IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________
`
`EASTMAN KODAK COMPANY, AGFA CORPORATION,
`ESKO SOFTWARE BVBA, and HEIDELBERG, USA
`Petitioners
`
`v.
`
`CTP INNOVATIONS, LLC
`Patent Owner
`___________________________
`
`Case IPR2014-00788
`Patent 6,738,155
`___________________________
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`PATENT OWNER’S SECOND MOTION TO EXCLUDE EVIDENCE
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`
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`Filed on behalf of CTP Innovations, LLC
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`By: W. Edward Ramage (Lead Counsel)
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`Reg No. 50,810
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`BAKER, DONELSON, BEARMAN,
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`CALDWELL & BERKOWITZ, P.C.
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`Baker Donelson Center
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`211 Commerce Street, Suite 800
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`Nashville, Tennessee 37201
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`Tel: (615) 726-5771
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`Fax: (615) 744-5771
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`Email: eramage@bakerdonelson.com
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`i
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`TABLE OF CONTENTS
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`TABLE OF AUTHORITIES ................................................................................... iii
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`I.
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`INTRODUCTION ........................................................................................... 1
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`II. OBJECTIONS ................................................................................................. 2
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`III. ARGUMENT ................................................................................................... 2
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`A.
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`B.
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`The Board Should Exclude Apogee (Ex. 1007). ................................... 2
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`The Board Should Exclude Suetens’ Declarations (Exs. 1022 &
`1024). ..................................................................................................... 5
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`C.
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`The Board Should Exclude Jahn's Declaration (Ex. 1023). ................ 13
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`CERTIFICATE OF SERVICE ................................................................................ 17
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`ii
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`CASES
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`TABLE OF AUTHORITIES
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`Page(s)
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`Amini Innov. Corp. v. Anthony Cal., Inc.,
`2006 U.S. Dist. LEXIS 100800 (C.D. Cal. Sept. 21, 2006) (Attach. A) .................5
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`Handi Quilter et al. v. Bernina,
`IPR2013-00364, slip op. ..............................................................................................11, 13
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`In re Cronyn,
`890 F.2d 1158 (Fed. Cir. 1989) .........................................................................................2
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`Mitsubishi Plastics v. Celgard,
`IPR2014-00524, slip. op ..............................................................................................10, 13
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`Nordock Inc. v. Sys. Inc.,
`2013 U.S. Dist. LEXIS 34661 (E.D. Wis. Mar. 13, 2013) (Attach. B) ...................5
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`Palo Alto v. Juniper,
`IPR2013-00369, slip. op. ............................................................................................10, 13
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`OTHER AUTHORITIES
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`37 C.F.R. §§ 42.62 and 42.64 ..................................................................................................1
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`37 C.F.R. § 42.123(b) ........................................................................................................11, 14
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`2 Melville B. Nimmer &David Nimmer, Nimmer on Copyright § 7.16[D] ................4
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`FRE 401 .................................................................................................................................12, 15
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`FRE 401, 402, and 403 ............................................................................................................13
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`FRE 402 .......................................................................................................................................10
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`FRE 402, 403, and 802 ..............................................................................................................5
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`FRE 403 .......................................................................................................................................15
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`FRE 602 .......................................................................................................................................12
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`FRE 801 .......................................................................................................................................15
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`iii
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`FRE 801 and 802 .......................................................................................................................12
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`FRE 802 .......................................................................................................................................15
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`FRE 803(6) and 901 .................................................................................................................10
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`Rule 30(b)(6) ..............................................................................................................................11
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`www.agfahome.com ...................................................................................................................6
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`iv
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`I.
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`INTRODUCTION
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`CTP Innovations, LLC (“Patent Owner”), pursuant to 37 C.F.R. §§ 42.62
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`and 42.64, respectfully moves to exclude the following exhibits from the record
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`and the Board’s consideration in this proceeding: (1) the AGFA Apogee: The PDF-
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`based Production System brochure (“Apogee”) (Ex. 1007 and Attachment A to
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`Exhibit 1022); (2) the Declaration of Johan Suetens and attachments (Exhibit
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`1022); (3) the Declaration of Michael Jahn (Ex. 1023); and (4) the Supplemental
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`Declaration of Johan Suetens (Ex. 1024).
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`Petitioners bear the burden to show that Apogee was published prior to the
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`earliest effective filing date of the subject patent. As shown by Suetens’ testimony
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`at his deposition, neither Apogee on its face nor Suetens’ Declaration proves that
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`Apogee was published prior to the earliest effective filing date. For those reasons,
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`Patent Owner filed its Motion to Exclude (Paper 18) (“First Motion to Exclude”).
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`Petitioners chose to treat the First Motion to Exclude as objections to
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`Apogee and Mr. Suetens’ Declaration. In a Trojan-horse attempt to cure the fatal
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`flaw in Apogee’s admissibility, they submitted to Patent Owner and later filed with
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`their reply Mr. Jahn’s Declaration and Mr. Suetens’ Supplemental Declaration.
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`The latest filed declarations, however, do not demonstrate that Apogee was
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`published prior to the effective filing date and, for that reason alone, should be
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`excluded. Moreover, further basis for exclusion of the declarations exists because
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`1
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`they are overt attempts to introduce supplemental information and new grounds for
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`unpatentability long after such submissions are permitted and without the Board’s
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`consent. Finally, the latest declarations contain numerous additional evidentiary
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`flaws that should result in their exclusion.
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`II. OBJECTIONS
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`Patent Owner timely stated its objections to Exs. 1007 and 1022 at least as
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`early as April 2, 2015. (Paper 18). Patent Owner further stated its objections to
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`Exs. 1007, 1022, 1023, and 1024 on April 20, 2015. See Ramage Decl., Ex. 2018.
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`III. ARGUMENT
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`A. The Board Should Exclude Apogee (Ex. 1007).
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`
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`Apogee should be excluded because Petitioners have failed to establish that
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`it was distributed outside of Agfa or was otherwise publicly accessible.
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`Petitioners have the burden of establishing that Apogee is a “printed publication”
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`prior to the critical date of the subject patent. In re Cronyn, 890 F.2d 1158, 1159
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`(Fed. Cir. 1989). This determination involves a case-by-case inquiry into the facts
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`and circumstances of whether the reference was disclosed to members of the
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`public. Id. at 1161. Petitioners rely upon Apogee throughout the petition as one of
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`the essential elements of its unpatentiability arguments. See generally Petition.
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`Neither Mr. Suetens’ declarations nor deposition testimony prove that
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`Apogee was distributed beyond Agfa or accessible by the public. At best, his
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`testimony establishes that Apogee was printed and stored internally in a warehouse
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`outside the United States, and Agfa subsidiaries could then access it internally.
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`Although he purports in his supplemental declaration that Apogee was shipped to
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`Agfa subsidiaries, he lacks personal knowledge and merely repeats what was
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`allegedly told to him by unidentified third parties. He does not provide any actual
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`first-hand knowledge that Apogee was ever actually ordered or distributed to the
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`Agfa subsidiaries, and he provides no evidence that the Agfa subsidiaries thereafter
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`distributed or made accessible to the public.
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`Mr. Jahn’s Declaration likewise does not prove that Apogee was distributed
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`or made it accessible to the public. Instead, Mr. Jahn only states that he distributed
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`an alleged prior version of Apogee at two conferences and made it available on his
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`personal website. Ex. 1024 at ¶¶ 10-12. Although Mr. Jahn states in his
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`declaration that he personally distributed it to members of the public beginning in
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`1998 (id. at ¶ 9), he only actually provides examples of distribution of the alleged
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`earlier version of Apogee and intermingles his phrase “Apogee Exhibit” (which he
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`defines as Apogee) while actually discussing alleged public availability of the
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`alleged earlier version. Compare id. at ¶ 10 (“…where I...distributed an earlier
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`version of the Apogee Exhibit”) with ¶ 11 (“The Apogee Exhibit was the literature
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`that attendees were given to take back to their office.”). The Board should not
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`accept Petitioners’ attempted sleight of hand to show Apogee’s distribution.
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`3
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`Petitioners also cannot rely on the alleged electronic publication of Apogee.
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`“An electronic publication, including an on-line database or Internet publication, is
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`considered to be a ‘printed publication’ . . . provided the publication was accessible
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`to persons concerned with the art to which the document relates.” MPEP §
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`2128(II)(A). “Prior art disclosures on the Internet or on an on-line database are
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`considered to be publicly available as of the date the item was publicly posted.
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`Absent evidence of the date that the disclosure was publicly posted, if the
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`publication itself does not include a publication date (or retrieval date), it cannot be
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`relied upon as prior art. . . .” MPEP § 2128(II)(B). There is no actual evidence that
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`Apogee ever was actually posted online.
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`Although the Agfa document has a copyright notice that states a year
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`without a month, this alone is insufficient to establish a date of publication for
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`prior art purposes. There is nothing in the record to indicate that Apogee was
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`registered with the United States Copyright Office. Indeed, no registration has
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`been submitted. Under these circumstances, a bare assertion of copyright notice is
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`insufficient to constitute prima facie evidence of publication. See 2 Melville B.
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`Nimmer & David Nimmer, Nimmer on Copyright § 7.16[D].
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`Because Petitioners cannot rely on the copyright date printed on the Apogee
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`promotional materials as prima facie evidence of publication, Petitioners must rely
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`on specific publication and retrieval dates by the public. Petitioners have not
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`provided that evidence. Therefore, Apogee is not prior art and should be excluded
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`under Fed. R. Evid. (“FRE”) 402, 403, and 802. See Nordock Inc. v. Sys. Inc.,
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`2013 U.S. Dist. LEXIS 34661, at *7 (E.D. Wis. Mar. 13, 2013); Amini Innov.
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`Corp. v. Anthony Cal., Inc., 2006 U.S. Dist. LEXIS 100800, at *19 (C.D. Cal.
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`Sept. 21, 2006).
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`B. The Board Should Exclude Suetens’ Declarations (Exs. 1022 &
`1024).
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`The Board should exclude Suetens’ Declaration (Ex. 1022) and attachments
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`thereto because Suetens’ statements in the declaration are not accurate and are
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`made without personal knowledge. Further, Suetens’ Supplemental Declaration
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`(Ex. 1024) is untimely and improperly submitted supplemental information, not
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`supplemental evidence; does not rectify the evidentiary flaws in his first
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`declaration; and has separate evidentiary flaws.
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`1.
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`Suetens Declaration: Petitioners rely upon the Suetens Declaration to
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`establish that Apogee was publically available prior to the earliest effective filing
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`date of the subject patent, and rely upon it in the Petition. See Ex. 1022 at ¶ 6;
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`Paper 1 at 5; Paper 24 at 17-22. Suetens makes several affirmative statements
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`regarding Apogee’s distribution and availability. He states that Apogee was
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`distributed shortly after March 7, 1998 press briefing. See Ex. 1022 at ¶ 7. He
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`states that it was available shortly after that briefing in printed and electronic form,
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`and was distributed world-wide through the Agfa sales departments. Id. at ¶ 8. He
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`5
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`states that it was available to the public at several seminars, exhibitions and demos
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`of an undefined class of Apogee-brand products to the public. Id. at ¶ 9. He states
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`that Agfa’s marketing-communications department made Apogee available to the
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`public no later than the press briefing of May 28, 1998, and possibly as early as the
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`March 17, 1998 press briefing, as an electronic PDF-file for downloading to the
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`public at the website www.agfahome.com. Id. at ¶ 11. He further states that,
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`based upon the above and the excerpt from the user interface of the database entry
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`in Agfa’s Enterprise Management System (Attachment D), Apogee was available
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`to the public no later than the May 28, 1998 press briefing, and possibly as early as
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`the March 17, 1998 press briefing. Id. at ¶ 12.
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`Mr. Suetens’ deposition testimony, however, tells a different story. As
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`detailed below, Mr. Suetens’ deposition reveals that he has no actual personal
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`knowledge of when (or even if) Apogee was distributed to the public, made
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`available to the public, or provided to any member of the public.
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`As a preliminary matter, Mr. Suetens did not write or create Apogee and
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`does not know who wrote it. Ex. 2016 at 25:17-23. He was not involved in its
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`production. Id. at 26:23-25. He did not make any decisions on when to make it
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`available to the public. Id. at 35:5-8.
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`Since 1985, Mr. Suetens has always been a member of the marketing-
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`communication department of Agfa.
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`Id. at 25:11-13. The marketing-
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`communication department of Agfa does not provide documents - including
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`Apogee - directly to the public. Instead, that department made documents
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`available to subsidiaries. Id. at 23:8-24:10. According to Mr. Suetens, the Agfa
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`sales people outside of the marketing-communications department may have
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`firsthand knowledge of the distribution of Apogee to a customer or potential
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`customer (if such distribution actually occurred, which is unsupported by the
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`record in this proceeding in light of his deposition testimony), but he does not
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`know who that would be. Id. at 34:19-35:8.
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`Mr. Suetens repeatedly testified that he does not have any firsthand
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`knowledge of Apogee’s distribution to any customer or potential customers - let
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`alone when or even if it was actually distributed outside of Agfa. Id. at 34:4-18,
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`40:7-41:1. He has never been involved in any face-to-face meeting with customers
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`or potential customers. Id. at 25:7-10. He does not have any knowledge of the
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`actual distribution of Apogee to a customer or potential customer at a Seybold
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`conference. Id. at 28:16-25. He has never seen Apogee being handed over to a
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`customer. Id. at 29:3-9. Mr. Suetens has no knowledge of any member of the
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`public ordering copies of Apogee, or receiving Apogee. Id. at 52:8-23.
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`Regarding Apogee’s alleged online availability, Mr. Suetens similarly lacks
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`any personal knowledge. Although he attempts to testify that Apogee was on
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`Agfa’s website, his testimony is directly to the contrary. He did not put a PDF of
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`the document up on the Agfa website; he did not see it being put up; he does not
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`know who, if anyone, put it up; and, in fact, he does not remember seeing it on the
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`website. Id. at 48:3-49:21. He cannot say that it was put up on the website on a
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`particular date, and admits that there are no attachments to his declaration that
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`shows when Apogee would have been posted. Id. at 49:18-50:4. Likewise, there
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`is not a single document in the record of this proceeding that evidences Apogee’s
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`display on any website.
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`Mr. Suetens further testified that he does not have any personal knowledge
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`of when the printed form would have been distributed to Agfa subsidiaries, other
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`than possibly assisting in preparing packages for shipment to subsidiaries for trade
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`shows and Seybold conferences. Id. at 50:5-23. However, he also testified that he
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`does not remember what he put in the shipment for the Seybold conferences, and
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`does not know if that particular document was included in a shipment to the Agfa
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`United States subsidiary. Id. at 31:4-32:5. He did not then work with any
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`salespeople for the Agfa U.S. subsidiary at the time. Id. at 33:6-9. He did not
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`attend the conference, and he has no knowledge of actual distribution of the
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`document to a customer or potential customer in 1998. Id. at 33:22-34:15.
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`In his declaration, Mr. Suetens references an announcement about the
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`Apogee system being made at Seybold NYC 97 in New York. Ex. 1022 at ¶ 7.
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`However, he did not attend that Seybold conference, and, in fact, has not attended
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`any Seybold conference. Ex. 2016 at 28:17-23, 39:1-7. He also cannot tell if the
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`product being announced at Seybold NYC 97 was the same product that was
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`reported as being commercially released in June 1998. Id. at 37:8-38:3. No copy
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`of that announcement has been provided, and he does not know what form the
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`announcement would have taken. Id. at 39:8-23.
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`Attachment D to the Declaration does not establish public availability.
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`Instead, Attachment D is a screen dump from Afga’s SAP system showing that a
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`number of Apogee document pieces were printed for the marketing department and
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`went into the Agfa warehouse in Antwerp. Id. at 42:8-45:18. Documents in this
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`warehouse are not publicly accessible; they are available to Agfa subsidiaries for
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`ordering. Id. at 45:19-46:1. Agfa, in theory, should have a document that would
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`show when Apogee was distributed to the various subsidiaries; however, Mr.
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`Suetens’ Declaration does not have any documentary evidence that shows
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`distribution from the warehouse to the subsidiaries. Id. at 42:12-44:6.
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`Although Apogee bears a copyright notice, Mr. Suetens testified that he is
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`not responsible for copyright notices, and he does not file copyright registrations.
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`Id. at 46:16-47:6. He does not know if Apogee was ever registered for a copyright,
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`nor if there is a copyright registration certificate. Id. at 47:14-21.
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`The above deposition testimony makes clear that Mr. Suetens lacks any
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`knowledge or basis for making the statements in his declaration concerning the
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`public accessibility of Apogee. At a minimum, paragraphs 6-12 of the declaration,
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`and Attachments A and D thereto, should be excluded as being made without
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`personal knowledge or basis under FRE 602; and for failing to properly
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`authenticate or provide foundation for documents relied on by the declarant under
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`FRE 803(6) and 901. The remaining paragraphs and attachments do nothing to
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`establish a prior art printed publication date for Apogee, and thus are irrelevant
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`under FRE 402.
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`2.
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`Suetens’ Supplemental Declaration: The Board should exclude the
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`Supplemental Declaration for at least five reasons. First, the Supplemental
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`Declaration is supplemental information, not supplemental evidence, and should be
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`excluded. Mr. Suetens states that he is submitting the supplemental declaration to
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`clarify some data fields that he was not able to identify during his deposition,
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`provide additional testimony about the public availability of the Apogee reference,
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`and provide additional records that bolster Petitioners’ argument that Apogee was
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`publicly available in 1998. Ex. 1024 at ¶¶ 2-15; Paper 24 at 17-22. Information
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`submitted to the Board that is directed to the public accessibility of Apogee is per
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`se supplemental information - not supplement evidence as Petitioners allege -
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`because Apogee serves as one of Petitioners’ asserted bases for unpatentability.
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`See Mitsubishi Plastics v. Celgard, IPR2014-00524, slip. op. (Paper 30) at 5-6
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`(PTAB Nov. 28, 2014); Palo Alto v. Juniper, IPR2013-00369, slip. op. (Paper 37)
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`10
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`at 3 (PTAB Feb. 5, 2014). Petitioners have not sought leave from the Board to
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`submit supplemental information or shown “why the supplemental information
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`reasonably could not obtained earlier, and that the consideration of the
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`supplemental information would be in the interest-of-justice.” 37 C.F.R. §
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`42.123(b). Petitioners have not made any attempt to file a Section 123 motion;
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`have insisted that the declarations be treated as supplemental evidence; and yet
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`have used the contents of the declaration to argue on the merits it their reply brief
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`(Paper 24 at 17-22). Accordingly, the Supplemental Declaration should be
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`excluded. See Handi Quilter et al. v. Bernina, IPR2013-00364, slip op. (Paper 30)
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`at 2-3 (PTAB June 12, 2014).
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`Second, Mr. Suetens states that, since his deposition where he testified that
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`he did not know what a portion of user-interface screen capture meant, he has
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`“been educated as to the meaning of those data fields by Agfa personnel who I rely
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`on for my data.” Ex. 1024 at ¶ 2. Mr. Suetens, therefore, has no more personal
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`knowledge now than he had when the first declaration was filed. Instead, he is
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`regurgitating information acquired from unidentified third party witnesses. This is
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`not a corporate representative declaration (such as a corporate witness in a Rule
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`30(b)(6) deposition) where he can be made the person most knowledgeable of
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`corporate practices; this is a declaration by an individual. Moreover, a sworn
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`statement made without knowledge cannot later be made admissible by
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`subsequently obtaining knowledge sufficient to have made the statement in the first
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`instance. His statements should be excluded for lack of personal knowledge under
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`FRE 602 and constituting hearsay under FRE 801 and 802.
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`Third, Mr. Suetens’ supplemental declaration and new exhibits do not
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`actually support his argument that Apogee was distributed to the public in 1998.
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`In paragraphs 3 through 15, he describes Agfa’s internal circulation of Apogee, not
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`its public distribution. Ex. 1024 at ¶¶ 3-15. Mr. Suetens still cannot testify, and
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`has not testified, that Apogee was actually publicly available in 1998.
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`Fourth, Suetens continues to present statements about the attached
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`documents that are facially untrue. In ¶ 8, for example, Suetens asserts that
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`“Attachment H is a true and accurate copy of invoices sent to Agfa customers and
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`promotional employees,” but the invoices in question on their face are all internal,
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`i.e., from one Agfa entity to another. There is no invoice to any Agfa customer, or
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`any invoice showing distribution to the public. Testimony of Apogee’s internal
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`circulation is irrelevant to the issue of public availability, or the admissibility of his
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`own earlier declaration, and, therefore, is inadmissible under FRE 401.
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`Fifth,
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`the collective
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`lack of knowledge, erroneous statements, and
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`contradictory statements render the entirety of his supplemental declaration (as
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`well as his original declaration) unreliable to such an extent that it does not make
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`12
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`any fact more or less probable and is unfairly prejudicial. Therefore, it should be
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`excluded under FRE 401, 402, and 403.
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`C. The Board Should Exclude Jahn's Declaration (Ex. 1023).
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`The Board should exclude Mr. Jahn’s Declaration for at least four reasons.
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`First, the declaration is supplemental information, not supplemental evidence.
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`Information alleged to confirm the public accessibility of originally cited prior art
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`may be submitted as supplemental information under § 42.123(a), provided it does
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`not change the grounds of unpatentability authorized in the proceeding, and does
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`not change the evidence initially presented in the petition to support those grounds.
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`Mitsubishi Plastics, Paper 30 at 5-6; Palo Alto, Paper 37 at 3. The entirety of the
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`declaration is intended to bolster or confirm the public availability of Apogee.
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`Paper 24 at 20-22. Moreover, Petitioners implicitly admit that it is supplemental
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`evidence because they use the declaration and statements therein to argue on the
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`merits in their reply brief (Paper 24 at 20-22). Handi Quilter, Paper 30 at 3
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`(supplemental evidence may not be used “to support any argument on the merits”).
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`The improperly submitted supplemental information must be excluded.
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`Second, the declaration also is an overt attempt to introduce wholly new
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`grounds for unpatentability, namely, the alleged earlier version of Apogee. Mr.
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`Jahn describes his alleged experience with the earlier version of Apogee, but a
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`careful reading of his statements in context do not show any evidence that Apogee
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`13
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`was publicly available. Mr. Jahn vacillates between using “the Apogee Exhibit” to
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`refer to Apogee (Ex. 1007) and the “earlier version;” however, other than a
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`summary statement in ¶ 9 in which he claims to have distributed Apogee, none of
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`the factual details and documents that follow the summary actually pertain the
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`distribution of Apogee. Instead, all of the factual details and documents pertain to
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`the alleged earlier version and distribution or publication of that prior version. Ex.
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`1023 ¶¶ 13, 15-26 & Attachments C-G. These documents were not presented with
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`the petition. Petitioners have not sought leave from the Board to submit
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`supplemental information or shown “why the supplemental information reasonably
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`could not obtained earlier, and that the consideration of the supplemental
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`information would be in the interest-of-justice.” 37 C.F.R. § 42.123(b). Petitioners
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`have not made any attempt to file a Section 123 motion and insist the declarations
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`be treated as supplemental evidence. Yet again, Petitioners have used Jahn’s
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`Declaration to argue in support of the merits of its claims. See Reply at 20-22.
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`The declaration should be excluded.
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`Third, even in a light most favorable to Petitioners, it is unclear, at best,
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`whether Apogee (Ex. 1007) was distributed at the Vue/Point conference and PIRA
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`International meeting. Because the burden is on Petitioners to prove the date of
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`publication (and prove unpatentability generally), this ambiguity must be construed
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`against Petitioners and
`
`the declaration and statements
`
`therein excluded.
`
`Ambiguous statements cannot be used to deprive Patent Owner of its rights.
`
` Fourth, Mr. Jahn’s Declaration and the statements therein are not
`
`admissible. Mr. Jahn testifies about different versions of Apogee, and this earlier
`
`version of Apogee is only shown to be displayed via website in 2001. This
`
`evidence is irrelevant to and does not solve Apogee’s evidentiary flaws raised by
`
`Patent Owner. Accordingly, it is inadmissible under FRE 401. Moreover,
`
`admission of the declaration is unfairly prejudicial under FRE 403 because it asks
`
`the Board to determine if Apogee was actually distributed or published because
`
`another document may have been distributed or published. Petitioners must carry
`
`their burden by presenting actual, verifiable, first-hand evidence of public
`
`availability. They have failed to do so.
`
` Petitioners also did not seek to introduce Christopher Butler’s affidavit
`
`directly as an exhibit, but instead have introduced it as an “attachment” to an
`
`exhibit. See Ex. 1023 ¶ 13 & Attachment C. This affidavit relates to Mr. Jahn’s
`
`website, and is inadmissible under FRE 401 as being irrelevant because it shows
`
`the allegedly earlier version of Apogee published in 2001 - well after the effective
`
`date at issue. It does not prove that the earlier version of Apogee - let alone
`
`Apogee itself - was publicly available on Mr. Jahn’s personal website in 1998.
`
`This is hearsay under FRE 801 and thus should be excluded under FRE 802.
`
`15
`
`
`
`

`

`
`Dated: June 11, 2015
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`BAKER, DONELSON, BEARMAN,
`CALDWELL & BERKOWITZ, P.C.
`
`
`
`/W. Edward Ramage/
`W. Edward Ramage, Reg. No. 50,810
`BAKER, DONELSON, BEARMAN,
`CALDWELL & BERKOWITZ, P.C.
`Baker Donelson Center
`211 Commerce Street, Suite 800
`Nashville, Tennessee 37201
`Tel: (615) 726-5771
`Fax: (615) 744-5771
`Email: eramage@bakerdonelson.com
`
`for Patent Owner CTP
`Counsel
`Innovations, LLC
`
`
`
`16
`
`
`
`

`

`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that, on June 11, 2015, the foregoing
`
`Motion to Exclude (including attachments thereto) was served in its entirety via
`
`U.S. Express Mail, postage prepaid, and electronic mail upon the following:
`
`
`
`Scott A. McKeown
`OBLON, SPIVAK, MCCLELLAND,
`MAIER & NEUSTADT, LLP.
`1940 Duke Street
`Alexandria, VA 22314
`Tel: (703) 412-6297
`Fax: (703) 413-2220
`Email: cpdocketmckeown@oblon.com
` cpdocketkiklis@oblon.com
`
`
`
`
`
`
`
`/W. Edward Ramage/
`W. Edward Ramage, Reg. No. 50,810
`
`
`
`
`
`17
`
`
`
`

`

`Amini Innovation Corp. v. Anthony California Inc., Not Reported in F.Supp.2d (2006)
`2006 WL 6855371
`
`who is retained or specially employed to provide expert
`testimony in the case or whose duties as an employee
`of the party regularly involve giving expert testimony,
`be accompanied by a written report prepared and signed
`by the witness. The report shall contain a complete
`statement of all opinions to be expressed and the basis
`and reasons therefor; the data or other information
`considered by the witness in forming the opinions; any
`exhibits to be used as a summary of or support for the
`opinions; the qualifications of the witness, including a
`list of all publications authored by the witness within the
`preceding ten years; the compensation to be paid for the
`study and testimony; and a listing of any other cases in
`which the witness has testified as an expert at trial or by
`deposition within the preceding four years.”
`These criticisms are off the mark. Defendants are entitled
`to provide a rebuttal expert under the FRCP, and as Mr.
`McConaughy's report and testimony are “intended solely to
`contradict or rebut” the Plaintiff's report it was not necessary
`for Mr. McConaughy to conduct its own damage calculations.
`FRCP 26(a)(2)(C). 2
`
`2
`
`“(C) These disclosures shall be made at the times and
`in the sequence directed by the court. In the absence
`of other directions from the court or stipulation by the
`parties, the disclosures shall be made at least 90 days
`before the trial date or the date the case is to be ready
`for trial or, if the evidence is intended solely to contradict
`or rebut evidence on the same subject matter identified
`by another party under paragraph (2)(B), within 30 days
`after the disclosure made by the other party. The parties
`shall supplement these disclosures when required under
`subdivision (e)(1).”
`The Court finds upon reviewing the deposition transcripts
`that Mr. McConaughy did not testify that “he could not
`find anything wrong with Plaintiff's ... opinion.”Rather, Mr.
`McConaughy stated that Plaintiff's opinion was conclusory
`and therefore that it was impossible to determine the
`appropriateness of the methods or results contained in
`Plaintiff's opinion.
`
`  
`


`      
`!" # $ %&
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`()*+* *++,(-*+ %./
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`+ %, 

3
` 45
`
` 6 #7 & 
`
`Named Expert: Daniel L. McConaughy, Shepard Vineburg,
`Robert Trout
`
`Attorneys and Law Firms
`
`Daniel Miles Cislo, Donald M. Cislo, Mark D. Nielsen, Cislo
`and Thomas LLP, Santa Monica, CA, for Amini Innovation
`Corp.
`
`Lisa A. Karczewski, Thomas Tak–Wah Chan, Chan Law
`Group, Michael Hyungchoon Kim, Michael H. Kim PC,
`Ronald M. St. Marie, Doll Amir and Eley, Los Angeles, CA,
`for Anthony California Inc.
`
`PROCEEDINGS (in chambers):
`Order re Motions in Limine
`
`The Honorable S. JAMES OTERO, District Judge.
`
`*1 Victor Paul Cruz, Courtroom Clerk.
`
`Plaintiff's Motion in Limine # 1
`Plaintiff moved to exclude the report and testimony of
`Defendants' witness Daniel McConaughy under FRE 702.
`Mr. McConaughy was offered as a rebuttal expert witness
`under FRCP 26(a)(2) (B), 1 to explain to the jury flaws with
`the methodology he perceives in Plaintiff's expert reports.
`Plaintiff argues that Mr. McConaughy's report is deficient
`for failing to contain its own damage calcula