UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INNOLUX CORPORATION
`
`Petitioner
`
`V.
`
`PATENT OF SEMICONDUCTOR ENERGY LABORATORY CO., LTD.
`Patent Owner
`
`CASE IPR2013—00038
`
`PATENT 7,956,978
`
`PATENT OWNER’S NOTICE OF OBJECTIONS TO EVIDENCE
`
`PURSUANT TO 37 C.F.R. § 42.64
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INNOLUX CORPORATION
`
`Petitioner
`
`V.
`
`PATENT OF SEMICONDUCTOR ENERGY LABORATORY CO., LTD.
`Patent Owner
`
`CASE IPR2013—00038
`
`PATENT 7,956,978
`
`PATENT OWNER’S NOTICE OF OBJECTIONS TO EVIDENCE
`
`PURSUANT TO 37 C.F.R. § 42.64
`
`
`
`Patent Owner Semiconductor Energy Laboratory Co, Ltd. (“Patent Owner”)
`
`hereby submits its notice of objections to Exhibit 1013, Declaration of Miltiadis
`
`Hatalis, Ph. D., In Support of Innolux Corp’s Opposition to Motion to Amend And
`
`Reply to Response of Patent Owner, dated September 23, 2013 (“New Hatalis
`
`Declaration”), which Petitioner Innolux Corporation (“Petitioner”) submitted in
`
`connection with the case lPR2013—00038. Patent Owner objects to Exhibit 1013
`
`on the grounds that (i) at least paragraphs 23, 25, 36, 38, 40—49, and 53—55 contain
`
`evidence that could have been presented in a prior filing, (ii) paragraph 46 contains
`
`new evidence, US. Patent No. 5 ,105,187,1 which could have been presented during
`
`the deposition of Roger Stewart, and (iii) all other paragraphs are merely repetition
`
`of Exhibit 1005, Declaration of Miltiadis Hatalis, Ph.D., dated November 6, 2012
`
`(“Initial Hatalis Declaration”). Thus, all of the New Hatalis Declaration comprises
`
`unauthorized testimony and should not be considered.
`
`Objections to Exhibit 1013 and any reference to or reliance thereon,
`
`Patent Owner hereby objects to Exhibit 1013, New Hatalis Declaration,
`
`because it contains evidence that could have been submitted along with Petitioner’s
`
`
`
`1 Petitioner failed to attach a copy of US. Patent No. 5,105,187 (the “’187 patent”)
`
`as required by 37 C.F.R. §§ 42.6(c), 42.63(a).
`
`In any event, the ‘187 patent is
`
`
`
`Petition or as part of the Initial Hatalis Declaration. The following are the grounds
`
`for objection:
`
`1) the New Hatalis Declaration is unauthorized testimony; and
`
`2) the New Hatalis Declaration fails to comply with 37 C.F.R. § 42.123
`
`(Filing of Supplemental Evidence) .
`
`Petitioner cites to Exhibit 1013, the New Hatalis Declaration, in its Reply to
`
`Response of the Patent Owner as new evidence to support
`
`its arguments of
`
`unpatentability of the claims. The New Hatalis Declaration and the reference to
`
`and reliance on paragraphs 23, 25, 36, 38, 40—49, and 53—55 of the New Hatalis
`
`Declaration in Petitioner’s Reply are improper because this new evidence could
`
`have been submitted along with the Petitioner’s Petition. See Office Patent Trial
`
`Practice Guide, 77 Fed. Reg. 48756, 48767 (Aug. 14, 2012), which states the
`
`following:
`
`1. Petitioner Reply to Patent Owner Response and
`Patent Owner Reply to Opposition To Amend
`
`A reply may only respond to arguments
`raised in the corresponding opposition. § 42.23.
`While replies
`can help crystalize
`issues
`for
`decision, a reply that
`raises a new issue or
`belatedly presents evidence will not be considered
`and may be returned. The Board will not attempt to
`sort proper from improper portions of the reply.
`Examples of indications that a new issue has been
`raised in a reply include new evidence necessary to
`make out a prima facie case for the patentability or
`
`
`
`substitute claim, and new evidence that could have
`been presented in a prior filing.
`
`As stated in the Trial Practice Guide, Petitioner may not submit new
`
`evidence that could have been presented in a prior filing, such as the filing of the
`
`Petition. At least paragraphs 23, 25, 36, 38, 40—49 and 53—55 of the New Hatalis
`
`Declaration include opinions from Dr. Hatalis relating to the background of the
`
`technology, US. Patent No. 5,513,028 (“Sono”), and US Patent No. 5,504,601
`
`(“Watanabe”). These new opinions could have been presented in the Petition and
`
`in the Initial Hatalis Declaration because Petitioner asserted Sono and Watanabe in
`
`its Petition.
`
`Instead, Petitioner
`
`submits
`
`this unauthorized testimony and
`
`improperly refers to the unauthorized testimony in its Reply to Response of the
`
`Patent Owner.
`
`For example,
`
`in paragraphs 36, 38, and 40—49 of the New Hatalis
`
`Declaration, Dr. Hatalis provides opinions as to how statements in Sono should be
`
`interpreted and,
`
`in paragraphs 53—55, Dr. Hatalis provides opinions as to how
`
`statements in the Watanabe should be interpreted. Moreover, in paragraphs 23 and
`
`25, Dr. Hatalis elaborates on the background of the technology, providing his
`
`opinion on significant details regarding TFTs and shift registers. All of these
`
`opinions could have been provided as part of the Initial Hatalis Declaration.
`
`Petitioner should have submitted the entire substance of the supplemental
`
`
`
`testimony of Dr. Hatalis provided in the paragraphs of the New Hatalis Declaration
`
`cited above when Petitioner filed the Petition for review, not after the institution of
`
`this trial.
`
`Additionally, the remaining paragraphs in the New Hatalis Declaration are
`
`merely repetition of the Initial Hatalis Declaration and are not provided to rebut an
`
`argument raised for the first time in Patent Owner’s Response. Thus,
`
`these
`
`repetitious paragraphs also are unauthorized testimony.
`
`Moreover, 37 C.F.R. § 42.123 provides a procedure for filing a motion to
`
`submit supplemental
`
`information,
`
`including late submission of supplemental
`
`evidence. Petitioner did not seek authorization from the Board to file supplemental
`
`information as required by 37 C.F.R. § 42.123(b).
`
`Instead, Petitioner improperly
`
`filed the New Hatalis Declaration along with its Reply to Response of the Patent
`
`Owner.
`
`Objections to US. Patent No. 5,105,187 in Exhibit 1013
`
`Patent Owner hereby objects to Exhibit 1013, New Hatalis Declaration,
`
`because it contains new evidence, including, for example, the ‘187 patent and the
`
`detailed discussion thereof, that was not submitted as an exhibit and is not relevant
`
`to any issue raised in the Board’s decision. The following are the grounds for
`
`objection:
`
`l) 0F.R.E. 403 (Excluding Relevant Evidence for Prejudice, Confusion, Waste
`
`
`
`of Time, or Other Reasons);
`
`2) F.R.E. 106 (Remainder of or Related Writings or Recorded Statements);
`
`3) 37 CPR. § 42.123 (Filing of Supplemental Evidence); and
`
`4)
`
`the New Hatalis Declaration is unauthorized testimony.
`
`For the same reasons discussed above, the inclusion of this new evidence is
`
`prejudicial and not proper rebuttal argument.
`
`The ‘187 patent was not included as an exhibit. See 37 C.F.R. §§ 42.6(c),
`
`42.63(a). Rather, Petitioner merely includes one figure from the reference and
`
`provides select, isolated quotations. This is prejudicial and misleading in that it
`
`truncates
`
`quotations
`
`from the patents,
`
`includes
`
`only
`
`one
`
`figure,
`
`and
`
`mischaracterizes the patent because it is included in isolation without its full and
`
`proper context (F RE. 106; F.R.E. 403).
`
`Moreover, 37 CPR. § 42.123 provides a procedure for filing a motion to
`
`submit supplemental
`
`information,
`
`including late submission of supplemental
`
`evidence. Petitioner did not seek authorization from the Board to file supplemental
`
`information as required by 37 CPR. § 42.123(b).
`
`Instead, Petitioner improperly
`
`filed the New Hatalis Declaration along with its Reply to Response of the Patent
`
`Owner.
`
`III. Conclusion
`
`For at least these reasons, Patent Owner objects to Exhibit 1013 and to the
`
`
`
`citations to Exhibit 1013 in the Petitioner’s Reply to Response of the Patent
`
`Owner and Patent Owner reserves its right to move to exclude Exhibit 1013 and
`
`all references and reliance on Exhibit 1013 in the Petitioner’s Reply to Response
`
`of the Patent Owner. Further, Patent Owner objects to the citation of and reliance
`
`on the ‘187 patent in the New Hatalis Declaration.
`
`Dated: September 27, 2013
`
`Respectfully submitted,
`
`
`
`%”g‘j
`
`Eric J . Robinson
`
`Sean C. Flood
`
`ROBINSON INTELLECTUAL
`
`PROPERTY LAW OFFICE, PC.
`
`3975 Fair Ridge Drive,
`Suite 20 North
`
`Fairfax, Virginia 22033
`(571) 434-6789
`
`Attorneys for Patent Owner
`
`
`
`CERTIFICATE OF SERVICE
`
`I certify that the foregoing PATENT OWNER’S NOTICE OF
`
`OBJECTIONS TO EVIDENCE was served on the Petitioner by email at the
`
`following addresses on September 27, 2013.
`
`Scott A. McKeown
`
`Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P.
`
`cpdocketmckeowng®obloncorn
`
`Gregory S. Cordrey
`Jeffer Mangels Butler & Mitchell LLP
`gcordrey@jmbrn.com
`
`Stanley Gibson
`Jeffer Mangels Butler & Mitchell LLP
`SMG@jmbm.com
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
