`Tel: 571-272-7822
`
`Paper 29
`Entered: October 16, 2014
`
`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 IPR2014-00416
`Patent 8,217,612
`
`Case IPR2014-00417
`Patent 7,579,8021
`
`____________
`
`
`
`
`Before GLENN J. PERRY, HYUN J. JUNG, and GEORGE R. HOSKINS,
`Administrative Patent Judges.
`
`
`PERRY, Administrative Patent Judge.
`
`
`
`DECISION ON MOTION
`Substitutes for Defective Exhibits
`37 C.F.R. §42.5
`
`
`1 The parties are not authorized to use a combined caption.
`
`
`
`IPR2014-00416 and IPR2014-00417
`Patent 8,217,612 and Patent 7,579,802
`
`
`Petitioners move2, pursuant to 37 C.F.R § 42.5, to replace
`
`Exhibits 1005, 1007, 1008 and 1010 with corrected versions because the
`
`originals uploaded with the Petition are defective. Petitioners indicate that
`
`Patent Owner does not oppose.
`
`Authorization to file the motion was granted on October 7, 2014. See
`
`Order Conduct of Proceeding (Oct. 7, 2014) at 2. The exhibits at issue are
`
`publicly available U.S. Patents:
`
`Exhibit 1005 - U.S. Pat. No. 8,217,612 (in IPR2014-00416)
`
`Exhibit 1005 - U.S. Pat. No. 7,579,802 (in IPR2014-00417)
`
`Exhibit 1007 - U.S. Pat. No. 4,870,333
`
`Exhibit 1008 - U.S. Pat. No. 4,468,596
`
`Exhibit 1010 - U.S. Pat. No. 6,064,165
`
`Petitioners explain that the originally-filed exhibits were retrieved
`
`using Google Patent Search. Petitioners now understand that this resource
`
`incorrectly rendered certain Figures within the patents. Specifically, certain
`
`lines, portions of lines and other aspects of the Figures were omitted when
`
`the patents were printed. The specific defects are detailed in the Motion and
`
`will not be repeated here.
`
`Petitioners further explain that the defects were first discovered on
`
`September 25, 2014 during preparation for the deposition of Dr. MacCarley
`
`and that they immediately took steps to correct the defects. According to
`
`Petitioners, correct copies of the defective exhibits were made available to
`
`the witness at deposition.
`
`
`
`
`
`
`2 IPR2014-00416, Paper 21; IPR2014-00417, Paper 27.
`
`
`
`2
`
`
`
`IPR2014-00416 and IPR2014-00417
`Patent 8,217,612 and Patent 7,579,802
`
`
`We are satisfied, based on Petitioners’ representations, that there has
`
`been no harm to Patent Owner resulting from the noted defects and we
`
`GRANT the Motion. Exhibits 1005, 1007, 1008, and 1010 as filed with the
`
`Petitions on February 6, 2014 will be expunged from the records of these
`
`proceedings. Petitioners shall, within 7 days of the entry date of this
`
`decision, submit corrected Exhibits labeled “Ex. 1005 (Corrected),”
`
`“Ex. 1007 (Corrected),” “Ex. 1008 (Corrected),” and “Ex. 1010
`
`(Corrected),” in each proceeding.
`
`
`
`For PETITIONER:
`
`Craig D. Leavell
`KIRKLAND & ELLIS LLP
`craig.leavell@kirkland.com
`
`Alyse Wu
`KIRKLAND & ELLIS LLP
`alyse.wu@kirkland.com
`
`Luke L. Dauchot
`KIRKLAND & ELLIS LLP
`Luke.dauchot@kirkland.com
`
`
`
`For PATENT OWNER:
`
`Monte L. Falcoff
`HARNESS, DICKEY & PIERCE, P.L.C.
`mlfalcoff@hdp.com
`plloyd@hdp.com
`
` Michael R. Nye
`HARNESS, DICKEY & PIERCE, P.L.C.
`mnye@hdp.com
`
`
`
`
`3
`
`