`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`
`FORD MOTOR COMPANY
`Petitioner,
`
`v.
`
`PAICE LLC & ABELL FOUNDATION, INC.
`Patent Owners.
`
`______________
`
`
`U.S. Patent No. 8,215,097 to Severinsky et al.
`IPR2014-01415
`
`
`
`
`
`
`
`
`Motion to Submit Supplemental Information
`under 35 U.S.C. § 316(a)(3) and
`37 C.F.R. § 42.123(a)
`
`
`
`
`
`
`
`Case No.: IPR2014-01415
`Attorney Docket No.: FPGP0110IPR2
`
`
`
`TABLE OF CONTENTS
`
`
`
`EXHIBIT LIST ..................................................................................................................... iii
`
`I.
`
`II.
`
`INTRODUCTION .................................................................................................... 1
`
`BOARD PRECEDENT SUPPORTS THE MOTION ....................................... 2
`
`III. THE SUPPLEMENTAL INFORMATION SUPPORTS THE ALREADY
`ESTABLISHED APRIL 1998 PUBLICATION DATE ...................................... 3
`
`
`
`
`
`
`
`i
`
`
`
`Case No.: IPR2014-01415
`Attorney Docket No.: FPGP0110IPR2
`
`
`
`
`Exhibit
`No.
`1101
`1102
`1103
`1104
`1105
`
`1106
`1107
`
`1108
`1109
`
`1110
`
`1111
`1112
`
`1113
`
`1114
`1115
`1116
`
`1117
`
`EXHIBIT LIST
`
`Description
`U.S. Patent No. 8,214,097
`Declaration of Dr. Jeffrey L. Stein
`File History of U.S. Patent No. 8,214,097
`U.S. Patent No. 5,343,970
`Catherine Anderson & Erin Pettit, The Effects of
`APU Characteristics on the Design of Hybrid Control
`Strategies for Hybrid Electric Vehicles, SAE Technical
`Paper 950493 (1995)
`U.S. Patent No. 5,865,263
`Toshifumi Takaoka et al., A High-Expansion Ratio
`Gasoline Engine for the Toyota Hybrid System, Toyota
`Technical Review Vol. 47, No. 2 (April 1998)U.S.
`Patent No. 4,707,984
`U.S. Patent No. 4,335,429
`John B. Heywood, Internal Combustion Engine
`Fundamentals (McGraw-Hill 1988)
`Society of Automotive Engineers Special
`Publication, Technology for Electric and Hybrid
`Vehicles, SAE SP-1331 (February 1998)
`U.S. Patent No. 913,846
`Michael Duoba, Ctr. for Transp. Research,
`Argonne Nat’l Lab., Challenges for the Vehicle Tester
`in Characterizing Hybrid Electric Vehicles, 7th CRC
`on Road Vehicle Emissions Workshop (April
`1997)
`Kozo Yamaguchi et al., Development of a New
`Hybrid System — Dual System, SAE Technical
`Paper 960231 (February 1996)
`U.S. Patent No. 3,888,325
`U.S. Application No. 11/229,762
`L. E. Unnewehr et al., Hybrid Vehicle for Fuel
`Economy, SAE Technical Paper 760121 (1976)
`Hawley, G.G., The Condensed Chemical Dictionary,
`Van Nostrand Reinhold Co., 9th ed. (1977)
`
`Identifier
`‘097 Patent
`Stein Decl.
`‘097 File History
`Severinsky ‘970
`Anderson
`
`Yamaguchi
`Takaoka
`
`Kawakatsu
`Heywood
`
`SAE SP-1331
`
`Pieper
`Duoba
`
`Yamaguchi Paper
`
`Reinbeck
`‘762 Application
`Unnewehr
`
`The Condensed
`Chemical Dictionary
`
`ii
`
`
`
`Case No.: IPR2014-01415
`Attorney Docket No.: FPGP0110IPR2
`
`Exhibit
`No.
`1118
`
`1119
`
`1120
`
`1121
`
`1122
`
`1123
`1124
`
`1125
`1126
`
`Description
`Brown, T.L. et al., Chemistry, The Central Science,
`Third Edition (1985)
`Grunde T. Engh & Stephen Wallman, Development
`of the Volvo Lambda-Sond System, SAE Technical
`Paper 770295 (1977)
`Claim Construction Order (Paice, LLC v. Toyota,
`Case No. 2:07-cv-180)
`A. G. Stefanopoulou et al., Engine Air-Fuel Ratio
`and Torque Control using Secondary Throttles,
`Proceedings of the 33rd IEEE Conference on
`Decision and Control (December 1994)
`General Electric Company, Corp. Research &
`Dev., Near-Term Hybrid Vehicle Program, Final
`Report - Phase 1 (October 1979)
`U.S. Application No. 13/065,704
`Paice, LLC v. Hyundai Claim Construction Order
`(Case No. WDQ-12-0499)
`U.S. Patent No. 7,104,347
`File History for U.S. Patent No. 7,104,347
`
`
`NEW EXHIBITS
`
`Identifier
`Brown
`
`Engh
`
`Toyota Litigation
`
`Stefanopoulou
`
`GE Final Report
`
`‘704 Application
`Hyundai Litigation
`
`‘347 Patent
`‘347 File History
`
`Description
`
`Exhibit
`No.
`1127 Declaration of Walt Johnson, Librarian at Patent
`and Trademark Resource Center
`(PTRC),
`Minneapolis Central Library
`1128 Email correspondence between Petitioner and
`Board
`
`Identifier
`
`Johnson Declaration
`
`
`iii
`
`
`
`Case No.: IPR2014-01415
`Attorney Docket No.: FPGP0110IPR2
`
`I.
`
`INTRODUCTION
`
`Petitioner moves to submit supplemental information in accordance with the
`
`Order dated April 9, 2015 (Paper 12). Petitioner’s request for authorization to file this
`
`motion was timely, and the supplemental information is relevant to at least one claim
`
`for which trial has been instituted. 37 C.F.R §42.123(a). The supplemental information
`
`is a declaration of Walt Johnson (Ex. 1127, “Johnson Declaration”), the Patent and
`
`Trademark Resource Center (PTRC) Librarian at the Minneapolis Central Library,
`
`regarding the publication date and public accessibility of Takaoka (Ex. 1107). The
`
`Johnson Declaration relates to whether Takaoka qualifies as prior art, which is
`
`relevant to grounds of unpatentability against claims 4, 14, 24, 30 and 34.
`
`In its Preliminary Response (Paper 9), Patent Owner challenged the public
`
`accessibility and prior art status of Takaoka (Ex. 1107). In response to Patent Owner’s
`
`challenge of Takaoka, Petitioner contacted Walt Johnson and acquired his declaration
`
`regarding the public accessibility of Takaoka. Petitioner then contacted the Board via
`
`email on December 29, 2014, requesting a conference call to obtain authorization to
`
`file a Reply to address Patent Owner’s challenge. (Email, Ex. 1128.) The Board denied
`
`Petitioner’s request via email on December 30, 2014. (Id.)
`
`Patent Owner served Petitioner with an objection to Takaoka within ten
`
`business days of the Decision to Institute (Paper 10) and Petitioner served
`
`supplemental evidence including the Johnson Declaration, to Patent Owner within
`
`ten business days of the objection. See 37 C.F.R. §42.64(b).
`
`1
`
`
`
`Case No.: IPR2014-01415
`Attorney Docket No.: FPGP0110IPR2
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`Petitioner did not intentionally withhold the Johnson Declaration; rather
`
`Petitioner served the supplemental evidence per PTAB procedure. Petitioner
`
`understands that it can wait and file the Johnson Declaration if and when Patent
`
`Owner files a motion to exclude Takaoka under 37 C.F.R. §42.64(c). However,
`
`Petitioner wishes to dispose of Patent Owner’s challenge early, and therefore now
`
`moves under 37 C.F.R. §42.123(a) to submit supplemental information, which is
`
`relevant to at least claims 4, 14, 24, 30 and 34.
`
`II. BOARD PRECEDENT SUPPORTS THE MOTION
`
`In Valeo v. Magna Electronics, the Board held that petitioners, having
`
`demonstrated a reasonable likelihood of prevailing, were authorized to submit
`
`information supplementing evidence of publication. (IPR2014-01208, Paper 23.)
`
`Further, the Board clarified that when filing supplemental information under 37
`
`C.F.R. §42.123(a), “Petitioner need not demonstrate that the supplemental
`
`information proffered could not have been obtained earlier.” (Id. at 5.) The facts in
`
`this case closely parallel Valeo – the supplemental information includes a declaration
`
`regarding the publication date of a known periodical, causes no undue delay, and
`
`neither changes the grounds of unpatentability nor the evidence presented in the
`
`petition. In a related Valeo v. Magna Electronics case, the PTAB specifically held
`
`“nothing in the Board’s rules prohibits a party from filing, as supplemental
`
`information, evidence which also is responsive to evidentiary objections.” (IPR2014-
`
`01204, Paper 26 at 5.)
`
`2
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`
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`Case No.: IPR2014-01415
`Attorney Docket No.: FPGP0110IPR2
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`Additionally, consideration of this evidence will not frustrate the Board’s ability
`
`to complete this proceeding in a timely manner. To the contrary, admitting the
`
`supplemental information early in the proceeding will ensure consistency with similar,
`
`later-filed IPR petitions that include exact copies of the Johnson Declaration:
`
`IPR2015-00785, -00792, and -00801, and may also reduce future motion practice.
`
`Finally, granting the motion will not prejudice Patent Owner, who has sufficient time,
`
`until June 17, to respond and develop a full record.
`
`III. THE SUPPLEMENTAL INFORMATION SUPPORTS THE
`ALREADY ESTABLISHED APRIL 1998 PUBLICATION DATE
`
`The supplemental information, consisting of additional periodical pages
`
`including publisher and copyright information, a table of contents, and a librarian
`
`declaration, further demonstrates that the Minneapolis Public Library, received and
`
`indexed the Toyota Technical Review containing Takaoka by May 29, 1998, well
`
`before the alleged September 1998 priority date of the ’097 Patent. (Ex. 1127 at 1-2.)
`
`Granting this motion will avoid further motion practice and will allow the
`
`Board to deal with the more important issue of whether claims 1–6, 8–16, 18–26, 28–
`
`30 and 34 are obvious. Petitioner respectfully requests that the Board grant this
`
`motion as it is in the interest of a just, speedy, and inexpensive resolution of the trial.
`
`
`
`Respectfully submitted,
`
`
`
` /Sangeeta G. Shah/
`Sangeeta G. Shah (Reg. No. 38,614)
`Attorney for Petitioner
`
`
`
`
`3
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`
`
`Case No.: IPR2014-01415
`Attorney Docket No.: FPGP0110IPR2
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that on April 15, 2015, a complete and entire
`
`copy of Petitioner’s Motion to Submit Supplemental Information, was served via
`
`electronic mail by serving the correspondence email addresses of record as follows:
`
`LEAD COUNSEL
`Timothy W. Riffe, Reg. No. 43,881
`
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: (202) 783-5070
`Email: IPR36351-0013IP2@fr.com;
`
`Riffe@fr.com; Greene@fr.com
`
`BACK-UP COUNSEL
`Kevin E. Greene, Reg. No. 46,031
`
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: (202) 783-5070
`Email: IPR36351-0013IP2@fr.com;
`
`Riffe@fr.com; Greene@fr.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
` /Sangeeta G. Shah/
`Sangeeta G. Shah (Reg. No. 38,614)
`Frank A. Angileri (Reg. No. 36,733)
`Michael D. Cushion (Reg. No. 55,094)
`Andrew B. Turner (Reg. No. 63,121)
`Brooks Kushman P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`(248) 358-4400
`
`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 0310
`
`Attorneys for Petitioner
`
`4
`
`
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