Paper 30
`Filed: June 15, 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 REPLY IN SUPPORT OF ITS MOTION
`TO EXCLUDE THE OPINION TESTIMONY OF
`DR. MARK EHSANI AND INADMISSIBLE EXHIBITS
`
`Attorney Docket: 130163.231151
`
`
`
`
`Filed: June 15, 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 REPLY IN SUPPORT OF ITS 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.
`
`III.
`
`It is Undisputed Rule 702 Supports Exclusion of Dr. Ehsani’s
`Testimony If He Applied the Presumption of Validity, and He
`Testified That He Did So ................................................................................. 1
`
`Dr. Ehsani Volunteered That He Was Unable to Interpret Claims
`More Broadly Than the Preferred Embodiment .............................................. 3
`
`Patent Owner Ignores the Testimony Petitioner Identified As
`Indicating Dr. Ehsani’s Resistance .................................................................. 5
`
`IV. Patent Owner Offers No Basis for Admitting Most of the Identified
`Exhibits ............................................................................................................ 5
`
`
`
`
`
`i
`
`
`
`IPR2014-00648
`
`
`
`Patent 8,217,612
`
`CASES
`
`TABLE OF AUTHORITIES
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ............................................................ 3
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.22 ....................................................................................................... 5
`
`37 C.F.R. § 42.23 ....................................................................................................... 1
`
`ii
`
`
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`IPR2014-00648
`
`
`
`Patent 8,217,612
`
`While Patent Owner’s opposition (Paper 28) is filled with accusatory and
`
`hyperbolic rhetoric, the disputed issues are narrow and the record supports
`
`exclusion of the paragraphs of Dr. Ehsani’s declaration and most of the exhibits
`
`identified in Petitioner’s motion (Paper 26). There are no legal issues in dispute,
`
`and few disputed issues of fact. Indeed, Patent Owner failed to include “a listing
`
`of facts that are admitted, denied, or cannot be admitted or denied,” as required by
`
`37 C.F.R. § 42.23(a) in responding to Petitioner’s statement of material facts.
`
`Therefore, those material facts “may be considered admitted.” Id.
`
`I.
`
`IT IS UNDISPUTED RULE 702 SUPPORTS EXCLUSION OF DR.
`EHSANI’S TESTIMONY IF HE APPLIED THE PRESUMPTION OF
`VALIDITY, AND HE TESTIFIED THAT HE DID SO
`
`Patent Owner does not dispute that Dr. Ehsani’s testimony should be
`
`excluded if he applied the presumption of validity. Patent Owner does not respond
`
`to the case law supporting exclusion of expert testimony at a bench trial where the
`
`expert applies an incorrect legal standard. Instead, Patent Owner argues that Dr.
`
`Ehsani did not testify that he applied the presumption. However, Patent Owner
`
`failed to respond to Petitioner’s statement of material fact, “Dr. Ehsani testified
`
`that he applied a presumption of validity for the purposes of his analysis” (Paper
`
`26 at 2), so the Board may consider it admitted. Regardless, even if Patent
`
`Owner’s argument were considered, it would not change the fact that Dr. Ehsani
`
`testified that he applied the presumption of validity for purposes of his analysis.
`
`1
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`
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`IPR2014-00648
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`
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`Patent 8,217,612
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`Patent Owner first contends that “Petitioner conveniently omitted” page 212,
`
`lines 4–12, of Dr. Ehsani’s testimony. Paper 28 at 2. That is incorrect. Petitioner
`
`quoted Dr. Ehsani’s entire answer, including those lines. Paper 26 at 5–6 (quoting
`
`Ex. 1023 at 3 (211:19–212:17)). This testimony evidences that Dr. Ehsani was
`
`clearly asked whether he believed that a presumption of validity applied for
`
`purposes of his analysis, and clearly answered “Yes” when asked for confirmation
`
`that he applied it for purposes of his analysis in this proceeding. Id.
`
`Patent Owner next argues that Dr. Ehsani was not further asked about the
`
`clear and convincing evidence burden of proof, but this does not negate his
`
`testimony that he applied the wrong legal standard. Moreover, the main disputes
`
`here concern claim construction, and Dr. Ehsani’s application of the wrong legal
`
`standard primarily manifested itself in his unduly narrow constructions. See
`
`generally Paper 24. If Patent Owner had wished to try to show that Dr. Ehsani’s
`
`application of the presumption somehow did not infect his opinions, Patent Owner
`
`could have explored this issue on redirect examination. Patent Owner did not do
`
`so. Patent Owner merely argues that Dr. Ehsani reviewed the petitions and
`
`Petitioner’s expert declarations, but this is not probative of the legal standards he
`
`applied. He never adopted the legal standards set forth by Petitioner and
`
`Petitioner’s experts.
`
`2
`
`
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`IPR2014-00648
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`
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`Patent 8,217,612
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`II. DR. EHSANI VOLUNTEERED THAT HE WAS UNABLE TO
`INTERPRET CLAIMS MORE BROADLY THAN THE PREFERRED
`EMBODIMENT
`
`Patent Owner does not dispute that, under a proper approach to claim
`
`construction, claims are not confined to the preferred embodiments. Phillips v.
`
`AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc). In addition, Patent
`
`Owner did not respond to Petitioner’s statement of material fact, “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” (Paper 26 at 2), so the Board may consider it admitted. Regardless,
`
`Patent Owner’s arguments also fail on the merits.
`
`Patent Owner argues, “Petitioner cites Dr. Ehsani’s testimony taken out of
`
`context and then exaggerates and mischaracterizes it.” Paper 28 at 3. To the
`
`contrary, Dr. Ehsani volunteered that he could not tell whether the patent claims
`
`could be interpreted more broadly than the preferred embodiment:
`
`Q. In your view of the invention of the ’612 patent are directed to
`
`an obstacle detection methods that use some parameters that have one-
`
`to-one linkage to speed and to torque, correct?
`
`A. Well, as I recall, it says two parameters and we are – the
`
`preferred embodiment that narrows down. I’m not a lawyer to
`
`understand interpretation outside of the preferred embodiment by
`
`the patent. I have analyzed the preferred embodiment.
`
`Q. So you –
`
`3
`
`
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`IPR2014-00648
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`Patent 8,217,612
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`A. I cannot tell if the patent can be interpreted more broadly
`
`than that.
`
`Ex. 1022 at 17 (64:3–14) (emphasis added).
`
`Furthermore, Dr. Ehsani’s testimony that the’612 patent claims require
`
`parameters indicative of speed and torque in a one-to-one manner (id. at 16
`
`(59:14–60:3)) evidences his improperly confining the claims to the preferred
`
`embodiment. The term “torque” does not appear in any claim. Dr. Ehsani read in
`
`“torque” (or a parameter that varies with it in a one-to-one manner) based on the
`
`preferred embodiment’s use of pulse period. See id. at 14–15 (53:16–18, 53:19–
`
`54:3). Patent Owner tries to explain away his testimony based on “Dr. Ehsani’s
`
`correct understanding that the two parameters in the claim at issue are broader than
`
`the alleged preferred embodiment” (Paper 28 at 6), but Patent Owner actually has
`
`adopted his error. There is no reference to two parameters in claim 1 of the ’612
`
`patent; there is only a reference to “speed.” Ex. 1001 at 25 (27:17–19)). Dr.
`
`Ehsani improperly read in a second parameter based on the preferred embodiment.
`
`Patent Owner also fails to explain away Dr. Ehsani’s testimony that sub-step
`
`(d)(3) is not part of step (d) in claim 1 of the ’612 patent—another material fact
`
`unanswered by Patent Owner. See Paper 26 at 2. Patent Owner seeks to recast this
`
`testimony on the basis that Dr. Ehsani “is highly educated” (Paper 28 at 8), but his
`
`education is no basis for reimaging his testimony.
`
`4
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`IPR2014-00648
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`
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`Patent 8,217,612
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`III. PATENT OWNER IGNORES THE TESTIMONY PETITIONER
`IDENTIFIED AS INDICATING DR. EHSANI’S RESISTANCE
`
`Petitioner quoted at length multiple examples where Dr. Ehsani resisted
`
`answering basic questions, presumably out of concern for making admissions
`
`against Patent Owner’s interests. Patent Owner fails to specifically respond to any
`
`of them. Instead, Patent Owner vaguely asserts that many questions had problems,
`
`without identifying a single example. Indeed, almost all the testimony Petitioner
`
`identified as indicative of Dr. Ehsani’s resistance was adduced without objection.
`
`Patent Owner’s non-responsiveness is telling. Petitioner’s statement of material
`
`fact, “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” (Paper 26 at 2), stands unrebutted by any contrary evidence.
`
`IV. PATENT OWNER OFFERS NO BASIS FOR ADMITTING MOST OF
`THE IDENTIFIED EXHIBITS
`
`Patent Owner’s only argument for admitting Exhibits 2009–10, 2012–13,
`
`and 2017 is that Dr. Ehsani listed them among the materials he reviewed.
`
`However, he did not cite them or explain their significance in offering any opinion,
`
`as would be required to rely to support admissibility under 37 C.F.R. § 42.22(a)(2)
`
`and the Federal Rules of Evidence. Patent Owner also concedes that Exhibit 2022
`
`is not being offered as evidence. Exhibit 2008 is not being affirmatively offered by
`
`any party in this proceeding. Petitioner withdraws its objections to Exhibit 2036.
`
`5
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`
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`IPR2014-00648
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`
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`Patent 8,217,612
`
`Dated: June 15, 2015
`
`Respectfully submitted,
`
`/Charles H. Sanders/
`Charles H. Sanders
`Reg. No.: 47,053
`
`6
`
`
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`IPR2014-00648
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`
`
`Patent 8,217,612
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Petitioner’s
`
`Reply in Support of its Motion to Exclude the Opinion Testimony of Dr. Mark
`
`Ehsani and Inadmissible Exhibits was served on June 15, 2015, by email directed
`
`to the attorneys of record for Patent Owner at the following addresses:
`
`Monte L. Falcoff (mlfalcoff@hdp.com)
`Hemant M. Keskar (hkeskar@hdp.com)
`HARNESS, DICKEY & PIERCE, P.L.C.
`
`Dated: June 15, 2015
`
`
`
`/Charles H. Sanders/
`Charles H. Sanders
`Reg. No.: 47,053
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