Paper 26
`Filed: May 26, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`—————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`—————
`
`WEBASTO ROOF SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`UUSI, LLC,
`Patent Owner.
`
`—————
`
`Case IPR2014-00648
`Patent 8,217,612
`
`—————
`
`PETITIONER’S MOTION TO EXCLUDE THE OPINION TESTIMONY
`OF DR. MARK EHSANI AND INADMISSIBLE EXHIBITS
`
`Attorney Docket: 130163.231151
`
`
`
`

`

`IPR2014-00648
`
`
`
`Patent 8,217,612
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`Statement of Material Facts ............................................................................. 2
`
`Legal Standards for Excluding Expert Testimony .......................................... 3
`
`III. Dr. Ehsani’s Opinions Should be Excluded Because He Applied the
`
`Presumption of Validity ................................................................................... 4
`
`IV. Dr. Ehsani’s Opinions Should be Excluded Because He Applied
`
`Erroneous Methodology to Interpret the Challenged Claims .......................... 7
`
`V. Dr. Ehsani Resisted Answering Basic Questions, Acting As an
`Advocate Rather Than an Expert................................................................... 10
`
`VI. Petitioner’'s Unexplained and Inadmissible Exhibits Should be
`
`Excluded ........................................................................................................ 15
`
`
`
`
`
`i
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`

`

`IPR2014-00648
`
`
`
`Patent 8,217,612
`
`Cases
`
`TABLE OF AUTHORITIES
`
`Bolin v. Chappell,
`No. 1:99-cv-05279, 2012 U.S. Dist. LEXIS 179745
`(E.D. Cal. Dec. 19, 2012) (Ex. 1032) ................................................................... 4
`
`Boltar, L.L.C. v. Comm’r of Internal Revenue,
`136 TC 326 (T.C. 2011)........................................................................................ 4
`
`Daubert v. Merrell Dow Pharm., Inc.,
`509 U.S. 579 (1993) .............................................................................................. 3
`
`Global Tel*Link Corp. v. Securus Techs., Inc.,
`IPR2014-00824, Paper 9 (Dec. 8, 2014)............................................................... 4
`
`Medicines Co. v. Mylan, Inc.,
`No. 11-cv-1285, 2014 WL 1227214 (N.D. Ill. Mar. 25, 2014) .................... 4, 6, 8
`
`Microsoft Corp. v. i4i Ltd. P’ship,
`131 S. Ct. 2238 (2011) .......................................................................................... 4
`
`Pacific Coast Marine Windshields Ltd. v. Malibu Boats, LLC,
`No. 6:12-cv-00033, Slip. Op. (M.D. Fla. Jan. 4, 2013) (Ex. 1033) .................. 6, 8
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ........................................................ 7, 8
`
`RF Controls, LLC v. A-1 Packaging Solutions, Inc.,
`IPR2015-00119, Paper 15 (Apr. 29, 2015) ........................................................4, 5
`
`Seaboard Lumber Co. v. U.S.,
`308 F.3d 1283 (Fed. Cir. 2002) ............................................................................ 4
`
`Webasto Roof Sys., Inc. v. UUSI, LLC,
`IPR2014-00648, Paper 14 (Oct. 17, 2014) ....................................................... 5, 7
`
`W.L. Gore & Assoc., Inc. v. Lifeport Sci. LLC,
`IPR2014-01320, Paper 7 (Feb. 25, 2015) ............................................................. 5
`
`Statutes
`
`35 U.S.C. § 282 .......................................................................................................... 5
`
`35 U.S.C. § 316 .......................................................................................................... 4
`
`ii
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`

`

`IPR2014-00648
`
`
`
`Patent 8,217,612
`
`Other Authorities
`
`37 C.F.R. § 42.22 ..................................................................................................... 15
`
`37 C.F.R. § 42.62 ....................................................................................................... 3
`
`Federal Rule of Evidence 702 ...........................................................................passim
`
`
`
`iii
`
`

`

`IPR2014-00648
`
`
`
`Patent 8,217,612
`
`Petitioner moves to exclude paragraphs 6, 41, 46, 54, 66–68, 77–81, 88–89,
`
`91–98, 100–04, 110–11, 114–16, 118–27, 129–31, 137–39, 145, 148, 150–56, 159,
`
`162–63, 165, and 169–83 of the Declaration of Dr. Mark Ehsani in Support of
`
`Patent Owner’s Response (Ex. 2001).1 This opinion testimony should be excluded
`
`under Federal Rule of Evidence 702 for three principal reasons. First, Dr. Ehsani
`
`applied the wrong legal standard in reaching his opinions, incorrectly presuming
`
`that the challenged claims were valid. Second, Dr. Ehsani did not apply reliable
`
`principles and methods in reaching his opinions. For example, he analyzed the
`
`preferred embodiment and did not determine whether the claims could be
`
`interpreted to cover more than this embodiment. Third, Dr. Ehsani resisted
`
`answering basic questions, acting as an advocate rather than an expert required to
`
`reliably apply reliable principles and methods to the issues in this proceeding.
`
`Petitioner also moves to exclude Patent Owner’s exhibits that have not been
`
`referenced in Patent Owner’s arguments—Exhibits 2009–10, 2012–13, 2017,
`
`2022, and 2036—because such unexplained evidence should not be permitted to
`
`clutter the record in this proceeding and any potential appeal. Moreover, Exhibit
`
`2008 should be excluded because it is inadmissible hearsay offered by a third party
`
`
`1 Petitioner has filed very similar motions in IPR2014-00648, -00649, and -00650.
`
`The main substantive difference among the motions is the identification of the
`
`paragraphs and exhibits which Petitioner moves to exclude.
`
`1
`
`

`

`IPR2014-00648
`
`
`
`Patent 8,217,612
`
`in a different proceeding, and similarly paragraphs 169–70 of Dr. Ehsani’s
`
`declaration also should be excluded because they respond to this inadmissible
`
`exhibit.
`
`I.
`
`STATEMENT OF MATERIAL FACTS
`
`1.
`
`Paragraphs 6, 41, 46, 54, 66–68, 77–81, 88–89, 91–98, 100–04, 110–
`
`11, 114–16, 118–27, 129–31, 137–39, 145, 148, 150–56, 159, 162–63, 165, and
`
`169–83 of Dr. Ehsani’s declaration (Ex. 2001) were identified in Petitioner’s
`
`objections timely served on Patent Owner, pursuant to the applicable rules at the
`
`time of Petitioner’s objections. Ex. 1031.
`
`2.
`
`Dr. Ehsani testified that he applied a presumption of validity for the
`
`purposes of his analysis. Ex. 1023 at 3 (211:19–212:17).
`
`3.
`
`Dr. Ehsani testified that he analyzed the preferred embodiment and
`
`could not determine whether patent claims should be interpreted more broadly than
`
`the preferred embodiment. Ex. 1022 at 17 (64:3–14).
`
`4.
`
`Dr. Ehsani testified that sub-step (d)(3) is not part of step (d) in claim
`
`1 of U.S. Patent No. 8,217,612 (“the ’612 patent”). Ex. 1022 at 13 (46:8–12).
`
`5.
`
`Dr. Ehsani resisted answering questions about the patent specification,
`
`his interpretation of the claims, and what would be required to satisfy the claims
`
`under his interpretation. Ex. 1022 at 2–6, 21 (5:14–7:19, 8:5–18:20, 78:3–10,
`
`78:12–80:6); Ex. 1023 at 7–8 (228:13–232:8).
`
`2
`
`

`

`IPR2014-00648
`
`
`
`Patent 8,217,612
`
`6.
`
`Exhibits 2008–10, 2012–13, 2017, 2022, and 2036 were identified in
`
`Petitioner’s timely served objections. Ex. 1031.
`
`7.
`
`Exhibits 2009–10, 2012–13, 2017, 2022, and 2036 were not
`
`referenced in Patent Owner’s Response or Dr. Ehsani’s declaration in support of
`
`that Response. Paper 20; Ex. 2001.
`
`8.
`
`Exhibit 2008 was offered by a third party in a different proceeding.
`
`II. LEGAL STANDARDS FOR EXCLUDING EXPERT TESTIMONY
`
`The Federal Rules of Evidence apply here. 37 C.F.R. § 42.62(a). Rule 702
`
`sets forth the conditions for admissibility of expert witness testimony:
`
`A witness who is qualified as an expert by knowledge, skill,
`
`experience, training, or education may testify in the form of an
`
`opinion or otherwise if:
`
`(a) the expert’s scientific, technical, or other specialized knowledge
`
`will help the trier of fact to understand the evidence or to
`
`determine a fact in issue;
`
`(b) the testimony is based on sufficient facts or data;
`
`(c) the testimony is the product of reliable principles and methods; and
`
`(d) the expert has reliably applied the principles and methods to the
`
`facts of the case.
`
`Fed. R. Evid. 702; see also Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579,
`
`589–95 (1993).
`
`While judges sitting in bench trials need not screen evidence prior to its
`
`submission to the factfinder, ultimately the Daubert standards must be met.
`
`3
`
`

`

`IPR2014-00648
`
`
`
`Patent 8,217,612
`
`Seaboard Lumber Co. v. U.S., 308 F.3d 1283, 1301–02 (Fed. Cir. 2002). Even in
`
`bench trials, testimony that fails to meet the standards of Rule 702 is properly
`
`excluded. See, e.g., Medicines Co. v. Mylan, Inc., No. 11-cv-1285, 2014 WL
`
`1227214, at *4–5 (N.D. Ill. Mar. 25, 2014) (excluding expert testimony before a
`
`bench trial in a proceeding involving an Abbreviated New Drug Application);
`
`Bolin v. Chappell, No. 1:99-cv-05279, 2012 U.S. Dist. LEXIS 179745 (E.D. Cal.
`
`Dec. 19, 2012) (excluding expert testimony before an evidentiary hearing)
`
`(Ex. 1032); Boltar, L.L.C. v. Comm’r of Internal Revenue, 136 TC 326, 333–40
`
`(T.C. 2011) (excluding expert testimony after a bench trial).
`
`III. DR. EHSANI’S OPINIONS SHOULD BE EXCLUDED BECAUSE HE
`APPLIED THE PRESUMPTION OF VALIDITY
`
`“There is no presumption of validity as to the challenged claims in an inter
`
`partes review [IPR].” Global Tel*Link Corp. v. Securus Techs., Inc., IPR2014-
`
`00824, Paper 9 at 21 (Dec. 8, 2014); see also RF Controls, LLC v. A-1 Packaging
`
`Solutions, Inc., IPR2015-00119, Paper 15 at 9 (Apr. 29, 2015) (“[i]n an inter partes
`
`proceeding there is no presumption of validity” (citation omitted)). The absence of
`
`this presumption has consequences for both the burden of proof for invalidity and
`
`claim interpretation. With respect to the burden of proof, a petitioner need only
`
`prove unpatentability “by a preponderance of the evidence” in IPR proceedings,
`
`rather than by clear and convincing evidence. Compare 35 U.S.C. § 316(e) with
`
`Microsoft Corp. v. i4i Ltd. P’ship, 131 S. Ct. 2238, 2242 (2011) (holding that the
`
`4
`
`

`

`IPR2014-00648
`
`
`
`Patent 8,217,612
`
`presumption of validity set forth in 35 U.S.C. § 282 requires proof by clear and
`
`convincing evidence).
`
`Since there is no presumption of validity, claims also are not construed in
`
`IPR proceedings with an aim to preserve their validity. RF Controls, Paper 15 at 9
`
`(“we will not be applying a rule of construction with an aim to preserve the validity
`
`of the claims”). As the Board recognized in this proceeding, claims are not
`
`construed with a presumption of validity even where, as here, the claims have
`
`expired. Webasto Roof Sys., Inc. v. UUSI, LLC, IPR2014-00648, Paper 14 at 7
`
`(Oct. 17, 2014); see also W.L. Gore & Assoc., Inc. v. Lifeport Sci. LLC, IPR2014-
`
`01320, Paper 7 at 8 (Feb. 25, 2015).
`
`Dr. Ehsani, however, testified that he applied a presumption of validity for
`
`purposes of his analysis here:
`
`Q. Based on the fact that the claims of Nartron’s patents were
`
`issued by the U.S. Patent Office, did you believe that a presumption
`
`of validity applied for the purposes of your analysis?
`
`A. That’s my understanding that U.S. Patent Office is a reliable
`
`source. It does due diligence with the help of the inventor. The
`
`inventor is obliged to bring to the attention of the examiner all the
`
`prior art that is relevant and sort out the distinction between his or her
`
`patent and the prior art.
`
`And the – the U.S. examiner will also independently, through
`
`his own resources and expertise, bring to bear other prior art, and that
`
`going through that exercise, which is rather rigorous, produces a fairly
`
`5
`
`

`

`IPR2014-00648
`
`
`
`Patent 8,217,612
`
`substantial prosecution history and – and record and most often
`
`modification and – and settlement on – on specific claims – claims.
`
`Through that laborious process, the patent is finally issued, and
`
`it is presumed to be valid, unless otherwise legally established.
`
`Q. And did you apply what you just mentioned in your prior
`
`answer for purposes of your analysis in this proceeding?
`
`A. Yes, sir.
`
`Ex. 1023 at 3 (211:19–212:17) (emphasis added). This testimony is
`
`uncontroverted. Patent Owner stated no objection at the deposition and made no
`
`attempt to rehabilitate Dr. Ehsani on this point. Furthermore, Dr. Ehsani’s
`
`declaration does not address the presumption of validity he evidently applied or
`
`any understanding of the burdens in this proceeding. Ex. 2001 at 18–21 (¶¶ 28–
`
`35).
`
`Because Dr. Ehsani applied the presumption of validity, and therefore
`
`interpreted the challenged claims from the wrong perspective and applied the
`
`wrong burden of proof in reaching his opinions, his opinion testimony is
`
`unreliable. His legally flawed opinions in the identified paragraphs therefore
`
`should be excluded. In Medicines Co., the district court excluded the testimony of
`
`an expert who applied the wrong legal standard in opining on commercial success
`
`in advance of a bench trial, and Dr. Ehsani’s testimony applying the wrong legal
`
`standard similarly should be excluded here. 2014 WL 1227214, at *4–5; see also
`
`Pacific Coast Marine Windshields Ltd. v. Malibu Boats, LLC, No. 6:12-cv-00033,
`
`6
`
`

`

`IPR2014-00648
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`
`
`Patent 8,217,612
`
`Slip. Op. at 19–23 (M.D. Fla. Jan. 4, 2013) (Ex. 1033) (excluding expert opinions
`
`about a design patent where the expert improperly relied on the “point of novelty”
`
`test rejected by the Federal Circuit).
`
`IV. DR. EHSANI’S OPINIONS SHOULD BE EXCLUDED BECAUSE HE
`APPLIED ERRONEOUS METHODOLOGY TO INTERPRET THE
`CHALLENGED CLAIMS
`
`The patent-at-issue has expired, and therefore the claims must be interpreted
`
`under Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc); Webasto
`
`Roof Sys., IPR2014-00648, Paper 14 at 7. Under Phillips, claim terms should be
`
`interpreted in view of “the words of the claims themselves, the remainder of the
`
`specification, the prosecution history, and extrinsic evidence concerning relevant
`
`scientific principles, the meaning of technical terms, and the state of the art.” 415
`
`F.3d at 1314 (internal quotation marks omitted). The Federal Circuit cautioned
`
`that claims generally should not be confined to a preferred embodiment:
`
`[W]e have repeatedly warned against confining the claims to those
`
`embodiments. In particular, we have expressly rejected the contention
`
`that if a patent describes only a single embodiment, the claims of the
`
`patent must be construed as being limited to that embodiment. That is
`
`not just because section 112 of the Patent Act requires that the claims
`
`themselves set forth the limits of the patent grant, but also because
`
`persons of ordinary skill in the art rarely would confine their definitions
`
`of terms to the exact representations depicted in the embodiments.
`
`Id. at 1323.
`
`7
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`

`

`IPR2014-00648
`
`
`
`Patent 8,217,612
`
`Dr. Ehsani expressly disclaimed performing the analysis required by
`
`Phillips, explaining that he could not understand if the claims might be interpreted
`
`more broadly than the preferred embodiment: “I’m not a lawyer to understand
`
`interpretation outside of the preferred embodiment by the patent. I have
`
`analyzed the preferred embodiment. I cannot tell if the patent can be interpreted
`
`more broadly than that.” Ex. 1022 at 17 (64:3–14) (emphasis added and
`
`interruption omitted). Dr. Ehsani volunteered this testimony. There was neither an
`
`objection at his deposition nor any attempt to address this issue during redirect
`
`examination. Furthermore, Dr. Ehsani’s declaration provides no contrary
`
`testimony because he did not address the legal standards he applied for purposes of
`
`claim interpretation. Thus, his testimony that he failed to heed the Federal
`
`Circuit’s warning against confining the claims to the preferred embodiment, see
`
`Phillips, 415 F.3d at 1323, stands uncontroverted.
`
`Since Dr. Ehsani’s testimony about what the patent claims require in
`
`interpreting them and applying the prior art to them is the product of his legally
`
`erroneous method of confining them to the preferred embodiment, his testimony
`
`should be excluded as unreliable. Fed. R. Evid. 702; see also Medicines Co., 2014
`
`WL 1227214, at *4–5; Pacific Coast Marine Windshields Ltd., Slip. Op. at 19–23
`
`(Ex. 1033).
`
`There is also further evidence that Dr. Ehsani’s approach to interpreting the
`
`8
`
`

`

`IPR2014-00648
`
`
`
`Patent 8,217,612
`
`patent claims was unreliable. For example, sub-step (d)(3) in claim 1 of the ’612
`
`patent is clearly part of step (d), as shown below:
`
`1. Apparatus for controlling activation of a motor coupled to a
`
`motor vehicle window or panel …, said apparatus comprising:
`
`…
`
`d) a controller having an interface coupled to the sensor and the
`
`switch for controllably energizing the motor; said controller
`
`sensing a collision with an obstruction when power is applied to
`
`the controller by:
`
`i) monitoring movement of the window or panel …;
`
`ii) adjusting an obstacle detection threshold in real time …;
`
`iii) identifying a collision of the window or panel with an
`
`obstacle due to a change in the signal from the sensor that is
`
`related to a change in movement of the window or panel by
`
`comparing a value based on a most recent signal from the
`
`sensor with the obstacle detection threshold; and
`
`iv) outputting a control signal ….
`
`Ex. 1001 at 25 (27:12–43) (emphasis added).
`
`However, Dr. Ehsani disagreed that sub-step (d)(3) was part of step (d),
`
`which is plainly contrary to the structure of the claim itself:
`
`Q. Dr. Ehsani, I’m asking you in the expert opinion that you’ve
`
`applied for purposes of your analysis in these proceedings, do you
`
`agree that step D3 is a substep of step D of Claim 1 of the ’612
`
`patent?
`
`A. No, sir, I don’t agree with that.
`
`9
`
`

`

`IPR2014-00648
`
`
`
`Patent 8,217,612
`
`Ex. 1022 at 13 (46:8–12) (emphasis added). Dr. Ehsani construed patent claims
`
`contrary to the structure set forth by their plain language, and this is an additional
`
`reason that his testimony should be excluded as unreliable. Fed. R. Evid. 702.
`
`V. DR. EHSANI RESISTED ANSWERING BASIC QUESTIONS,
`ACTING AS AN ADVOCATE RATHER THAN AN EXPERT
`
`On several occasions at his deposition, Dr. Ehsani resisted answering basic
`
`questions about the patents. He appeared concerned about making admissions that
`
`might not be helpful to Patent Owner’s positions and avoided providing an answer.
`
`While the Board can assess such behavior in assessing the Dr. Ehsani’s credibility,
`
`Petitioner raises this basis for exclusion because Rule 702 requires that a witness
`
`provide testimony from an expert perspective that “will help the trier of fact” to be
`
`admissible; testimony of an advocate is not admissible evidence. Fed. R. Evid.
`
`702. Petitioner provides a few examples of Dr. Ehsani’s resistance to answering
`
`basic questions below.
`
`The ’612 patent does not disclose an example of an algorithm that was
`
`implemented by the inventors (see generally Ex. 1001), but Dr. Ehsani would not
`
`acknowledge this. Ex. 1022 at 2–3 (5:14–7:19). While he disagreed, he resisted
`
`identifying what he believed to constitute such disclosure, as illustrated by this
`
`excerpt:
`
`Q. Does the ’612 patent disclose that algorithm was implemented?
`
`A. My understanding is a patent is not a reporting of past events,
`
`10
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`

`

`IPR2014-00648
`
`
`
`Patent 8,217,612
`
`but it is disclosure of a method or apparatus to the level of enablement
`
`of the reader to reproduce it and not a report of whether that was done
`
`in the past or not.
`
`It is not the way I read a patent.
`
`Q. Okay. You’ve answered a different question, which is how you
`
`read a question patent.
`
`My question is – could I please have my question read back?
`
`(Reporter read requested material)
`
`A. Again, my understanding is that you’re asking me that there is
`
`the reporting of an event in time.
`
`I have to read the patent over to see if a reporting was done. I
`
`read their patent for the disclosure of the invention, and its
`
`embodiment in the specifications.
`
`I have not read the patent, or at least I don’t – I have to read it
`
`over again to see if it reports events of the past. It may be there. It
`
`may not be there.
`
`My understanding is that patents are not written about – you
`
`don’t – you don’t patent events. You patent methods and apparatus.
`
`Q. Let me make this very simple.
`
`If you believe that the ’612 discloses an example of an
`
`algorithm that was implemented, please give me the column and line
`
`numbers where you believe that disclosure is in the patent.
`
`A. As I mentioned to you, the disclosures, as I read them, are
`
`enabling for the claims that it has listed.
`
`My understanding is that it is not necessary for someone to
`
`have actually built one or not.
`
`I have to read the whole patent to – I have actually never read a
`
`11
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`

`IPR2014-00648
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`
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`Patent 8,217,612
`
`patent that said we did this and we did it on such and such date and it
`
`was nice or anything like that. So a description of an event in the
`
`laboratory is probably not in this patent.
`
`But if you are asking me the implication that the person was in
`
`possession of the patent at the time of filing, I believe the answer is,
`
`yes.
`
`Id. at 3 (8:5–9:21). When specifically asked again to identify by column and line
`
`number the disclosure that he believed to constitute an example of an algorithm
`
`that was implemented, Dr. Ehsani continued to resist answering the question. Id. at
`
`3–4 (9:22–11:3). Finally, he took an hour to review the patent and read aloud
`
`various portions of the patent, none of which were responsive to the question.2 Id.
`
`at 4–5 (11:4–15:18). When asked about the very first passage he identified, he
`
`could not identify an example of an algorithm that was implemented in that
`
`disclosure. Id. at 5–6 (15:19–18:20).
`
`As another example, Dr. Ehsani would not answer whether in his view the
`
`term “sensing” has the same meaning in all claims of U.S. Patent No. 7,548,037
`
`(“the ’037 patent,” Ex. 1034), and the extended colloquy ended as follows:
`
`Q. … For purposes of your analysis in this proceeding, did you
`
`
`2 Petitioner is requesting permission to submit a video excerpt of the deposition so
`
`that the Board can see Dr. Ehsani’s testimony discussed herein, as well as the time-
`
`stamps around his hour-long response.
`
`12
`
`

`

`IPR2014-00648
`
`
`
`Patent 8,217,612
`
`interpret the term “sensing” in Claim 1 of the ’037 patent in the same
`
`way that you interpreted the term “sensing” in Claim 13 of the ’037
`
`patent?
`
`A. Not necessarily.
`
`Q. Did you apply a different meaning for sensing in Claim 1 of the
`
`’037 patent than the meaning you provided for the term “sensing” in
`
`Claim 13 of the ’037 patent for purposes of reaching your opinions in
`
`this matter?
`
`A. Only to the extent that I have reported.
`
`Q. So if it’s not in your report, you haven’t considered it?
`
`A. That’s not what I said.
`
`Ex. 1023 at 8 (231:21–232:8); see also id. at 7–8 (228:17–231:20).
`
`As a third example, Dr. Ehsani would not answer whether in his view claim
`
`5 of the ’612 patent is satisfied where sometimes all immediate past measurements
`
`are sensed within 40 ms and sometimes all immediate past measurements used to
`
`detect an obstacle are sensed in more than 40 ms:3
`
`Q. … If sometimes all of the immediate past measurements used
`
`to sense an obstacle are sensed within 40 milliseconds and sometimes
`
`all the immediate past measurements are used to sense an obstacle are
`
`taken in more than 40 milliseconds, does that satisfy Claim 5?
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`
`3 Claim 5 recites: “The apparatus of claim 1 wherein the immediate past
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`measurements of said signal are sensed within a forty millisecond interval prior to
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`the most recent signal from the sensor.” Ex. 1001 at 25 (28:4–6).
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`…
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`A. That’s a legal question, and I don’t think I’ve opined upon in
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`that report. I consider that a hypothetical question.
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`Obviously, it’s legally of great value to you or you wouldn’t
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`ask it, and it’s outside my competence to answer it in a legal sense.
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`So I will answer it with those assumptions – that it’s
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`hypothetical.
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`Q. No.
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`A. And is unrelated to the patent and you’re asking me to
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`hypothesize.
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`Q. (BY MR. SANDERS) …
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`If sometimes all the immediate past measurements used to
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`sense an obstacle are sensed within 40 milliseconds, and sometimes
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`all the immediate past measurements used to sense an obstacle are
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`taken in more than 40 milliseconds, does that satisfy Claim 5?
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`A. Sir, I answer the questions the way I see fit and I’m free to do
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`so, and you’re neither allowed to reinterpret, recharacterize or
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`interrupt it.
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`I answer the question that I understand and I think you’re
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`entitled ask. I’m entitled to answer. You’re not entitled to architect
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`my answers, number one.
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`Number two, where does that question come from? Is that
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`related to anything here? I need to know that. Is this from my report?
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`Is this from the patent? Is this from your imagination? Where is it
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`coming from?
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`If you don’t want to answer that, I accept that too.
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`In the realm of hypothesis, it’s either in my report or it is
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`related to this patent or it’s not. You’re not telling me where it’s
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`coming and I assume it is hypothetical and I will answer it in that
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`context.
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`Now, you’re welcome to correct me if that assumption is wrong
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`by telling me where do you get sometimes inside 40 milliseconds,
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`sometimes outside 40.
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`Where do you get that.
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`Is that a hypothetical thing or does it come someplace that –
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`that we have reported to you.
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`Ex. 1022 at 21 (78:3–80:6).
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`VI. PETITIONER’S UNEXPLAINED AND INADMISSIBLE EXHIBITS
`SHOULD BE EXCLUDED
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`Patent Owner was required to provide “a detailed explanation of the
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`significance of the evidence.” 37 C.F.R. § 42.22(a)(2). However, Patent Owner
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`has not addressed Exhibits 2009–10, 2012–13, 2017, 2022, and 2036, and therefore
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`those exhibits should be excluded. Exhibit 2008 should be excluded because it is
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`inadmissible hearsay from a witness for a different petitioner in a different
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`proceeding, and paragraphs 169–70 of Dr. Ehsani’s declaration also should be
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`excluded on the basis that they respond to this inadmissible exhibit.
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`Dated: May 26, 2015
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`Respectfully submitted,
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`/Charles H. Sanders/
`Charles H. Sanders
`Reg. No.: 47,053
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`Patent 8,217,612
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`Appendix – List of Exhibits
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`Exhibit
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`Description
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`1001
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`U.S. Patent No. 8,217,612 to Boisvert et al.
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`1002
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`Prosecution History of U.S. Patent No. 8,217,612
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`1003
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`Declaration of Hamid A. Toliyat, Ph.D.
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`1004
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`Appendix A to the Declaration of Hamid A. Toliyat, Ph.D.:
`Dr. Toliyat’s curriculum vitae.
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`1005
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`U.K. Published Patent Application GB 2 026 723 to Bernard et al.
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`1006
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`U.S. Patent No. 4,870,333 to Itoh et al.
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`1007
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`U.S. Patent No. 4,468,596 to Kinzl
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`1008
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`Translation of German Published Patent Application DE4000730A1
`to Lamm et al.
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`1009
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`U.S. Patent No. 5,218,282 to Duhame
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`1010
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`U.S. Patent No. 4,831,509 to Jones et al.
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`1011
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`49 CFR Part 571.118 (December 2, 1971)
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`1012
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`Safety Commission Publishes Final Rules for Garage Door Openers,
`U.S. Consumer Product Safety Commission (Dec. 3, 1992)
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`1013
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`U.S. Patent No. 5,334,876 to Washeleski et al.
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`1014
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`U.S. Patent No. 3,513,374 to Koment
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`1015
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`U.S. Patent No. 3,651,389 to Ito et al.
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`1016
`
`Excerpt from Plaintiff UUSI, LLC, d/b/a Nartron’s Disclosure of
`Asserted Claims and Infringement Contentions and Infringement
`Contentions Chart for the ’612 Patent (Feb. 18, 2014)
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`IPR2014-00648
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`Patent 8,217,612
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`Exhibit
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`Description
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`1017
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`German Published Patent Application DE4000730A1 to Lamm et al.
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`1018
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`Certification of Translation of German Published Patent Application
`DE4000730A1 to Lamm et al.
`
`1019
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`U.S. Patent No. 6,064,165 to Boisvert et al.
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`1020
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`49 CFR Part 571.118 (April 16, 1991)
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`1021
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`Reply Declaration of Dr. Toliyat
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`1022
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`Transcript of the Deposition of Dr. Ehsani (March 13, 2015)
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`1023
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`Transcript of the Deposition of Dr. Ehsani (March 14, 2015)
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`1024
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`1025
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`1026
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`1027
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`1028
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`1029
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`Exhibit 1 of the Deposition of Dr. Ehsani (March 13, 2015),
`handwritten notes by Dr. Ehsani
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`Exhibit 2 of the Deposition of Dr. Ehsani (March 13, 2015),
`handwritten notes by Dr. Ehsani
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`Exhibit 3 of the Deposition of Dr. Ehsani (March 14, 2015),
`Patent Owner’s Preliminary Response in IPR2014-00649
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`Exhibit 4 of the Deposition of Dr. Ehsani (March 14, 2015),
`excerpt of U.S. Patent No. 7,548,037 with handwritten notes by Dr.
`Ehsani
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`Exhibit 5 of the Deposition of Dr. Ehsani (March 14, 2015),
`U.S. Patent No. 7,077,462 to De Gaillard
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`Exhibit 6 of the Deposition of Dr. Ehsani (March 14, 2015),
`handwritten notes by Dr. Ehsani
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`1030
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`Prosecution History of U.S. Patent No. 7,579,802
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`1031
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`Petitioner’s Objections to Evidence Submitted with Patent Owner’s
`Response to the Petition
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`IPR2014-00648
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`Patent 8,217,612
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`Exhibit
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`1032
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`Description
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`Bolin v. Chappell, No. 1:99-cv-05279, 2012 U.S. Dist. LEXIS
`179745 (E.D. Cal. Dec. 19, 2012)
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`1033
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`Pacific Coast Marine Windshields Ltd. v. Malibu Boats, LLC,
`No. 6:12-cv-00033, Slip. Op. (M.D. Fla. Jan. 4, 2013)
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`1034
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`U.S. Patent No. 7,548,037 to Boisvert et al.
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`IPR2014-00648
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`Patent 8,217,612
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Petitioner’s
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`Motion to Exclude the Opinion Testimony of Dr. Mark Ehsani and Inadmissible
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`Exhibits and the exhibits thereto (Exhibits 1031–1034) were served on May 26,
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`2015, by email directed to the attorneys of record for Patent Owner at the
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`following addresses:
`
`Monte L. Falcoff (mlfalcoff@hdp.com)
`Hemant M. Keskar (hkeskar@hdp.com)
`HARNESS, DICKEY & PIERCE, P.L.C.
`
`Dated: May 26, 2015
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`
`
`/Charles H. Sanders/
`Charles H. Sanders
`Reg. No.: 47,053
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`