UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`NORMAN INTERNATIONAL, INC.
`Petitioner
`
`v.
`
`HUNTER DOUGLAS INC.
`Patent Owner
`
`
`
`
`
`CASE IPR2014-01175
`Patent No. 6,968,884
`
`
`
`
`
`Before LINDA M. GAUDETTE, JAMES P. CALVE, and
`HYUN J. JUNG, Administrative Patent Judges
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`
`September 28, 2015
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`NORMAN INTERNATIONAL, INC.
`Petitioner
`
`v.
`
`HUNTER DOUGLAS INC.
`Patent Owner
`
`
`
`
`
`CASE IPR2014-01175
`Patent No. 6,968,884
`
`
`
`
`
`Before LINDA M. GAUDETTE, JAMES P. CALVE, and
`HYUN J. JUNG, Administrative Patent Judges
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`
`September 28, 2015
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`II.
`
`INTRODUCTION .......................................................................................... 1
`EXHIBITS 1002, 1004, 1005, 1007, AND 1008 ARE RELEVANT
`AND ADMISSIBLE ....................................................................................... 2
`III. EXHIBITS 1009 AND 1010 MEET THE REQUIREMENTS OF FRE
`702 AND FRE 703 ......................................................................................... 4
`A. Dr. Lawrence E. Carlson, Ph.D. is Qualified as an Expert in the
`Relevant Field of Art, and Petitioner’s Exhibit 1009 (“Carlson
`Declaration”) Qualifies Dr. Carlson as an Expert ................................ 6
`Patrick E. Foley is Qualified as an Expert in the Relevant Field
`of Art, and Petitioner’s Exhibit 1010 (“Foley Declaration”)
`Qualifies Mr. Foley as an Expert ......................................................... 8
`IV. CONCLUSION ............................................................................................. 10
`
`
`
`B.
`
`-i-
`
`
`
`CASE IPR2014-01175 (Patent 6,968,884)
`Petitioner's Opposition to Patent Owner’s Motion to Exclude Evidence
`INTRODUCTION
`
`I.
`
`Pursuant to the Scheduling Order of February 10, 2015 (Paper 8), Petitioner
`
`timely opposes Patent Owner’s Motion to Exclude Evidence (Paper 13). None of
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`Petitioner’s exhibits should be excluded from evidence.
`
`
`
`Exhibits 1002 (Japanese Patent Application Publication S54-38648 to
`
`Tachikawa) (“Tachikawa”), 1004 (Great Britain Patent No. 1,174,127
`
`to
`
`Skidmore) (“Skidmore”), 1005 (U.S. Patent No. 1,870,532
`
`to Schuetz)
`
`(“Schuetz”), 1007 (U.S. Patent No. 6,056,036 to Todd) (“Todd”), and 1008 (U.S.
`
`Patent No. 6,293,329 to Toti) (“Toti”) are all prior art to the 884 patent. These
`
`exhibits are therefore relevant and admissible to establish the state of the art at the
`
`time of the purported invention in the 884 patent, and the Board should therefore
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`deny Patent Owner’s attempt to exclude Exhibits 1002, 1004, 1005, 1007, and
`
`1008.
`
`
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`The Board should also deny Patent Owner’s attempt to exclude Exhibit 1009
`
`(the “Carlson Declaration”) and Exhibit 1010 (the “Foley Declaration”) because
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`Dr. Carlson and Mr. Foley are each qualified as experts regarding the field of art
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`relevant to the 884 patent.
`
`Petitioner therefore respectfully requests that Patent Owner’s motion to
`
`exclude be denied in its entirety.
`
`
`LEGAL127974516.1
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`-1-
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`
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`CASE IPR2014-01175 (Patent 6,968,884)
`Petitioner's Opposition to Patent Owner’s Motion to Exclude Evidence
`
`
`II. EXHIBITS 1002, 1004, 1005, 1007, AND 1008 ARE RELEVANT AND
`ADMISSIBLE
`
`The Board should set aside Patent Owner’s Motion to Exclude Exhibits
`
`1002, 1004, 1005, 1007, and 1008. As an initial matter, Patent Owner objected to
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`Exhibits 1002, 1004, 1005, 1007, and 1008 under Federal Rules of Evidence
`
`(“FRE”) 402 and 403 for the first time in its Motion to Exclude (Paper 13). Patent
`
`Owner’s Objections to Petitioner’s Exhibits (Exhibit 2003 at 1) made no mention
`
`of FRE 402 and 403. Patent Owner instead made a conclusory assertion the
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`exhibits were “inadmissible as each is irrelevant” because “the Board determined
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`that trial should not be instituted on the grounds advocated by Petitioner that refer
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`to these exhibits.” Petitioner therefore requests that the Board deny Patent
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`Owner’s Motion to Exclude at least because Patent Owner failed to timely object
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`to Petitioner’s evidence with sufficient particularity under 37 C.F.R. 42.64(b)(1).
`
`Patent Owner now requests that Exhibits 1002, 1004, 1005, 1007, and 1008
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`be excluded under FRE 402, but Patent Owner fails to (and indeed cannot) explain
`
`how these exhibits fail to meet the underlying test for relevant evidence under FRE
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`401. Under FRE 401,“[e]vidence is relevant if: (a) it has any tendency to make a
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`fact more or less probable than it would be without the evidence; and (b) the fact is
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`of consequence in determining the action.”
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`Exhibits 1002, 1004, 1005, 1007, and 1008 are relevant because (a) these
`
`exhibits show the state of the prior art, which has a tendency to increase the
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`- 2 -
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`
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`CASE IPR2014-01175 (Patent 6,968,884)
`Petitioner's Opposition to Patent Owner’s Motion to Exclude Evidence
`
`probability that the claims of the 884 patent are anticipated or rendered obvious;
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`and (b) the anticipation or obviousness of the claims of the 884 patent are of
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`consequence in determining the outcome of this inter partes review. Indeed, the
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`Board may yet, in its discretion, find one or more of these references useful in
`
`determining the anticipation or obviousness of features claimed in the 884 patent.
`
`See In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1275 (Fed. Cir. 2015) (“It is
`
`not clear that IPR is strictly limited to the grounds asserted in the petition.”).
`
`For example, Exhibits 1002 (Japanese Patent Application Publication JPS54-
`
`38648 of Tachikawa) and 1007 (U.S. Patent No. 6,056,036 to Todd) relate to
`
`extending and retracting a window covering using a lifting mechanism having a
`
`spring motor and a rotating shaft. Exhibit 1004 (Great Britain Patent No.
`
`1,174,127 to Skidmore) relates to a lifting mechanism for raising or lowering
`
`blinds with a friction brake for holding the blinds in position. Exhibit 1005 (U.S.
`
`Patent No. 1,870,532 to Schuetz) relates to lifting mechanisms and brakes
`
`(including a one-way friction brake) employed in a hoisting apparatus to raise and
`
`lower a load while preventing undesired reverse-rotation of a rotating shaft. And
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`Exhibit 1008 (U.S. Patent No. 6,293,329 to Toti) relates to an extendible and
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`retractable covering for an architectural opening using a coil spring drive and
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`transmission.
`
`- 3 -
`
`
`
`CASE IPR2014-01175 (Patent 6,968,884)
`Petitioner's Opposition to Patent Owner’s Motion to Exclude Evidence
`
`Moreover, the Board should ignore Patent Owner’s unsupported and
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`unexplained suggestion that FRE 403 somehow applies to Exhibits 1002, 1004,
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`1005, 1007, and 1008. Patent Owner provides only a conclusory suggestion that
`
`Exhibits 1002, 1004, 1005, 1007, and 1008 should be excluded under FRE 403
`
`(see Paper 13 at 2), but Patent Owner fails to provide any reasons to exclude any
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`evidence under FRE 403. The probative value of Exhibits 1002, 1004, 1005, 1007,
`
`and 1008 is not therefore substantially outweighed by any of the concerns listed in
`
`FRE 403.
`
`III. EXHIBITS 1009 AND 1010 MEET THE REQUIREMENTS OF FRE
`702 AND FRE 703
`
`Exhibits 1009 and 1010 meet the requirements of FRE 702 and 703, and
`
`both Professor Lawrence E. Carlson, Ph.D. and Mr. Patrick E. Foley are more than
`
`qualified to provide expert testimony to assist the Board in this inter partes review.
`
`Patent Owner’s objections to Exhibits 1009 and 1010 lack merit and should be set
`
`aside.
`
`As set forth in FRE 702: “A witness who is qualified as an expert by
`
`knowledge, skill, experience, training, or education may testify in the form of an
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`opinion or otherwise if: (a) the expert’s scientific, technical, or other specialized
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`knowledge will help the trier of fact to understand the evidence or to determine a
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`fact in issue; (b) the testimony is based on sufficient facts or data; (c) the testimony
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`- 4 -
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`
`
`CASE IPR2014-01175 (Patent 6,968,884)
`Petitioner's Opposition to Patent Owner’s Motion to Exclude Evidence
`
`is the product of reliable principles and methods; and (d) the expert has reliably
`
`applied the principles and methods to the facts of the case.”
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`“In determining who is qualified in the pertinent art under FRE 702, [the
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`Board] need not find a complete overlap between the witness’s technical
`
`qualifications and the problem confronting the inventor or the field of endeavor.”
`
`CaptionCall, LLC v. Ultratec, Inc., IPR2013-00540, Paper 78 at 12 (PTAB Mar. 3,
`
`2015) (denying a patent owner’s motion to exclude where the patent owner overly
`
`constricted the pertinent art, finding by a preponderance of evidence that the
`
`challenged claims were unpatentable); see SEB S.A. v. Montgomery Ward & Co.,
`
`Inc., 594 F.3d 1360, 1372-73 (Fed. Cir. 2010) (cited in IPR2013-00540 as
`
`“upholding admission of testimony of expert who admittedly lacked expertise in
`
`the design of the patented invention, but had experience with materials selected for
`
`use in the invention”); Mytee Prods., Inc. v. Harris Research, Inc., 439 Fed. App’x
`
`882, 886-87 (Fed. Cir. 2011) (cited in IPR2013-00540 as “upholding admission of
`
`the testimony of an expert who ‘had experience relevant to the field of the
`
`invention,’ despite admission that he was not a person of ordinary skill in the art.”).
`
`Professor Carlson and Mr. Foley each meet or exceed the requirements in
`
`FRE 702 and their testimony has proper basis under FRE 703, as elaborated below.
`
`- 5 -
`
`
`
`CASE IPR2014-01175 (Patent 6,968,884)
`Petitioner's Opposition to Patent Owner’s Motion to Exclude Evidence
`
`A. Dr. Lawrence E. Carlson, Ph.D. is Qualified as an Expert in the
`Relevant Field of Art, and Petitioner’s Exhibit 1009 (“Carlson Declaration”)
`Qualifies Dr. Carlson as an Expert
`
`Dr. Carlson is qualified to testify as an expert pursuant to FRE 702 and 703,
`
`and Exhibit 1009 is admissible for demonstrating the facts and opinions set forth
`
`therein. Patent Owner’s arguments to the contrary lack merit.
`
`Professor Carlson’s abundant knowledge, skill, experience, training, and
`
`education in mechanical design, which are set forth in Paragraphs 16-23 of Exhibit
`
`1009 and Dr. Carlson’s curriculum vitae in Attachment A to Exhibit 1009, satisfy
`
`the requirements to provide helpful expert testimony. See FRE 702; CaptionCall,
`
`Paper 78, at 11-16. Patent Owner’s complaint that Professor Carlson does not have
`
`“relevant experience with window covers” is overly narrow and irrelevant to the
`
`admissibility analysis. See Paper 13 at 3. A person of any skill in the art—
`
`especially one of ordinary skill in the art—would understand that the simple
`
`mechanical combinations disclosed in the 884 patent apply broadly to many
`
`applications with spring motors, rotating output, lift cords, and brakes. See Ex.
`
`1009 at ¶¶ 31-32, 34. An informed reading of the 884 patent itself reveals the
`
`patent applicant also understood that the alleged invention has broad applications,
`
`and therefore the field of invention is mechanical arts in general. See id.;
`
`CaptionCall, Paper 78, at 11-16.
`
`- 6 -
`
`
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`CASE IPR2014-01175 (Patent 6,968,884)
`Petitioner's Opposition to Patent Owner’s Motion to Exclude Evidence
`
`Professor Carlson’s deep mechanical expertise, including a doctorate degree
`
`in mechanical engineering, decades of experience educating engineering students
`
`on mechanical and component design, and his own broad research and design
`
`experience in numerous applications before and after the priority date of the 884
`
`patent demonstrate that he is the archetype of a qualified expert in the field of
`
`invention under FRE 702. See Ex. 1009 at ¶¶ 16-23; id. at Attachment A.
`
`Patent Owner briefly cites FRE 703, without explanation, argument, or
`
`elaboration, in support of its motion to exclude. See Paper 13 at 4. But Professor
`
`Carlson’s testimony meets the requirements of FRE 703 at least because “[a]n
`
`expert may base an opinion on facts or data in the case that the expert has been
`
`made aware of or personally observed” and because experts in the field of art
`
`relevant to the 884 patent “would reasonably rely on those kinds of facts or data in
`
`forming an opinion on the subject.” See FRE 703. Petitioner further responds that
`
`Patent Owner’s reliance upon FRE 602 is misplaced because FRE 602 explicitly
`
`removes expert testimony from its purview.
`
`Patent Owner has also not challenged, nor can it, that the Carlson
`
`Declaration is based on sufficient facts, is the product of reliable principles and
`
`methods, and reliably applies those principles and methods to the facts of the case,
`
`in satisfaction of FRE 702. Petitioner’s Exhibit 1009 is therefore admissible
`
`evidence.
`
`- 7 -
`
`
`
`CASE IPR2014-01175 (Patent 6,968,884)
`Petitioner's Opposition to Patent Owner’s Motion to Exclude Evidence
`
`B.
`Patrick E. Foley is Qualified as an Expert in the Relevant Field of
`Art, and Petitioner’s Exhibit 1010 (“Foley Declaration”) Qualifies Mr. Foley
`as an Expert
`
`Patent Owner’s attempt to also exclude the testimony of Mr. Foley in
`
`Exhibit 1010 similarly lacks merit. Mr. Foley is qualified to testify as an expert
`
`pursuant to FRE 702 and 703, and Exhibit 1010 is admissible for demonstrating
`
`the facts and opinions set forth therein.
`
`Mr. Foley and his testimony also meet the standard set forth in FRE 702:
`
`Mr. Foley’s abundant knowledge, skill, experience, training, and education are set
`
`forth in Paragraphs 11-15 of Exhibit 1010 and his resume is attached as
`
`Attachment A to Exhibit 1010. Patent Owner focuses on Mr. Foley’s current
`
`occupation, which remains within the field of art applicable to the 884 patent,
`
`which is mechanical design. See Paper 13 at 4; see also CaptionCall, Paper 78, at
`
`11-16. A person of any skill in the art—especially one of ordinary skill in the
`
`art—would understand that the simple mechanical combinations disclosed in the
`
`884 patent apply broadly to many applications with spring motors, rotating output,
`
`lift cords, and brakes. See Ex. 1010 at ¶¶21-26. An informed reading of the 884
`
`patent itself reveals the patent applicant also understood that the alleged invention
`
`has broad applications, and therefore the field of invention is in the use of spring
`
`motors and brakes in mechanical and component design, which encompasses Mr.
`
`Foley’s current occupation. See id; CaptionCall, Paper 78, at 11-16.
`
`- 8 -
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`
`
`CASE IPR2014-01175 (Patent 6,968,884)
`Petitioner's Opposition to Patent Owner’s Motion to Exclude Evidence
`
`In any event, Mr. Foley’s testimony in Exhibit 1010, along with his resume
`
`in Attachment A, demonstrates that he has expertise in the mechanics of window
`
`coverings and can testify pursuant to FRE 702 and 703 on that subject. Ex. 1010
`
`at ¶¶ 12-15; id. at Attachment A. The time period of Mr. Foley’s experience is
`
`irrelevant for purposes of whether he is qualified to testify as an expert under FRE
`
`702. See Mytee Prods., Inc., 439 Fed. App’x 882, 886-87 (Fed. Cir. 2011);
`
`CaptionCall, Paper 78, at 11-16. Mr. Foley has demonstrated a knowledge of the
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`prior art window cover systems in existence before and at the time of the 884
`
`priority date. Ex. 1010 at ¶¶ 13-14. Patent Owner does not provide support for its
`
`contrary position that this is somehow insufficient.
`
`Patent Owner again briefly cites FRE 703, without explanation, argument, or
`
`elaboration. See Paper 13 at 5. But Petitioner nonetheless responds that Mr.
`
`Foley’s testimony meets the requirements of FRE 703 at least because “[a]n expert
`
`may base an opinion on facts or data in the case that the expert has been made
`
`aware of or personally observed” and because experts in the field of art relevant to
`
`the 884 patent “would reasonably rely on those kinds of facts or data in forming an
`
`opinion on the subject.” See FRE 703. Petitioner further responds that Patent
`
`Owner’s reliance upon FRE 602 is misplaced because FRE 602 explicitly removes
`
`expert testimony from its purview.
`
`- 9 -
`
`
`
`CASE IPR2014-01175 (Patent 6,968,884)
`Petitioner's Opposition to Patent Owner’s Motion to Exclude Evidence
`
`Finally, Patent Owner has not challenged, nor can it, that Mr. Foley’s
`
`
`
`declaration in Exhibit 1010 is based on facts, is the product of reliable principles
`
`and methods, and reliably applies those principles and methods to the facts of the
`
`case, in satisfaction of FRE 702. Petitioner’s Exhibit 1010 is therefore admissible
`
`evidence.
`
`IV. CONCLUSION
`For the reasons set forth above, Patent Owner’s Motion to Exclude Exhibits
`
`1002, 1004, 1005, 1007, 1008, 1009, and 1010 should be denied in its entirety.
`
`
`
`Dated: September 28, 2015
`
`
`PERKINS COIE LLP
`11988 El Camino Real, Suite 350
`San Diego, CA 92130
`(858) 720-5700
`norman-hd-ipr@perkinscoie.com
`
`
`
`
`
`Respectfully submitted,
`
`/Bing Ai/
`Lead Counsel Bing Ai, Reg. No. 43,312
`
`Backup Counsel Kourtney Mueller Merrill,
`Reg. No. 58,195
`
`Attorneys for Norman International, Inc.
`
`- 10 -
`
`
`
`CASE IPR2014-01175 (Patent 6,968,884)
`Petitioner's Opposition to Motion to Exclude Evidence
`
`
`CERTIFICATE OF SERVICE
`
`
`
`The undersigned certifies
`
`that complete copies of PETITIONER'S
`
`OPPOSITION TO MOTION TO EXCLUDE EVIDENCE were served this 28th
`
`day of September, 2015 by electronic mail as agreed upon by the parties on the
`
`Patent Owner via its attorneys of record:
`
`KILPATRICK TOWNSEND & STOCKTON LLP
`Kristopher L. Reed (kreed@kilpatricktownsend.com)
`Darin Gibby (dgibby@kilpatricktownsend.com)
`Frederick L. Whitmer (FWhitmer@kilpatricktownsend.com)
`HD-Norman-IPR@kilpatricktownsend.com
`1400 Wewatta Street, Suite 600
`Denver, Colorado 80202
`
`
`Respectfully submitted,
`
`/Bing Ai/
`Lead Counsel Bing Ai, Reg. No. 43,312
`
`Backup Counsel Kourtney Mueller Merrill,
`Reg. No. 58,195
`
`Attorneys for Norman International, Inc.
`
`Dated: September 28, 2015
`
`
`
`PERKINS COIE LLP
`11988 El Camino Real, Suite 350
`San Diego, CA 92130
`(858) 720-5700
`norman-hd-ipr@perkinscoie.com
`
`
`
`
`- 11 -
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