`
`
`
`
`
`
`
`
`
`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
`
`
`
`PETITIONERS’ EXHIBIT LIST
`
`Pursuant to 37 C.F.R. § 42.63, Petitioners Brose North America, Inc. and
`
`Brose Fahrzeugteile GmbH & Co. (“Brose”) hereby submits a current listing of its
`
`exhibits.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Exhibit
`No.
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`
`
`
`Description
`
` Petitioners’ Exhibit List
` IPR2014-00417
`
`
`
`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”)
`
`UUSI’s United States Patent No. 6,064,165
`Excerpts from U.S. Pat. Appl. No. 10/765,487 (“the ’487 Application”):
`Specification, claims, and drawings
`
`Excerpt from the file history of the ’487 Application: January 27, 2004
`Preliminary Amendment
`
`Excerpt from the file history of the ’487 Application: April 6, 2006
`Office Action
`Excerpt from the file history of the ’487 Application: May 31, 2006
`Submission by Applicant
`
`2
`
`
`
`Exhibit
`No.
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Description
`
` Petitioners’ Exhibit List
` IPR2014-00417
`
`
`
`Excerpt from the file history of the ’487 Application: October 16, 2006
`Office Action
`Excerpt from the file history of the ’487 Application: December 13,
`2006 Response by Applicant
`Excerpt from the file history of the ’487 Application: April 10, 2007
`Office Action
`Excerpt from the file history of the ’487 Application: May 30, 2007
`Examiner Summary of May 30, 2007 Interview
`Excerpt from the file history of the ’487 Application: June 20, 2007
`Response by Applicant
`Excerpt from the file history of the ’487 Application: October 31, 2007
`Office Action
`Excerpt from the file history of the ’487 Application: January 10, 2008
`Amendment by Applicant
`Excerpt from the file history of the ’487 Application: May 30, 2008
`Office Action
`Excerpt from the file history of the ’487 Application: June 5, 2008
`Request for Continued Examination (RCE) and Amendment
`Excerpt from the file history of the ’487 Application: July 23, 2008
`Office Action
`Excerpt from the file history of the ’487 Application: August 19, 2008
`Response by Applicant
`Excerpt from the file history of the ’487 Application: October 24, 2008
`Examiner Summary of September 25, 2008 Interview
`
`Excerpt from the file history of the ’487 Application: November 24,
`2008 Response to Examiner Summary of September 25, 2008 Interview
`Excerpt from the file history of the ’487 Application: January 5, 2009
`Office Action
`
`3
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Description
`
` Petitioners’ Exhibit List
` IPR2014-00417
`
`
`
`Exhibit
`No.
`1029
`
`Excerpt from the file history of the ’487 Application: January 20, 2009
`Rule 116 Amendment and Remarks by Applicant
`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)
`
`1030
`
`1032
`
`1033
`
`1034
`
`1035
`
`1036
`
`1037
`
`1038
`
`1039
`
`1040
`
`
`
`
`
`
`
`
`
`
`
`
`
`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
`
`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
`
`
`
`U.S. Pat. No. 3,581,174
`1041
`1042 Affidavit of Mr. Luke Dauchot in Support of Motion for Pro Hac Vice
`Admission
`
`4
`
`
`
`
`
`
`
`Exhibit
`No.
`1043
`
`
`
`
`Description
`
` Petitioners’ Exhibit List
` IPR2014-00417
`
`
`
`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
`
`
`
`Date: September 24, 2014
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/s/ Craig D. Leavell
`Craig D. Leavell (Reg. No. 48505)
`Alyse Wu (Reg. No. 68926)
`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
`Attorneys For Petitioners
`
`5
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
` Petitioners’ Exhibit List
` IPR2014-00417
`
`
`
`The undersigned hereby certifies that a copy of the foregoing Petitioners’
`
`Exhibit List was served on September 24, 2014 via FedEx delivery directed to the
`
`attorney of record for the patent at the following address:
`
`TAROLLI, SUNDHEIM, COVELL & TUMMINO L.L.P.
`
`1300 East Ninth Street, Suite 1700
`Cleveland, Ohio 44114
`
`A copy was also served via FedEx delivery on:
`
`George D. Moustakas
`Harness, Dickey & Pierce, P.L.C.
`5445 Corporate Drive, Suite 200
`Troy, MI 48098
`
`
`
` /s/ Craig D. Leavell
`Craig D. Leavell
`
`
`
`
`
`4
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
