
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`or hearing; and (2) a party offers in evidence to prove the truth of the matter
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`asserted in the statement.” Further, a statement is defined as “a person’s oral
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`assertion, written assertion, or nonverbal conduct, if the person intended it as an
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`assertion.” Here, the COC is not a statement because it does not fall in any one of a
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`person’s oral assertion, written assertion, or nonverbal conduct. Thus, Petitioner’s
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`assertion that Exhibit 2008 is hearsay is baseless.
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`4.
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`Exhibit 2008 is Relevant
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`Petitioner asserts that Exhibit 2008 should be excluded as irrelevant under
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`Rules 401 and 402. Motion, pages 9-11. However, as discussed above, Exhibit
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`2008 is not subject to an issue whether it is relevant or not, but it is part of the
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`subject ‘432 Patent at issue. Assuming arguendo that there is an issue whether this
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`COC should be admitted or excluded as relevant or irrelevant, it is highly relevant
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`to this CBM proceeding because it has a tendency to prove the written description
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`support for the claims of the ‘432 Patent.
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`CBM2016-00064
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`Further, Petitioner alleged that the PO’s statement “The priority date of
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`Aug. 29, 2001 … remains unchanged” was erroneous. Motion, page 10. However,
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`PO’s statement is based on a reasonable interpretation that the ‘432 Patent claims
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`are supported by the original disclosure of the ‘046 application, while Petitioner
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`alleges otherwise. Therefore, this Exhibit 2008 has substantial probative value,
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`and should be admitted.
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`5.
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`Entry of Exhibit 2008 was Authorized
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`Petitioner alleged that the Board authorized submission of any decision on a
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`petition but did not authorize filing the COC itself. Motion, pages 11-12.
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`However, the Board ordered “Patent Owner’s Motion to File a Request for a
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`Certificate of Correction (Paper 8) is granted.” Decision, Paper 10, page 8. PO
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`submits that by granting the motion to file a request for a COC, the Board
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`authorized PO to file the COC as well because the purpose of filing the request is
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`to make the COC available in this CBM proceeding.
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`B.
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`Patent Owner’s Exhibit 2010, Section VII, Paragraphs 41-61,
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`Should be Admitted
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`Petitioner alleged that this Expert testimony should be excluded as irrelevant
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`based on the assertion that the COC should be excluded. Motion, page 14.
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`However, this expert testimony has probative value to decide on the issue of
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`written description support as discussed above. Thus, his opinions are relevant.
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`CBM2016-00064
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`Petitioner would not have filed this motion to exclude the COC and this expert
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`testimony based on the added chain of priority if the disclosure of the ‘400
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`application does not provide written description support. Petitioner’s attempt to
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`exclude the COC and the expert testimony implies that it has probative value to
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`prove such written description support.
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`Further, Petitioner alleged that the portions of Exhibit 2010 should be
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`excluded as unreliable. Motion, page 14. However, this Petitioner’s allegation
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`does not make any sense because Dr. Weaver’s testimonies in paragraphs 41-61
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`provide opinions as to certain claim terms by comparing them with certain terms
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`described in the disclosure of the ‘400 application but do not provide a claim chart
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`for each claim limitation. Thus, this allegation is untenable. Petitioner did not
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`challenge the qualification of Dr. Weaver. He qualifies as an expert witness under
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`Rule 702, and thus his opinions are reliable to be admitted.
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`Finally, Petitioner alleged that Dr. Weaver’s testimony should be excluded
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`as it is neither relevant nor reliable. Motion, page 14. As discussed above, his
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`testimony is both relevant and reliable, and thus should be admitted.
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`CBM2016-00064
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`III. Conclusion
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`For the foregoing reasons, PO submits that Petitioner failed to meet its
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`burden of proof, and respectfully requests that the Board deny Petitioner’s motion
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`to exclude evidence.
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`Date: April 24, 2017
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`Respectfully submitted,
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` /Jae Youn Kim/
`Jae Youn Kim, Reg. No. 69,215
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`Attorney for Patent Owner
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`CBM2016-00064
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e)(4), the undersigned certifies that on April 24,
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`2017, a complete and entire copy of this PATENT OWNERS’ OPPOSITION TO
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`PETITIONER’S MOTION TO EXCLUDE EVIDENCE, with Exhibits 2015,
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`Expert Report Of Q. Todd Dickinson, Esq., and Exhibit 2016, Declaration of
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`Attorney Michael P. Fortkort, was provided via electronic mail to the Petitioner’s
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`counsel of record at the following email addresses:
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`W. Karl Renner, Lead Counsel
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`CBM36137-0007CP2@fr.com
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`Thomas Rozylowicz, First Back-up Counsel
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`PTABInbound@fr.com
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`Timothy Riffe, Back-up Counsel
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`riffe@fr.com
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`Date: April 24, 2017
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`Respectfully submitted,
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` /Hyun Woo Shin/
`Hyun Woo Shin, Reg. No. 74,319
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`10
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