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 REPLY IN SUPPORT OF ITS
`MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`
`
`
`
`
`
`
`
`
`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 REPLY IN SUPPORT OF ITS
`MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2014-01175
`U.S. Patent No. 6,968,884
`
`
`TABLE OF CONTENTS
`
`
`INTRODUCTION .............................................................................................. 1
`I.
`II. ARGUMENT ..................................................................................................... 1
`A. Exhibits 1002, 1004, 1005, 1007, and 1008 Lack Any Relevance to the
`Issues Before the Board...................................................................................... 1
`B. Exhibits 1009 and 1010 Fail To Meet the Requirements of FRE 702.......... 2
`i. Dr. Carlson Lacks Experience in the Art of Window Coverings. ........ 3
`ii. Mr. Foley Lacks Experience in the Art of Window Coverings and
`During the Relevant Time Period. ................................................................ 4
`III. CONCLUSION .................................................................................................. 5
`
`
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`
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`I.
`
`INTRODUCTION
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`IPR2014-01175
`U.S. Patent No. 6,968,884
`
`
`Patent Owner Hunter Douglas, Inc. submits this reply in support of its
`
`motion to exclude evidence.
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`II. ARGUMENT
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`A. Exhibits 1002, 1004, 1005, 1007, and 1008 Lack Any Relevance
`to the Issues Before the Board.
`
`Petitioner asserts that that Patent Owner objected to Exhibits 1002, 1004,
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`1005, 1007, and 1008 under Federal Rules of Evidence (“FRE”) 402 and 403 for
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`the first time in its Motion to Exclude. This is flatly incorrect. As admitted by
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`Petitioner, Patent Owner’s Objections to Petitioner’s Exhibits clearly object on the
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`basis that these five (5) exhibits are irrelevant because “the Board determined that
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`trial should not be instituted on the grounds advocated by Petitioner that refer to
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`these exhibits.” Exhibit 2003. 37 C.F.R. § 42.64(b)(1) requires that an “objection
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`must identify the grounds for the objection with sufficient particularity to allow
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`correction in the form of supplemental evidence.” Thus, no further particularity
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`was required, as it is clear from Patent Owner’s statement the grounds for its
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`objection.
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`In its Petition, Petitioner asserted Grounds 1-5, which were denied
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`institution by the Board. (See Paper 1, Paper 7.) These denied grounds were based
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`on obviousness combinations that included Exhibits 1002 (“Tachikawa”), 1004
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`- 1 -
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`(“Skidmore”), 1005 (“Schuetz”), 1007 (“Todd”), and 1008 (“Toti”). Petitioner
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`IPR2014-01175
`U.S. Patent No. 6,968,884
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`asserted no other relevance for these exhibits in the petition. (See generally Paper
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`1.) It is far too late for Petitioner now to claim that these exhibits are relevant
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`because they “show the state of the prior art.” This claim was never made in the
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`original petition (id.), and was not included in the scope of the trial instituted by
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`the Board. Exhibits 1002, 1004, 1005, 1007, and 1008 are therefore irrelevant and
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`should be excluded under at least FRE 402.
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`Further, it would be blatantly prejudicial to Patent Owner if Petitioner is
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`allowed to present new, heretofore unidentified, arguments at trial regarding the
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`“state of the prior art” that were never presented in the petition. Therefore,
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`Exhibits 1002, 1004, 1005, 1007, and 1008 also should be excluded under FRE
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`403 as such prejudice far outweighs the non-existent probative value of these
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`exhibits to the narrow grounds on which the Board instituted review.
`
`B. Exhibits 1009 and 1010 Fail To Meet the Requirements of FRE
`702.
`
`Petitioner failed to demonstrate that Dr. Carlson or Mr. Foley are qualified
`
`to offer testimony under FRE 702 or 703. As noted by Petitioner, FRE 702
`
`provides that a witness may testify as an expert if, inter alia, the expert’s
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`knowledge will help the trier of fact to understand the evidence or determine a fact
`
`in issue and the testimony is based upon sufficient facts or data. Neither Dr.
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`- 2 -
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`
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`Carlson nor Mr. Foley have any experience in the pertinent field of the art, and
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`IPR2014-01175
`U.S. Patent No. 6,968,884
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`therefore are not qualified to testify as experts under FRE 702 or 703.
`
`i. Dr. Carlson Lacks Experience in the Art of Window
`Coverings.
`
`Petitioner misinterprets the relevant field in an attempt to bolster Dr.
`
`Carlson’s insufficient qualifications as an expert witness. In its Petition, Petitioner
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`repeatedly defines the relevant field of art as pertaining to “window coverings” and
`
`“window blinds and shades.” Paper 1 at 16, 32, 46, 55, 56-57. In its motion to
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`exclude, Patent Owner pointed out that Petitioner’s primary expert, Dr. Carlson,
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`lacked any experience in the field of art of window covers, which disqualifies him
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`from testifying regarding the ’884 patent. Paper 13 at 3-4. In response, Petitioner
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`has changed its position and now refers to the relevant field of art broadly as
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`“mechanical design” and “mechanical arts in general.” Paper 23 at 6. Indeed,
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`despite its previous representations that the relevant field of art is “window
`
`covers,” Petitioner now refers to the definition as “overly narrow.” Id.
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`In order to testify as an expert, a person must be “qualified in the pertinent
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`art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363-64 (Fed.
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`Cir. 2008). “General experience in a related field may not suffice when experience
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`and skill in specific product design are necessary to resolve patent issues.”
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`Extreme Networks, Inc. v. Enterasys Networks, Inc., 395 F. Appx. 709, 715 (Fed.
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`- 3 -
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`
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`Cir. 2010); see also Nimely v. City of New York, 414 F.3d 381, 399 n.13 (2d. Cir.
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`IPR2014-01175
`U.S. Patent No. 6,968,884
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`2005) (Although “a witness qualifies as an expert with respect to certain matters or
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`areas of knowledge, [that does not mean] that he or she is qualified to express
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`expert opinions as to other fields.”). Petitioner has not made any attempt to
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`explain how Dr. Carlson is qualified in the particular art of window covers, and his
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`testimony should therefore be excluded pursuant to FRE 702.
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`Moreover, Dr. Carlson may not testify pursuant to FRE 602 because he lacks
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`“personal knowledge” of the field of window coverings and the state of the art at
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`the time of the invention of the ’884 Patent. Thus, Exhibit 1009 should be
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`excluded.
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`ii. Mr. Foley Lacks Experience in the Art of Window
`Coverings and During the Relevant Time Period.
`
`Petitioner again misrepresents the pertinent field of art in its attempt to
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`qualify Mr. Foley as an expert witness. As discussed previously, in its Petition,
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`Petitioner repeatedly defines the relevant field of art as pertaining to “window
`
`coverings” and “window blinds and shades.” Paper 1 at 16, 32, 46, 55, 56-57. In
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`its attempt to qualify Mr. Foley as an expert, however, Petitioner changes its
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`position and defines the “field of art applicable to the ’884 patent [as] mechanical
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`design.” Because this generic description inaccurately describes the pertinent field
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`of art, Mr. Foley’s experience in general “mechanical design” does not qualify him
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`- 4 -
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`
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`to testify regarding the ’884 Patent. See Extreme Networks, 395 F. Appx. at 715
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`IPR2014-01175
`U.S. Patent No. 6,968,884
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`(“General experience in a related field may not suffice when experience and skill
`
`in specific product design are necessary to resolve patent issues.”).
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`In addition, Mr. Foley’s only purported “experience” in window covers did
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`not begin until 2001. In contrast, the ’884 Patent claims priority to an application
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`filed in 1999. Mr. Foley’s limited experience with window covers, therefore,
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`began after the date of the inventions claimed in the ’884 Patent, and his personal
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`experience is not relevant to any issue before the Board.
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`
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`III. CONCLUSION
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`For the foregoing reasons, Patent Owner’s motion to exclude evidence
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`(Paper 13) should be granted and Exhibits 1002, 1004, 1005, 1007, 1008, 1009,
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`and 1010 should be excluded.
`
`
`Date: October 5, 2015
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`Respectfully submitted,
`
`By: s/ Kristopher L. Reed
`Kristopher L. Reed
`Registration No. 58694
`Lead Counsel for Patent Owner
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`- 5 -
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`IPR2014-01175
`U.S. Patent No. 6,968,884
`
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that copies of this PATENT
`
`OWNER’S REPLY IN SUPPORT OF ITS MOTION TO EXCLUDE
`
`EVIDENCE were served October 5, 2015 via electronic service on the
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`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: October 5, 2015
`
`Kourtney Mueller Merrill
`Douglas Sawyer
`Perkins Coie LLP
`1900 16th St., Suite 1400
`Denver, CO 80202
`Email: kmerrill@perkinscoie.com
`dsawyer@perkinscoie.com
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`Respectfully submitted,
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`
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`
`
`
`
`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
`
`
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`67769894V.1
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`- 6 -
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