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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEALS BOARD
`
`BROSE NORTH AMERICA, INC.
`and
`BROSE FAHRZEUGTEILE GMBH & CO. KG, HALLSTADT,
`Petitioners
`
`v.
`
`UUSI, LLC
`Patent Owner
`
`Case No. IPR2014-00416
`Patent No. 8,217,612
`
`
`OPPOSITION TO PATENT OWNER UUSI, LLC’S MOTION TO
`EXCLUDE PETITIONER’S EVIDENCE UNDER 37 C.F.R. § 42.64
`
`
`Patent Owner UUSI, LLC’s (“UUSI”) Motion to Exclude Petitioner’s
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`Evidence Under 37 C.F.R § 42.64 (the “Motion”) should be denied. The request to
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`exclude a textbook that Petitioners’ expert discussed during his deposition lacks
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`support in the law and is without merit.
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`UUSI’s Motion asks the Board to exclude an excerpt of a textbook by
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`Clarence deSilva entitled “Control Sensors and Actuators” (Ex. 1062), a complete
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`color copy of the same textbook (Ex. 1063), and pages 185–193 and lines 15–18 of
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`page 198 of the transcript of the deposition of Dr. MacCarley (Ex. 2004) during
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`
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`which the deSilva textbook was discussed. Mot. at 2. UUSI also seeks to exclude
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`“any reliance by Petitioner on these pages of this deposition testimony and/or
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`deSilva textbook in Petitioner’s expert Declarations, briefs and argumentation.”
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`Id.
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`A. The deSilva Textbook Was Submitted To Complete The Record
`Of Dr. MacCarley’s Deposition
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`As more fully explained in Petitioners’ Opposition to UUSI’s Motion To
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`Exclude Evidence in related proceeding IPR2014-00417, the deSilva book became
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`pertinent when Petitioners’ expert Dr. Art MacCarley raised it at his deposition,
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`which was conducted for purposes of both this proceeding and IPR2014-00417.
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`Ex. 2004 at 185:3–191:4. Dr. MacCarley pointed to the deSilva textbook to,
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`among other things, support his knowledge of the state of the art in 1989 and to
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`refute an argument made by UUSI in its Preliminary Response in the IPR2014-
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`00417 proceeding. Id. at 185:3–186:5, 188:21–191:4. After UUSI abandoned the
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`argument made in its Preliminary Response, Petitioners did not cite the deSilva
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`textbook (Exs. 1062 and 1063) or Dr. MacCarley’s deposition (Ex. 2004) in its
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`Reply. Nor was the textbook cited in Dr. MacCarley’s Reply Declaration. See Ex.
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`1053.
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`Petitioners filed copies of the textbook (Exs. 1062 and 1063) with their
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`Reply because, as of that time, UUSI had not filed the complete record of Dr.
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`2
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`MacCarley’s deposition. See 37 C.F.R. § 42.53(f)(7) (requiring that deposition
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`testimony “be filed by proponent as an exhibit”).
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`B. UUSI’s Argument That deSilva Raises A “New Issue” Is Not The
`Proper Subject Of A Motion To Exclude And UUSI States No
`Other Basis For Exclusion
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`UUSI contends that the deSilva textbook exhibits and related deposition
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`testimony from Dr. MacCarley are “improper” on the grounds that a “‘reply that
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`raises a new issue or belatedly presents evidence will not be considered and may
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`be returned.’” Mot. at 3. As an initial matter, this request is not a proper use of a
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`motion to exclude, as it is not grounded in any evidentiary rule or basis. “Motions
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`to exclude are for evidentiary objections previously made on the record,” and are
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`“not a proper vehicle for use by a party to raise the issue of a reply exceeding the
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`proper scope.” Honeywell Int’l Inc. v. Int’l Controls and Measurements Corp.,
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`IPR2014-00219, Paper 38 at 2 (Jan. 5, 2015) (expunging improper motion to
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`exclude) (emphasis added).
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`Additionally, Petitioners did not cite Exhibits 1062, 1063, or 2004 in their
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`Reply, nor did Dr. MacCarley cite them in his Reply Declaration. UUSI neither
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`cites nor has any valid basis for seeking to exclude exhibits merely because they
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`were used at Dr. MacCarley’s deposition and submitted to complete the record as
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`to his testimony. UUSI’s requests to exclude Exhibits 1062 and 1063, the
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`identified portions of Exhibit 2004, and “any reliance by Petitioner on these pages
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`3
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`
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`of this deposition testimony and/or deSilva textbook” should be denied as failing to
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`meet any applicable standard for exclusion, or as moot.
`
`
`Date: April 9, 2015
`
`
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`
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`
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`Respectfully submitted,
`/s/ Craig D. Leavell
`
`Craig Leavell (Reg. No. 48505)
`Luke L. Dauchot, P.C. (pro hac vice)
`
`4
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing OPPOSITION
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`TO PATENT OWNER UUSI, LLC’S MOTION TO EXCLUDE PETITIONER’S
`
`EVIDENCE UNDER 37 C.F.R. § 42.64 was served on April 9, 2015 via electronic
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`mail upon the following:
`
`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
`
`
`Respectfully submitted,
`/s/ Craig D. Leavell
`
`Craig Leavell (Reg. No. 48505)
`Luke L. Dauchot, P.C. (pro hac vice)
`
`Attorneys for Petitioners
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`5
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