Trials@uspto.gov
`571-272-7822
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`Paper 38
`Entered: September 23, 2014
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`RECORD OF ORAL HEARING
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`HANDI QUILTER, INC. and
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`TACONY CORPORATION,
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`Petitioners,
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`v.
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`BERNINA INTERNATIONAL AG,
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`Patent Owner.
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`Appeal IPR2013-00364
`U.S. Patent 6,883,446
`Technology Center 3900
`____________
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`Oral Hearing Held: June 25, 2014
`____________
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`Before JENNIFER S. BISK, MICHAEL J. FITZPATRICK,
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
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`571-272-7822
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`Paper 38
`Entered: September 23, 2014
`
`
`RECORD OF ORAL HEARING
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`HANDI QUILTER, INC. and
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`TACONY CORPORATION,
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`Petitioners,
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`v.
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`
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`BERNINA INTERNATIONAL AG,
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`Patent Owner.
`
`Appeal IPR2013-00364
`U.S. Patent 6,883,446
`Technology Center 3900
`____________
`
`Oral Hearing Held: June 25, 2014
`____________
`
`Before JENNIFER S. BISK, MICHAEL J. FITZPATRICK,
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
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`Appeal IPR2013-00364
`U.S. Patent 6,883,446
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`APPEARANCES:
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`ON BEHALF OF APPELLANT:
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`R. PARRISH FREEMAN, JR., ESQUIRE
`Maschoff Brennan
`1389 Center Drive, Suite 300
`Park City, Utah 84098
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`ON BEHALF OF RESPONDENT:
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`ANTHONY S. VOLPE, ESQUIRE
`RYAN W. O'DONNELL, ESQUIRE
`MAX S. MORGAN, ESQUIRE
`Volpe and Koenig, P.C.
`30 South 17th Street
`Suite 1800
`Philadelphia, Pennsylvania 19103
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`The above-entitled matter came on for hearing on Wednesday, June
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`25, 2014, commencing at 2:00 p.m., at the U.S. Patent and Trademark
`Office, 600 Dulany Street, Alexandria, Virginia.
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`Appeal IPR2013-00364
`U.S. Patent 6,883,446
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`P R O C E E D I N G S
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`JUDGE BISK: Okay, good. Okay, good afternoon. This is a trial
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`hearing for IPR2013-00364 between Petitioner, Handi Quilter and Tacony
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`Corporation, and the owner of the U.S. patent 6,883,446, Bernina
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`International.
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`A few administrative matters before we begin. I am Judge Bisk and as
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`you see I'm the only one in Alexandria today. Judge Braden is joining us
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`from the Dallas office and is only on the phone unfortunately. And Judge
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`Fitzpatrick is on the monitor over there and he is joining us from Chicago.
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`So just for Counsel, who are presenting today, I know that it's
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`tempting to turn and look at Judge Fitzpatrick when you are answering his
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`questions or addressing him but the camera is actually behind me. So it's
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`easier for Judge Fitzpatrick to see and hear you if you always talk to me. So
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`if you can remember that, it's a little unnatural.
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`Also, we may have an issue where Judge Fitzpatrick, we can't see him
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`but usually he can still see and hear us but I actually will check if that
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`happens. And then one more thing is be sure to describe any slides you're
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`discussing by number and that way the judges who aren't in the room with us
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`can follow.
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`Appeal IPR2013-00364
`U.S. Patent 6,883,446
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`As you know per our order, each party has one hour to present their
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`argument. Because Petitioner has the burden to show unpatentability of the
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`original claim Petitioner will proceed first followed by Patent owner.
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`Petitioner may reserve a rebuttal time; however, Petitioner may only use that
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`time to rebut Patent owner's arguments.
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`At this time I'd like Counsel to introduce yourselves for the parties
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`here and who you're representing and who you have with you.
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`MR. FREEMAN: My name is Parrish Freeman. I represent Petitioner
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`Handi Quilter, Inc.
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`MR. VOLPE: Anthony Volpe. I'm here on behalf of Bernina
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`International and I'm here with Ryan O'Donnell and Max Morgan.
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`JUDGE BISK: Okay, thank you. All right, any time you're ready.
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`MR. FREEMAN: Thank you, Your Honor. May it please the Board
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`I'm prepared today to speak to claim construction and anticipation, I've got a
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`presentation prepared. I can cover those things but they're not contested.
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`Patent owner hasn't contested those issues in this case, hasn't contested
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`claim construction, has not contested anticipation so I'd prefer to spend my
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`time addressing what is contested and that is conception prior to the
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`publication date of the patent.
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`Appeal IPR2013-00364
`U.S. Patent 6,883,446
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`JUDGE BISK: Can I stop you for just a second?
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`MR. FREEMAN: Certainly.
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`JUDGE BISK: Are you going to save some rebuttal time?
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`MR. FREEMAN: Thank you, I do. I would like to save 30 minutes
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`please.
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`JUDGE BISK: Okay.
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`MR. FREEMAN: So I'm going to proceed to slide number seven and
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`talk briefly about the ’446 patent. The ’446 patent names Ralph J. Koerner
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`as the sole-named inventor. That's important. He's the sole-named inventor
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`and that matters because unfortunately he's deceased. He passed away
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`before this dispute arose and is therefore not around to give live testimony or
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`sworn testimony regarding conception as is typically done in these cases. As
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`the Board certainly understands typically in a priority contest we'd have
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`testimony, live testimony from the inventor himself, we'd have a number of
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`documents that he or she purports to bring in to corroborate the testimony.
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`That's not the world we're in here. In this situation we have a number of
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`documents. We have two declarations that were already filed and we don't
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`have any inventor testimony. So the claims of the ’446 patent are directed to
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`the combination of a sewing machine and a motion detector. And they are
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`Appeal IPR2013-00364
`U.S. Patent 6,883,446
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`combined by way of a control circuit and that's really important because the
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`control circuit is present in every single claim. It's present in every claim of
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`the invention.
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`And what a control circuit does is it helps the sewing machine and the
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`motion detector communicate. It actually facilitates that communication.
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`And it not only takes the distance traveled information and converts it into a
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`speed change for the needle, it also actually implements that change, carries
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`it into effect through the sewing machine.
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`In terms of claim language, the claims speak of this change as
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`actuation or actuating, the other claims speak in terms of causing the needle
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`to move. The ’446 patent claims two modes of operation, a single stitch or
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`impulse mode where the machine essentially fires a single stitch, fires single
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`stitches at a rate determined by the feed rate of the fabric. There's also a
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`proportional mode where the needle moves continuously but varies its speed
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`in response to the detected feed rate of the fabric.
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`Now in the Board's claim instruction, the Board determined that the
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`term actuate covers -- well actually all of the independent claims cover both
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`modes of operation. Now there's some claims that drill down a little bit and
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`cover just the proportional mode, claims 20, 27, 31 and 34 fall into this
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`Appeal IPR2013-00364
`U.S. Patent 6,883,446
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`category. The reason that matters is because the patent at issue here claims
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`priority to a provisional application filed February 12th, 2003. If you look at
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`the provisional application there's no mention in that provisional application
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`of this proportional mode. When you compare it to the proportional
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`provisional application utility application, you'll see in the utility application
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`that proportional mode is very clearly present in the utility application and
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`very clearly not present in the provisional application.
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`JUDGE BISK: So are you arguing that they should not get the
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`priority date on the provisional?
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`MR. FREEMAN: Yes.
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`JUDGE BISK: Was that in your brief?
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`MR. FREEMAN: It was in a footnote. It was not fleshed out. I did
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`not identify claims, I will concede but I did say the claims that covered
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`proportional mode would not be supported by the provisional application.
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`And to be perfectly honest, I believe the footnote said it may not be.
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`So it's true it wasn't a developed argument. It was a footnote. And it
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`would apply to these specific claims that I just named claims 20, 27, and 31
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`and 34.
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`So I'm going to move now to slide 29. As you probably saw as I
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`Appeal IPR2013-00364
`U.S. Patent 6,883,446
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`flipped through those, I have plenty of slides prepared to talk about
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`anticipation of the claim instruction. If the Board has questions, I'm happy
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`to answer them but it seems those matters are uncontested, so I will proceed
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`with the defenses that are at issue.
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`So the Patent owner has presented an antedating defense. The
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`antedating evidence as it was originally filed consisted of two declarations
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`and a number of documents. The two declarations were from Mrs. Koerner,
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`the wife of the inventor, and from the inventor's patent attorney. The only
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`evidence that really matters for purposes of our discussion here today on
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`conception are the evidence of things that supposedly happened . . .”
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`There are a number of other documents that came into existence years
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`later that I'll talk about in a minute but just for our purposes now I'll
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`summarize the documenters that really matter. There are four documents,
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`only four, that came into existence prior to or purportedly came into
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`existence prior to the patent publication date. Those documents I'll get into
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`in a little bit lack foundation. They have no one to testify that they were
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`actually created on the dates inscribed thereon. They don't appear in the
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`record until 2008.
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`The testimony, the other piece of evidence and the other thing that
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`Appeal IPR2013-00364
`U.S. Patent 6,883,446
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`supposedly occurred prior to the publication of the patent is a demonstration
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`that took place or allegedly took place at a birthday party gathering and we
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`have some testimony regarding that. And the demonstration was allegedly
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`of a component of the machine, not of the machine itself. So it wasn't of the
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`entire combination. It was of a little box that purportedly clicked when you
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`moved the fabric across its surface.
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`And the testimony regarding the demonstration in the original
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`declarations comes from Mr. Freilich and from Mrs. Koerner. Mrs. Koerner
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`-- Mr. Freilich doesn't purport to have been there at all so he can't speak to
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`this demonstration at all. Mrs. Koerner was present at the party but her
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`testimony in the declaration doesn't say anything about being present for the
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`demonstration or seeing the demonstration.
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`Instead she says that the demonstration was conducted for her sons by
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`her husband and that brings up the sons' letters. They're dated 2009 and they
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`were prepared for purposes I'll get into in a second and they're unsworn
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`testimony. So when we received those as the Petitioner, we objected.
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`Objected on the grounds of hearsay and the Patent owner responded with
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`supplemental evidence most of which we don't have a problem with but two
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`of the items we do. Those are supplemental or second -- neither actually.
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`Appeal IPR2013-00364
`U.S. Patent 6,883,446
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`They're brand new declarations from the sons.
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`So the sons are alive. The sons are able to execute declarations. They
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`could have done it in connection with the response but didn't. Instead they
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`relied on these unsworn 2009 letters and then attempted to cure with
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`deficiency the hearsay problem with those letters by filing supplement
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`declarations. So that brings up on the timeline, the May 4th, 2009 matter.
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`At that time we know from the declaration of Mr. Freilich, Mr. Koerner put
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`together a package that he sent out off to Mr. Freilich labeled as the licensee.
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`So that the patent owner in this case, Bernina. Bernina would handle the
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`licensing of Mr. Koerner and the ’446 patent at that time.
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`And what Mr. Freilich instructed Mr. Koerner to do was to gather all
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`of this evidence supposedly establishing prior conception; conception before
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`the publication of the patent. We know that because Mr. Freilich speaks of
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`it. He doesn't say it exactly like that but he also has in addition an e-mail
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`exchange between him and the inventor dated a year earlier where they
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`discuss the patent and the idea that the validity at that time, the issued ’446
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`patent was not in question in their mind because they could establish
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`priority.
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`So Mr. Freilich directed Mr. Koerner to collect all of these documents.
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`Appeal IPR2013-00364
`U.S. Patent 6,883,446
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`That's the first time that these four documents I spoke of a moment ago show
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`up in the record. The first time anybody testified to having seen them.
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`Mr. Freilich says he received two of them by e-mail but he doesn't say he
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`received the other two by e-mail but speaks of them. So we can say that they
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`were received. He had them in his files. They were received around that
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`time in 2009.
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`Mrs. Koerner testified that she didn't receive them or she didn't find
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`them until after Mr. Koerner's passing in 2012.
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`Pretty clearly from, the pretty clear implication of this is that the then-
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`licensee wanted some assurances of the ongoing validity of the patent in the
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`face of a challenge. So there's a lot at stake here most likely. Now I say
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`most likely because as a factual matter, I couldn't depose Mr. Koerner. I did
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`not depose Mr. Freilich and I did not depose Mrs. Koerner because the
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`record as it stood was deficient. And it seemed like a bad use of my client's
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`money to sit in front of each of them for seven hours and jog their memory.
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`So nonetheless, it seems like a reasonable inference that there was a
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`lot at stake here. They needed to satisfy the then-licensee Bernina who
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`became the patent owner, we know that because they're patent owner in this
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`case, that the patent was valid. They needed to be shown that. So they
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`Appeal IPR2013-00364
`U.S. Patent 6,883,446
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`needed to see documents and there were several documents that actually
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`came into existence at that time. We're talking about the two letters I
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`mentioned a moment ago from the sons. Those came into existence at that
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`time.
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`Other documents were created at that time. There was a letter from
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`another party, Mrs. Shelter. So these were all packaged up and sent off to
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`bring in effort to satisfy Bernina that it's a good idea to continue to pay
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`royalties or to pay money for the license. Again, I can't say it's certain but
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`one of these pages, it seems like a reasonable inference.
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`I'm going to go to slide 30. I'm going to get in now to the sufficiency
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`of the evidence for purposes of establishing early conception. It's the Patent
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`owner's burden to produce evidence that shows early conception. So they
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`need to produce evidence that shows every feature of the claimed invention,
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`that shows the inventor had a definite, permanent idea of the invention as it
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`was thereafter to be put in practice and that only ordinary skill would have
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`been necessary to reduce into practice.
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`Now with regard to this every feature requirement, something that's
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`lacking in this evidence, if we take it at face value, if we accept it as true and
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`we've certainly got plenty of bases to exclude it. But if we take it all in and
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`Appeal IPR2013-00364
`U.S. Patent 6,883,446
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`look at it, the control circuit element is missing from all of the pre-patent
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`records. The demonstration, the alleged demonstration that took place was
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`nothing more than a clicking box. Now remember the control circuit
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`actually makes the sewing machine go.
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`JUDGE BISK: So I have a question for you. What is a personal of
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`ordinary skill in this art? Is it an electrical engineer?
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`MR. FREEMAN: Yeah I believe it would be. Mr. Koerner himself
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`was an electrical engineer. I think that's fair to say.
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` JUDGE BISK: In other words, maybe -- wouldn't it be obvious
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`maybe that -- if you have the algorithm and you know how to do the sensing,
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`would it be obvious for an electrical engineer to make that control circuit?
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`MR. FREEMAN: Well, we don’t have any evidence to that effect.
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`No evidence was brought forward to that effect and -- and it's the Patent
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`owner's burden to do that. And the record tends to suggest that it wasn't
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`because Mr. Koerner, he had this -- he had in July, if we believe everything
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`that we read. In July 2002 he obtained a sewing machine. In spring 2002 he
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`demonstrated that he could have a mouse-like device track fabric movement.
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`By September of 2002 he had a clicking box.
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`Yet after that, he was unable to get everything to cooperate and to
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`Appeal IPR2013-00364
`U.S. Patent 6,883,446
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`work in the way that he had envisioned it until either he constructed the
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`alleged practice or if we believe the one representation he made himself that
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`no one else made in the record, mid-December he says in one document --
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`I'm sorry.
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`JUDGE BISK: Did someone have a question?
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`JUDGE FITZPATRICK: Well, let me ask you now, Mr. Freeman,
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`and I apologize there's some noise here so I'm going to talk over it, but
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`what's your understanding of the clicking box? What that demonstrates,
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`what it does?
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`MR. FREEMAN: Well that's the issue. The record is bereft of any
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`real validation of what that thing did. They say, well, I should -- they
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`purport that it clicked. We don't know why it clicked. We don't know that it
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`was actually clicking. So if the inventor were there to cross-examine we'd
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`have gotten into that.
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`But it's respectfully not the Petitioner's burden to establish that. That
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`needed to be in the Patent owner's evidence and it wasn't in there. So we
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`don't know why it clicked. It could have been clicking because of some
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`completely unrelated reason. It could have been a prank. We have no idea
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`why it did what it did. We don't know anything about it.
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`Appeal IPR2013-00364
`U.S. Patent 6,883,446
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`In fact, we have what's supposed to be a picture of it but again, that's
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`exhibits I think 2036, there's no foundation for that. No one can say for
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`certain that that's what -- that that was a picture of what it purports to be.
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`Mrs. Koerner doesn't say it. She doesn't say it in her declaration. Mr.
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`Freilich has no grounds to say it. He has no foundation. He wasn't there.
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`Does that answer your question Your Honor?
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`JUDGE FITZPATRICK: It sounds like -- I understand where you're
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`coming from. It sounds like you don't have an understanding of what the
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`clicking box is which is understandable. I just wanted to know if you had an
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`understanding.
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`MR. FREEMAN: Well, okay, so let's give him the bene --
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`JUDGE FITZPATRICK: Can I ask (inaudible) question. I'm going to
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`ask Patent owner the same question.
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`MR. FREEMAN: Okay let's give them the benefit of the doubt. Let's
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`assume it did exactly what they said it did, it clicked in response to fabric
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`motion. The problem with that is that that's not the control circuit. The
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`control circuit has to -- carry it into effect, it has to move the needle. And
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`your point is well taken Judge Fitzpatrick that maybe that is something
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`within the realm of ordinary skill in the art but we don't know that.
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`Appeal IPR2013-00364
`U.S. Patent 6,883,446
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`We don't have any evidence to suggest that, and the record actually
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`indicates the contrary. It indicates that it took Mr. Koerner quite some time
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`by his own statements, if we believe them, all the way through mid-
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`December for him to get things to work, for everything to cooperate. He had
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`trouble with it. He had DC current versus AC current. He had trouble with
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`torque. He had trouble with braking. He was not able to get this thing
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`connected the way he had originally envisioned it.
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`JUDGE BISK: But you didn't actually have to have a reduction at that
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`point.
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`MR. FREEMAN: No, for conception purposes.
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`JUDGE BISK: Right.
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`MR. FREEMAN: So I'm getting a little bit into the diligence side of
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`things but you're correct. But I believe those elements speak to the difficulty
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`and really the distance that the conception was from the reduction facts.
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`And conception and reduction practice, is a really a single event, you know,
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`it's the act of invention. It ought to be a unitary thing. We allow in the law
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`for reasonable diligence along the way but there shouldn't be any change in
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`terms of concept from the thing you came up with to the thing that you put
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`into practice.
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`Appeal IPR2013-00364
`U.S. Patent 6,883,446
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`Maybe it takes you a couple of weeks to order the parts or to get the
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`lab time or whatever the case may be. But you need to have some
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`justification to explain why you weren't able to come up with it in your head
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`and put it into practice immediately.
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`And my points on this slide sort of melded together in answering your
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`question. But, you know, one point I want to make about the definitely
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`permanent idea -- well let me back up a little bit. So one thing we know
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`from the record is that in Exhibit 2032, Mr. Koerner says he didn't settle on a
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`control circuit. He didn't settle on a control circuit until November 25th. He
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`wasn't able to actually settle on what he regarded as something that worked
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`until November 25th.
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`And there's a document in the record 20 -- 2008-1, I believe, that is
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`that circuit, that November 25th circuit. The definite and permanent idea, I
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`mean we all do this. I get in trouble with my wife constantly because I get
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`up Saturday morning; I say I'm going to fix that window. I've got a clear and
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`definite idea of how I want to go about doing it, run down to Home Depot,
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`several trips to Home Depot later, several dollars later, I still haven't fixed it
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`and I'm nowhere closer because it turned out to be a lot more difficult that I
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`originally envisioned.
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`Appeal IPR2013-00364
`U.S. Patent 6,883,446
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`The concept and the reduction to practice were not in line.
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`JUDGE BISK: Can I ask you a quick question?
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`MR. FREEMAN: Certainly.
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`JUDGE BISK: I'm not sure I understand your citations with the last
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`one and the two.
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`MR. FREEMAN: Those are from the way that the Petitioner, I'm
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`sorry, the Patent owner labeled its exhibits. So if you look in the record at
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`exhibit 2008, for example, the first page is 2008-1. The second page 2008-2.
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`JUDGE BISK: Oh, okay.
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`MR. FREEMAN: The Patent owner did that with respect to a handful
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`of exhibits.
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`JUDGE BISK: Okay.
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`MR. FREEMAN: I think 2013 is like that, 2014 is like that perhaps
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`some others but those are the two -- the three that --
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`Well to sum up, the Patent owner was required to come forward with
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`evidence that established conception under these standards and the Patent
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`owner failed to do so. For example, we have the July of 2002, as I said a
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`minute ago, the clicking box in September 2002 but still an inability to bring
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`them all together until December of 2002. And the record suggests that
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`Appeal IPR2013-00364
`U.S. Patent 6,883,446
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`things changed, the conception -- the conception points changed along the
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`way. It wasn't what he had originally envisioned.
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`I'll move on now to slide 31. Now, as I mentioned a minute ago
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`diligence is part of the analysis. The act of invention involves conception
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`and reduction of practice. It's supposed to be one continuous act but the law
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`allows for some delays if you can explain them, if you can give a reason why
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`those delays were necessarily incurred. So what I've done here, it is how the
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`things are listed in the Patent owner's evidence and I'm giving deference to
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`every single item but I don't agree that every single item is part of the
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`inventor's process.
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`Attending a quilt festival in Houston, for example, probably doesn't
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`count. That's not moving forward with the invention.
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`JUDGE BISK: So we're not really talking about the -- do we take into
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`account that this was a single inventor who probably had some other job or
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`does other things with his life and it's not his main job to work on this
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`invention?
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`MR. FREEMAN: Well I think we would look to the Patent owner to
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`bring forward that evidence. There's no suggestion that that's the case.
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`Unless because school -- I think it's true that he was retired. I think that's in
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`Appeal IPR2013-00364
`U.S. Patent 6,883,446
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`the record somewhere but I don't -- I don't know. I do know he was, at the
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`time of the invention, 73 years old. There's a lot of references to his 73rd
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`birthday party. So but again that --
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`JUDGE FITZPATRICK: Mr. Freeman.
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`MR. FREEMAN: Yes?
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`JUDGE FITZPATRICK: I'm sorry, all the quotes that appear on these
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`slides are from Exhibit 2032, is that correct?
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`MR. FREEMAN: That's correct.
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`JUDGE FITZPATRICK: Thank you.
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`JUDGE BISK: I have one other question. Between January 2nd and
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`January 31st I believe that there is some testimony by Mr. Freilich that he
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`had some phone calls with the inventor during that time. I think he said in
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`the January/February time frame he had several calls.
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`MR. FREEMAN: In the --
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`JUDGE BISK: In his testimony.
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`MR. FREEMAN: I'd have to look at the declaration to determine that.
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`My understanding was that there was nothing in the record to establish any
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`communication from January 2nd to January 31st, there were no documents.
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`If there's -- if there's testimony about that, I can't speak to that. My
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`Appeal IPR2013-00364
`U.S. Patent 6,883,446
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`understanding is that there is not though.
`
`And what I would say to that point generally is that the law does allow
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`1
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`2
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`3
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`for some leeway by the lawyer in reducing the invention -- or I'm sorry, in
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`4
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`taking the disclosure and turning it into a patent application. But again the
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`5
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`law is clear; the onus is on the lawyer to come forward with evidence that
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`6
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`explains the delay and that says the reason for the delay was the ordinary
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`course of my business. I had received the information, I put it at the bottom
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`8
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`of the pile, I got to it in the ordinary course. And we don't have any of that
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`from the lawyer in this case.
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`10
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`So we would submit that the record is pretty clear that there was a
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`11
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`failure of diligence here from the time of the alleged conception in October
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`12
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`to either the claimed actual reduction to practice in mid-December.
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`JUDGE BISK: But here I'm looking at your allegation and it says
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`14
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`after receiving the enhanced disclosure in early January 2003, I began
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`preparation of a patent application and consequently had multiple telephone
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`discussions with Ralph concerning his invention. So is that not an
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`explanation of what he was doing at that time?
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`MR. FREEMAN: Well it's sort of nonspecific as to date. The activity
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`19
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`the documents show that the activity began on January 31st. If you want to
`
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`Appeal IPR2013-00364
`U.S. Patent 6,883,446
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`go with what the documents, that's fair enough.
`
`Moving on to admissibility. This is just a summary slide of all the
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`1
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`2
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`3
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`documents that are at issue in this case. And we'd move to exclude all of
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`them but we don't have time to talk about them all. The issues that affect the
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`-- well, the documents that matter the most are these 2003 through 2006.
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`6
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`Those are those four documents I mentioned earlier.
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`And the problem there like I said earlier, no one knows when those
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`were created. The first time they show up in the record is in 2009. And the
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`date's pretty important so we don't know if the date was inscribed on there
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`10
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`originally. We don't know if maybe originally they were prepared and not
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`dated and then maybe Mr. Koerner put a date on there later. Maybe he put a
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`date he honestly in his heart believed was an accurate date but we don't
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`know when the date was put on this.
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`JUDGE BISK: So in this case I assume a reason that we don't have a
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`foundation for all this evidence is because our inventor is deceased. So is
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`there any way for a deceased inventor authenticate entries because you're a
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`solo inventor not at a company that's keeping lab books that are witnessed.
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`MR. FREEMAN: I mean it's an abstract question and I think maybe
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`in the abstract, sure. If the documents can bear it out and they're admissible.
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`Appeal IPR2013-00364
`U.S. Patent 6,883,446
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`You know they need to be documents that somebody else saw. I think that
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`it's possible. But we're just not in that world.
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`So we don't have any foundation for those four documents and that's
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`the biggest issue. There are hearsay problems as well but the main issue is
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`that foundational problem. Again we have no foundation for the Koerner
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`declarations regarding the September '02 demonstration as I mentioned a
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`minute ago. And we have no foundation for Mrs. Koerner's statement in
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`8
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`paragraph eight of her declaration that in spring 2002 Mr. Koerner
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`demonstrated a mouse-like device to her that detected fabric motion.
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`In order for her to be able to testify to that she needs to have some
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`understanding of the inner workings and whether it's the mouse that's
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`actually detecting fabric movement or if it's something else. And she doesn't
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`have that evidence.
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`JUDGE BISK: So are you moving to exclude the whole of 2002 or
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`just those three paragraphs?
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`MR. FREEMAN: Just those three paragraphs and likewise with
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`Exhibit 2015 which is Mr. Koerner's declaration (inaudible). This is a
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`complete summary. It's actually Exhibit 2015 which is attached to the back
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`of the motion to exclude.
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`Appeal IPR2013-00364
`U.S. Patent 6,883,446
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`1
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`Regarding the new declarations, the declarations of the sons those are
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`2
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`-- they're not even presented as -- well, let me back up. They don't cure
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`3
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`these letters. They don't purport to cure the letters. The letters apparently
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`are concededly hearsay. So these are to replace the letters because they say
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`5
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`essentially the same thing. Only now they're 2014 sworn declarations as to
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`6
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`something that happened in 2002 instead of 2009 unsworn letters as to
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`something that happened in 2002.
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`JUDGE BISK: So they can -- I never saw them concede that the
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`letters were hearsay.
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`MR. FREEMAN: Well, that's my argument. It's an implication.
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`JUDGE BISK: Okay.
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`MR. FREEMAN: What they said was that he -- they didn't say -- they
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`didn't argue around the hearsay objection, at least by my read of it. They
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`said here's the supplemental declaration. The supplemental declaration can't
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`cure a hearsay objection. It can only take the place. It's something
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`completely different than the document that was at issue which says to me
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`that they've conceded that those documents are inadmissible hearsay.
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`JUDGE BISK: Well, so how is it you have (inaudible)?
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`MR. FREEMAN: Well, as I stand here right now I can't think it will.
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`Appeal IPR2013-00364
`U.S. Patent 6,883,446
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`I don't think that that's -- I think that's something that we can all agree on.
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`1
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`Just like you can't ob
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