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`
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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. IPR2014-00417
`Patent No. 7,579,802
`
`
`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. First, the
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`request to exclude “non-prior art dictionary definitions” is contrary to Federal
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`Circuit precedent which clearly permits reliance on such dictionary definitions in
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`the context of claim construction. Second, the request to exclude a textbook that
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`Petitioners’ expert discussed during his deposition is nonsensical and lacks support
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`in the law. All of UUSI’s requests to exclude evidence are without merit.
`
`
`
`
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`
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`A. The Dictionary Definitions, Related Paragraphs Of Dr.
`MacCarley’s Reply Declaration, And Related Arguments
`Are Relevant, Proper, And Should Not Be Excluded
`
`UUSI’s Motion requests that the Board exclude four dictionary definitions,
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`one of which (Ex. 1055) provides a definition for the term “sensor,” and three of
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`which (Exs. 1054, 1057, 1058) provide definitions for the term “logic.” Mot. at 2.
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`UUSI also seeks to exclude unidentified “portions” of the Reply Declaration of
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`Petitioners’ expert Dr. Art MacCarley (Ex. 1063) that “rely[] on the dictionary
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`definitions.” Id. at 2, 4–5. UUSI also seeks to exclude Petitioners’ arguments
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`relying on portions of the Reply Declaration of Dr. MacCarley that rely on the
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`dictionary definitions. Id. at 2.
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`(i)
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`The dictionary definitions corroborate Dr. MacCarley’s
`understanding of disputed claim terms “sensor” and “logic.”
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`The term “sensor” appears in, inter alia, claim 1 of the patent at issue in this
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`IPR, U.S. Patent No. 7,579,802 (the “’802 patent”). Ex. 1005 at claim 1. The
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`meaning of the term “sensor” in claim 1 is disputed because UUSI argued in its
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`Response that “[t]he correct construction of [the “sensor”] limitation of Claim 1 is
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`that…the sensor…encompasses a current amplitude sensor but excludes a mere
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`speed or position sensor.” Resp. (Paper 31) at 10–11. Petitioners’ expert Dr.
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`MacCarley opines that “[t]he plain meaning of the phrase ‘a sensor’ includes a
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`motor current commutation pulse sensor,” noting definitions of “sensor” in
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`technical dictionaries from 1991 and 1995. Ex. 1063 at ¶ 36.
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`
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`2
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`
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`
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`The term “logic” appears in claim 14 of the ’802 patent. Ex. 1005 at claim
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`14. This term is disputed because UUSI argued in its Response that “[t]he correct
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`construction of” claim 14’s language “decision making logic for… monitoring…
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`calculating… comparing… stopping” “is as means-plus-function under 35 U.S.C.
`
`§ 112(6).” Resp. (Paper 31) at 48. In particular, UUSI contends that “‘[d]ecision
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`making logic’…is not and was not a known structure to those of skill in the art
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`prior to the priority date of the ‘802 Patent.” Id. at 49. Petitioners’ expert Dr.
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`MacCarley opines that, to the contrary, “a controller with decision making logic
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`was common parlance and would have indicated structure to a person of ordinary
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`skill in the art as of 1992,” and
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`[t]he structure it would have indicated would have included (i) a
`controller in the form of a microprocessor, microcontroller, or
`application specific integrated circuit (ASIC) running decision-
`making software containing code lines for running the algorithms
`particularly recited in claim 14, or (ii) dedicated control logic
`hardware, such as, for example a field programmable gate array
`(FPGA), resulting in the recited steps [of the claim] being performed.
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`Ex. 1063 at ¶ 115. In support of these opinions, Dr. MacCarley cites dictionary
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`definitions of “logic,” including those with which UUSI takes issue, which
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`reference, for example, “switching circuits and associated hardware” and
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`“electronic circuits.” See id. at ¶ 116.
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`
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`3
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`
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`
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`(ii) Federal Circuit precedent permits reliance on dictionaries
`published after the asserted priority date.
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`UUSI argues that these dictionaries, related testimony, and related
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`arguments should be excluded because the dictionaries were published in 1994 and
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`1995, shortly after the earliest claimed priority date (1992) of the ’802 patent.
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`Mot. at 4. UUSI’s motion ignores binding Federal Circuit precedent that
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`“contemporaneous” dictionaries considered during the claim construction analysis
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`are not limited to those published before the patent’s priority date. See, e.g.,
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`Gemstar-TV Guide Int’l., Inc. v. Int’l Trade Comm’n, 383 F.3d 1352, 1371–1372
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`(Fed. Cir. 2004) (considering “contemporaneous technical dictionaries” from 1986
`
`and 1984 for patent with 1985 priority date, as well as a general use dictionary
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`from 1993); Int’l Rectifier Corp. v. IXYS Corp., 361 F.3d 1363, 1370-71 (Fed. Cir.
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`2004) (considering as “dictionary definitions contemporaneous with the patents at
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`issue” definitions from 1966 and 1993, for patents with 1978 and 1979 priority
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`dates).
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`The “contemporaneous” standard is not an exacting one. In construing
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`claim terms, the Federal Circuit has considered dictionaries dated years after the
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`priority date of the patent at issue, and has even acknowledged the relevance of
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`dictionaries from the time of issuance of the patent. Inverness Med. Switzerland
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`GmbH v. Princeton Biomeditech Corp., 309 F.3d 1365, 1370 & n.1 (Fed. Cir.
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`2002) (“We may look, therefore, to the dictionary definition of the claim term
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`
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`4
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`
`
`
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`‘mobility’ as of the date the patents issued. Our decisions have not always been
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`consistent as to whether the pertinent date is the filing date of the application or the
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`issue date of the patent.”); Texas Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d
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`1193, 1202-03 (Fed. Cir. 2002) (“Dictionaries…publicly available at the time the
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`patent is issued, are objective resources that serve as reliable sources of
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`information on the established meanings that would have been attributed to the
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`terms of the claims by those of skill in the art.”). Here, the ’802 patent did not
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`issue until 2009, and the dictionaries at issue were published more than a decade
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`earlier.
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`UUSI’s exact argument has also been rejected by the Board. See Iron Dome
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`LLC v. Chinook Licensing DE LLC, IPR2014-00674, Paper 12 at 2–3 (Nov. 4,
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`2014) (finding that dictionary did not have to antedate the patent’s filing date to be
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`pertinent to Board’s analysis, citing Inverness and Texas Digital). Notably, UUSI
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`makes no argument that the definitions of “sensor” or “logic” changed between
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`1992 and 1994, or 1995.
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`Even if “contemporaneous” were to be improperly interpreted—so as to
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`limit “relevant” dictionaries to those published before the date of invention of the
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`challenged claims—there has been no finding that the challenged claims were
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`invented in 1992, as opposed to 1994, 1996, or 2000. The ’802 patent claims
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`priority as a continuation-in-part to applications filed in 2000 and 1996. Ex. 1005
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`
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`5
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`
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`
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`at cover page. Also, the claim to priority to the 1992 application is as a
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`continuation-in-part, with an intervening application filed in 1994. Id. The
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`invention date of the challenged claims need not be determined for purposes of
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`unpatentability, because each of the prior art references pre-date the earliest, 1992
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`filing date. As explained above, the dictionary definitions are relevant and
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`admissible regardless of the invention date. But UUSI’s Motion assumes without
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`establishing that the challenged claims were invented in 1992 and should be denied
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`for this additional reason.
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`(iii) UUSI’s requests to exclude portions of Dr. MacCarley’s Reply
`Declaration and Petitioner’s Reply are overbroad and without
`merit.
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`Because the dictionary definitions are relevant and should not be excluded,
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`the Board need not consider whether to exclude, and should not exclude, any
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`portions of Dr. MacCarley’s Reply Declaration (Ex. 1063). However, UUSI’s
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`request to exclude “portions” of Dr. MacCarley’s Reply Declaration should be
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`denied for the additional reason that UUSI is incorrect that “the Claim 1 and Claim
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`14 opinions in [Dr.] MacCarley’s Reply Declaration so heavily rely upon these
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`irrelevant dictionary definitions,” and thus “those entire portions of Exhibit 1063
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`are equally irrelevant (and may even fail under the Daubert factors and FRE Rule
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`702).” Mot. at 4–5 (emphasis added). To the contrary, the dictionary definitions
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`are cited in but two paragraphs of Dr. MacCarley’s Reply Declaration, and, as
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`6
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`
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`UUSI itself acknowledges, are used merely “to support” certain of Dr.
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`MacCarley’s opinions regarding Claims 1 and 14 of the ’802 patent. Id. at 4. Dr.
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`MacCarley does not rely “heavily” upon the dictionary definitions. The vast
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`majority of his discussion of the proper constructions of claims 1 and 14 is devoted
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`to the wealth of intrinsic evidence supporting his opinions. See Ex. 1063 at ¶¶ 26–
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`53 (discussing, with respect to claim 1, the plain meaning of the claim language,
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`other claims in the ’802 patent, the specification and the prosecution history); id. at
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`¶¶ 110–127 (discussing, with respect to claim 14, the plain meaning of the claim
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`language, the specification and the prosecution history).
`
`UUSI’s Motion also is deficient in that it fails to identify with sufficient
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`specificity the portions of Dr. MacCarley’s Reply Declaration it contends should
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`be excluded. See, e.g., EMC Corp. v. PersonalWeb Techs., LLC, et al., IPR2013-
`
`00087, Paper 69 at 45–46 (May 15, 2014) (denying motion to exclude, explaining
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`“[t]he burden should not be placed on the Board to sort through the entirety of each
`
`exhibit and determine which portion of the exhibit PersonalWeb believes to be
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`hearsay. Rather, PersonalWeb should have identified, in its motion, the specific
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`portions of the evidence…”); Corning Inc. v. DMS IP Assets B.V., IPR2013-00050,
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`Paper 77 at 52 (May 1, 2014) (limiting patent owner’s evidentiary challenge where
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`it did not identify objectionable paragraphs with “unambiguous specificity”).
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`7
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`
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`For these reasons, and because the dictionary definitions are relevant under
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`Federal Circuit precedent, no portions of Dr. MacCarley’s declaration should be
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`excluded. For the same reasons, no portions of Petitioners’ Reply brief or
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`arguments relating in any way to the dictionary definitions should be excluded.
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`B. UUSI’s Requests To Exclude The deSilva Textbook Excerpts And
`Related Deposition Testimony And Arguments Should Be Denied
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`UUSI’s Motion further asks the Board to exclude an excerpt of a textbook
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`by Clarence deSilva entitled “Control Sensors and Actuators” (Ex. 1065), a
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`complete color copy of the same textbook (Ex. 1066), and pages 185–193 and lines
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`15–18 of page 198 of the transcript of the deposition of Dr. MacCarley (Ex. 2004)
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`during which the deSilva textbook was discussed. Mot. at 2. UUSI also seeks to
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`exclude “any reliance by Petitioner on these pages of this deposition testimony
`
`and/or deSilva
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`textbook
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`in Petitioner’s expert Declarations, briefs and
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`argumentation.” Id.
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`(i)
`
`The deSilva textbook was raised in connection with an
`argument made only in UUSI’s Preliminary Response then
`abandoned.
`
`In its Preliminary Response regarding claim 7, UUSI argued that prior art
`
`reference “Kinzl is silent regarding a ‘stored program’ that ‘determines motor
`
`speed of movement from an output signal from the movement sensor,” because the
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`microprocessor in Kinzl “relates to a time measurement, where the determination
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`of a speed is not disclosed and not necessary.” Prelim. Resp. (Paper 10) at 15–17.
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`
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`8
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`
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`Later at his deposition, Petitioner’s expert Dr. MacCarley identified the
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`deSilva textbook as potentially pertinent to his opinions after having reviewed
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`UUSI’s Preliminary Response. Ex. 2004 at 185:3–186:4. Counsel for Petitioners
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`asked Dr. MacCarley about the textbook and he explained that it discusses how a
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`time measurement can equate to, and render obvious the concept of, determining
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`motor speed of movement. See Ex. 2004 at 188:21–191:4.
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`After Dr. MacCarley’s deposition, UUSI abandoned the argument that
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`“Kinzl is silent regarding a ‘stored program’” (Paper 10 at 15) and instead focused
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`on a completely different argument.1 Indeed, UUSI’s expert Dr. Mark Ehsani did
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`not raise this “stored program” argument or dispute Dr. MacCarley’s view of
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`deSilva. Ex. 2001 (Dr. Ehsani Decl.) ¶¶ 45–49, 69–81. Nor did this argument
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`appear in UUSI’s Response. See Resp. (Paper 31) at 43–44. In reliance upon this
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`abandonment, Petitioners did not cite either of the deSilva exhibits (Exs. 1065 and
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`1066), or any portion of Dr. MacCarley’s deposition transcript (Ex. 2004), in their
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`Reply. Likewise, Dr. MacCarley does not cite these exhibits in his Reply
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`Declaration. Rather, Petitioners filed the deSilva exhibits with their Reply because
`
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`1 Specifically, UUSI’s sole argument became that “Kinzl does not perform
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`detection based on the obstacle detect threshold along the entire travel path of a
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`window.” Resp. (Paper 31) at 43–44.
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`
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`9
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`
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`
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`as of that time, UUSI had not filed the complete record of Dr. MacCarley’s
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`deposition.2
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`(ii) 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, UUSI’s argument makes no sense, and finds no support in the
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`law. On one hand, UUSI complains that use of the deSilva textbook during Dr.
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`MacCarley’s deposition was “premature” and “not responsive to Patent Owner’s
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`Response.” Mot. at 5. On the other hand, UUSI apparently argues that filing
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`2 37 C.F.R. § 42.53(f)(7) provides that deposition “testimony must be filed by
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`proponent as an exhibit.”
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`
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`10
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`
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`Exhibits 1065 and 1066 at the time Petitioners filed their Reply was too late. As
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`noted above, Petitioners did not cite Exhibits 1065, 1066, or 2004 in their Reply,
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`nor did Dr. MacCarley cite them in his Reply Declaration, because UUSI
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`abandoned the argument that made the deSilva textbook pertinent in the first
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`place.3 UUSI now attempts to exclude evidence that narrowed the issues between
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`the parties. But UUSI neither cites nor has any valid basis for seeking to exclude
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`exhibits merely because they were used at Dr. MacCarley’s deposition. UUSI’s
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`requests to exclude Exhibits 1065 and 1066, the identified portions of Exhibit
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`2004, and “any reliance by Petitioner on these pages of this deposition testimony
`
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`3 To the extent that UUSI attempts to revive the argument at a later stage, such
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`efforts should be precluded because it was not advanced in the Response. The
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`deSilva book was disclosed to UUSI at the earliest possible stage, well in
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`advance of UUSI’s Response and the declaration of its expert. Despite this,
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`UUSI did not raise the argument again or dispute Dr. MacCarley’s view of
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`deSilva in either its Response or expert’s declaration. Thus, Petitioners did not
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`rely on, and do not intend to rely on, the deSilva textbook (Exs. 1065–66) or the
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`MacCarley deposition transcript (Ex. 2004), but reserve the right to do so in the
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`event that UUSI is permitted to revive the abandoned argument.
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`
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`11
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`
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`and/or deSilva textbook” should be denied as failing to meet any applicable
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`standard for exclusion, or as moot.
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`Date: April 9, 2015
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`Respectfully submitted,
`/s/ Craig D. Leavell
`
`Craig Leavell (Reg. No. 48505)
`Luke L. Dauchot, P.C. (pro hac vice)
`
`12
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`
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`CERTIFICATE OF SERVICE
`
`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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`13
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