UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`RAYMARINE, INC.
`
`Petitioner
`
`V.
`
`NAVICO HOLDING AS
`
`Patent Owner
`
`Case IPR2013-00355
`
`Patent 8,305,840
`
`Before SALLY C. MEDLEY, Administrative Patent Judge.
`
`PATENT OWNER’S OBJECTION TO EVIDENCE UNDER 37 C.F.R. §
`
`42.64(B)(1)
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`RAYMARINE, INC.
`
`Petitioner
`
`V.
`
`NAVICO HOLDING AS
`
`Patent Owner
`
`Case IPR2013-00355
`
`Patent 8,305,840
`
`Before SALLY C. MEDLEY, Administrative Patent Judge.
`
`PATENT OWNER’S OBJECTION TO EVIDENCE UNDER 37 C.F.R. §
`
`42.64(B)(1)
`
`
`
`Pursuant to 37 C.F.R. § 42.64(b)(1), Patent Owner serves and submits the
`
`following objections to evidence submitted by Petitioner with its Petition for inter
`
`partes review. These objections are timely presented as they are served and
`
`submitted within ten business days of the decision to institute inter partes review.
`
`See id. Patent Owner reserves the right to file a motion to exclude the evidence
`
`identified herein as improper and any supplemental evidence that Petitioner may
`
`offer in an attempt to correct the noted improprieties. See id. § 42.64(b)(l)~(b)(2);
`
`see also IPR2013—00020, Paper 17 (“When a party objects to evidence that was
`
`submitted during a preliminary proceeding, such an objection must be served
`
`within ten business days of the institution of trial .
`
`.
`
`. If, upon receiving the
`
`supplemental evidence, the opposing party is still of the opinion that the evidence
`
`is inadmissible, the opposing party may file a motion to exclude such evidence”).
`
`I.
`
`RAY-1009-Martin Klein Declaration
`
`Patent Owner objects to Petitioner’s use of Mr. Martin Klein as an expert
`
`witness and the Martin Klein Declaration (RAY—1009) in its entirety.1
`
`1 On December 24, 2013, Patent Owner filed a motion to disqualify Martin
`
`Klein from serving as an expert witness for certain Raymarine entities—including
`
`Petitioner here—in co-pending action styled Navico, Inc, et al. v. Raymarine, Inc,
`
`-2-
`
`
`
`Mr. Klein served as an expert witness and consultant on behalf of Patent
`
`Owner
`
`in a recent patent
`
`infringement
`
`litigation involving sonar
`
`imaging
`
`technology related to the ’840 patent at issue in this proceeding. The application
`
`that led to the ’840 patent was the subject of discovery in the prior litigation,
`
`
`
`including depositions of the named inventors. As part of his prior work on behalf
`
`of Patent Owner-over an 18-month engagement pursuant
`
`to a consulting
`
`agreement—~Mr. Klein was privy to and a participant in substantial confidential,
`
`work product, and attorney-client privileged conversations and other information
`
`with the same law firm representing Patent Owner here. Mr. Klein also had private
`
`discussions with two of the inventors of the ’840 patent with respect to conception,
`
`reduction to practice, and other legal
`
`issues such as validity; accessed highly
`
`confidential technical information of Patent Owner; opined on behalf of Patent
`
`Owner on issues of claim construction, validity, and infringement in four expert
`
`reports comprising over 500 pages of opinions; and was deposed on two occasions
`
`relating to infringement, validity,
`
`inequitable conduct, and technical matters
`
`pertinent to damages. Importantly, Mr. Klein participated in numerous protected
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`conversations regarding Patent Owner’s litigation strategies and intellectual
`
`
`et a1. , Inv. No. 337—TA—2981 (International Trade Commission), on December 24,
`
`2013.
`
`
`
`
`
`property and business practices related to the subject matter of the ’840 patent.
`
`Consequently, Mr. Klein unquestionably had a confidential relationship with
`
`Patent Owner and received confidential and legally protected information that is
`
`relevant to the current proceeding. See, e.g., Certain Mobile Electronic Devices
`
`Incorporating Hapiics, Inv. No. 337-TA-834, Order No. 15 (Sept. 20, 2012)
`
`(disqualification of an expert based on a prior relationship is appropriate “if (1) the
`
`adversary had a confidential relationship with the expert and (2) the adversary
`
`disclosed confidential
`
`information to the expert that is relevant to the current
`
`litigation”).
`
`As a result of his prior confidential relationship, Mr. Klein had knowledge of
`
`and access to the aforementioned information in drafting his Declaration—
`
`information that he would never have had access to in this proceeding or in any of
`
`the co—pending actions. Mr. Klein’s knowing or unknowing use of this information
`
`in preparing his Declaration is improper, harms Patent Owner, gives Petitioner an
`
`unfair advantage, and undermines the integrity of the inter partes review process.
`
`Mr. Klein therefore must be disqualified and his Declaration must be excluded.
`
`II.
`
`RAY-1010-Paul Stokes Declaration
`
`Patent Owner objects to Petitioner’s use of Paul Stokes as an expert witness
`
`and the Paul Stokes Declaration (RAY-1010) in its entirety.
`
`-4-
`
`
`
`The Paul Stokes Declaration is substantially similar, and seemingly identical
`
`and duplicative in substance, to the Martin Klein Declaration. The Board has noted
`
`the peculiar
`
`similarity between the two declarations. See IPR2013—00355,
`
`Institution Decision (Paper No. 13), page 15 (“These declarations appear to be
`
`identical
`
`in substance”). The confidential, work product, and attorney—client
`
`privileged information that taints the Klein Declaration equally infects and taints
`
`the substantially identical Stokes Declaration. Thus, even if the Klein Declaration
`
`is excluded,
`
`the same improper
`
`information would still be present
`
`in this
`
`proceeding Via the substantially identical Stokes Declaration and/or Paul Stokes
`
`himself, unless Mr. Stokes and his Declaration are likewise excluded.
`
`Exclusion of the Stokes Declaration, and disqualification of Mr. Stokes, is a
`
`necessary remedy to ensure that information obtained by way of Mr. Klein’s
`
`confidential relationship with Patent Owner is not used in this proceeding to
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`irreparably harm and disadvantage Patent Owner.
`
`
`
`Conclusion
`
`With these objections, described with sufficient particularity to allow
`
`Petitioner to cure, Patent Owner explicitly reserves the right to file motions to
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`exclude both RAY—1009 and RAY-1010, as well as the experts themselves, prior to
`
`the August 1, 2014, deadline provided in the scheduling order.
`
`December 27 2013
`
`
`
`Date
`
`Respectfully Submitted,
`
`Bngé‘J
`
`Christopher TL Douglas
`Reg. No. 56,950
`
`
`
`Inter Partes Review of US. Patent No. 8,305,840 —— lPR2013-00355
`
`Certificate of Service
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certifies service on
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`the Petitioner of a copy of this Objection to Evidence via electronic delivery
`
`directed to davidmccombs.ipr@haynesboone.com and first class mail directed to
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`the corresponding address for lead counsel, as submitted in the Petition for Inter
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`Partes Review:
`
`David L. McCombs
`
`HAYNES AND BOONE, LLP
`
`2323 Victory Ave.
`
`Suite 700
`
`Dallas, TX 75219
`
`Dated: December 27, 2013 @Cfiv
`Christopher TL Douglas
`Reg. No. 56,950
`
`
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