STATES PATENT AND TRADEMARK OFFICE
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`______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________
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`FORD MOTOR COMPANY
`Petitioner,
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`v.
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`PAICE LLC & ABELL FOUNDATION, INC.
`Patent Owner.
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`______________
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`U.S. Patent No. 7,237,634
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`IPR Case No.: IPR2014-00904
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`______________
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`PETITIONERS' RESPONSE TO PATENT OWNER'S
`MOTION FOR OBSERVATIONS ON CROSS EXAMINATION
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`______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________
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`FORD MOTOR COMPANY
`Petitioner,
`
`v.
`
`PAICE LLC & ABELL FOUNDATION, INC.
`Patent Owner.
`
`______________
`
`
`U.S. Patent No. 7,237,634
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`IPR Case No.: IPR2014-00904
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`
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`______________
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`PETITIONERS' RESPONSE TO PATENT OWNER'S
`MOTION FOR OBSERVATIONS ON CROSS EXAMINATION
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`I.
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`Case No.: IPR2014-00904
`Attorney Docket No.: FPGP0104IPR1
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`Table of Contents
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`Patent Owner’s motion for observation is improper and should be
`dismissed .......................................................................................................... 1
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`II.
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`Response To Patent Owner’s Observations .................................................... 2
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`Observation 1.
`Observation 2.
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` .......................................................................................... 2
`. ......................................................................................... 2
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`Certificate of Service ................................................................................................. 4
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`i
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`Case No.: IPR2014-00904
`Attorney Docket No.: FPGP0104IPR1
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`I.
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`Patent Owner’s motion for observation is improper and should be
`dismissed
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`A “motion for observation on cross-examination is a mechanism to draw the
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`Board’s attention to relevant cross-examination testimony of a reply witness.”
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`Medtronic Inc. v. Nuvasive, Inc., IPR2013-00506, Paper 31 at 3. The Board has
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`been clear that the observations must be nothing more than a “concise statement of
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`the relevance of precisely identified testimony to a precisely identified argument or
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`portion of an exhibit.” Medtronic, Inc. v. Nuvasive, Inc., IPR2013-00506, Paper 37
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`at 2. Observations are not allowed to include arguments, and are not “an
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`opportunity to raise new issues, to re-argue issues, or to pursue objections.” PTAB
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`Trial Practice Guide, 77 F.R. 157, 48768 §L; IPR2013-00506, Paper 37 at 2. If
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`even one observation is found to have violated these rules, the Board may dismiss
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`and not consider the Patent Owner’s entire motion for observation. See IPR2013-
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`00506, Paper 37 at 2-4 (“the entire motion… may be dismissed and not considered
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`if there is even one excessively long or argumentative observation”); see also
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`CBM2013-00017, Paper 36 at 4.
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`On June 10, 2015, Patent Owner filed its Motion for Observations on Cross
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`Examination of Dr. Gregory Davis. (Paper No. 33.) Petitioner believes that one or
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`more of the Patent Owner’s observations are improper as they are argumentative,
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`include new issues not previously raised, and/or re-argue prior issues and pursue
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`1
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`objections. Accordingly, Petitioner requests that the Board deny Patent Owner’s
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`Case No.: IPR2014-00904
`Attorney Docket No.: FPGP0104IPR1
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`motion.
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`II. Response To Patent Owner’s Observations
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`Notwithstanding the above general objections, Petitioner respectfully
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`submits the following responses.
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`Observation 1. Observation 1 improperly raises a new argument related
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`to the “textbook definition of road load” which is not at issue in this case.
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`Observation 1 is also not relevant because it pertains to both experts’ testimony
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`regarding the “textbook definition of road load” and not the “instantaneous
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`torque required to propel the vehicle, be it positive or negative” (i.e., The claimed
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`“road load” of the ’634 Patent). In contrast, Dr. Davis testified that whether “the
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`‘instantaneous torque required to propel the vehicle’ [i.e., claimed “road load”]
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`meets or exceeds those [external] forces depends on the operator command. (Ex.
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`1005 at ¶¶290-92.) For example, if a driver wants to accelerate the vehicle, the
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`‘instantaneous torque required to propel the vehicle’ will exceed the torque
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`required to overcome those forces. And if a driver wants to decelerate the vehicle,
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`the ‘instantaneous torque required to propel the vehicle’ will be less than the torque
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`required to overcome those forces.” (Ex. 1044 at ¶9.)
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`Observation 2. Observation 2 is irrelevant and improperly attempts to
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`raise a new issue never raised, concerning prior art never discussed, in Dr. Davis’
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`2
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`Case No.: IPR2014-00904
`Attorney Docket No.: FPGP0104IPR1
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`direct testimony in this proceeding. Paice does not compare the observed cross-
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`examination testimony (Ex. 2015, p. 19, lines 16-22) to any testimony from Dr.
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`Davis in this IPR. Rather, Paice asserts the testimony is relevant to Dr. Davis’
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`testimony in a later IPR (2014-01416) concerning a prior art reference (U.S. Patent
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`No. 5,842,534) not at issue in this IPR. Further, Paice’s assertions that Dr. Davis
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`“agreed” to certain matters are incorrect and unsupported by the cited testimony.
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`And Paice cites no testimony supporting Paice’s suggestion that the unrelated prior
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`art reference from the later proceeding concerns “the same type of disclosure” as
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`the prior art Dr. Davis analyzed in this proceeding.
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`Dated: June 22, 2015
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`Respectfully submitted,
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`
` /John P. Rondini/
`John P. Rondini (Reg. No. 64,949)
`BROOKS KUSHMAN P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`(248) 358-4400
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`Lissi Mojica (Reg. No. 63,421)
`Kevin Greenleaf (Reg. No. 64,062)
`DENTONS US LLP
`1530 Page Mill Road, Suite 200
`Palo Alto, CA 94304-1125
`650 798 0300
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`Attorneys for Petitioner
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`3
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`Case No.: IPR2014-00904
`Attorney Docket No.: FPGP0104IPR1
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`Certificate of Service
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`The undersigned hereby certifies that on June 22, 2015, a complete and
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`entire copy of Petitioners' Response To Patent Owner's Motion For
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`Observations On Cross Examination, was served via electronic mail by serving
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`the correspondence email address of record as follows:
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`LEAD COUNSEL
`Timothy W. Riffe, Reg. No. 43,881
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`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: (202) 783-5070
`Email: IPR36351-0015IP1@fr.com;
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`Riffe@fr.com; Greene@fr.com
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`BACK-UP COUNSEL
`Kevin E. Greene, Reg. No. 46,031
`Ruffin B. Cordell, Reg. No. 33,487
`Linda L. Kordziel, Reg. No. 39,732
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: (202) 783-5070
`Email: IPR36351-0015IP1@fr.com;
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`Riffe@fr.com; Greene@fr.com
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`Respectfully submitted,
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`
` /John P. Rondini/
`Frank A. Angileri (Reg. No. 36,733)
`John E. Nemazi (Reg. No. 30,876)
`John P. Rondini (Reg. No. 64,949)
`Erin K. Bowles (Reg. No. 64,705)
`Brooks Kushman P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`(248) 358-4400
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`Lissi Mojica (Reg. No. 63,421)
`Kevin Greenleaf (Reg. No. 64,062)
`Dentons US LLP
`1530 Page Mill Road, Suite 200
`Palo Alto, CA 94304-1125
`650 798 0300
`Attorneys for Petitioner
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`4
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