STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`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.: IPR2014-00579
`
`______________
`
`
`
`
`
`
`PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE
`
`
`
`
`
`
`
`______________
`
`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.: IPR2014-00579
`
`______________
`
`
`
`
`
`
`PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE
`
`
`
`
`
`
`
`Case No.: IPR2014-00579
`Attorney Docket No.: FPGP0101IPR3
`
`Table of Contents
`
`
`I.
`
`II.
`
`Introduction ...................................................................................................... 1
`
`Paice’s Motion is procedurally improper and should be denied ..................... 2
`
`III. The evidence and testimony were properly presented in response to
`arguments and evidence raised in Paice’s Response ....................................... 3
`
`IV. Paice’s arguments about the sufficiency of Ford’s Petition have no
`place in a “Motion to Exclude,” were waived when not raised in either
`of Paice’s two Patent Owner Responses, and have no merit........................... 5
`
`V.
`
`Conclusion ....................................................................................................... 6
`
`Certificate of Service ................................................................................................. 7
`
`
`
`
`
`
`i
`
`
`
`Case No.: IPR2014-00579
`Attorney Docket No.: FPGP0101IPR3
`
`
`
`Table of Authorities
`
`Cases
`
`ABB, Inc. v. Roy-G-BIV Corp.,
`
`IPR2013-00063 ................................................................................................ 2
`
`Amkor Technology Inc. v. Tessera Inc.,
`
`IPR2013-00242 ................................................................................................ 2
`
`Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co.,
`
`CBM2012-00002 ............................................................................................. 6
`
`St. Jude Medical v. University of Michigan Board of Regents,
`
`IPR2013-00041 ................................................................................................ 5
`
`Vibrant Media, Inc. v. General Electric Co.,
`
`IPR2013-00170 ....................................................................................... 1, 2, 5
`
`Statutes
`
`37 C.F.R. § 42.64(c) ................................................................................................... 1
`
`
`
`
`ii
`
`
`
`Case No.: IPR2014-00579
`Attorney Docket No.: FPGP0101IPR3
`
`I.
`
`Introduction
`
`Petitioner Ford Motor Company (“Ford”) hereby opposes Patent Owner
`
`Paice LLC’s (“Paice”) Motion to Exclude. (Paper 34, “Motion.”)
`
`As an initial matter, Paice was required under 37 C.F.R. § 42.64(c) to
`
`identify why the evidence it seeks to exclude is inadmissible “e.g., based on
`
`relevance or hearsay.” Vibrant Media, Inc. v. General Electric Co., IPR2013-
`
`00170, Paper 56 at 31. Paice’s Motion does not identify an evidentiary basis for
`
`exclusion but instead alleges that certain exhibits and testimony are “new
`
`evidence” that are “clearly outside the scope of Ford’s reply under 37 C.F.R.
`
`§ 42.23.” (Motion at 5.) But a motion to exclude is not a proper mechanism for
`
`these arguments. IPR2013-00170, Paper 56 at 31. The present Motion is therefore
`
`improper and should be denied.
`
`Even if “new evidence” arguments can be raised in a motion to exclude,
`
`Paice’s Motion should be denied because the challenged exhibit and testimony are
`
`rebuttal evidence responding to arguments and evidence raised within Paice’s
`
`January 21, 2015 response. (Paper 20, “Response.”)
`
`Finally, as explained in Section IV, below, because Paice is attempting to
`
`use this “Motion to Exclude” to file an improper, de facto sur-reply, Ford asks the
`
`Board to expunge it from the record.
`
`
`
`1
`
`
`
`Case No.: IPR2014-00579
`Attorney Docket No.: FPGP0101IPR3
`
`II.
`
`Paice’s Motion is procedurally improper and should be denied
`
`The Board has stated a “motion to exclude is not a mechanism to argue that
`
`a reply contains new arguments or relies on evidence necessary to make out a
`
`prima facie case.” Vibrant Media, Inc. v. General Electric Co., IPR2013-00170,
`
`Paper 56 at 31. But this is the stated basis for Paice’s Motion, which asserts: “Ford
`
`is trying to use their Reply to insert new evidence and arguments that could have
`
`(and should have) been presented in the petition.” (Motion at 5.)
`
`If Paice believes the new evidence is “outside the scope of Ford’s reply,”
`
`(id.) the proper course of action would have been to seek leave from the Board to
`
`file a motion to strike. ABB, Inc. v. Roy-G-BIV Corp., IPR2013-00063, Paper 71 at
`
`14 (“If an issue arises regarding whether a reply argument or evidence in support
`
`of a reply exceeds the scope of a proper reply, the parties should contact the Board
`
`to discuss the issue.”); See also Amkor Technology Inc. v. Tessera Inc., IPR2013-
`
`00242, Paper 122 at 2. (Patent Owner granted leave to argue in a motion to strike
`
`that “an expert declaration submitted with the reply, go[es] beyond the proper
`
`scope permitted for a reply.”)
`
`Because Paice’s Motion fails to identify an evidentiary basis for exclusion, it
`
`should be denied.
`
`
`
`
`
`2
`
`
`
`Case No.: IPR2014-00579
`Attorney Docket No.: FPGP0101IPR3
`
`III. The evidence and testimony were properly presented in response to
`arguments and evidence raised in Paice’s Response
`
`Even assuming Paice’s Motion is procedurally proper, it should be denied
`
`because Ex. 1144 and paragraphs 63-65 of Dr. Davis’ Reply Declaration properly
`
`rebut two arguments, and new evidence, raised in Paice’s Response.
`
`The first Paice argument concerns alleged “cost” and “complexity.”
`
`Specifically, Ford had argued that the Bumby references’ 216 Volt “battery” could
`
`be connected to and provide current to the disclosed “starter motor” (i.e. the
`
`claimed “first electric motor”). (Petition 34-35; Ex. 1108 at ¶¶259-265.) In its
`
`Response, Paice argued that “a person of ordinary skill in the art would understand
`
`that a 216 V battery cannot be used to provide current to a ‘conventional starter
`
`motor’...” (Response at 39-41.) In support, Paice relied on its expert, Mr.
`
`Hannemann, who opined that “power electronics required to use a 216 V battery
`
`with a 12 V starter motor would add significant cost and technical complexity” and
`
`a POSA would not implement such a system into a hybrid vehicle given the
`
`alleged “increased cost and technical complexity.” (Ex. 2102 at 84.)
`
`Ford/Dr. Davis relied on Exhibits 2107 and 1144 to rebut Paice’s argument
`
`that a POSA would have understood that it was too costly and complex to connect
`
`the high-voltage “battery” to a “starter motor.” (Ex. 1140 at ¶¶51-62, 64-65.)
`
`These exhibits show that connecting a starter motor with a 216 V battery was not
`
`costly/complex but instead was well known.
`
`3
`
`
`
`Case No.: IPR2014-00579
`Attorney Docket No.: FPGP0101IPR3
`
`The second Paice argument concerned the “Masding Thesis” that Paice
`
`introduced into evidence. Paice’s Response relied on the “Masding Thesis”
`
`disclosure of a “12v engine starter battery” to argue that the “starter motor” in the
`
`Bumby references would not be connected to the claimed high-voltage “battery.”
`
`(Response at 42; Ex. 2104 at 186.) Paice’s Response argued that the “starter
`
`motor” would only be connected to and receive current from the “12v engine
`
`starter battery.” Id. And based on this newly added evidence, Paice’s Response
`
`alleged: “One of skill in the art would thus understand that the Bumby references
`
`teach away from a ‘first electric motor’ that can accept current from the battery.”
`
`(Response at 42.)
`
`Ford/Dr. Davis relied on Exhibits 2107, 1102 and 1144 to rebut this
`
`argument as well. These exhibits show that even if a “12v engine starter battery”
`
`was included in the Bumby references, the “starter motor” and “12v engine starter
`
`battery” would still be connected to the high-voltage “battery.” (Ex. 1140 at ¶¶51-
`
`63, 65.) For example, as discussed in the background section of Ex. 1144, it was
`
`known in the art to connect a 12v battery and its associated starter motor to the
`
`high-voltage hybrid battery for charging. (Ex. 2111 at 91:10-24; Ex. 1144 at 1:39-
`
`60.)
`
`It would have been impossible for Ford to have anticipated the new evidence
`
`(i.e., Masding Thesis) and arguments raised in Paice’s Response. And as shown
`
`4
`
`
`
`Case No.: IPR2014-00579
`Attorney Docket No.: FPGP0101IPR3
`
`above, Ford’s Reply properly rebutted the points raised within Paice’s Response.
`
`The challenged exhibit and testimony were therefore properly provided in response
`
`to issues raised within Paice’s Response. As the Board has stated:
`
`The need for relying on evidence not previously discussed in the
`
`petition may not exist until a certain point has been raised in the
`
`patent owner response. Much depends on the specific arguments made
`
`in the patent owner response.
`
`Vibrant Media, Inc. v. General Electric Co., IPR2013-00170, Paper 56 at 32; see
`
`also St. Jude Medical v. University of Michigan Board of Regents, IPR2013-00041,
`
`Paper 69 at 33.
`
`Accordingly, Exhibit 1144 and paragraphs 63-65 from Dr. Davis’ Reply
`
`Declaration are proper and the Board should deny Paice’s Motion.
`
`IV. Paice’s arguments about the sufficiency of Ford’s Petition have no place
`in a “Motion to Exclude,” were waived when not raised in either of
`Paice’s two Patent Owner Responses, and have no merit
`
`Finally, Paice concludes its “Motion to Exclude” with substantive arguments
`
`regarding the sufficiency of Ford’s Petition. (Motion at 9-12.) These substantive
`
`arguments should have been raised in one of Paice’s two Patent Owner Responses
`
`(Paper Nos. 7 and 20), not in a “Motion to Exclude.” Vibrant Media, IPR2013-
`
`00170, Paper 56 at 31. Paice never argued that Ford improperly relied on Dr.
`
`Davis’ testimony because the argument has no merit; Ford’s Petition addressed the
`
`claims in detail, and Ford cited Dr. Davis in a reasonable fashion. Paice waived
`
`5
`
`
`
`Case No.: IPR2014-00579
`Attorney Docket No.: FPGP0101IPR3
`
`this argument, and Paice’s attempt to raise it now constitutes an improper attempt
`
`to avoid that waiver and file a de facto surreply. Liberty Mutual Insurance Co. v.
`
`Progressive Casualty Insurance Co., CBM2012-00002, Paper 66 at 62.
`
`Because Paice is attempting to file an improper surreply, Ford asks the
`
`Board to ignore and these arguments and expunge this Motion from the record.
`
`Autoquip, Inc. v. Graco Minnesota, Inc., IPR2013-00452, Paper 17 at 2-4.
`
`V. Conclusion
`
`For the foregoing reasons, Ford asks the Board to deny and expunge Patent
`
`Owner’s Motion to Exclude.
`
`
`
`
`
`
`
`
`Dated: May 22, 2015
`
`
`
`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
`
`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
`
`6
`
`
`
`
`
`
`
`Case No.: IPR2014-00579
`Attorney Docket No.: FPGP0101IPR3
`
`Certificate of Service
`
`The undersigned hereby certifies that on May 22, 2015, a complete and
`
`entire copy of Petitioner’s Opposition To Patent Owner’s Motion To Exclude,
`
`was served via electronic mail by serving the correspondence email address of
`
`record as follows:
`
`LEAD COUNSEL
`Timothy W. Riffe, Reg. No. 43,881
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: (202) 783-5070
`Email: IPR36351-0011IP2@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: IPR36351-0011IP2@fr.com;
`
`Riffe@fr.com; Greene@fr.com
`
`
`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
`
`7
`
`
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
