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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEALS BOARD
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`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
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`PETITIONERS’ MOTION TO SUBMIT REPLACEMENT EXHIBITS
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`Motion to Submit Replacement Exhibits
`Case No. IPR2014-00416
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`Pursuant to 37 C.F.R § 42.5, Petitioners Brose North America, Inc. and
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`Brose Fahrzeugteile GmbH & Co. KG, Hallstadt (collectively, “Brose”) hereby
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`move to replace certain exhibits that were filed with Brose’s Petition for Inter
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`Partes Review via the Patent Review Processing System. Specifically, Brose seeks
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`leave to replace BNA/Brose Exhibits 1005, 1007, 1008 and 1010 with corrected
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`versions. Patent Owner UUSI, LLC (“UUSI”) has indicated that it does not oppose
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`this motion. Authorization to file the motion was granted on October 7, 2014. See
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`Order Conduct of Proceeding, Paper 20 (Oct. 7, 2014) at 2.
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`The exhibits at issue are publicly available U.S. Patents:
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`BNA/Brose Exhibit 1005
`BNA/Brose Exhibit 1007
`BNA/Brose Exhibit 1008
`BNA/Brose Exhibit 1010
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`U.S. Pat. No. 8,217,612
`U.S. Pat. No. 4,870,333
`U.S. Pat. No. 4,468,596
`U.S. Pat. No. 6,064,165
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`The originally-filed exhibits were retrieved using Google Patent Search. It
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`is Brose’s understanding that this resource incorrectly rendered certain Figures
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`within the patents. Specifically, certain lines, portions of lines and other aspects of
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`2
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`
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`Motion to Submit Replacement Exhibits
`Case No. IPR2014-00416
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`the Figures were omitted when the patents were printed. The portions of the
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`exhibits that are defective are as follows1:
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`BNA/Brose Exhibit 1005 U.S. Pat. No.
`8,217,612
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`BNA/Brose Exhibit 1007 U.S. Pat. No.
`4,870,333
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`BNA/Brose Exhibit 1008 U.S. Pat. No.
`4,468,596
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`BNA/Brose Exhibit 1010 U.S. Pat. No.
`6,064,165
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`Incomplete images of the
`Figure found on page 1, as
`well as Figures 1, 2A, 2B,
`2C, 5, 6, 7 and 8.
`Incomplete images of the
`Figure found on page 1, as
`well as Figures 1, 2, 3, 5, 6,
`7, 8, 9, 11, 12 and 13.
`Incomplete images of the
`Figure found on page 1, as
`well as Figures 1 and 2.
`Incomplete images of
`Figures 1A–1C, 2–5, 8–17,
`and 19–22.
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`The defects were first discovered the afternoon of September 25, 2014,
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`during preparation for the September 26, 2014 deposition of Brose’s declarant, Dr.
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`MacCarley. Brose immediately took steps to address the issue, leading to this
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`motion.
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`Complete versions of patents that are Exhibits 1005, 1007, 1008 and 1010
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`(i.e., versions with complete Figures) were available at the deposition of Dr.
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`1 Side-by-side comparisons of examples of incomplete Figures in the originally-
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`filed exhibits and the corresponding complete Figures in Brose’s proposed
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`replacement exhibits are attached hereto as Appendix A.
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`3
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`Motion to Submit Replacement Exhibits
`Case No. IPR2014-00416
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`MacCarley, and complete versions of the patents that are Exhibits 1005, 1007 and
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`1008 were marked as exhibits during the deposition. Complete versions of all
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`three patents also were relied upon by Dr. MacCarley when conducting his work
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`and preparing his declaration.
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`Brose seeks leave to correct the defects in the exhibits by replacing the
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`exhibits with versions that contain complete Figures. Other than the portions of
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`the exhibits identified above, the proposed replacement exhibits do not and will not
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`differ in any way from the corresponding exhibits originally filed.
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`For the foregoing reasons, the Board should permit Brose to submit
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`replacement exhibits for BNA/Brose Exhibits 1005, 1007, 1008 and 1010, and
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`order the originally-filed exhibits expunged. To avoid confusion and preserve
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`existing citations in the record, Brose proposes filing the replacement exhibits with
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`the same exhibit numbers as originally used, titling them, for example “BNA/Brose
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`Exhibit 1005 (corrected),” “BNA/Brose Exhibit 1007 (corrected),” etc.
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`4
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`Motion to Submit Replacement Exhibits
`Case No. IPR2014-00416
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`Respectfully submitted,
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`/s/ Craig Leavell
`Craig Leavell (Reg. No. 48505)
`Alyse Wu (Reg. No. 68926)
`Luke L. Dauchot
`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
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`Attorneys For Petitioners
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`5
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`Date: October 13, 2014
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`Motion to Submit Replacement Exhibits
`Case No. IPR2014-00416
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`APPENDIX A
`Comparisons of exemplary incomplete portions of BNA/Brose Exhibit 1005
`(U.S. 8,217,612)
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`BNA/Brose Exhibit 1005
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`Correct Image
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`6
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`Motion to Submit Replacement Exhibits
`Case No. IPR2014-00416
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`BNA/Brose Exhibit 1005
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`Correct Image
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`7
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`Motion to Submit Replacement Exhibits
`Case No. IPR2014-00416
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`Comparisons of exemplary incomplete portions of BNA/Brose Exhibit 1007
`(U.S. 4,870,333)
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`Brose/BNA Exhibit 1007
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`Correct Image
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`8
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`Motion to Submit Replacement Exhibits
`Case No. IPR2014-00416
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`Brose/BNA Exhibit 1007
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`Correct Image
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`9
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`Motion to Submit Replacement Exhibits
`Case No. IPR2014-00416
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`Comparisons of exemplary incomplete portions of BNA/Brose Exhibit 1008
`(U.S. 4,468,596)
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`Brose/BNA Exhibit 1008
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`Correct Image
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`10
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`Brose/BNA Exhibit 1008
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`Correct Image
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`Motion to Submit Replacement Exhibits
`Case No. IPR2014-00416
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`11
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`Motion to Submit Replacement Exhibits
`Case No. IPR2014-00416
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`Comparisons of exemplary incomplete portions of BNA/Brose Exhibit 1010
`(U.S. 6,064,165)
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`BNA/Brose Exhibit 1010
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`Correct Image
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`12
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`Motion to Submit Replacement Exhibits
`Case No. IPR2014-00416
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies
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`that a copy of
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`the
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`foregoing
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`PETITIONERS’ MOTION TO SUBMIT REPLACEMENT EXHIBITS was
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`served on October 13, 2014 via electronic 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
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`Attorneys for Patent Owner UUSI, LLC
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`13
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`Respectfully submitted,
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`/s/ Craig Leavell
`Craig Leavell (Reg. No. 48505)
`Alyse Wu (Reg. No. 68926)
`Luke L. Dauchot
`Attorneys For Petitioners
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