STATES PATENT AND TRADEMARK OFFICE
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`______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________
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`FORD MOTOR COMPANY
`Petitioner,
`
`v.
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`PAICE LLC & ABELL FOUNDATION, INC.
`Patent Owner.
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`______________
`
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`U.S. Patent No. 7,104,347 to Severinsky et al.
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`IPR Case No.: IPR2014-00579
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`______________
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`
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`PETITIONERS' RESPONSE TO PATENT OWNER'S
`MOTION FOR OBSERVATIONS ON CROSS EXAMINATION
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`
`
`
`
`
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`______________
`
`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
`
`______________
`
`
`
`
`
`
`PETITIONERS' RESPONSE TO PATENT OWNER'S
`MOTION FOR OBSERVATIONS ON CROSS EXAMINATION
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`
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`
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`Case No.: IPR2014-00579
`Attorney Docket No.: FPGP0101IPR3
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`I.
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`Patent Owner’s motion for observation is improper and should be
`dismissed
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`A “motion for observation on cross-examination is a mechanism to draw the
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`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
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`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
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`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
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`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.
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`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
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`more of the Patent Owner’s observations are improper as they are argumentative,
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`include new issues not previously raised, and/or re-argue prior issues and pursue
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`1
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`
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`objections. Accordingly, Petitioner requests that the Board deny Patent Owner’s
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`Case No.: IPR2014-00579
`Attorney Docket No.: FPGP0101IPR3
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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.
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`Observation 1. This observation is improper because it raises a new
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`issue, namely whether the “battery recharge mode” is “activated based on an
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`arbitrary time threshold.” The observation is also not relevant to paragraphs 78-83
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`of Dr. Davis’ Reply Declaration (Ex. 1140) because those paragraphs do not
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`address when the battery recharge mode is activated; they address how the
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`“battery recharge mode” is operated once it is activated, i.e., the engine generates
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`“excess torque” to charge the batteries (Ex. 1140 at ¶¶77-83; see also Ex. 2111 at
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`72:8-14, 83:10-16, 84:23-85:9).
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`Observation 2. Like observation 1, this observation is improper because
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`it raises the same new issue, i.e., whether the “battery recharge mode” is “entered
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`based purely on time.” And this observation is likewise irrelevant to paragraphs
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`78-83 of Dr. Davis’ Reply Declaration (Ex. 1140) because those paragraphs do not
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`address when the battery recharge mode is activated; they address how the
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`“battery recharge mode” is operated once it is activated, i.e., the engine generates
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`“excess torque” to charge the batteries (Ex. 1140 at ¶¶77-83; see also Ex. 2111 at
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`2
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`Case No.: IPR2014-00579
`Attorney Docket No.: FPGP0101IPR3
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`72:8-14, 83:10-16, 84:23-85:9).
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`Observation 3. Dr. Davis’ deposition testimony is not relevant because it
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`does not contradict his declaration testimony. Dr. Davis’ full answer (observation 3
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`cites only the first line) states that Fig. 7.12(b) illustrates where the Masding Thesis
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`is “trying to exercise component level control, so he’s using a simple speed-based
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`algorithm in order to consistently and easily switch to different modes of operation.
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`However, these modes of operation are the modes that would be employed by the
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`suboptimal control algorithm.” (Ex. 2111 at 83:2-8, emphasis added.)
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`Observation 4.
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`Fig. 7.12(b) is not relevant to the credibility of Dr. Davis’
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`opinion because it is not inconsistent with the cited testimony, i.e., Davis
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`paragraphs 13-26. Those paragraphs quote Masding Thesis excerpts describing: (1)
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`the “test rig” was intended for use with the “sub-optimal mode controller” (Ex.
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`1140 at ¶16); (2) “for test purposes” a speed-based strategy (e.g., as illustrated by
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`Fig. 7.12(b)) was temporarily used “to investigate the interaction between mode
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`controller, sequencing logic and component control” (Ex. 1140 at ¶¶17-18); and (3)
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`once the testing was complete, the “sub-optimal” control algorithm would be
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`employed (Ex. 1140 at ¶¶19-20).
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`Observation 5. This observation is improper because it attempts to re-
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`argue an issue (motivation to combine) already addressed by Patent Owner. This
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`observation is not relevant to Dr. Davis’ opinion because whether the “sub-
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`3
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`Case No.: IPR2014-00579
`Attorney Docket No.: FPGP0101IPR3
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`optimal” control algorithm was ever implemented on a “vehicle” does not indicate
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`whether a POSA would have been motivated to combine the sub-optimal control
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`algorithm of the earlier Bumby references with the “test rig” of the later Bumby
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`references.
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`Observation 6. The cited testimony does not impeach the credibility of
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`Dr. Davis because it omits relevant content. Dr. Davis’ full testimony explained:
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`(1) that transmission control strategies are complex and “there are a lot more issues
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`involved in how to carry out the shift” than what was disclosed by the Bumby
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`References (Ex. 2111 at 27:6-13); and (2) any opinion about those “additional
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`details” (e.g. “minimum time delay in shifting” or transmission “hysteresis bands”)
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`would be “speculative.” (Ex. 2111 at 28:1-11.)
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`Observation 7. Dr. Davis’ testimony regarding whether he recalls
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`reviewing papers cited within the Masding Thesis is not relevant to his opinions
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`about what a POSA would have understood. Dr. Davis opinions about what a
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`POSA would have understood are based on the express disclosures of the Masding
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`Thesis which states: “In a hybrid petrol/electric vehicle the presence of the electric
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`motor means that again a variable transmission is not absolutely essential. . .” but
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`“if efficiency is an important design consideration one is almost certain to be
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`included.” (Ex. 1140 at ¶¶40-41; see also Ex. 2111 at 30:20-31:9.)
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`Observation 8. This observation improperly cites over four pages of
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`4
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`Case No.: IPR2014-00579
`Attorney Docket No.: FPGP0101IPR3
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`testimony and ten paragraphs from Dr. Davis Reply Declaration and is therefore
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`not a “concise statement of the relevance of precisely identified testimony to a
`
`precisely identified argument.” IPR2013-00506, Paper 37 at 2-4. Notwithstanding,
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`Dr. Davis’ opinion is not conclusory as he relied on the express disclosures from
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`the Masding Thesis which states: “In a hybrid petrol/electric vehicle the presence
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`of the electric motor means that again a variable transmission is not absolutely
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`essential. . .” but “if efficiency is an important design consideration one is almost
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`certain to be included.” (Ex. 1140 at ¶¶40-41; see also Ex. 2111 at 30:20-31:9.)
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`Observation 9. This observation improperly cites over two pages of
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`testimony and four paragraphs from Dr. Davis Reply Declaration and is therefore
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`not a “concise statement of the relevance of precisely identified testimony to a
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`precisely identified argument.” IPR2013-00506, Paper 37 at 2-4. This observation
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`also improperly cites to multiple portions of Dr. Davis’ testimony to present a
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`“new
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`issue” not previously presented
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`in Patent Owner’s Response. Id.
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`Notwithstanding, this observation is not relevant as paragraphs 46-50 expressly
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`state that Dr. Davis was providing an example that assumed a “fixed gear ratio”
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`that could apply “to any transmission, or even a vehicle without a transmission.”
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`(Ex. 1140 at ¶46.)
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`Observation 10. This observation
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`improperly cites
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`to Dr. Davis’
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`testimony to present a “new issue” not previously presented in Patent Owner’s
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`5
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`Case No.: IPR2014-00579
`Attorney Docket No.: FPGP0101IPR3
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`Response. IPR2013-00506, Paper 37 at 2-4. Notwithstanding, this observation is
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`not relevant as paragraphs 46-50 clearly indicate that Dr. Davis was providing an
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`example that assumed a “fixed gear ratio” that could apply “to any transmission, or
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`even a vehicle without a transmission.” (Ex. 1140 at ¶46.)
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`Observation 11. The testimony does not illustrate Dr. Davis’ Reply
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`Declaration were conclusory nor unsupported by the evidence. Dr. Davis’
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`complete answer (observation 11 only cites the first two lines) states that he
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`discussed the AMPhibian paper “to explain the content as an example of what one
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`of ordinary skill in the art would understand, in fact, four years before the patent at
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`issue.” (Ex. 2111 at 62:6-11; see also Ex. 2111 at 62:12-65:11.)
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`Observation 12. The testimony does not illustrate paragraphs 63-65 of Dr.
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`Davis’ Reply Declaration included new opinions based on evidence not originally
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`disclosed. Dr. Davis testified that he referenced European Patent Application
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`EP0136055 and U.S.P.N. 5,285,862 to provide examples as to what “was well-
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`known by one of ordinary skill in the art. . .” (Ex. 2111 at 67:9-14.)
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`Dated: May 22, 2015
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`
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`Respectfully submitted,
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`
`
` /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)
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`6
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`
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`Case No.: IPR2014-00579
`Attorney Docket No.: FPGP0101IPR3
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`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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`7
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`Case No.: IPR2014-00579
`Attorney Docket No.: FPGP0101IPR3
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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: IPR36351-0011IP2@fr.com;
`
`Riffe@fr.com; Greene@fr.com
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`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
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`Respectfully submitted,
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`
`
` /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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`8
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