IPR2014-00417
`
`US. Patent No. 7,579,802
`
`Filed on behalf of UUSI, LLC
`By: Monte L. Falcoff (mlfalcoff@,hdp_.com1
`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 IPR2014-00417
`
`Patent 7,579,802
`
`PATENT OWNER’S MOTION TO EXCLUDE PETITIONER’S EVIDENCE
`
`UNDER 37 C.F.R. §42.64
`
`
`
`US. Patent No. 7,579,802
`
`Filed on behalf of UUSI, LLC
`By: Monte L. Falcoff (mlfalcoff@,hdp_.com1
`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 IPR2014-00417
`
`Patent 7,579,802
`
`PATENT OWNER’S MOTION TO EXCLUDE PETITIONER’S EVIDENCE
`
`UNDER 37 C.F.R. §42.64
`
`
`
`IPR2014-00417
`
`US. Patent No. 7,579,802
`
`Pursuant to 37 C.F.R. §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 Nos. 1054, 1055, 1057, 1058, which are all
`
`dictionary definitions. Second, Patent Owner moves to exclude the associated
`
`Claim 1 and 14 portions of Petitioner’s Exhibit 1063, the Reply Declaration of
`
`Petitioner, relying on the dictionary definitions noted above, as well as any reliance
`
`by Petitioner on these portions of Exhibit 1063. Third, Patent Owner moves to
`
`exclude Petitioner’s Exhibit No. 1065, excerpts of textbook entitled “Control
`
`Sensors and Actuators” by Clarence W. deSilva. Fourth, Patent Owner moves to
`
`exclude Petitioner’s Exhibit No. 1066, which is a color and more complete copy of
`
`the same deSilva textbook. Fifth, 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.
`
`1.
`
`Prior Notice of Objections
`
`Patent Owner served its Objections to Petitioner’s Exhibits 1054, 1055,
`
`1057, 1058, 1065 and 1066, and the portions of Exhibit 1063 relying thereon, 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
`
`
`
`IPR2014—004 1 7
`
`US. Patent No. 7,579,802
`
`12—15, of the MacCarley deposition transcript (Patent Owner’s Exhibit 2004).
`
`These Objections are based on the dictionary definitions and associated portions of
`
`the MacCarley Reply Declaration being irrelevant, and 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.
`
`11.
`
`Legal Standards
`
`Under Federal Rules of Evidence, Rule 401, evidence is relevant if (i) it
`
`has any tendency to make a fact more or less probable than it would be with the
`
`evidence and (ii) the fact is of consequence in determining the action. The noted
`
`dictionary definition exhibits, and by relying thereupon,
`
`the Claim 1 and 14
`
`portions of MacCarley’s Reply Declaration fail to meet Rule 401.
`
`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
`
`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 1065 and 1066, as well as the noted redirect testimony by
`
`Petitioner of its alleged expert MacCarley regarding same, are therefore improper.
`
`
`
`IPR2014—004 1 7
`
`US. Patent No. 7,579,802
`
`III. Non-Prior Art Dictionary Definitions
`
`Petitioner’s Exhibit Nos. 1054, 1055, 1057 and 1058 are all dictionary
`
`definitions. These all were published in 1994 or 1995, and Without the publication
`
`months being known. But, the priority filing date for US. Patent No. 7,579,802
`
`(“’802 Patent”), which is the subject of the present IPR, is April 22, 1992. All of
`
`the claims in dispute are entitled to the 1992 priority date. These dictionaries were
`
`published well m the priority filing date. Therefore, these dictionaries are not
`
`prior art and do not inform us as to what a person of ordinary skill in the art would
`
`have known on or before April 22, 1992.
`
`Additionally, Petitioner’s alleged expert witness, C. Arthur MacCarley,
`
`heavily relied upon Petitioner’s Exhibits 1054, 1055, 1057 and 1058 in forming his
`
`opinions in his voluminous Reply Declaration of Petitioner’s Exhibit No. 1063.
`
`See Petitioner’s Exhibit 1063, paragraph nos. 36 and 116, by way of example but
`
`not limitation (Exhibit 1063, pages 20 and 83, respectively). These dictionary
`
`definitions are being used to support MacCarley’s opinions regarding Claims 1 and
`
`14 of the ‘802 patent.
`
`The dictionary definition Exhibits 1054, 1055, 1057 and 1058 are
`
`irrelevant under FRE Rule 401. Since the Claim 1 and Claim 14 opinions in
`
`MacCarley’s Reply Declaration so heavily rely upon these irrelevant dictionary
`
`
`
`definitions, those entire portions of Exhibit 1063 are equally irrelevant (and may
`
`IPR2014—00417
`
`US. Patent No. 7,579,802
`
`even fail under the Daubert factors and FRE Rule 702).
`
`IV.
`
`deSilva Book Exhibits
`
`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 primafacz’e 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 hem Patent Owner filed its Response brief and associated
`
`exhibits,
`
`therefore Petitioner’s premature use of these exhibits and deposition
`
`testimony were not responsive to Patth Owner’s Response.
`
`V.
`
`Conclusion
`
`The Board should exclude Petitioner’s Exhibits 1054, 1055, 1057, 1058
`
`and all sections of MacCarley’s Reply Declaration of Exhibit 1063 pertaining to
`
`Claims 1 and 14, and any reliance by Petitioner on same. Furthermore, the Board
`
`
`
`IPR2014-00417
`
`US. Patent No. 7,579,802
`
`should exclude Petitioner’s Exhibits 1065 and 1066, the noted redirect examination
`
`pages from the MacCarley deposition transcript of Patent Owner’s Exhibit 2004,
`
`and any reliance by Petitioner on same.
`
`
`
`
`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—00417
`
`US Patent No. 7,579,802
`
`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.com
`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, DICKEY & 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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