STATES PATENT AND TRADEMARK OFFICE
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`______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________
`
`
`FORD MOTOR COMPANY
`Petitioner,
`
`v.
`
`PAICE LLC & ABELL FOUNDATION, INC.
`Patent Owner.
`
`______________
`
`
`U.S. Patent No. 7,104,347 to Severinsky et al.
`
`IPR Case No.: IPR2014-00571
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`______________
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`
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`
`
`PETITIONERS' RESPONSE TO PATENT OWNER'S
`MOTION FOR OBSERVATIONS ON CROSS EXAMINATION
`
`
`
`
`
`
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`
`FORD MOTOR COMPANY
`Petitioner,
`
`v.
`
`PAICE LLC & ABELL FOUNDATION, INC.
`Patent Owner.
`
`______________
`
`
`U.S. Patent No. 7,104,347 to Severinsky et al.
`
`IPR Case No.: IPR2014-00571
`
`______________
`
`
`
`
`
`
`PETITIONERS' RESPONSE TO PATENT OWNER'S
`MOTION FOR OBSERVATIONS ON CROSS EXAMINATION
`
`
`
`
`
`
`
`Case No.: IPR2014-00571
`Attorney Docket No.: FPGP0101IPR2
`
`
`I.
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`Patent Owner’s motion for observation is improper and should be
`dismissed
`
`A “motion for observation on cross-examination is a mechanism to draw the
`
`Board’s attention to relevant cross-examination testimony of a reply witness.”
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`Medtronic Inc. v. Nuvasive, Inc., IPR2013-00506, Paper 31 at 3. The Board has
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`been clear that the observations must be nothing more than a “concise statement of
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`the relevance of precisely identified testimony to a precisely identified argument or
`
`portion of an exhibit.” Medtronic, Inc. v. Nuvasive, Inc., IPR2013-00506, Paper 37
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`at 2. Observations are not allowed to include arguments, and are not “an
`
`opportunity to raise new issues, to re-argue issues, or to pursue objections.” PTAB
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`Trial Practice Guide, 77 F.R. 157, 48768 §L; IPR2013-00506, Paper 37 at 2. If
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`even one observation is found to have violated these rules, the Board may dismiss
`
`and not consider the Patent Owner’s entire motion for observation. See IPR2013-
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`00506, Paper 37 at 2-4 (“the entire motion… may be dismissed and not considered
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`if there is even one excessively long or argumentative observation”); see also
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`CBM2013-00017, Paper 36 at 4.
`
`On May 15, 2015, Patent Owner filed its Motion for Observations on Cross
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`Examination of Dr. Gregory Davis. (Paper No. 33.) Petitioner believes that one or
`
`more of the Patent Owner’s observations are improper as they are argumentative,
`
`include new issues not previously raised, and/or re-argue prior issues and pursue
`
`1
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`
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`objections. Accordingly, Petitioner requests that the Board deny Patent Owner’s
`
`Case No.: IPR2014-00571
`Attorney Docket No.: FPGP0101IPR2
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`motion.
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`II. Response To Patent Owner’s Observations
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`Notwithstanding the above general objections, Petitioner respectfully
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`submits the following responses.
`
`Observation 1. The cited testimony and paragraph from Dr. Davis’
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`Reply Declaration do not demonstrate “that accelerator pedal position alone is not
`
`sufficient to determine the instantaneous torque required to propel the vehicle.” Dr.
`
`Davis never testified that pedal position alone could not be used to “determine the
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`instantaneous torque required to propel the vehicle” (Ex. 2012 at 38:4-23). And
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`Dr. Davis’ testimony simply confirms that the torque required to propel the vehicle
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`is influenced by the driver “through the use of the pedals.” (Ex. 1038 at ¶8; Ex.
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`2012 at 37:8-24; 39:2-13.)
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`Observation 2. This observation is improper because it raises a new
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`issue, namely whether the “acceleration and/or hill climbing mode” is “related to
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`when to turn on the motor.” Notwithstanding, the cited testimony is not relevant
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`because it does not “reinforce Dr. Davis’ previous assertion that Severinsky’s high-
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`speed acceleration and/or hill climbing mode is related to when to turn on the
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`motor.” Instead, Dr. Davis testified that during “high-speed acceleration and/or hill
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`climbing mode” the “vehicle would launch. . . on the electric motor. . . and then it
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`2
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`
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`Case No.: IPR2014-00571
`Attorney Docket No.: FPGP0101IPR2
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`would add the engine into the drivetrain as soon as the engine can actually provide
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`meaningful torque...” (Ex. 2012 at 68:11-22.) And Dr. Davis also testified that “at
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`the very beginning” of this mode the “engine would have zero torque because it
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`wasn’t running.” (Ex. 2012 at 68:23-69:1.)
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`Observation 3. This observation is improper because it raises a new
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`issue, namely whether the “acceleration and/or hill climbing mode” is “entered
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`when the alleged torque required to propel the vehicle is above 100% of the
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`maximum torque output of the engine.” Notwithstanding, the cited testimony is not
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`relevant because Dr. Davis Original Declaration never stated that “high-speed
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`acceleration and/or hill climbing mode is entered when the alleged torque required
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`to propel the vehicle is above 100% of the maximum torque output of the engine.”
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`Instead, Dr. Davis testified: “Severinsky discloses that the vehicle could transition
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`from operation by the motor only when the engines off, to operating the engine and
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`motor combined in the acceleration/hill climbing mode, which was in response to
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`the operator's command. . .” (Ex. 44:7-46:17; Ex. 1038 at ¶¶8-9.)
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`
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`
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`Dated: May 22, 2015
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`
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`Respectfully submitted,
`
`
`
` /Frank A. Angileri/
`Frank A. Angileri (Reg. No. 36,733)
`BROOKS KUSHMAN P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`(248) 358-4400
`
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`3
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`
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`Case No.: IPR2014-00571
`Attorney Docket No.: FPGP0101IPR2
`
`Lissi Mojica (Reg. No. 63,421)
`Kevin Greenleaf (Reg. No. 64,062)
`DENTONS US LLP
`1530 Page Mill Road, Suite 200
`Palo Alto, CA 94304-1125
`650 798 0300
`
`Attorneys for Petitioner
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`4
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`Case No.: IPR2014-00571
`Attorney Docket No.: FPGP0101IPR2
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`Certificate of Service
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`The undersigned hereby certifies that on May 22, 2015, a complete and
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`entire copy of Petitioners' Response To Patent Owner's Motion For
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`Observations On Cross Examination, was served via electronic mail by serving
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`the correspondence email address of record as follows:
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`LEAD COUNSEL
`Timothy W. Riffe, Reg. No. 43,881
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: (202) 783-5070
`Email: IPR36351-0011IP1@fr.com
`
`Riffe@fr.com; Greene@fr.com
`
`BACK-UP COUNSEL
`Kevin E. Greene, Reg. No. 46,031
`Ruffin B. Cordell, Reg. No. 33,487
`Linda L. Kordziel, Reg. No. 39,732
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: (202) 783-5070
`Email: IPR36351-0011IP1@fr.com
`
`Riffe@fr.com; Greene@fr.com
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`Respectfully submitted,
`
`
`
` /Frank A. Angileri/
`Frank A. Angileri (Reg. No. 36,733)
`John E. Nemazi (Reg. No. 30,876)
`John P. Rondini (Reg. No. 64,949)
`Erin K. Bowles (Reg. No. 64,705)
`Brooks Kushman P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`(248) 358-4400
`
`Lissi Mojica (Reg. No. 63,421)
`Kevin Greenleaf (Reg. No. 64,062)
`Dentons US LLP
`1530 Page Mill Road, Suite 200
`Palo Alto, CA 94304-1125
`650 798 0300
`Attorneys for Petitioner
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`5
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