IPR2013-00020; Petitioner’s Reply to Opposition to Motion to Exclude Evidence
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`Trials@uspto.gov
`Tel: 571.272.7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`LKQ CORPORATION
`Petitioner
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`v.
`
`Patent of CLEARLAMP, LLC
`Patent Owner
`_____________
`
`Case No. IPR2013-00020
`Patent 7,297,364
`_____________
`
`PETITIONER’S REPLY TO PATENT OWNER’S OPPOSITION TO
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`
`
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`Trials@uspto.gov
`Tel: 571.272.7822
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`LKQ CORPORATION
`Petitioner
`
`v.
`
`Patent of CLEARLAMP, LLC
`Patent Owner
`_____________
`
`Case No. IPR2013-00020
`Patent 7,297,364
`_____________
`
`PETITIONER’S REPLY TO PATENT OWNER’S OPPOSITION TO
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
`
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`IPR2013-00020; Petitioner’s Reply to Opposition to Motion to Exclude Evidence
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`TABLE OF CONTENTS
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`Page
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`I.
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`II.
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`Introduction ...................................................................................................... 1
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`Exh. 2004 - Declaration of A. Harvey Bell, IV ............................................... 1
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`A.
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`B.
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`“Federal Standards” and “Consumer Retail Market” Testimony ......... 1
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`PO’s Experiments Should be Excluded ................................................ 1
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`III. Exh. 2009 - Declaration of Irving S. Rappaport .............................................. 3
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`IV. Exhs. 2012 - 2014 - Testing Compilations ...................................................... 3
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`V.
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`Exh. 2016 - Excerpts of October 24, 2012 Deposition of Robert
`Sandau .............................................................................................................. 4
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`VI. Exh. 2017 - FMVSS 108 ................................................................................. 5
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`
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`i
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`IPR2013-00020; Petitioner’s Reply to Opposition to Motion to Exclude Evidence
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`I.
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`Introduction
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`LKQ Corp. (“Petitioner” or “LKQ”) submits this Reply to Clearlamp’s
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`(“PO” or “Clearlamp”) Opposition (“Opp.”) to LKQ’s Motion to Exclude
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`(“Mot.”). PO has not provided a compelling rebuttal to any issues in the Motion.
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`II. Exh. 2004 - Declaration of A. Harvey Bell, IV
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`A.
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`“Federal Standards” and “Consumer Retail Market” Testimony
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`There is no reference in the ‘364 Patent to any federal safety standards. Mr.
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`Bell’s insistence that the FMVSS 108 document is relevant is baseless. PO
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`outlines Mr. Bell’s experience as an automotive executive. (Opp., 2-3). Absent is
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`(a) experience refurbishing polycarbonate headlamps or (b) experience with the
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`“consumer retail market.”1 Paragraphs 6, 22, 25 to 29, 41 to 43, 56, 58, 75, 78 and
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`79 of Exh. 2004 should thus be excluded.
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`B.
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`PO’s Experiments Should be Excluded
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`PO’s testing and Exh. 2004 do not satisfy 37 C.F.R. § 42.65(a) or (b).
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`Paragraphs 54 and 55 of Exh. 2004 are thus improper. Clearlamp argues that Mr.
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`Bell’s unfamiliarity with the details of PO’s testing is of no moment. (Opp., 7).
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`
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`1 PO’s suggestion that Mr. Bell has experience with polycarbonate lamps is
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`untrue, and is unsupported by Mr. Bell’s CV (Exh. 2005). (Opp., 5). It uses the
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`“directly translates” language to gloss over this lack of experience. (Id.)
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`1
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`IPR2013-00020; Petitioner’s Reply to Opposition to Motion to Exclude Evidence
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`Yet Mr. Bell did not know if PO’s worker was applying “barely any pressure and
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`barely sand[ing] off any of the surfaces.” (Exh. 1034, 26:15-22). At least details
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`regarding the pressure applied during sanding greatly impact Mr. Bell’s opinion.
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`PO also chides LKQ for providing “no evidence regarding what the proper
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`conditions should have been.” (Opp., 7). LKQ has no idea why PO conducted the
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`experiment it conducted.2 The Motion is premised on the fact that Mr. Bell’s
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`“opinion” does not even approach the requirements of 37 C.F.R. § 42.65(a) or (b).3
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`PO also trivializes LKQ’s “underlying data” argument (a requirement taken
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`from the text of 37 C.F.R. 42.65(a)), saying “it is unclear what ‘underlying data’
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`LKQ believes should be provided.” (Opp., 7). While the burden is not on LKQ to
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`cure PO’s non-compliance, PO was required to provide an affidavit that explains
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`2 PO failed if it attempted to replicate Kuta. The tests PO performed did not
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`apply the Kuta steps that precede use of 1500 grit sandpaper. (Exh. 1034, 23:14-
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`24:15). Moreover, in PO’s timed test, PO sanded the entire lens surface--a much
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`greater area than the limited access corners to be sanded in Kuta. (Id. at 26:5-14).
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`3 PO states that its inclusion of links to videos of the tests “authenticat[e] those
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`links and plac[e] them into evidence,” and volunteers to provide the videos to the
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`Board. (Opp., 8). The videos are not in evidence and the time for submitting such
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`evidence has passed.
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`2
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`IPR2013-00020; Petitioner’s Reply to Opposition to Motion to Exclude Evidence
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`the five criteria in 37 C.F.R. § 42.65(b). PO did not do this.
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`The last sentence of paragraph 52 and all of paragraph 53 rely only on the
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`experiments described in paragraph 54 and 55. These portions of paragraphs 52
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`and 53 of Exh. 2004 should be excluded. LKQ withdraws the Motion as to
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`paragraph 51 and the first two sentences of paragraph 52 of Exh. 2004.
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`III. Exh. 2009 - Declaration of Irving S. Rappaport
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`The Opposition does not warrant analysis beyond the analysis in the Motion.
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`In fact, it ignores several types of inadmissible evidence in Mr. Rappaport’s
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`declaration. Without relevant technical background or data underlying his
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`analysis, Mr. Rappaport’s testimony is inadmissible under 37 C.F.R. § 42.65.4
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`IV. Exhs. 2012 - 2014 - Testing Compilations
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`PO does not address its failure to introduce email correspondence with third
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`party testing agencies into evidence. (Mot., 8). PO also did not address the
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`argument that Exhs. 2012 - 2014 do not satisfy 37 C.F.R. § 42.65(b). And though
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`PO discusses Mr. Asselta’s testimony, it did not provide support for its assertion
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`that the tested lamps were created “using the ‘364 process.” (Opp., 12).
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`The ‘364 Patent claims require several steps. Mr. Asselta had no personal
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`4 Paragraphs 1 to 18 of Mr. Rappaport’s declaration are background, and serve no
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`purpose if paragraphs 19 to 50 of Exh. 2009 are excluded as LKQ requests.
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`3
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`IPR2013-00020; Petitioner’s Reply to Opposition to Motion to Exclude Evidence
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`knowledge whether the process used to create the tested lamps satisfied these
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`claims. (Exh. 1033, 37:13-22). Thus, LKQ could not test the veracity of PO’s
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`assertion that the lamps were refurbished by the ‘364 Patent’s claimed process.
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`V. Exh. 2016 - Excerpts of October 24, 2012 Deposition of Robert Sandau
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`PO’s citation to the Trial Practice Guide suggests that coaching prior to a
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`deposition is allowed. (Opp., 12-13).5 Yet the Guide strictly prohibits “coaching
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`of witnesses in proceedings before the Board.” Office Patent Trial Practice Guide,
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`77 Fed. Reg. 48756, 48772 (Aug. 14, 2012) (emphasis added).
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`PO asserts that the leading questions that resulted from its coaching are
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`allowed because Mr. Sandau is “identified with an adverse party.” (Opp., 13).
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`However, Mr. Sandau testified he told PO to subpoena him because of his
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`separation from LKQ. (Exh. 2021, 63:7-11). Since Mr. Sandau is a third party
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`unaffiliated with LKQ, he is not “identified with an adverse party.” Hence, the
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`leading questions should not be permitted under F.R.E. 611(c).
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`Contrary to PO’s assertion, LKQ raised its hearsay objection on page 15 of
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`its “Objections to Evidence Submitted by Clearlamp,” and since the deposition was
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`conducted in the district court case, the strictures of 37 C.F.R. 42.53(f)(8) did not
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`5 The assertion that LKQ failed to object to coaching at the deposition ignores the
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`fact that the Sandau deposition was conducted in the underlying district court case.
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`4
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`IPR2013-00020; Petitioner’s Reply to Opposition to Motion to Exclude Evidence
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`apply. Contrary to PO’s assertion, PO could have obtained a declaration from Mr.
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`Sandau, and should have procured a non-hearsay declaration from Mr. Paperi (a
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`PO principal and ‘364 Patent inventor). PO also could have sought discovery
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`directly from Mr. Wagman (an LKQ employee) under 37 C.F.R. § 42.224(a). PO’s
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`assertion that “Mr. Sandau’s testimony concerning statements by Mr. Wagman go
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`to Mr. Wagman’s intent (state of mind)” mischaracterizes PO’s use of the
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`testimony. (Opp., 14). PO relies on this testimony for the fact of alleged copying,
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`which it says is a secondary consideration of non-obviousness. If the truth of these
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`statements is irrelevant, PO’s copying argument evaporates.
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`VI. Exh. 2017 - FMVSS 108
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`PO did not address Mr. Bell’s failings with regard to Exh. 2017. Recitation
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`of “original equipment condition” in claim 25’ of a patent filed in 2005 does not
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`provide a modicum of relevance for Exh. 2017, which was promulgated in 2013.
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`By:
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`5
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`Respectfully submitted by
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`K&L Gates LLP
`
` /Alan L. Barry/
`Reg. No. 30,819
`Alan L. Barry
`Customer No. 24573
`Date: December 10, 2013
`e-mail: alan.barry@klgates.com
`telephone number: 312-807-4438
`fax number: 312-827-8196
`70 W. Madison Street, Suite 3100
`Chicago, IL 60602
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`
`
`Matthew Cutler – mcutler@hdp.com
`Bryan Wheelock – bwheelock@hdp.com
`Douglas Robinson – drobinson@hdp.com
`Karen Bearley – kbearley@hdp.com
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` /Alan L. Barry/
`Reg. No. 30,819
`Alan L. Barry
`K&L Gates LLP
`e-mail: alan.barry@klgates.com
`telephone number: 312-807-4438
`fax number: 312-827-8196
`70 W. Madison Street, Suite 3100
`Chicago, IL 60602
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`IPR2013-00020; Petitioner’s Reply to Opposition to Motion to Exclude Evidence
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`Certification of Service Under 37 C.F.R. § 42.6(e)(4)
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`A copy of this document has been served to counsel for the Patent Owner at
`the following electronic mail addresses, pursuant to an agreement with the Patent
`Owner, on this 10th day of December, 2013:
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`By:
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`1
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