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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`BROSE NORTH AMERICA, INC.
`and
`BROSE FAHRZEUGTEILE GMBH & CO.
`Petitioners
`
`v.
`
`UUSI, LLC
`Patent Owner
`
`
`
`
`Case Number: IPR2014-00416
`Patent No. 8,217,612
`
`
`
`PETITIONERS’ EXHIBIT LIST
`
`Pursuant to the Order regarding Conduct of Proceeding under 37 C.F.R. §
`
`42.5 (Paper 16) and 37 C.F.R. § 42.63, Petitioners Brose North America, Inc. and
`
`Brose Fahrzeugteile GmbH & Co. (“Brose”) hereby submits a current listing of its
`
`exhibits.
`
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`
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`1
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`Exhibit
`No.
`1001
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`1002
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`1003
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`1004
`1005
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`1006
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`1007
`1008
`1009
`1010
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`1011
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`1012
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`1013
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`1014
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`1015
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`
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`Description
`
`Declaration of Dr. Art MacCarley Under 37 C.F.R. §1.68 in Support
`of Petition for Inter Partes Review of U.S. Patent No. 8,217,612
`
`Appendix A to the Declaration of Dr. Art MacCarley: Dr.
`MacCarley’s current curriculum vitae
`
`Submission Pursuant to 35 U.S.C. § 301 and 37 C.F.R.§ 1.501 in
`Support of Petition for Inter Partes Review of U.S. Pat. No. 8,217,612
`
`Declaration of Alyse Wu
`U.S. Pat. No. 8,217,612 to Boisvert, et al. (“the ’612 Patent”)
`
`USPTO Assignments on the Web for the ’612 Patent, available at
`http://assignments.uspto.gov/assignments/q?db=pat&qt=pat&reel=&
`frame=&pat=8217612&pub=&asnr=&asnri=&asne=&asnei=&asns=
`(accessed February 6, 2014)
`U.S. Pat. No. 4,870,333 to Itoh, et al. (“Itoh”)
`U.S. Pat. No. 4,468,596 to Kinzl, et al. (“Kinzl”)
`U.S. Pat. No. 5,069,000 to Zuckerman (“Zuckerman”)
`UUSI’s U.S. Pat. No. 6,064,165
`Excerpts from U.S. Pat. Appl. No. 12/360,942 (“the ’942
`Application”): Specification, claims, and drawings
`
`Excerpt from the file history of the ’942 Application: January 28, 2009
`Preliminary Amendment
`
`Excerpt from the file history of the ’942 Application: February 10,
`2009 Second Preliminary Amendment
`Excerpt from the file history of the ’942 Application: November 24,
`2010 Office Action
`Excerpt from the file history of the ’942 Application: January 13, 2011
`Response to Office Action
`
`2
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`
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`Exhibit
`No.
`1016
`
`1017
`
`1018
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`1019
`
`Description
`
`Excerpt from the file history of the ’942 Application: April 1, 2011
`Office Action
`Excerpt from the file history of the ’942 Application: April 29, 2011
`Examiner Summary of April 26, 2011 Interview
`Excerpt from the file history of the ’942 Application: April 27, 2011
`Response to Office Action
`
`Excerpts from the file history of the ’942 Application: July 21, 2011
`Office Action; October 12, 2011 Amendment; December 23, 2011
`Office Action; March 7, 2012 Response Under Rule 116; and March
`29, 2012 Notice of Allowance
`
`1020
`
`UUSI’s U.S. Pat. No. 5,334,876 (the 1992 specification to which
`applicant claimed priority during prosecution of the ’612 Patent)
`
`Excerpt from UUSI’s September 19, 2013 First Supplemental
`Responses to Brose North America, Inc.’s First Set of Interrogatories
`to UUSI, LLC (Nos. 1-7): Supplemental Response to Interrogatory
`No. 1, and Attachment F thereto from UUSI, LLC, d/b/a Nartron v.
`Robert Bosch LLC & Brose N. Am., Inc., Civil Action No. 2:13-cv-
`10444 (E.D. Mich.)
`Diagram showing claimed chain of priority of the ’612 Patent
`U.S. Pat. No. 3,513,374
`U.S. Pat. No. 3,651,389
`Excerpt from the Otis Elevator Company, Otis: A Visual Timeline:
`1950s, A Polite Reversal, available at
`http://www.otisworldwide.com/d31-timeline.html (accessed February
`6, 2014)
`U.S. Pat. No. 2,751,219
`U.S. Pat. No. 2,756,990
`U.S. Pat. No. 2,887,311
`U.S. Pat. No. 3,581,174
`
`1021
`
`1022
`1023
`1024
`
`1025
`
`1026
`1027
`1028
`1029
`
`3
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`Exhibit
`No.
`1030
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`1031
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`1032
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`1033
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`1034
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`1035
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`1036
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`1037
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`1038
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`1039
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`1040
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`1041
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`1042
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`1043
`
`1044
`
`Description
`
`Affidavit of Mr. Luke Dauchot in Support of Motion for Pro Hac Vice
`Admission
`Transcript of Telephonic Status Conference held on September 4, 2014
`
`Transcript of Deposition of Dr. Mark Ehsani, held on December 16-17,
`2014
`Excerpt from the file history of U.S. Pat. Appl. No. 10/765,487: June 5,
`2006 Response by Applicant
`
` U.S. Pat. No. 6,274,947 (Terashima)
`
` U.S. Pat. No. 5,404,673 (Takeda)
`
` U.S. Pat. No. 7,579,802 (Boisvert)
`
`Excerpts from the file history of U.S. Pat. Appl. No. 10/765,487:
`Original specification, claims, and drawings, filed January 27, 2004
`
`Excerpt from the file history of U.S. Pat. Appl. No. 10/765,487:
`January 27, 2004 Preliminary Amendment
`
`Excerpt from the file history of U.S. Pat. Appl. No. 10/765,487:
`October 16, 2006 Office Action
`Excerpt from the file history of U.S. Pat. Appl. No. 10/765,487:
`December 13, 2006 Response by Applicant
`
`Excerpt from the file history of U.S. Pat. Appl. No. 10/765,487:
`April 10, 2007 Office Action
`Excerpt from the file history of U.S. Pat. Appl. No. 10/765,487:
`June 20, 2007 Response by Applicant
`Excerpt from the file history of U.S. Pat. Appl. No. 10/765,487:
`October 31, 2007 Office Action
`Excerpt from the file history of U.S. Pat. Appl. No. 10/765,487:
`July 23, 2008 Office Action
`
`
`
`4
`
`
`
`Exhibit
`No.
`1045
`
`1046
`
`1047
`
`1048
`
`1049
`
`1050
`
`1051
`
`1052
`
`1053
`
`1054
`
`1055
`
`1056
`
`Description
`
`Excerpt from the file history of U.S. Pat. Appl. No. 10/765,487:
`August 19, 2008 Response by Applicant
`
`Excerpt from the file history of U.S. Pat. Appl. No. 10/765,487: January
`5, 2009 Office Action
`Declaration of Dr. Mark Ehsani in support of Patent Owner’s Response
`regarding U.S. Pat. No. 7,579,802 (Case No. IPR2014-00417)
`
`Excerpts of Exhibit A to UUSI’s March 30, 2014 Disclosure of
`Asserted Claims and Infringement Contentions as to Brose North
`America, Inc. (Redacted, Public Version)
`
`U.S. Pat. No. 6,404,158 (Boisvert)
`
`U.S. Pat. No. 7,548,037 (Boisvert)
`
`U.S. Pat. No. 5,952,801 (Boisvert)
`
`U.S. Pat. No. 6,548,979 (Boisvert)
`
`Reply Declaration of Dr. C. Arthur MacCarley in Support of Petition
`for Inter Partes Review of U.S. Pat. No. 8,217,612 and Attachment A
`thereto
`
`Exhibit 7 to the Deposition of Dr. Mark Ehsani, held on December 16-
`17, 2014: U.S. Pat. No. 5,982,124 (Wang)
`
`Exhibit 8 to the Deposition of Dr. Mark Ehsani, held on December 16-
`17, 2014: U.S. Patent Appl. Publication No. 2002/0121872
`
`Exhibit 9 to the Deposition of Dr. Mark Ehsani, held on December 16-
`17, 2014: Figures 2A, 2B, 2C and 2D of the ‘802 Patent (and the ‘612
`Patent; the figures are the same)
`
`1057
`
`Exhibit 10 to the Deposition of Dr. Mark Ehsani, held on December 16-
`17, 2014: Witness’s Hand Drawn Illustration
`
`
`
`5
`
`
`
`Description
`
`Exhibit 11 to the Deposition of Dr. Mark Ehsani, held on December 16-
`17, 2014: Expert Report of Dr. Mark Ehsani regarding Claim
`Construction in Milwaukee Electric Tool , et al. v. Hitachi Koki Co.,
`Ltd., et al., Case No. 09-cv-00948
`
`Exhibit 12 to the Deposition of Dr. Mark Ehsani, held on December 16-
`17, 2014: Rebuttal Expert Report of Dr. Mark Ehsani regarding Claim
`Construction in Milwaukee Electric Tool , et al. v. Hitachi Koki Co.,
`Ltd., et al., Case No. 09-cv-00948
`
`Exhibit 15 to the Deposition of Dr. Mark Ehsani, held on December 16-
`17, 2014: Comparison of Claim 14 Limitations (c)(i)-(iv) of U.S. Pat.
`No. 7,579,802 to Constructions from Declaration of Dr. Mark Ehsani
`
`Exhibit 1 to the Deposition of Dr. C. Arthur MacCarley, held on
`September 26, 2014: Declaration of Dr. Art MacCarley Under 37 C.F.R.
`§1.68 in Support of Petition for Inter Partes Review of U.S. Pat. No.
`7,579,802 (Case No. IPR2014-00417)
`
`Exhibit 8 to the Deposition of Dr. C. Arthur MacCarley, held on
`September 26, 2014: Excerpts from C. de Silva’s Control Sensors and
`Actuators (1989)
`
`Exhibit 9 to the Deposition of Dr. C. Arthur MacCarley, held on
`September 26, 2014: C. de Silva’s Control Sensors and Actuators
`(1989)
`
`Exhibit
`No.
`1058
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`1059
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`1060
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`1061
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`1062
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`1063
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`6
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`Date: February 5, 2015
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`/s/ Craig D. Leavell
`Craig D. Leavell (Reg. No. 48505)
`Alyse Wu (Reg. No. 68926)
`Luke L. Dauchot (pro hac vice)
`KIRKLAND & ELLIS LLP
`300 North LaSalle Street
`Chicago, Illinois 60654
`P: 312.862.2000; F: 312.862.2200
`craig.leavell@kirkland.com
`alyse.wu@kirkland.com
`luke.dauchot@kirkland.com
`
`Attorneys For Petitioners
`
`7
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`
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Petitioners’
`
`Exhibit List was served on February 5, 2015 via electronic mail upon the following:
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`Respectfully submitted,
`
` /s/ Craig D. Leavell
`
`Craig D. Leavell (Reg. No. 48505)
`Alyse Wu (Reg. No. 68926)
`Luke L. Dauchot (pro hac vice)
`
`Attorneys For Petitioners
`
`Monte L. Falcoff
`Michael R. Nye
`HARNESS, DICKEY & PIERCE, P.L.C.
`5445 Corporate Drive, Suite 200
`Troy, Michigan 48098
`mlfalcoff@hdp.com
`mnye@hdp.com
`
`Attorneys for Patent Owner UUSI, LLC
`
`
`
`4
`
`
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