UNITED STATES PATENT AND TRADEMARK OFFICE
`
`IPR2014-01175
`U.S. Patent No. 6,968,884
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`NORMAN INTERNATIONAL, INC.
`Petitioner
`
`v.
`
`HUNTER DOUGLAS, INC.
`Patent Owner
`
`
`Case No. IPR2014-01175
`U.S. Patent No. 6,968,884
`
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER’S MOTION TO EXCLUDE PURSUANT TO 37
`C.F.R. § 42.64(c)
`
`
`
`
`
`September 14, 2015
`
`
`
`IPR2014-01175
`U.S. Patent No. 6,968,884
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`NORMAN INTERNATIONAL, INC.
`Petitioner
`
`v.
`
`HUNTER DOUGLAS, INC.
`Patent Owner
`
`
`Case No. IPR2014-01175
`U.S. Patent No. 6,968,884
`
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER’S MOTION TO EXCLUDE PURSUANT TO 37
`C.F.R. § 42.64(c)
`
`
`
`
`
`September 14, 2015
`
`
`
`IPR2014-01175
`U.S. Patent No. 6,968,884
`
`
`TABLE OF CONTENTS
`
`INTRODUCTION .............................................................................................. 1
`I.
`II. RELEVANT PROCEDURAL HISTORY ......................................................... 1
`III. ARGUMENT ..................................................................................................... 2
`A. Exhibits 1002, 1004, 1005, 1007, and 1008 Are Irrelevant to Any
`Ground Instituted by the Board. ......................................................................... 2
`B. Exhibits 1009 and 1010 Fail to Meet the Requirements of FRE 702. ...... 2
`1. Mr. Carlson Is Not Qualified as an Expert in the Relevant Field of
`Art. ............................................................................................................... 3
`2. Mr. Foley Is Not Qualified as an Expert in the Relevant Field of Art. . 4
`IV. CONCLUSION .................................................................................................. 5
`
`
`
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`IPR2014-01175
`U.S. Patent No. 6,968,884
`
`
`Pursuant to 37 C.F.R. § 42.64(c), Patent Owner Hunter Douglas, Inc.
`
`(“Patent Owner”) hereby moves to exclude Petitioner’s Exhibits 1002, 1004, 1005,
`
`1007, 1008, 1009, 1010. Each of these exhibits violates the Board’s rules of
`
`admissibility, contravenes the Federal Rules of Evidence (“FRE”), and/or is not
`
`relevant to any remaining issue in this proceeding. As such, all should be
`
`excluded.
`
`II. RELEVANT PROCEDURAL HISTORY
`
`On July 16, 2014, Petitioner filed its second Petition for inter parties review
`
`of United States Patent No. 6,968,884 (the “‘884 Patent”).1 With its Petition,
`
`Petitioner submitted Exhibit 1002 (Japanese Patent Application Publication S54-
`
`38648 (“Tachikawa”)); Exhibit 1004 (Great Britain Patent No. 1,174,127
`
`(“Skidmore”)); Exhibit 1005 (U.S. Patent No. 1,870,532 (“Schuetz”)); Exhibit
`
`1007 (U.S. Patent No. 6,056,036 (“Todd”) and Exhibit 1008 (U.S. Patent No.
`
`6,293,329 (“Toti”)) in support of Grounds 1, 2, 3, 4, and 5 (Paper 1 at 16-56), none
`
`of which were instituted by the Board. See Paper 9 at 10-17, 21-24.
`
`Petitioner also submitted Exhibits 1009 and 1010 concurrently with its
`
`Petition. Exhibits 1009 and 1010 are declarations by Lawrence E. Carlson and
`
`
`1 Petitioner’s first petition for inter partes review of the ‘884 Patent was denied in
`its entirety by the Board. See IPR2014-00276, Paper 2 and Paper 11.
`
`- 1 -
`
`
`
`IPR2014-01175
`U.S. Patent No. 6,968,884
`
`Patrick E. Foley, respectively, which purport to provide expert testimony regarding
`
`the ‘884 Patent and Petitioner’s alleged prior art. See Paper 1 at 4.
`
`Patent Owner timely objected to Exhibits 1002, 1004, 1005, 1007, 1008,
`
`1009, and 1010 within 10 business days of the institution of trial. See Exhibit 2002
`
`at Appendix A; 37 C.F.R. § 42.64(b)(1).
`
`III. ARGUMENT
`
`A. Exhibits 1002, 1004, 1005, 1007, and 1008 Are Irrelevant to
`Any Ground Instituted by the Board.
`
`Petitioner’s Exhibits 1002, 1004, 1005, 1007, and 1008 are inadmissible as
`
`each is irrelevant to the remaining proceedings. In its Institution of Inter Partes
`
`Review Decision, the Board determined that trial should not be instituted on all
`
`grounds advocated by Petitioner that involved those exhibits. See Paper 9 at 10-17,
`
`21-24. Those exhibits, accordingly, have no bearing on any issue remaining to be
`
`decided by the Board with respect to the instituted ground—Ground 6—and
`
`therefore should be excluded pursuant to FRE 402 and 403.
`
`B. Exhibits 1009 and 1010 Fail to Meet the Requirements of FRE
`702.
`
`Petitioner’s Exhibits 1009 and 1010 should be excluded under FRE 702,
`
`which provides that a witness qualified as an expert by knowledge, skill,
`
`experience, training, or education may testify in the form of an opinion if (a) the
`
`expert’s knowledge will help the trier of fact to understand the evidence or
`
`- 2 -
`
`
`
`determine a fact in issue, (b) the testimony is based upon sufficient facts or data,
`
`IPR2014-01175
`U.S. Patent No. 6,968,884
`
`
`(c) the testimony is the product of reliable principles and methods, and (d) the
`
`witness has applied the principles and methods reliably to the facts of the case.
`
`Testimony on the issue of unpatentability proffered by a witness who is not
`
`“qualified in the pertinent art” generally is not admissible under FRE 702.
`
`CaptionCall LLC v. UltraTec, Inc., IPR2013-00540, Paper 78 (PTAB Mar. 3,
`
`2015) (quoting Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363-
`
`64 (Fed. Cir. 2008)). Nothing in the Petition or in Exhibits 1009 and 1010
`
`demonstrates that declarants Mr. Carlson or Mr. Foley are qualified as experts in
`
`the relevant field of art of the ‘884 Patent.
`
`1. Mr. Carlson Is Not Qualified as an Expert in the Relevant
`Field of Art.
`
`Mr. Carlson claims that he is qualified to opine as an expert because of his
`
`“40 years educating engineering students on mechanical and component design”
`
`and the fact that he has “reviewed several textbooks relating to component design.”
`
`Exhibit 1009 at ¶¶ 17-23. These conclusions, however, are undermined by a
`
`review of Mr. Carlson’s curriculum vitae and his own description of his
`
`experience. Indeed, an informed reading of those materials reveals that he has had
`
`no relevant experience with window covers. Id. Mr. Carlson’s field of expertise
`
`appears to be in human limb prosthetics, not window coverings. Id. Mr. Carlson
`
`- 3 -
`
`
`
`admits that his 40 years of experience actually pertains to “rehabilitation
`
`IPR2014-01175
`U.S. Patent No. 6,968,884
`
`
`engineering, upper-limb prosthetics, consumer products, sculptures, [] products to
`
`help developing countries[,] … interactive learning exhibits, sporting equipment, ...
`
`a turbine-based flowmeter, a human-powered water pump, [] a counterbalance
`
`mechanism for a computer monitor that allows it to float in space[,]… a patented
`
`releasable ski binding, an improved spring-loaded rock climbing cam, and an
`
`automatic drywall screw gun.” Id. at ¶ 20. Window coverings are notably absent
`
`from this comprehensive list of Mr. Carlson’s projects. Thus, Mr. Carlson has not
`
`established that he is an expert in the relevant art, and has not demonstrated that he
`
`has personal knowledge about the art or the issues on which he offers testimony.
`
`FRE 602, 702, 703. Accordingly, Exhibit 1009 is inadmissible because Mr.
`
`Carlson is not qualified to testify regarding the field of invention of the ‘884 Patent
`
`at the time that the patent was filed.
`
`2. Mr. Foley Is Not Qualified as an Expert in the Relevant
`Field of Art.
`
`Similarly, Mr. Foley is not qualified to offer expert testimony under FRE
`
`702. First, Mr. Foley admits that his current occupation as an Engineering
`
`Manager with Blount International, Inc. is “outside of technologies for window
`
`blinds and coverings.” Exhibit 1010 at ¶ 1. Second, Mr. Foley admits that he had
`
`no experience whatsoever with window covers until a number of years after the
`
`- 4 -
`
`
`
`time of the invention of the ‘884 Patent. Id. at ¶¶ 12-15. As such, Mr. Foley has
`
`IPR2014-01175
`U.S. Patent No. 6,968,884
`
`
`not established that he is an expert in the relevant art, and has not demonstrated
`
`that he has personal knowledge about the art or the issues on which he offers
`
`testimony. FRE 602, 702, 703. Accordingly, Exhibit 1010 is inadmissible because
`
`Mr. Foley is not qualified to testify regarding the field of invention of the ‘884
`
`Patent at the time that the patent was filed.
`
`IV. CONCLUSION
`
`For the foregoing reasons, Exhibits 1002, 1004, 1005, 1007, 1008, 1009, and
`
`1010 should be excluded.
`
`
`Date: September 14, 2015
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By: s/ Kristopher L. Reed
`Kristopher L. Reed
`Registration No. 58694
`Lead Counsel for Patent Owner
`
`
`
`
`
`- 5 -
`
`
`
`IPR2014-01175
`U.S. Patent No. 6,968,884
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that copies of this PATENT
`
`OWNER’S MOTION TO EXCLUDE PURSUANT TO 37 C.F.R.
`
`§ 42.64(c) was served September 14, 2015 via electronic service on the
`
`following:
`
`Bing Ai
`Perkins Coie LLP
`11988 El Camino Real, Suite 350
`San Diego, California 92130
`Email: ai@perkinscoie.com
`norman-hd-ipr@perkinscoie.com
`
`
`
`Dated: September 14, 2015
`
`Kourtney Mueller Merrill
`Douglas Sawyer
`Perkins Coie LLP
`1900 16th St., Suite 1400
`Denver, CO 80202
`Email: kmerrill@perkinscoie.com
`dsawyer@perkinscoie.com
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`By: s/ Kristopher L. Reed
`Kristopher L. Reed
`Reg. No. 58694
`Kilpatrick Townsend & Stockton LLP
`1400 Wewatta Street, Suite 600
`Denver, Colorado 80202
`Tel: (303) 571-4000
`Fax: (303) 571-4321
`kreed@kilpatricktownsend.com
`Lead Counsel for Patent Owner
`
`
`
`67724540V.1
`
`- 6 -
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
