`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INNOLUX CORPORATION
`Petitioner,
`
`v.
`
`SEMICONDUCTOR ENERGY LABORATORY CO., LTD.
`Patent Owner.
`
`
`
`Case IPR2013-00068
`U.S. Patent 8,068,204
`
`PETITIONER’S OBJECTION TO THE DECLARATION AND
`TESTIMONY OF PATENT OWNER’S EXPERT
`DR. MICHAEL J. ESCUTI
`
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`Petitioner Innolux Corporation (“Innolux”) hereby submits its objection to
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`the testimony of Semiconductor Energy Laboratory Co., Ltd.’s (“SEL” or “Patent
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`Owner”) expert, Dr. Michael J. Escuti (“Dr. Escuti”), in connection with the case
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`IPR2013-00068 involving U.S. Patent No. 8,068,204.
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`Petitioner objects to the declaration of Dr. Escuti on the grounds that he does
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`not qualify as a person of ordinary skill in the art at the relevant time, which the
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`parties agree is 1997. This defect only became apparent upon cross-examination,
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`conducted less than five days ago, September 5-6th. As such, this objection is
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`timely filed for the purpose of preserving the right to pursue a motion to exclude,
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`which will more particularly point out the deficiencies in the proferred evidence.
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`42.64(a)(1).
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`This objection is identified with more particularity as follows:
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`- The basis for the objection became ripe during last week’s deposition of
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`of Dr. Escuti in which he testified regarding his educational
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`background, published papers, industry activities, and lab research.
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`Based on his testimony, Petitioners established that Dr. Escuti’s
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`expertise is in photonics and liquid crystals rather than the TFT
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`technology at issue in ‘413 patent. In addition, Dr. Escuti, who had just
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`graduated from his undergraduate studies in 1997, admitted that the only
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`prior art patents he analyzed in connection with these proceedings were
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`2
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`references Sukegawa (U.S. Patent No. 5,636,329), Nakamoto (JP H08-
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`160446), Shiba (U.S. Patent No. 5,684,555) and Watanabe (U.S. Patent
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`No. 5,504,601) and that he did not review the state of the art in 1997,
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`including other patents such as SEL’s other patents (e.g., U.S. Patent
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`Nos. 6,404,480 and 7,697,102) that were readily available and are also
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`prior art to the '413 patent.
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`Accordingly, Petitioner hereby objects to the declaration of Dr. Escuti and
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`preserves its right to move to exclude Dr. Escuti’s testimony.
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`Dated: September 12, 2013
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`
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`Respectfully submitted,
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`
`
`
`
`/Scott A. McKeown/
`Scott A. McKeown
`(Reg. No. 42,866)
`Lead Counsel for Petitioner
`Oblon, Spivak, McClelland, Maier
`& Neustadt, LLP
`1940 Duke Street
`Alexandria, VA 22314
`Tel: (703) 412-6297
`Fax: (703) 413-2220
`SMcKeown@oblon.com
`
`Gregory S. Cordrey
`(Reg. No. 190,144)
`Back-up Counsel for Petitioner
`Jeffer Mangels Butler & Mitchell LLP
`3 Park Plaza, Suite 1100
`Irvine, CA 92614
`Tel: (949) 623-7236
`Fax: (888) 712-3345
`gxc@jmbm.com
`
`
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`3
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`CERTIFICATE OF SERVICE
`I hereby certify that PETITIONER’S OBJECTION TO THE
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`DECLARATION AND TESTIMONY OF PATENT OWNER’S EXPERT DR.
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`MICHAEL J. ESCUTI in connection with Inter Partes Review Case IPR2013-
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`00068 was served on the Patent Owner by UPS Express Standard Overnight at
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`the following addresses on September 12, 2013.
`
`Eric J. Robinson
`Robinson Intellectual Property Law Office, P.C.
`3975 Fair Ridge Drive
`Suite 20 North
`Fairfax, VA 22030
`
`Sean C. Flood
`Robinson Intellectual Property Law Office, P.C.
`3975 Fair Ridge Drive
`Suite 20 North
`Fairfax, VA 22030
`
`
`
`
`/Scott A. McKeown/
`Scott A. McKeown (Reg. No. 42,866)
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`4
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