`
`
`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 IPR2014-00789
`Patent 6,738,155
`___________________________
`
`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
`
`
`
`Filed on behalf of CTP Innovations, LLC
`
`By: W. Edward Ramage (Lead Counsel)
`
`Reg No. 50,810
`
`Samuel F. Miller (Back-up Counsel)
`
`(pending pro hac vice admission)
`
`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
`
`
` smiller@bakerdonelson.com
`
`
`
`
`
`
`

`

`
`
`
`
`
`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES ................................................................................. ii
`
`I.
`
`INTRODUCTION .......................................................................................... i
`
`II. ARGUMENT ................................................................................................ iii
`
`A. Mr. Suetens’ Declaration Should Be Excluded. ................................. iii
`
`B.
`
`The Apogee Reference Should Be Excluded. ....................................... 8
`
`III. CONCLUSION ........................................................................................ xiii3
`
`CERTIFICATE OF SERVICE .......................................................................... xv5
`
`
`
`
`
`
`i
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`

`

`
`
`
`TABLE OF AUTHORITIES
`
`CASES PAGE(S)
`
`In re Cronyn,
`890 F.2d 1158, 1159 (Fed. Cir. 1989) .................................................................. 9
`
`CA, Inc. v. Simple.com, Inc.,
`780 F. Supp. 2d 196, 307 (E.D.N.Y. 2009) .................................................. 10, 11
`
`Ex parte Research and Manufacturing Co., Inc.,
`10 U.S.P.Q.2D (BNA) 1657, 1989 Pat. App. LEXIS 2 ...................................... 11
`
`Carolina Enters., Inc. v. Coleco Indus., Inc.,
`211 U.S.P.Q. 479 (D.N.J. 1981) ......................................................................... 12
`
`Nordock Inc. v. Sys. Inc,
`No. 11-C-118, 2013 WL 989864 (E.D. Wis. Mar. 13, 2013) ............................. 13
`
`Amini Innovation Corp. v. Anthony Cal., Inc.,
`No. 03-8749, 2006 WL 6855371 (C.D. Cal. Sept. 21, 2006) ............................. 13
`
`STATUTES
`
`17 U.S.C. § 410 ........................................................................................................ 12
`
`17 U.S.C. § 410(c) ............................................................................................. 11, 12
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.62 ....................................................................................................... 1
`
`37 C.F.R. § 42.64 ....................................................................................................... 1
`
`37 C.F.R. § 42.64(b) ..............................................................................................1, 2
`
`37 C.F.R. § 42.51(b)(2)(i) .......................................................................................... 2
`
`37 C.F.R. § 42.24(a)(2) .............................................................................................. 2
`
`37 C.F.R. § 42.123(b) ................................................................................................ 2
`
`37 C.F.R. § 42.5(c)(3) ................................................................................................ 2
`
`
`
`
`ii
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`

`

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`
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`37 C.F.R. § 42.5(b) .................................................................................................... 2
`
`Federal Rule of Evidence 402 ..............................................................................8, 13
`
`Federal Rule of Evidence 403 ..................................................................................13
`
`Federal Rule of Evidence 602 .................................................................................... 8
`
`Federal Rule of Evidence 802 ..................................................................................13
`
`Federal Rule of Evidence 803(6) ............................................................................... 8
`
`Federal Rule of Evidence 901 .................................................................................... 8
`
`MPEP § 2128(II)(A) ................................................................................................ 10
`
`MPEP § 2128(II)(B)................................................................................................. 10
`
`Nimmer on Copyright............................................................................................... 12
`
`
`
`
`
`
`
`
`
`
`
`iii
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`

`

`
`
`I.
`
`INTRODUCTION
`
`CTP Innovations, LLC (“Patent Owner”), pursuant to 37 C.F.R. §§ 42.62
`
`and 42.64, moves to exclude the following exhibits from the record in this
`
`proceeding: (1) the Declaration of Johan Suetens and attachments (Exhibit 1022),
`
`and (2) the AGFA Apogee: The PDF-based Production System brochure
`
`(“Apogee”) (Ex. 1007 and Attachment A to Exhibit 1022).
`
`Petitioners filed the Declaration of Johan Suetens and the Apogee reference
`
`with this proceeding’s original petition. Petitioners filed the Suetens Declaration
`
`to establish that the Apogee reference was published prior to the subject patent’s
`
`earliest effective filing date. See Suetens Decl. (Ex. 1022), at ¶ 6. Petitioners rely
`
`upon the Apogee reference to support all of their obviousness assertions.
`
`
`
`The Board entered its decisions to institute this proceeding on November 28,
`
`2014. Normally, a patent owner would have had to file an objection to the
`
`aforementioned exhibits within ten (10) days of entry of the institution decision.
`
`37 C.F.R. § 42.64(b). However, on the face of the Suetens Declaration and
`
`without the benefit of his deposition, there did not appear to be a viable objection
`
`to be made. The grounds to object to these exhibits only became known through
`
`the long-delayed and recent deposition of Mr. Suetens on March 26, 2015. Mr.
`
`Suetens’ deposition testimony reveals that he completely lacks any personal
`
`knowledge of the distribution and public accessibility of the Apogee reference
`
`
`
`
`1
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`

`

`
`
`
`during the relevant time. Indeed, he testified that he has no knowledge of when a
`
`member of the public first or actually received a copy of the Apogee reference or
`
`when or if the Apogee reference was made available to anyone outside of Agfa and
`
`its subsidiaries. Mr. Suetens’ testimony is directly contrary to the allegations made
`
`in his declaration.
`
`
`
`Under analogous circumstances, when a party seeks relief outside the
`
`limitations of the normally applicable rules, the Board applies an “in the interest of
`
`justice” standard. See, e.g., 37 C.F.R. § 42.51(b)(2)(i) (motion for additional
`
`discovery); id. § 42.24(a)(2) (motion to waive page limits); id. § 42.123(b)
`
`(motions to submit supplemental information more than one month after institution
`
`date); id. § 42.5(c)(3) (excusal of late action in general). The Board may waive or
`
`suspend a requirement under part 42 and may place conditions on the waiver or
`
`suspension. Id. § 42.5(b).
`
`
`
`Patent Owner submits that the waiver or suspension of 37 C.F.R. §
`
`42.64(b)’s requirements
`
`is
`
`in
`
`the
`
`interests of
`
`justice under
`
`the present
`
`circumstances. It was only through the recent deposition testimony of Mr. Suetens
`
`that the basis for excluding some or all of his declaration, and, as a result, the
`
`Apogee reference, became known. Patent Owner requested Mr. Suetens’
`
`deposition shortly after the initial conference call in this proceeding in December
`
`2014, and his deposition was originally scheduled by agreement for February 18,
`
`
`
`
`2
`
`

`

`
`
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`2015. See Notice of Deposition of Johan Suetens (Paper _). Subsequently, Mr.
`
`Suetens became unavailable, and Petitioners made him available for deposition on
`
`March 26, 2015. See Ex. 2016
`
`
`
`Patent Owner has filed this motion within ten (10) days of the deposition and
`
`one day after receiving the deposition transcript. Patent Owner could not have
`
`discovered the declaration’s defects except through the deposition. Further, a
`
`determination on whether the Apogee reference should be excluded may be
`
`dispositive of this matter because the Apogee reference is a critical element in
`
`every instituted ground for rejection.
`
`II. ARGUMENT
`
`A. Mr. Suetens’ Declaration Should Be Excluded.
`
`Some or all of Mr. Suetens’ declaration (Ex. 1022), and attachments thereto,
`
`should be excluded because statements made in the declaration are not accurate
`
`and were made without Mr. Suetens’ personal knowledge.
`
`Petitioners filed the Suetens Declaration to establish that the Apogee
`
`reference was publically available prior to the earliest effective filing date of the
`
`subject patent. See Suetens Decl. (Ex. 1022), at ¶ 6. In his declaration, Mr.
`
`Suetens makes several affirmative statements regarding the Apogee reference’s
`
`distribution and availability. He states that Apogee was distributed shortly after
`
`the press briefing of March 17, 1998. Id. at ¶ 7. He states that the Apogee
`
`
`
`
`3
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`

`

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`
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`reference was available shortly after that briefing in printed and electronic form
`
`and was world-wide distributed through the Agfa sales departments. Id. at ¶ 8. He
`
`states that it was available at several seminars, exhibitions and demos of an
`
`undefined class of Apogee products to the public. Id. at ¶ 9. He states that the
`
`Agfa marketing-communications department made the Apogee reference available
`
`to the public no later than the press briefing of May 28, 1998, and possibly as early
`
`as the press briefing of March 17, 1998, as an electronic PDF-file for downloading
`
`to the public at the website www.agfahome.com. Id. at ¶ 11. He further states
`
`that, based upon the above and the excerpt from the user interface of the database
`
`entry in Agfa’s Enterprise Management System (Attachment D to his declaration),
`
`the Apogee reference was available to the public no later than the press briefing of
`
`May 28, 1998, and possibly as early as the press briefing of March 17, 1998. Id. at
`
`¶ 11.
`
`Mr. Suetens’ deposition testimony, however, tells a different story. As
`
`detailed below, Mr. Suetens’ deposition reveals that he has no actual personal
`
`knowledge of when (or even, if) the Apogee reference was distributed to the
`
`public, made available to the public, or provided to any member of the public.
`
`As a preliminary matter, Mr. Suetens did not write or create the Apogee
`
`reference and does not know who wrote it.
`
` Suetens Depo. Tr. (filed
`
`simultaneously herewith as Ex. 2016) at p. 25:17-23. He was not involved in its
`
`
`
`
`4
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`

`

`
`
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`production. Id. at p. 26:23-25. He did not make any decisions on when to make it
`
`available to the public. Id. at 35:5-8. Since 1985, he has always been a member of
`
`the marketing-communication department of Agfa. Id. at p. 25:11-13.
`
`Further, the marking-communication department of Agfa does not provide
`
`documents - including the Apogee reference - directly to the public. Instead, that
`
`department made documents available to Agfa subsidiaries. Id. at pp. 23:8-24:10.
`
`According to Mr. Suetens, the sales people at Agfa outside of the marketing-
`
`communications department may have firsthand knowledge of the distribution of
`
`the Apogee document to a customer or potential customer (if such distribution
`
`actually occurred, which is unsupported by the record in this proceeding in light of
`
`Mr. Suetens’ deposition testimony) , but he does not know who that would be. Id.
`
`at pp. 34:19-35:8.
`
`Mr. Suetens repeatedly testified that he does not have any firsthand
`
`knowledge of the distribution of the Apogee reference to any customer or potential
`
`customers - let alone when or even if it was actually distributed outside of Agfa.
`
`Id. at pp. 34:4-18, p. 40:7-41:1. He has never been involved in any face-to-face
`
`meeting with customers or potential customers. Id. at p. 25:7-10. He does not
`
`have any knowledge of the actual distribution of Apogee to a customer or potential
`
`customer at a Seybold conference. Id. at pp. 28:16-25. He has never seen the
`
`Apogee document being handed over to a customer. Id. at p. 29:3-9. Mr. Suetens
`
`
`
`
`5
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`

`
`
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`has no knowledge of any member of the public ordering copies of the Apogee
`
`document, or receiving the Apogee document. Id. at p. 52:8-23.
`
`With regard to the Apogee document’s alleged online availability, Mr.
`
`Suetens similarly lacks any personal knowledge. Although he attempts to state that
`
`the Apogee reference was on Agfa’s website, his testimony is directly to the
`
`contrary. He did not put a PDF of the document up on the Agfa website; he did not
`
`see it being put up; he does not know who, if anyone, put it up; and, in fact, he
`
`does not remember seeing it on the website. Id. at pp. 48:3- 49:21. He cannot say
`
`that it was put up on the website on a particular date, and he admits that there are
`
`no attachments to his declaration that shows when the Apogee document would
`
`have been posted. Id. at pp. 49:18-50:4. There likewise is not a single document
`
`in the record of this proceeding that evidences the display of the Apogee reference
`
`on any website.
`
`Mr. Suetens similarly testified that he does not have any personal knowledge
`
`of when the printed form would have been distributed to Agfa subsidiaries, other
`
`than possibly assisting in preparing packages for shipment to subsidiaries for trade
`
`shows and Seybold conferences. Id. at p. 50:5-23. However, he also testified that
`
`he does not remember what he put in the shipment for the Seybold conferences,
`
`and he does not know if that particular document was included in a shipment to the
`
`Agfa United States subsidiary. Id. at pp. 31:4-32:5. He did not work with any
`
`
`
`
`6
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`

`

`
`
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`salespeople for the Agfa U.S. subsidiary at the time. Id. at p. 33:6-9. He did not
`
`attend the conference, and he has no knowledge of actual distribution of the
`
`document to a customer or potential customer in 1998. Id. at pp. 33:22-34:15.
`
`In his declaration, Mr. Suetens references an announcement about the
`
`Apogee system being made at Seybold NYC 97 in New York. Suetens Decl. (Ex.
`
`1022), at ¶ 7. However, he did not attend that Seybold conference, and, in fact, has
`
`not attended any Seybold conference. Suetens Depo. Tr. (Ex. 2016), at p. 28:17-
`
`23; p. 39:1-7. He also cannot tell if the product being announced at Seybold NYC
`
`97 was the same product that was reported as being commercially released in June
`
`1998. Id. at pp. 37:8--38:3. No copy of that announcement has been provided, and
`
`he does not know what form the announcement would have taken. Id. at p. 39:8-
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`23.
`
`Attachment D to the declaration does not establish public availability.
`
`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
`
`went into the Agfa warehouse in Antwerp. Id. at pp. 42:8-45:18. Documents in
`
`this warehouse are not publicly accessible; they are available to Agfa subsidiaries
`
`for ordering. Id.at pp. 45:19-46:1. Agfa would, in theory, have a document that
`
`would show when the Apogee document was distributed to the various
`
`
`
`
`7
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`

`

`
`
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`subsidiaries; however, Mr. Suetens does not have any documentary evidence that
`
`shows distribution from the warehouse to the subsidiaries. Id. at pp. 42:12-44:6.
`
`Although the Apogee document contains a copyright notice, Mr. Suetens
`
`testified that his department is not responsible for copyright notices, and it does not
`
`file copyright registrations. Id. at pp. 46:16-47:6. He does not know if the
`
`Apogee document was ever registered for a copyright, and he does not know if
`
`there is a copyright registration certificate. Id. at p. 47:14-21.
`
`The above deposition testimony makes clear that Mr. Suetens lacks any
`
`knowledge or basis for making the statements in his declaration concerning the
`
`public accessibility of the Apogee reference. At a minimum, paragraphs 6-12 of
`
`the declaration, and Attachments A and D thereto, should be excluded as being
`
`made without personal knowledge or basis under Federal Rule of Evidence 602,
`
`and for failing to properly authenticate or provide foundation for documents relied
`
`on by the declarant under Federal Rules of Evidence 803(6) and 901. The
`
`remaining paragraphs and attachments do nothing to establish a prior art printed
`
`publication date for Apogee, and thus are irrelevant under Federal Rule of
`
`Evidence 402.
`
`B. The Apogee Reference Should Be Excluded.
`
`
`
`Petitioner requests that the Board exclude the Apogee reference (Ex. 1007)
`
`from this Proceeding because Petitioners have failed to establish that it was
`
`
`
`
`8
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`

`

`
`
`
`distributed outside of Agfa or was otherwise publicly accessible. Petitioners have
`
`the burden of establishing that Apogee is a “printed publication” prior to the
`
`critical date of the subject patent.
`
`The statutory phrase “printed publication” has been interpreted to
`
`mean that before the critical date the reference must have been
`
`sufficiently accessible to the public interested in the art; dissemination
`
`and public accessibility are the keys to the legal determination
`
`whether a prior art reference was “published.”
`
`In re Cronyn, 890 F.2d 1158, 1159 (Fed. Cir. 1989). This determination involves a
`
`case-by-case inquiry into the facts and circumstances of whether the reference was
`
`disclosed to members of the public. Id. at 1161.
`
`
`
`The deposition testimony of Mr. Suetens demonstrates that there is no
`
`evidence in the record of the Apogee reference being distributed beyond Agfa or
`
`accessible by the public. At best, his testimony establishes the Apogee reference
`
`was printed and stored internally in a warehouse outside the United States and
`
`could then be accessed internally by Agfa subsidiaries. There is no evidence that
`
`the Apogee reference was ever actually ordered by or distributed to the Agfa
`
`subsidiaries, and no evidence that the Agfa subsidiaries thereafter distributed it or
`
`made it accessible to the public.
`
`
`
`
`9
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`

`

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`
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`Petitioners cannot rely on the Apogee reference’s alleged electronic
`
`publication. “An electronic publication, including an on-line database or Internet
`
`publication, is considered to be a ‘printed publication’ . . . provided the publication
`
`was accessible to persons concerned with the art to which the document relates.”
`
`MPEP § 2128(II)(A). “Prior art disclosures on the Internet or on an on-line
`
`database are considered to be publicly available as of the date the item was
`
`publicly posted. Absent evidence of the date that the disclosure was publicly
`
`posted, if the publication itself does not include a publication date (or retrieval
`
`date), it cannot be relied upon as prior art. . . .” MPEP § 2128(II)(B). As
`
`discussed above, there is no actual evidence that the Apogee reference ever was
`
`actually posted online.
`
`
`
`Although the Agfa document has a copyright notice that states a year
`
`without a month, this alone is insufficient to establish a date of publication for
`
`prior art purposes. There is nothing in the record to indicate that the Apogee
`
`reference was registered with the United States Copyright Office. Indeed, no
`
`registration has been submitted.
`
`While a certificate of registration may support a finding of publication for a
`
`prior art reference, this is based upon the presumption of validity that attaches to
`
`the certificate, which is a government-issued document. In CA, Inc. v. Simple.com,
`
`Inc., the court found that summary judgment was appropriate for claims where the
`
`
`
`
`10
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`

`

`
`
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`prior art references had copyright registration certificates available. 780 F. Supp.
`
`2d 196, 307 (E.D.N.Y. 2009). The court explained that a certificate of registration
`
`“shall constitute prima facie evidence . . . of the facts stated therein.” Id. (citing 17
`
`U.S.C. § 410(c)). The justification for this general rule is that the copyright
`
`registration must be attested and provide the date of first publication and certifies
`
`that the work has been published. 780 F. Supp. 2d at 307. The court further stated
`
`that the copyright registration is self-authenticating under Fed. R. Evid. 902,
`
`because it is “issued under the seal of the Copyright office . . .” Id.
`
`
`
`Similarly, in Ex parte Research and Manufacturing Co., Inc., No. 88-3277,
`
`10 U.S.P.Q.2d (BNA) 1657, 1989 Pat. App. LEXIS 2, at *14-15 (Bd. Pat. App. &
`
`Interf., Jan. 31, 1989), the Board of Patent Appeals and Interferences further
`
`explained that the “certificate of registration ‘shall be admitted in any court as
`
`prima facie evidence of the facts stated therein’, [and] the certificate of registration
`
`. . . is prima facie evidence of the publication thereof. . . . The ‘date of publication’
`
`is defined in 17 USC § 26 (Copyright Act of 1909) as ‘the earliest date when
`
`copies of the first authorized edition were placed on sale, sold, or publicly
`
`distributed by the proprietor of the copyright or under his authority.’ Thus, the
`
`certificate of registration provides prima facie evidence that the [copyrighted
`
`document] was a ‘printed publication’ under the provisions of 35 USC 102(b).”
`
`The Board went on to determine that a bulletin’s copyright registration date, which
`
`
`
`
`11
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`

`

`
`
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`was submitted as a prior art reference, was “inaccurate” as the date of publication
`
`and did not constitute prior art, because there was no evidence the bulletin was
`
`circulated outside the company.
`
`
`
`Under these circumstances, a bare assertion of copyright notice is
`
`insufficient to constitute prima facie evidence of publication:
`
`The copyright registration certificate constitutes prima facie evidence
`
`of the validity of the copyright and of the facts stated in the certificate.
`
`But, under the current Act, unlike the 1909 Act, the registration
`
`certificate constitutes such prima facie evidence only if registration is
`
`made before or within five years after first publication of the work.
`
`2 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 7.16[D]
`
`(Matthew Bender, Rev. Ed.) (citing 17 U.S.C. § 410; Carolina Enters., Inc. v.
`
`Coleco Indus., Inc., 211 U.S.P.Q. 479 (D.N.J. 1981)). See also 17 U.S.C. § 410(c).
`
`The prima facie presumption from the registration certificate applies
`
`not only to American works, but even to foreign works exempt from
`
`the registration requirement as a prerequisite for instituting suit.
`
`‘[F]oreign authors must also register in order to obtain the important
`
`benefits of the presumption of validity and statutory damages.’
`
`Nimmer § 7.16[D] at n. 521(citing 17 U.S.C. § 410(c))(internal citations omitted).
`
`
`
`Because Petitioners cannot rely on the copyright date printed on the Apogee
`
`promotional materials as prima facie evidence of publication, Petitioners must rely
`
`
`
`
`12
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`

`
`
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`on specific publication and retrieval dates by the public for Apogee. However, as
`
`discussed above, Petitioners have not provided that evidence. Therefore, Apogee
`
`is not prior art and should be excluded under Federal Rules of Evidence 402, 403,
`
`and 802. See Nordock Inc. v. Sys. Inc., No. 11-C-118, 2013 WL 989864, at *3
`
`(E.D. Wis. Mar. 13, 2013) (excluding “prior art” references where “insufficient
`
`evidence has been presented regarding the dates of the two publications”); Amini
`
`Innovation Corp. v. Anthony Cal., Inc., No. 03-8749, 2006 WL 6855371, at *7
`
`(C.D. Cal. Sept. 21, 2006) (“Without knowing the publication dates, the documents
`
`are not admissible as prior art.”).
`
`III. CONCLUSION
`
`For all the foregoing reasons, the Patent Owner, CTP Innovations, LLC,
`
`respectfully requests that the Declaration of Johan Suetens and attachments
`
`(Exhibit 1022), and the Apogee reference (Ex. 1007 and Attachment A to Exhibit
`
`1022), be excluded from the record in this proceeding.
`
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`13
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`
`
`Dated: April 2, 2015
`
`
`
`
`
`
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`
`
`Respectfully submitted,
`
`BAKER, DONELSON, BEARMAN,
`CALDWELL & BERKOWITZ, P.C.
`
`
`
`/W. Edward Ramage/
`W. Edward Ramage, Reg. No. 50,810
`Samuel F. Miller
`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
`smiller@bakerdonelson.com
`
`
`for Patent Owner CTP
`Counsel
`Innovations, LLC
`
`
`
`
`
`
`14
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`

`

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`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that, on April 2, 2015, the foregoing
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`Motion to Excluded (including attachments thereto) was served in its entirety via
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`U.S. Express Mail, postage prepaid, and electronic mail upon the following:
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`
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`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
`
`
`
`
`
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`
`
`
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`/W. Edward Ramage/
`W. Edward Ramage, Reg. No. 50,810
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`15
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`

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`APPENDIX OF AUTHORITIES
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`
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`Amini Innovation Corp. v. Anthony Cal., Inc., 2006 WL 6855371 (C.D. Cal.
`Sept. 21, 2006)
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`Carolina Enters., Inc. v. Coleco Indus., Inc., 211 U.S.P.Q. 479 (D.N.J. 1981)
`
`Ex parte Research and Manufacturing Co., Inc., 10 U.S.P.Q.2D (BNA)
`1657, 1989 Pat. App. LEXIS 2
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`Nordock Inc. v. Sys. Inc, 2013 WL 989864 (E.D. Wis. Mar. 13, 2013)
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`Nimmer on Copyright § 7.16
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`

`

`Amini Innovation Corp. v. Anthony California Inc., Not Reported in F.Supp.2d (2006)
`
`2006 WL 6855371
`
`  
`


`      
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3
` 45
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` 6 #7 & 
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`Named Expert: Daniel L. McConaughy, Shepard Vineburg,
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`Robert Trout
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`Attorneys and Law Firms
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`who is retained or specially employed to provide expert
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`testimony in the case or whose duties as an employee
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`of the party regularly involve giving expert testimony,
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`be accompanied by a written report prepared and signed
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`by the witness. The report shall contain a complete
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`statement of all opinions to be expressed and the basis
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`and reasons therefor; the data or other information
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`considered by the witness in forming the opinions; any
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`exhibits to be used as a summary of or support for the
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`opinions; the qualifications of the witness, including a
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`list of all publications authored by the witness within the
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`preceding ten years; the compensation to be paid for the
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`study and testimony; and a listing of any other cases in
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`which the witness has testified as an expert at trial or by
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`deposition within the preceding four years.”
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`These criticisms are off the mark. Defendants are entitled
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`to provide a rebuttal expert under the FRCP, and as Mr.
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`Daniel Miles Cislo, Donald M. Cislo, Mark D. Nielsen, Cislo
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`McConaughy's report and testimony are “intended solely to
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`and Thomas LLP, Santa Monica, CA, for Amini Innovation
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`contradict or rebut” the Plaintiff's report it was not necessary
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`Corp.
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`Lisa A. Karczewski, Thomas Tak–Wah Chan, Chan Law
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`Group, Michael Hyungchoon Kim, Michael H. Kim PC,
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`Ronald M. St. Marie, Doll Amir and Eley, Los Angeles, CA,
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`for Anthony California Inc.
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`for Mr. McConaughy to conduct its own damage calculations.
`FRCP 26(a)(2)(C). 2
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`2
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`“(C) These disclosures shall be made at the times and
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`in the sequence directed by the court. In the absence
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`of other directions from the court or stipulation by the
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`parties, the disclosures shall be made at least 90 days
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`PROCEEDINGS (in chambers):
`
`Order re Motions in Limine
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`The Honorable S. JAMES OTERO, District Judge.
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`*1 Victor Paul Cruz, Courtroom Clerk.
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`before the trial date or the date the case is to be ready
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`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
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`after the disclosure made by the other party. The parties
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`shall supplement these disclosures when required under
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`subdivision (e)(1).”
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`Plaintiff's Motion in Limine # 1
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`Plaintiff moved to exclude the report and testimony of
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`The Court finds upon reviewing the deposition transcripts
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`that Mr. McConaughy did not testify that “he could not
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`find anything wrong with Plaintiff's ... opinion.”Rather, Mr.
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`Defendants' witness Daniel McConaughy under FRE 702.
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`McConaughy stated that Plaintiff's opinion was conclusory
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`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.
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`Plaintiff argues that Mr. McConaughy's report is deficient
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`for failing to contain its own damage calculations, and that
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`Mr. McConaughy testified that “he could not find anything
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`incorrect with Plaintiff's damages expert['s] ... opinion.” Mot.
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`page 2. Plaintiff further criticizes Mr. McConaughy for not
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`being a specialist in econometrics.
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`1
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`“(B) Except as otherwise stipulated or directed by the
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`court, this disclosure shall, with respect to a witness
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`and therefore that it was impossible to determine the
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`appropriateness of the methods or results contained in
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`Plaintiff's opinion.
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`While Mr. McConaughy may or may not be an expert in
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`econometrics, he is an expert in damages calculations. He
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`has testified many times on damages, has a Ph.D. in finance,
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`and teaches and publishes on the subject. These amply
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`demonstrate his qualifications under Daubert.Plaintiff's
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`argument that an econometrics expert is necessary to
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`critique Plaintiff's expert report assumes that the methodology
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`of Plaintiff's report is appropriate for use in damages
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`calculations. This very assumption is what Defendants intend
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` © 2015 Thomson Reuters. No claim to original U.S. Government Works.
`
`1
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`

`

`Amini Innovation Corp. v. Anthony California Inc., Not Reported in F.Supp.2d (2006)
`
`2006 WL 6855371
`
`for the report and testimony of Mr, McConaughy, an expert
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`counsel to preclude a finding of willful infringement waive
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`in damages calculations, to rebut.
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`attorney-client privilege with respect to all communications
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`The motion is DENIED.
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`Plaintiff's Motion in Limine # 2
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`Plaintiff moves to preclude Defendants from relying on a
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`§ 112 patent invalidity defense, which was not specifically
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`pleaded in the First Amended Answer. Plaintiff implicitly
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`relies on FRCP 12(b) and 15 and FRE 402. Compared to
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`Defendants' Motion in Limine # 4, the parties' arguments
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`and their justifications for their actions are mirror images
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`of each other. Because § 112 defenses were not pled and
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`discovery was not conducted, Defendants are precluded from
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`introducing evidence or making arguments referring to § 112.
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`The motion is GRANTED.
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`Plaintiff's Motion in Limine # 3
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`Plaintiff moves to preclude Defendants from relying on an
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`“advice of counsel” defense. Plaintiff implicitly relies on
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`FRCP 12(b) and FRE 402 in addition to FRCP 33 and 34.
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`In response to an interrogatory asking whether Defendants
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`had sought advice of counsel, Defendants answered in the
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`negative. Plaintiff asserts, and Defendants do not deny, that
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`Defendants have not subsequently produced an opinion of
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`counsel. In the First Amended Answer, Defendants denied
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`infringing willfully but did not set forth reliance on an opinion
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`on that subject matter. In re Echostar,
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` 448 F.3d 1294, 1299
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`(Fed.Cir.2006). Those communications must, therefore, be
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`produced if requested.
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`For this reason, Defendants cannot rely on the defense of
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`advice of counsel at trial. Although requested by Plaintiff, no
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`such advice of counsel was produced by Defendants during
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`the advice must have been produced in order to rely on it
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`discovery. Under FRCP 37(c)(1) and the rule of Echostar
`at trial. Zhang v. American Gem Seafoods, Inc.,
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`1020, 1028 (9th Cir.2003). The Court observes that it appears
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` 339 F.3d
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`from Defendants' interrogatory response that no such advice
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`of counsel exists. Therefore, any legal prohibition against the
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`Defendants introducing advice of counsel would appear to be
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`an empty one.
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`In