`
`US. Patent No. 8,217,612
`
`Filed on behalf of UUSI, LLC
`By: Monte L. Falcoff (mlfalcofnghdpeom)
`Michael R. Nye (mnye@hdp.com)
`HARNESS, DICKEY & PIERCE, P.L.C.
`
`5445 Corporate Drive, Ste. 200
`Troy, MI 48098
`Telephone: (248) 641—1600
`Facsimile: (248) 641—0270
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BROSE NORTH AMERICA, INC.
`
`and
`
`BROSE FAHRZEUGTEILE GMBH & CO. KG, HALLSTADT
`Petitioner
`
`V.
`
`UUSI, LLC
`Patent Owner
`
`Case IPR20 14-00416
`
`Patent 8,217,612
`
`PATENT OWNER’S MOTION TO EXCLUDE PETITIONER’S EVIDENCE
`
`UNDER 37 C.F.R. §42.64
`
`
`
`IPR2014-00416
`
`US. Patent No. 8,217,612
`
`Pursuant to 37 CPR. §42.64 Patent Owner UUSI, LLC moves to exclude
`
`certain of Petitioner’s submissions in this proceeding. First, Patent Owner moves
`
`to exclude Petitioner’s Exhibit No. 1062, excerpts of textbook entitled “Control
`
`Sensors and Actuators” by Clarence W. deSilva. Second, Patent Owner moves to
`
`exclude Petitioner’s Exhibit No. 1063, which is a color and more complete copy of
`
`the same deSilva textbook. Third, Patent Owner moves to exclude pages 185—193
`
`and page 198 (lines 15-18) of the deposition transcript of Petitioner’s alleged
`
`expert witness C. Art MacCarley of Patent Owner’s Exhibit 2004, as well as any
`
`reliance by Petitioner on these pages of this deposition testimony and/or deSilva
`
`textbook in Petitioner’s expert Declarations, briefs and argumentation.
`
`Patent Owner served its Objections to Petitioner’s Exhibits 1062 and 1063
`
`on February 12, 2015. Patent Owner also objected to Petitioner’s use of these
`
`deSilva textbook exhibits in its redirect deposition questioning as shown on page
`
`185, lines 12-15, of the MacCarley deposition transcript (Patent Owner’s Exhibit
`
`2004). These Objections are based on the deSilva textbook exhibits and the
`
`MacCarley deposition testimony regarding such, as not being timely submitted and
`
`being not responsive to Patent Owner’s Response.
`
`The submission of new evidence that (i) is necessary to make out a prima
`
`facie case of unpatentability of an original claim has been submitted with a reply or
`
`(ii) could have been presented in a prior filing indicates that a new issue has been
`
`
`
`IPR2014-00416
`
`US. Patent No. 8,217,612
`
`improperly raised in the reply. See Office Patent Trial Practice Guide, 77 Fed.
`
`Reg. 157, 48767 (Aug. 14, 2012). “[A] reply that raises a new issue or belatedly
`
`presents evidence will not be considered and may be returned” as “[t]he Board will
`
`not attempt to sort proper from improper portions of the reply.” Id. Petitioner’s
`
`use of its exhibits 1062 and 1063, as well as the noted redirect testimony by
`
`Petitioner of its alleged expert MacCarley regarding same, are therefore improper.
`
`Petitioner’s introduction of the deSilva textbook exhibits and associated
`
`redirect testimony were not included in its initial Petition brief nor in the exhibits
`
`associated therewith. Nevertheless, Petitioner realized that its primafacie case had
`
`certain weaknesses Which it attempted to backfill during Petitioner’s redirect
`
`deposition questions of MacCarley.
`
`It is noteworthy that MacCarley’s deposition
`
`
`was conducted before Patent Owner filed its Response brief and associated
`
`exhibits,
`
`therefore Petitioner’s premature use of these exhibits and deposition
`
`testimony were not responsive to Patent Owner’s Response.
`
`
`
`IPR2014-00416
`
`US. Patent No. 8,217,612
`
`In conclusion,
`
`the Board should exclude Petitioner’s Exhibits 1062 and
`
`1063,
`
`the noted redirect examination pages from the MacCarley deposition
`
`transcript of Patent Owner’s Exhibit 2004, and any reliance by Petitioner on same.
`
`7;,sz
`
`
`
`
`SS, DICKEY & PIERCE, P.L.C.
`Monte L. Falcoff (Reg. No. 37,617)
`Michael R. Nye (Reg. No. 62,126)
`5445 Corporate Drive, Ste. 200
`Troy, MI 48098
`(248) 641-1600
`(248) 641-0270 Fax
`mlfalcoff@hdp.com
`mnye@hdp.com
`
`Attorneys for Patent Owner
`
`
`
`Certificate of Service Under 37 C.F.R. § 426(c)(4)
`
`IPR2014-00416
`
`US. Patent No. 8,217,612
`
`A copy of this Patent Owner’s Motion to Exclude Petitioner’s Evidence
`
`Under 37 C.F.R. §42.64 has been served to counsel for the Petitioner at the
`
`following electronic mail addresses, pursuant to consent of Petitioner, on this 26th
`
`day of March, 2015.
`
`Craig D. Leavell (Reg. No. 48505)
`Craig.leavell@kirkland.com
`Elizabeth A. Cutri
`
`Luke L. Dauchot, P.C. (pro hac vice)
`Luke.dauchot@kirkland.com
`KIRKLAND & ELLIS LLP
`
`Elizabeth.cutri@kirkland.corn
`KIRKLAND & ELLIS LLP
`300 North LaSalle Street
`Chicago, Illinois 60654
`Telephone: (312) 862-2000
`Fax: (312) 862-2200
`
`333 South Hope Street
`Los Angeles, California 90071
`Telephone: (213) 680-8400
`Fax: (213) 680-8500
`
`Attorneys ofRecordfor Brose North America, Inc.
`
`
`
`SS, DI KEY & PIERCE, P.L.C.
`onte L. Falcoff (Reg. No. 37,617)
`Michael R. Nye (Reg. No. 62,126)
`5445 Corporate Drive, Ste. 200
`Troy, MI 48098
`(248) 641-1600
`(248) 641-0270 Fax
`mlfalcoff@hdp.com
`mnye@hdp.com
`
`Attorneys for Patent Owner
`
`
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