UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`SHARP CORPORATION, SHARP ELECTRONICS CORPORATION, and
`SHARP ELECTRONICS MANUFACTURING
`COMPANY OF AMERICA, INC.,
`Petitioner,
`
`v.
`
`SURPASS TECH INNOVATION LLC,
`Patent Owner.
`___________
`
`Case IPR2015-00021
`Patent No. 7,202,843 B2
`___________
`
`
`
`PETITIONER’S REPLY IN SUPPORT OF ITS MOTION TO
`EXCLUDE EVIDENCE
`
`
`
`
`616796.1
`
`
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`SHARP CORPORATION, SHARP ELECTRONICS CORPORATION, and
`SHARP ELECTRONICS MANUFACTURING
`COMPANY OF AMERICA, INC.,
`Petitioner,
`
`v.
`
`SURPASS TECH INNOVATION LLC,
`Patent Owner.
`___________
`
`Case IPR2015-00021
`Patent No. 7,202,843 B2
`___________
`
`
`
`PETITIONER’S REPLY IN SUPPORT OF ITS MOTION TO
`EXCLUDE EVIDENCE
`
`
`
`
`616796.1
`
`
`
`
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`Petitioner submits the following reply to Patent Owner’s Opposition to
`
`Petitioner’s Motion to Exclude Evidence (Paper 34) (“Opp’n”).
`
`I.
`
`PATENT OWNER OFFERS NO SUPPORT FOR ITS UNTIMELY
`CLAIM AMENDMENT
`
`Patent Owner asserts that Petitioner’s objection to Paragraphs 14, 18-23 and
`
`28-30 of Mr. Bohannon’s declaration “clearly and impermissibly goes to the
`
`weight of Mr. Bohannon’s testimony, rather than to the admissibility of this
`
`testimony.” (Opp’n at 2).1 Patent Owner is wrong. Petitioner’s objections have
`
`nothing to do with the weight of the testimony. Rather, Petitioner’s motion to
`
`exclude points to a purely procedural defect, namely, that Patent Owner—through
`
`Mr. Bohannon’s testimony—belatedly seeks to amend Claim 4 of the ‘843 Patent
`
`in violation of 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121.
`
`As previously explained, Patent Owner is not attempting to construe any
`
`term of Claim 4 of the ‘843 Patent. Instead, it is asking the Board to amend this
`
`Claim to further require an overdriving technique. (See Paper No. 20, Response
`
`at 25-26 (arguing that the phrase “applying the data impulses . . .” should be
`
`
`1 Patent Owner does not dispute that Paragraphs 25, 27 and 32-35 of Mr.
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`Bohannon’s Declaration are inadmissible under CBS Interactive Inc. v. Helferich
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`Patent Licensing, LLC, IPR2013-00033, Paper 118 at 2-3 (PTAB Oct. 23, 2013).
`
`(See Paper 27 at 2 n.1).
`
`616796.1
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`1
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`
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`
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`construed as “applying two or more overdriven data impulses . . . .”) (emphasis
`
`added)).
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`Patent Owner asserts that it was entitled to make any argument in its
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`Response and that “nothing in the Federal Rules of Evidence or this proceeding’s
`
`governing rules or statutes . . . would prohibit a patent owner from” doing so.
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`(Opp’n at 3). Patent Owner is wrong here too. Patent Owner’s tactics undermine
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`all of the rules and statutes governing claim amendments, including 35 U.S.C. §
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`316(d) and 37 C.F.R. § 42.121. Patent Owner’s attempt to bypass the Rules is
`
`unprecedented, and would simply encourage other patent owner’s to amend claims
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`through claim construction, rather than follow the Rules and Regulations.
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`Tellingly, Patent Owner does not even attempt to explain how its proposed
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`“claim construction” is anything more than a belated claim amendment. Further,
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`Patent Owner does (and cannot) explain how its amended claim “is patentable
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`generally over the prior art known to the Patent Owner . . . .” Norman Int’l, Inc. v.
`
`Toti Test. Trust, IPR2014-00283, Paper 15 at 6 (PTAB July 23, 2014).
`
`Unbelievably, Patent Owner seeks to shift the burden of proof to Petitioners
`
`to show that Patent Owner’s amendment is proper. However, “[f]or a patent
`
`owner’s motion to amend, 37 C.F.R. § 42.20(c) places the burden on the patent
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`owner to show a patentable distinction of each proposed substitute claim over the
`
`prior art.” Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 26 at 7
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`616796.1
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`2
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`
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`
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`(PTAB June 11, 2013); see also 37 C.F.R. § 42.1(d) (the standard applicable to
`
`claim amendments by patent owner “is a preponderance of the evidence.”).
`
`Petitioner’s objections to Paragraphs 14, 18-23 and 28-30 of Mr.
`
`Bohannon’s Declaration have nothing to do with the weight of the testimony.
`
`Patent Owner failed to take any of steps required for amending claims (e.g.,
`
`conferring with the Board, filing a timely motion), and instead seeks to circumvent
`
`the rules by introducing the claim amendment through Mr. Bohannon’s declaration
`
`testimony. Petitioner’s motion should therefore be granted.
`
`II.
`
`PARAGRAPHS 14, 18-23 AND 28-30 OF MR. BOHANNON’S
`DECLARATION ARE IRRELEVANT
`
`For the same reasons discussed above, Mr. Bohannon’s “opinions” relating
`
`to overdriving are legally irrelevant and should be excluded from the record under
`
`F.R.E. 402, 701, 702 and 703. Here again, Patent Owner does not address any of
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`Patent Owner’s arguments, including the fact that the Mr. Bohannon’s support for
`
`his “claim construction” is derived solely from Claim 1, which is not at issue in
`
`this proceeding.2 (See Paper 27 at 4-5; see also Ex. 1009, Bohannon Tr. 82:11-19
`
`
`2 Mr. Bohannon testified that his declaration included all of his opinions. (Ex.
`
`1009, Bohannon Tr. 40:24-41:2 (“Q: . . . So if it’s not in your declaration, then you
`
`don’t have an opinion? A: That’s correct.”)).
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`616796.1
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`3
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`
`
`
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`(admitting that the words “generating a plurality of overdriven pixel data” appear
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`in Claim 1, not Claim 4)).
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`As previously explained, Patent Owner and Mr. Bohannon attempt to
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`shoehorn the overdriving concept into Claim 4 through the phrase “to control a
`
`transmission rate.” But Mr. Bohannon admitted that he was not familiar with the
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`term “transmission rate” and had never “heard that term used before” before
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`reading the ‘843 Patent. (Ex. 1009, Bohannon Tr. 22:5-15).
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`Patent Owner only retorts that Mr. Bohannon’s opinions are admissible
`
`because he is purportedly “an expert in the field of LCD driving.” (Opp’n at 4).
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`This is immaterial. Mr. Bohannon’s opinion are legally irrelevant to whether
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`Claims 4, 8 and 9 are patentable and their admission would serve no purpose.
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`Accordingly, Paragraphs 14, 18-23 and 28-30 of Mr. Bohannon’s Declaration (Ex.
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`2005) should also be excluded under F.R.E. 402, 701, 702 and 703.
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`III. PATENT OWNER DOES NOT RELY ON EXHIBITS A AND C TO
`THE MARENTIC DEPOSITION
`
`Petitioner raised objections to Exhibits A and C to Mr. Marentic’s
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`deposition, which Patent Owner filed as attachments to the transcript of Mr.
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`Marentic’s deposition (Ex. 2007). However, these objections are now moot, as
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`Patent Owner did not rely on these exhibits , or otherwise cite to them in its
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`Observations (Paper 29), or any other paper. Patent Owner is therefore precluded
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`from relying on Exhibits A or C at the trial in this proceeding.
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`616796.1
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`4
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`In all events, Patent Owner fails to rebut Petitioner’s arguments. Patent
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`Owner acknowledges that Exhibit A is “a declaration from . . . another
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`proceeding” relating to a different patent. (Opp’n at 5) (emphasis added). Patent
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`Owner now asserts that this Exhibit “is relevant to a comparison of Mr. Marentic’s
`
`uses of differing methodologies for claim construction in these two proceedings
`
`before this forum.” (Id.). But Patent Owner has never raised any such argument.
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`Nor is there support for Patent Owner’s “comparison.” When questioned about
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`Exhibit A during his deposition, Mr. Marentic requested a moment to review the
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`document, as he had not seen the document in over six months. (Ex. 2007 at 28:1-
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`8). Counsel for Patent Owner elected to move on to other topics.
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`With respect to Exhibit C, Patent Owner now claims that “Exhibit C is
`
`relevant to [Mr. Marentic’s] qualifications and experience.” But Patent Owner has
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`not challenged Mr. Marentic’s qualification or experience in any Paper. Patent
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`Owner also asserts that Exhibit C is relevant to “the purpose and contents of patent
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`abstracts.” (Opp’n at 5). But, under 37 C.F.R. § 42.65(a), “[t]estimony on United
`
`States patent law . . . will not be admitted.” Accordingly, Exhibits A and C to Mr.
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`Marentic’s deposition transcript should be excluded.
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`IV. CONCLUSION
`
`For at least the reasons stated above, Petitioner respectfully requests that the
`
`Board grant this Motion to Exclude Evidence.
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`616796.1
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`5
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`
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`Respectfully submitted,
`
`AMSTER, ROTHSTEIN & EBENSTEIN
`LLP
`Attorneys for Petitioner
`90 Park Avenue
`New York, NY 10016
`(212) 336-8000
`
`Dated: November 12, 2015 By: /Anthony F. Lo Cicero/
` New York, New York
`Anthony F. Lo Cicero
`
` Registration No.: 29,403
`
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`616796.1
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`6
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`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certifies that on this
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`12th day of November, 2015, a copy of the foregoing PETITIONER’S REPLY IN
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`SUPPORT OF ITS MOTION TO EXCLUDE EVIDENCE was served via e-mail
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`on the counsel of record for the Patent Owner at the following e-mail addresses:
`
`Wayne M. Helge (whelge@dbjg.com)
`Donald L. Jackson (djackson@dbjg.com)
`Michael R. Casey (mcasey@dbjg.com)
`
`
`
`
`By: /Anthony F. Lo Cicero/
`Dated: November 12, 2015
` New York, New York Anthony F. Lo Cicero
` Registration No.: 29,403
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`616796.1
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`7
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