Paper No.
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`RAYMARINE, INC.
`Petitioner
`
`v.
`
`NAVICO HOLDING AS
`(previously NAVICO, INC., changed by assignment on 6/28/13)
`Patent Owner
`___________________
`
`Case IPR2013-00355
`Patent 8,305,840
`Title: DOWNSCAN IMAGING SONAR
`
`__________________________________________________________________
`
`NOTICE OF PROPOSED MOTIONS
`BY PETITIONER RAYMARINE, INC.
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`RAYMARINE, INC.
`Petitioner
`
`v.
`
`NAVICO HOLDING AS
`(previously NAVICO, INC., changed by assignment on 6/28/13)
`Patent Owner
`___________________
`
`Case IPR2013-00355
`Patent 8,305,840
`Title: DOWNSCAN IMAGING SONAR
`
`__________________________________________________________________
`
`NOTICE OF PROPOSED MOTIONS
`BY PETITIONER RAYMARINE, INC.
`
`
`
`Notice of Proposed Motions
`IPR2013-00355 / Patent No. 8,305,840
`
`NOTICE OF PROPOSED MOTIONS
`
`The initial conference call in this matter is scheduled for January 9, 2014 at
`
`1:30 p.m. Eastern Time. Pursuant to the instructions for initial conference calls set
`
`forth in the Office Trial Practice Guide, Petitioner Raymarine, Inc. provides the
`
`following notice regarding anticipated motions in this case.
`
`Petitioner’s Motions: Raymarine does not presently intend to file any
`
`motions but nevertheless reserves the right to file a motion to exclude evidence or
`
`a motion for observation on the dates set forth in the scheduling order for this case,
`
`as well as any other motions that become necessary as the case develops (e.g., a
`
`motion for discovery).
`
`Patent Owner’s Motions: Raymarine anticipates that Patent Owner Navico
`
`will file a motion to disqualify and exclude the testimony of both of Raymarine’s
`
`experts, as described in Navico’s Objection to Evidence filed December 27, 2013
`
`(Paper No. 16) (“Objection”). The stated basis for the Objection is that Mr. Klein
`
`previously served as an expert witness on behalf of Navico in another matter and,
`
`allegedly, had confidential information that is somehow relevant to the current
`
`proceeding, and that “Mr. Klein’s knowing or unknowing use of this information
`
`in preparing his Declaration is improper.” [Objection at 4] Navico also objects to
`
`the Paul Stokes Declaration (RAY-1010) in light of the similarity between the two
`
`declarations. Id.
`
`1
`
`
`
`Notice of Proposed Motions
`IPR2013-00355 / Patent No. 8,305,840
`
`Notwithstanding Navico’s Objection, it does not identify any portion of the
`
`declarations as reflecting or even as being relevant to any allegedly protected
`
`Navico information. Because Navico fails to identify the basis for its objection
`
`(i.e., the confidential information that was allegedly used in the Declarations), its
`
`objection does not provide sufficient particularity and is therefore non-compliant
`
`with the requirements of 37 C.F.R. §42.64(b)(1).
`
`Notwithstanding the insufficiency of Navico’s Objection, Petitioner
`
`Raymarine is serving, simultaneously with this notice, supplemental evidence
`
`showing that the Objection lacks merit. Specifically, the supplemental evidence
`
`consists of letters dated November 7, 2013 and November 26, 2013 (the “Klein
`
`Letters”) from Mr. Klein’s attorneys refuting any improper use of Patent Owner’s
`
`confidential information. The Klein Letters state:
`
` “Mr. Klein does not have any Navico confidential information and has not had
`
`any since February 2012 (at the latest).” (RAY-1011)
`
` “Mr. Klein has never disclosed whatever Navico information he once had.”
`
`(RAY-1011)
`
` “[D]uring the Engagement, Mr. Klein did not come into possession of Navico
`
`information relevant to his current work for Raymarine.” (RAY-1011)
`
`2
`
`
`
`Notice of Proposed Motions
`IPR2013-00355 / Patent No. 8,305,840
`
` “Mr. Klein is happy to confirm that he has not used or disclosed any
`
`confidential information he received from Navico, and that he will not do so.”
`
`(RAY-1012)
`
`
`
`“Mr. Klein’s engagement for Raymarine does not ‘involve or pertain to
`
`confidential information of Navico.’” “Mr. Klein’s engagement with
`
`Raymarine involves his knowledge of prior art and the written claims and
`
`specifications of publicly available patents, as read from the perspective of one
`
`skilled in the art.” (RAY-1012)
`
`As shown by these letters, Navico’s allegation that Mr. Klein is misusing
`
`confidential information is baseless and should be withdrawn. Moreover, any
`
`contention that Mr. Klein’s actions are improper is belied by Navico’s six-month
`
`delay in raising this issue with the Board. Nevertheless, if Navico persists in
`
`maintaining its Objection, the Board should require Navico to bring a motion now,
`
`instead of waiting until the end of the IPR proceeding when a successful motion
`
`would inflict maximum prejudice on Petitioner Raymarine.
`
`Raymarine accordingly requests that the Board consider the following
`
`course of action in connection with the initial conference call:
`
`1) striking the Objection as non-compliant;
`
`2) providing the Navico an opportunity to serve a rule-compliant objection, if any,
`
`that identifies with particularity the portions of the Klein and Stokes
`
`3
`
`
`
`Notice of Proposed Motions
`IPR2013-00355 / Patent No. 8,305,840
`
`Declarations that it considers to contain Patent Owner’s confidential
`
`information, prior to January 16, 2014;
`
`3) requiring Navico to file a Motion to Disqualify/Exclude Evidence based upon
`
`its renewed objection, if any, prior to February 6, 2014;
`
`4) requiring Petitioner to serve its Response to the Motion to Disqualify/Exclude
`
`Evidence prior to February 20, 2014; and
`
`5) ruling on the Motion to Exclude Evidence on an expedited basis.
`
`By resolving Navico’s motion to exclude early, instead of waiting until the
`
`end of the IPR process as suggested by Navico’s objection, the Board will remove
`
`the cloud caused by Navico’s Objection and will also give both parties guidance
`
`with regards to the parties’ related IPRs, in which Messrs. Klein and Stokes have
`
`also submitted declarations.
`
`January 7, 2014
`Dated:
`HAYNES AND BOONE, LLP
`2323 Victory Avenue, Suite 700
`Dallas, Texas 75219
`Telephone: 214/651-5533
`Facsimile: 214/200-0853
`
`Respectfully Submitted,
`
`/David L. McCombs/
`By:
`David L. McCombs
`Registration No. 32,271
`Counsel for Petitioner
`
`4
`
`
`
`Notice of Proposed Motions
`IPR2013-00355 / Patent No. 8,305,840
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`RAYMARINE, INC.
`Petitioner
`v.
`NAVICO HOLDING AS
`(previously NAVICO, INC., changed by assignment on 6/28/13)
`Patent Owner
`___________________
`
`Case IPR2013-00355
`Patent 8,305,840
`Title: DOWNSCAN IMAGING SONAR
`_____________________
`
`CERTIFICATE OF SERVICE
`The undersigned certifies, in accordance with 37 C.F.R. § 42.205, that
`service was made on the Patent Owner as detailed below.
`Date of service January 7, 2014
`
`Manner of service Electronic Mail:
`(mike.mccoy@alston.com)
`
`Documents served Notice of Proposed Motions by Petitioner
`
`Persons served Michael D. McCoy
`Alston & Bird LLP
`Bank of America Plaza
`101 South Tryon Street, Suite 4000
`Charlotte, NC 28280-4000
`Tel: (704) 444-1011, Fax: (704) 444-1111
`
`R353342
`
`/David L. McCombs/
`David L. McCombs
`Registration No. 32,271
`
`5
`
`
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