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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: IPR2014-00417
`Patent No. 7,579,802
`
`
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`PETITIONERS’ EXHIBIT LIST
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`Pursuant to the Order regarding Conduct of Proceeding under 37 C.F.R. §
`
`42.5 (Paper 18) 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
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`exhibits.
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`1
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`Exhibit
`No.
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`1001
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`1002
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`1003
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`Description
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`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. 7,579,802
`
`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. 7,579,802
`
`Declaration of Alyse Wu
`
`U.S. Pat. No. 7,579,802 to Boisvert, et al. (“the ’802 Patent”)
`USPTO Assignments on the Web for the ’802 Patent, available at
`http://assignments.uspto.gov/assignments/q?db=pat&qt=pat&reel=&fra
`me=&pat=7579802&pub=&asnr=&asnri=&asne=&asnei=&asns=
`(accessed on 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”)
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`
`
`UUSI’s United States Patent No. 6,064,165
`1010
`1011 Excerpts from U.S. Pat. Appl. No. 10/765,487 (“the ’487 Application”):
`Specification, claims, and drawings
`1012 Excerpt from the file history of the ’487 Application: January 27, 2004
`Preliminary Amendment
`1013 Excerpt from the file history of the ’487 Application: April 6, 2006
`Office Action
`1014 Excerpt from the file history of the ’487 Application: May 31, 2006
`Submission by Applicant
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`2
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`Description
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`Exhibit
`No.
`1015 Excerpt from the file history of the ’487 Application: October 16, 2006
`Office Action
`1016 Excerpt from the file history of the ’487 Application: December 13,
`2006 Response by Applicant
`1017 Excerpt from the file history of the ’487 Application: April 10, 2007
`Office Action
`1018 Excerpt from the file history of the ’487 Application: May 30, 2007
`Examiner Summary of May 30, 2007 Interview
`1019 Excerpt from the file history of the ’487 Application: June 20, 2007
`Response by Applicant
`1020 Excerpt from the file history of the ’487 Application: October 31, 2007
`Office Action
`1021 Excerpt from the file history of the ’487 Application: January 10, 2008
`Amendment by Applicant
`1022 Excerpt from the file history of the ’487 Application: May 30, 2008
`Office Action
`1023 Excerpt from the file history of the ’487 Application: June 5, 2008
`Request for Continued Examination (RCE) and Amendment
`1024 Excerpt from the file history of the ’487 Application: July 23, 2008
`Office Action
`1025 Excerpt from the file history of the ’487 Application: August 19, 2008
`Response by Applicant
`1026 Excerpt from the file history of the ’487 Application: October 24, 2008
`Examiner Summary of September 25, 2008 Interview
`1027 Excerpt from the file history of the ’487 Application: November 24,
`2008 Response to Examiner Summary of September 25, 2008 Interview
`1028 Excerpt from the file history of the ’487 Application: January 5, 2009
`Office Action
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`3
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`Description
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`Exhibit
`No.
`1029 Excerpt from the file history of the ’487 Application: January 20, 2009
`Rule 116 Amendment and Remarks by Applicant
`1030 Excerpt from the file history of the ’487 Application: February 24, 2009
`Notice of Allowance
`1031 UUSI’s U.S. Pat. No. 5,334,876 (the 1992 specification to which
`applicant claimed priority during prosecution of the ’802 Patent)
`1032 Excerpts from the file history of UUSI’s U.S. Patent No. 8,217,612:
`January 28, 2009 Preliminary Amendment, February 10, 2009 Second
`Preliminary Amendment, and November 24, 2010 Office Action
`Excerpts 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 E thereto
`
`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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`Diagram showing claimed chain of priority of the ’802 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
`
`
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`U.S. Pat. No. 3,581,174
`1041
`1042 Affidavit of Mr. Luke Dauchot in Support of Motion for Pro Hac Vice
`Admission
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`4
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`Exhibit
`No.
`1043
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`Description
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`Transcript of Telephonic Status Conference held on September 4, 2014
`
`1044 U.S. Pat. No. 6,404,158
`1045 U.S. Patent Appl. Publication No. 2002/0121872
`1046 U.S. Patent Appl. Publication No. 2002/0101210
`1047 U.S. Pat. No. 5,982,124 (Wang)
`
`1048 U.S. Pat. No. 4,831,509 (Jones)
`1049 U.S. Pat. No. 4,608,637 (Okuyama)
`
`Transcript of Deposition of Dr. Mark Ehsani, held on December 16-17,
`2014
`Exhibit 10 to the Deposition of Dr. Mark Ehsani, held on December 16-
`17, 2014: Witness’s Hand Drawn Illustration
`
`1050
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`1051
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`1052
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`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
`
`1053 Excerpt of Definitions from Microsoft Press Computer Dictionary (1991)
`1054 Excerpt of Definitions from Microsoft Press Computer Dictionary (1994)
`Excerpt of Definitions from A Glossary of Computing Terms, Eighth Ed.
`(1995)
`Excerpt of Definitions from The Computer Glossary, Fourth Edition
`(1989)
`
`1056
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`1055
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`5
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`Exhibit
`No.
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`1057
`
`Description
`
`Excerpt of Definitions from The Illustrated Dictionary of Electronics,
`Sixth Edition (1994)
`
`1058
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`1059
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` Excerpt of Definitions from McGraw-Hill Electronics Dictionary, Fifth
`Edition (1994)
`Excerpts from Exhibit B to UUSI’s March 30, 2014 Disclosure of
`Asserted Claims and Infringement Contentions as to Brose North
`America, Inc. (Redacted, Public Version)
`1060 U.S. Pat. No. 7,548,037 (Boisvert)
`1061 U.S. Pat. No. 5,952,801 (Boisvert)
`1062 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. Patent No. 7,579,802 and Attachment A
`thereto
`Exhibit 2 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.
`8,217,612 (Case No. IPR2014-00416)
`
`1063
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`1064
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`1065
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`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)
`
`1066
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`Exhibit 9 to the Deposition of Dr. C. Arthur MacCarley, held on
`September 26, 2014: C. de Silva’s Control Sensors and Actuators (1989)
`
`1067
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`Exhibit 2 to the Deposition of Dr. Mark Ehsani, held on December 16-17,
`2014: Declaration of Dr. Mark Ehsani in Support of Patent Owner’s
`Response regarding U.S. Pat. No. 8,217,612 (Case No. IPR2014-00416)
`
`
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`6
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`
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`Description
`
`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)
`
`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
`No.
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`1068
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`1069
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`1070
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`Date: February 5, 2015
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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)
`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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`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
`
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`4
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