IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Applicant:
`
`Darbee et al.
`
`Universal Remote Control, Inc.
`
`Case No.:
`
`IPR2013-00127
`
`v.
`
`Filing Date:
`
`2/23/2001
`
`Patent No.:
`
`6,587,067
`
`Title:
`
`Universal Remote
`Control With Macro
`Command Capabilities
`
`Universal Electronics, Inc.
`
`Trial Paralegal: Andrew Kellog
`
`Attny Doc.: 059489.05US5/IPR
`
`UEI’S MOTION TO EXCLUDE EVIDENCE UNDER 37 C.F.R. § 42.64(c)
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Certificate of Filing: I hereby certify that this correspondence is being electronically filed with the USPTO on this
`3rd day of March, 2014
`
`/Eric J. Maiers/
`By:
` Eric J. Maiers
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Applicant:
`
`Darbee et al.
`
`Universal Remote Control, Inc.
`
`Case No.:
`
`IPR2013-00127
`
`v.
`
`Filing Date:
`
`2/23/2001
`
`Patent No.:
`
`6,587,067
`
`Title:
`
`Universal Remote
`Control With Macro
`Command Capabilities
`
`Universal Electronics, Inc.
`
`Trial Paralegal: Andrew Kellog
`
`Attny Doc.: 059489.05US5/IPR
`
`UEI’S MOTION TO EXCLUDE EVIDENCE UNDER 37 C.F.R. § 42.64(c)
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Certificate of Filing: I hereby certify that this correspondence is being electronically filed with the USPTO on this
`3rd day of March, 2014
`
`/Eric J. Maiers/
`By:
` Eric J. Maiers
`
`
`
`IPR2013-00127
`
`Patent Owner’s Exhibit List
`
`Claim Construction Order from Universal Electronics, Inc. v.
`Universal Remote Control, Inc., C.D.Cal. Civ. No. 8:12-cv-00329
`
`Declaration of Paul Darbee from U.S. Ser. No. 07/586,957
`
`U.S. Patent No. 6,587,067 to Darbee, et al. (with Reexamination
`Certificate)
`
`Scheduling Order from Universal Electronics, Inc. v. Universal
`Remote Control, Inc., C.D.Cal. Civ. No. 8:12-cv-00329
`
`Declaration of Richard Ellis
`
`Declaration of Patrick Hayes
`
`Transcript of Deposition of Alan Herr
`
`2001.
`
`2002.
`
`2003.
`
`2004.
`
`2005.
`
`2006.
`
`2007.
`
`i
`
`
`
`IPR2013-00127
`
`Universal Electronics, Inc. (“UEI”) respectfully moves the Patent Trial and
`
`Appeal Board for an Order pursuant to 37 C.F.R. § 42.64(c) that excludes the
`
`deposition testimony of Dr. Alan J. Herr offered in response to leading questions
`
`posed by Petitioner’s counsel during his redirect examination. UEI also requests
`
`that the PTAB prevent Petitioner from relying on such testimony in support of its
`
`Amended Petition for Inter Partes Review of U.S. Patent No. 6,587,067 (the “‘067
`
`patent”), including, for example, in its Reply Brief in support of its Amended
`
`Petition and in the upcoming Oral Hearing.
`
`After obtaining several admissions from Dr. Herr during his deposition,
`
`Petitioner’s counsel attempted to rehabilitate Dr. Herr’s deposition testimony by
`
`posing leading questions that elicited responses directly contradictory to those
`
`given during UEI’s counsel’s examination. Petitioner’s counsel’s objectionable
`
`questioning style improperly suggested to Dr. Herr how he should reply to
`
`counsel’s questions, which is exactly why leading questions are generally
`
`impermissible when questioning “friendly” witnesses and why the Court should
`
`therefore exclude such tainted testimony.
`
`For these reasons, and for those discussed herein, UEI respectfully requests
`
`that the Board grant its Motion to Exclude Evidence Under 37 C.F.R. § 42.64(c).
`
`1
`
`
`
`IPR2013-00127
`
`I.
`
`FACTUAL BACKGROUND
`
`Petitioner retained Dr. Alan J. Herr, Ph.D, as an expert witness “to provide
`
`an analysis of the scope and content of [the ‘067 patent] relative to the state of the
`
`art at the time of the earliest application underlying the ‘067 Patent” and “to
`
`provide analysis regarding what a person of ordinary skill in the data processing
`
`arts related to universal remote control devices would have understood at the time
`
`of the earliest application underlying the ‘067 patent.” (Ex. 1010 at ¶ 8.) Dr. Herr
`
`stated in his declaration submitted in support of Petitioner’s Amended Petition that:
`
`In comparing the claims of the ‘067 patent to the known prior art, I
`have carefully considered the ‘067 patent and the prosecution
`history[1] of the ‘067 patent based upon my experience and
`knowledge in the relevant field. I have not encountered any terms that
`require consideration of a special or explicitly defined meaning.
`Instead, the claim terms of the ‘067 patent are used in their ordinary
`and customary sense as one skilled in the relevant field would
`understand them.
`
`(Ex. 1010 at ¶ 22.)
`
`UEI deposed Dr. Herr on September 24, 2013. (Ex. 2007.) Counsel for UEI
`
`asked Dr. Herr what the claimed “directly identify” limitation of the ‘067 patent
`
`meant to him, in view of his statement in his declaration that the ordinary and
`
`customary meanings of all claim terms of the ‘067 patent apply:
`
`
`1Contradicting the above-quoted statement from paragraph 22 of his declaration—
`which was signed under penalty of perjury—Dr. Herr admitted during his
`deposition that he had not considered the prosecution history of the ‘067 patent in
`formulating his opinions (Ex. 2007 at 14:22-18:19.)
`
`2
`
`
`
`IPR2013-00127
`
`Q. … What do the words ‘directly identify’ mean to you?
`
`A. To enter the user I.D. and model number.
`
`(Id. at 81:1-81:3.) UEI’s counsel then posed a series of questions to Dr. Herr to
`
`determine whether the Wozniak and CORE references disclose the “directly
`
`identify” limitation, applying Dr. Herr’s definition:
`
`Q. Okay. So if you’re only using the buttons, Wozniak does not
`entering a user I.D. and model number of the –
`
`A. No.
`
`Q. -- target appliance.
`
`…
`
`Q. Okay. So, again, just to clarify, so it is your opinion that the Core
`Reference Manual does not disclose entering the user I.D. and model
`number --
`
`A. No.
`
`Q. – of the target device via push buttons?
`
`A. That is correct.
`
`(Id. at 82:2-83:18.)
`
`Petitioner’s counsel then attempted to rehabilitate Dr. Herr’s deposition
`
`testimony repeatedly through leading questions:
`
`Q. Okay. Do you see in that first paragraph there on page 9 where it
`says, The next step is for you to store the commands from your own
`remote controllers in Core, assuming that you have one or more
`remote controllers that are not programmed into Core?
`
`A. Yes.
`
`3
`
`
`
`IPR2013-00127
`
`Q. Does that indicate to you that it is also possible in Core to have
`preprogramed remote controller codes?
`
`MR. MAIERS: Objection, leading. …
`
`A. First – it would be possible to have a dealer preprogram these and
`sell them.
`
`(Id. at 85:24-86:14.) UEI’s counsel timely objected to those leading questions.
`
`(Id.) Petitioner’s counsel never attempted to cure his leading questions. (Id.)
`
`Petitioner relied on Dr. Herr’s improperly elicited redirect testimony in its Reply to
`
`Patent Owner’s Response. (Dkt. No. 21 at 14.)
`
`II.
`
`LEGAL STANDARDS
`
`“Leading questions should not be used on direct examination except as
`
`necessary to develop the witness’s testimony.” FED. R. EVID. 611(c).2 “The rule
`
`continues the traditional view that the suggestive powers of the leading question
`
`are as a general proposition undesirable.” Id. at Advisory Committee Notes. The
`
`Board has wide discretion to exclude evidence elicited from leading questions. See
`
`id.
`
`37 C.F.R. § 42.64(c) permits a party to file a motion to exclude evidence
`
`without prior board authorization. “An objection to the admissibility of deposition
`
`evidence must be made during the deposition. Evidence to cure the objection must
`
`
`2 The Federal Rules of Evidence apply to inter partes review proceedings, unless
`otherwise provided in the regulations governing inter partes reviews. 37 C.F.R. §
`42.62(a).
`
`4
`
`
`
`IPR2013-00127
`
`be provided during the deposition, unless the parties to the deposition stipulate
`
`otherwise on the deposition record.” 37 C.F.R. § 42.64(a).
`
`III. THE BOARD SHOULD EXCLUDE DR. HERR’S TESTIMONY
`OFFERED IN RESPONSE TO LEADING QUESTIONS.
`
`Petitioner’s counsel improperly tainted Dr. Herr’s deposition testimony on
`
`redirect by asking leading questions. Leading questions are generally
`
`impermissible “to guard against the risk of improper suggestion inherent in
`
`examining friendly witnesses through the use of leading questions.” Ellis v.
`
`Chicago, 667 F.2d 606, 612 (7th Cir. 1981). The Board has the discretion to
`
`exclude deposition testimony obtained through leading questions. See, e.g.,
`
`Oberlin v. Marlin Am. Corp., 596 F.2d 1322, 1328-29 (7th Cir. 1979) (excluding
`
`use of leading questions and responses thereto given at deposition despite other
`
`party’s failure to raise objection at the time of the deposition because such
`
`testimony “was in effect [the] attorney’s testimony on ultimate issues in the case”);
`
`Bixby v. KBR, Inc., No. 3:09-CV-632—PK, 2012 WL 4754942, at *4 (D. Or. Oct.
`
`4, 2012) (same); Morales-Arcadio v. Shannon Produce Farms, Inc., No. 605-cv-
`
`062, 2007 WL 2106188, at *11 (S.D. Ga. July 18, 2007) (ignoring deposition
`
`responses to leading questions when ruling on motion for summary judgment).
`
`Here, Petitioner’s counsel’s leading questions suggested desired responses
`
`from Dr. Herr—responses that directly contradict answers Dr. Herr gave just
`
`minutes earlier in response to UEI’s counsel’s questions. For example, after
`
`5
`
`
`
`IPR2013-00127
`
`defining the claim limitation “directly identify” as “to enter the user I.D. and model
`
`number,” Dr. Herr admitted during cross-examination that the Wozniak and CORE
`
`references do not disclose this limitation. (Ex. 2007 at 80:1-84:19.) He never once
`
`indicated that he was confused by or unclear about the questions posed by UEL’s
`
`counsel that resulted in these admissions.
`
`On redirect, however, Dr. Herr completely changed his testimony, testifying
`
`that the CORE reference could, in fact, “directly identify” through the use of
`
`preprogrammed remote controller codes. (Id. at 85:2-86:12, 86:13-14 (“it would
`
`be possible to have a dealer preprogram these and sell them….”), 86:15-89:21.)
`
`This about-face by Dr. Herr came in direct response to an improperly phrased
`
`leading question by Petitioner’s counsel designed to elicit that contradictory
`
`testimony: “Does that indicate to you that it is also possible in Core to have
`
`preprogramed remote controller codes?” (Id. at 86:5-7.) No doubt, the leading
`
`nature of Petitioner’s counsel’s question directly influenced Dr. Herr’s response on
`
`an important issue in this proceeding.
`
`There are other instances of Petitioner’s counsel asking leading questions
`
`and receiving responses that reflect the leading nature of the questions:
`
`A. Yeah – yes, those are manufacturer code numbers. Manufacturer
`I.D. numbers, yeah, depending who you’re talking to.
`
`Q. So are those examples of what you were referring in response to
`counsel’s questions about directly identifying?
`
`6
`
`
`
`IPR2013-00127
`
`A. Yes.
`
`MR. MAIERS: Objection, leading.
`
`THE WITNESS: Okay. Those numbers are the manufacturer I.D.
`codes, the standard ones that are associated with those manufacturers.
`Under there’s something called the I – IR something standardization
`organization. And then they assign numbers to every manufacturer.
`You can find these on Wikipedia.
`
`BY MR. REYNOLDS: Q. All right. And they are typically one
`number?
`
`MR. MAIERS: Objection, leading.
`
`THE WITNESS: They are normally one number. An example of two
`numbers is Philips where they’ve got two different codes. ….”
`
`(Id. at 88:17-89:12.) These exchanges are exactly the type of tainted, leading
`
`question testimony that FED. R. EVID. 611(c) is designed to prevent. Accordingly,
`
`the Board should exclude those portions of Dr. Herr’s testimony offered in
`
`response or as a result Petitioner’s counsel’s leading questions—specifically, lines
`
`85:24-86:17 and 88:10-89:21 from Dr. Herr’s deposition transcript (Ex. 2007)—
`
`and the Board should disregard Petitioner’s reliance upon such testimony in its
`
`Reply in support of its Amended Petition and prevent Petitioner from further
`
`relying upon such testimony in support of its Amended Petition, including at the
`
`upcoming oral argument.3
`
`
`3 Even if the Board chooses not to outright exclude Dr. Herr’s deposition
`testimony, the leading nature of the questions, at a minimum, calls into question
`the credibility of Dr. Herr’s testimony and the weight it therefore deserves.
`Skinmedica, Inc. v. Histogen, Inc., 727 F.3d 1187, 1209-210 (Fed. Cir. 2013)
`(holding that expert’s testimony “deserves no weight” in view of, among other
`
`7
`
`
`
`IPR2013-00127
`
`IV. CONCLUSION
`
`For the foregoing reasons, UEI respectfully requests that the Board grant its
`
`Motion to Exclude Evidence Under 37 C.F.R. § 42.64(c).
`
`Date: March 3, 2014
`
`Respectfully Submitted,
`
`GREENBERG TRAURIG, LLP
`
`/Eric J. Maiers/
`By: Michael A. Nicodema; Reg. No. 33,199
`200 Park Avenue
`P.O. Box 677
`Florham Park, NJ 07932-0677
`
`Gary R. Jarosik; Reg. No. 35,906
`Eric J. Maiers; Reg. No. 59,614
`77 West Wacker Drive, Suite 3100
`Chicago, Illinois 60601
`(312) 456-8449
`
`
`things, his “conclusory affirmations elicited by leading questions”); J.C. Equip.
`Corp.v. England, 360 F.3d 1311, (Fed. Cir. 2004) (finding witness testimony not
`credible because it was, among other things, elicited “often in response to leading
`questions asked by his attorney”).
`
`8
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that on the below date, I caused the
`
`foregoing to be served upon the following counsel of record via electronic mail
`
`(with counsel’s agreement):
`
`Timothy E. Bianchi
`Schwegman, Lundberg & Woessner, P.A.
`1600 TCF Tower
`121 South Eighth Street
`Minneapolis, MN 55402
`tbianchi@slwip.com; IPR-request@slwip.com
`
`Thomas C. Reynolds
`Schwegman, Lundberg & Woessner, P.A.
`150 Almaden Blvd.
`Suite 750
`San Jose, CA 95113
`treynolds@slwip.com
`
`Date:
`
`March 3, 2014
`
`/Eric J. Maiers/
`Eric J. Maiers
`
`
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