UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`
`
`FORD MOTOR COMPANY
`Petitioner,
`
`v.
`
`PAICE LLC & ABELL FOUNDATION, INC.
`Patent Owner.
`
`______________
`
`
`
`U.S. Patent No. 8,214,097 to Severinsky et al.
`
`IPR Case No.: IPR2015-00606
`
`______________
`
`
`
`PETITIONER’S RESPONSE TO PATENT OWNER'S
`MOTION FOR OBSERVATIONS ON CROSS EXAMINATION
`
`
`
`
`
`
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`
`
`FORD MOTOR COMPANY
`Petitioner,
`
`v.
`
`PAICE LLC & ABELL FOUNDATION, INC.
`Patent Owner.
`
`______________
`
`
`
`U.S. Patent No. 8,214,097 to Severinsky et al.
`
`IPR Case No.: IPR2015-00606
`
`______________
`
`
`
`PETITIONER’S RESPONSE TO PATENT OWNER'S
`MOTION FOR OBSERVATIONS ON CROSS EXAMINATION
`
`
`
`
`
`
`
`Case No.: IPR2015-00606
`Attorney Docket No.: FPGP0104IPR2
`
`On May 20, 2016 Patent Owner filed its Motion for Observations on the
`
`Cross Examination of Dr. Jeffrey Stein. (“POM,” Paper No. 23). Petitioner
`
`respectfully submits the following responses to each of Patent Owner’s
`
`observations.
`
`
`
`A. Observation 1
`
`This observation is improper as it raises a new issue regarding whether
`
`claims 7 and 8 provide written description support for the at least 500 volts
`
`limitation—an issue that was not included in Patent Owner’s Response, Paper No.
`
`17 or the accompanying Declaration of Mr. Hannemann, Paper No. 17, Ex. 2105.
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`Observations are not “an opportunity to raise new issues.” PTAB Trial Practice
`
`Guide, 77 F.R. 157, 48768 §L; IPR2013-00506, Paper 37 at 2. If even one
`
`observation is found to have violated these rules, the Board may dismiss and not
`
`consider the Patent Owner’s entire motion for observation. See IPR2013-00506,
`
`Paper 37 at 2-4.
`
`Patent Owner’s observation also mischaracterizes Dr. Stein’s testimony and
`
`is not relevant because the cited deposition testimony and the paragraphs from Dr.
`
`Stein’s Reply Declaration are not inconsistent. Specifically, Paice’s observation
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`improperly asserts that “Dr. Stein testified that claim 7 of U.S. Patent No.
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`5,343,970 (“the ‘970 patent”) discloses a battery providing a maximum current of
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`1
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`Case No.: IPR2015-00606
`Attorney Docket No.: FPGP0104IPR2
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`75 amperes to the electric motor.” Dr. Stein’s testimony is as follows: “I would
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`say that I haven't studied this claim, as I've already said, and I don't know how to
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`interpret some of these claim terms, since they haven't been in dispute. And I
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`could answer the question that a battery which was providing -- that was connected
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`to a motor that was providing 75 amperes, that the voltage corresponding to a
`
`battery, some battery, connected to some motor outside the context of this claim
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`would have a voltage associated with it, that voltage that would be providing-- of
`
`that battery providing that 75 amperes to a motor would have a corresponding
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`voltage that my students and I would call voltage under load. Whether that's
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`relevant to this particular claim I don't know.” (Stein Deposition Tr., 32:25-33:12.)
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`This Observation also mischaracterizes Dr. Stein’s testimony regarding
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`claim 8. Paice improperly asserts that Dr. Stein testified that “claim 8 (which
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`depends from claim 7) states that the corresponding voltage is between 500 to
`
`1500 volts” (boldface added.) Regarding the relationship of claims 7 and 8 and
`
`whether Severinsky ‘970 patent discloses 500 to 1500 volts under load, Dr. Stein
`
`testified as follows: “I don't know. I'd have to study this and have the claim
`
`construction to help me understand what we mean by this claim. I did not prepare
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`for this for this declaration -- for this deposition.” (Stein Tr., Ex. 2109, 33:25-
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`33:3.) This deposition testimony is consistent with paragraphs 64-68 of the Reply
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`Declaration, where Dr. Stein responds to paragraphs 51-60 of the Hannemann
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`2
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`
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`Declaration, which are limited to the disclosure in column 19 of the ‘970 patent
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`Case No.: IPR2015-00606
`Attorney Docket No.: FPGP0104IPR2
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`and not claims 7 and 8.
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`
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`B. Observation 2
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`Like Observation 1, this observation is improper as it raises a new issue
`
`regarding whether claims 7 and 8 provide written description support for the at
`
`least 500 volts limitation—an issue that was not included in Patent Owner’s
`
`Response, Paper No. 17 or the accompanying Declaration of Mr. Hannemann,
`
`Paper No. 17, Ex. 2105. Observations are not “an opportunity to raise new issues.”
`
`PTAB Trial Practice Guide, 77 F.R. 157, 48768 §L; IPR2013-00506, Paper 37 at 2.
`
`If even one observation is found to have violated these rules, the Board may
`
`dismiss and not consider the Patent Owner’s entire motion for observation. See
`
`IPR2013-00506, Paper 37 at 2-4.
`
`Patent Owner’s observation also mischaracterizes Dr. Stein’s testimony and
`
`is not relevant because the cited deposition testimony and the paragraphs from Dr.
`
`Stein’s Reply Declaration are not inconsistent. Regarding the relationship of claims
`
`7 and 8 and whether Severinsky ‘970 patent discloses 500 to 1500 volts under load,
`
`Dr. Stein testified as follows: “I don't know. I'd have to study this and have the
`
`claim construction to help me understand what we mean by this claim. I did not
`
`prepare for this for this declaration -- for this deposition.” (Stein Tr., Ex. 2109,
`
`3
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`Case No.: IPR2015-00606
`Attorney Docket No.: FPGP0104IPR2
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`33:25-33:3.) This deposition testimony is consistent with paragraphs 64-68 of the
`
`Reply Declaration, where Dr. Stein responds to paragraphs 51-60 of the
`
`Hannemann Declaration, which are limited to the disclosure in column 19 of the
`
`‘970 patent and not claims 7 and 8.
`
`
`
`C. Observation 3
`
`Similar to Observations 1 and 2, Patent Owner’s observation is not relevant
`
`because the cited deposition testimony is unrelated to paragraphs 25-31 of the
`
`Reply Declaration. Rather, Dr. Stein testified that “The document says what it
`
`does, it says this approximate three-fold increase in the operating voltage [but]
`
`does not define what it means by operating voltage.” Specifically, Dr. Stein’s
`
`testified that “it's really unclear what these voltage numbers are that they're talking
`
`about” in the ‘743 Application’s disclosure regarding operating voltages of “e.g.
`
`800-1200 V.” He goes on to state “normally when we talk about the voltage in a
`
`particular hybrid vehicle, the only voltage that's sort of inherent and constant is the
`
`nominal voltage.” Rather than contradicting paragraphs 25-31 of his Reply
`
`declaration, Dr. Stein’s deposition testimony confirms why the disclosure of 800-
`
`1200 Volts cannot be deemed a voltage under load.
`
`4
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`Case No.: IPR2015-00606
`Attorney Docket No.: FPGP0104IPR2
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`D. Observation 4
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`Like Observation 3, Observation 4 is not relevant because the cited
`
`deposition testimony—which discussed hybrid vehicle operation in general terms--
`
`is unrelated to paragraphs 25-31 of the Reply Declaration. More particularly, Dr.
`
`Stein testified that “[t]he document says what it does, it says this approximate
`
`three-fold increase in the operating voltage [but] does not define what it means by
`
`operating voltage.” Specifically, Dr. Stein’s testified that “it's really unclear what
`
`these voltage numbers are that they're talking about” in the ‘743 Application’s
`
`disclosure regarding operating voltages of “e.g. 800-1200 V.” He goes on to state
`
`“normally when we talk about the voltage in a particular hybrid vehicle, the only
`
`voltage that's sort of inherent and constant is the nominal voltage.” Rather than
`
`contradicting paragraphs 25-31 of his Reply Declaration, Dr. Stein’s deposition
`
`testimony thus confirms why the disclosure of 800-1200 Volts cannot be deemed a
`
`voltage under load.
`
`
`
`E. Observation 5
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`Observation 5 mischaracterizes the cited deposition testimony, which states
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`“[w]hen you measure, do the measurement to characterize these batteries, you do it
`
`when they are not connected or open-circuited with what they are connected to. So
`
`the current level is zero for the test of both of those situations, the single battery or
`
`5
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`
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`three of them connected together in a series circuit.” This testimony is unrelated to
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`Case No.: IPR2015-00606
`Attorney Docket No.: FPGP0104IPR2
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`paragraphs 25-31 of the Reply Declaration.
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`
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`F. Observation 6
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`Observation 6 mischaracterizes the cited deposition testimony, which states
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`that “the maximum voltage that’s practical for a battery pack in a hybrid electric
`
`vehicle is not unlimited. You can’t go up to infinity.” This testimony is not
`
`inconsistent with paragraphs 64-67 of Dr. Stein’s Reply Declaration, which
`
`addresses two points: 1) the lack of clarity as to whether the 500-1500 volts
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`disclosure is a voltage under load; and 2) that Paice’s rewrite of the at least 500
`
`volts limitation is impermissible, as any “workable limit” of the limitation for
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`written description purposes must come from the four corners of the specification.
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`
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`
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`Dated: May 27, 2016
`
`
`
`
`
`Respectfully submitted,
`
`
`
` /Sangeeta G. Shah/
`Sangeeta G. Shah (Reg. No. 38,614)
`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 0300
`Attorneys for Petitioner
`
`6
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`Case No.: IPR2015-00606
`Attorney Docket No.: FPGP0104IPR2
`
`Certificate of Service
`
`The undersigned hereby certifies that on May 27, 2016, a complete and
`
`entire copy of Petitioners' Response To Patent Owner's Motion For
`
`Observations On Cross Examination, was served via electronic mail by serving
`
`the correspondence email address 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: IPR36351-0014IP1@fr.com;
`
`Riffe@fr.com; Greene@fr.com
`
`BACK-UP COUNSEL
`Kevin E. Greene, Reg. No. 46,031
`Ruffin B. Cordell, Reg. No. 33,487
`Linda L. Kordziel, Reg. No. 39,732
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: (202) 783-5070
`Email: IPR36351-0014IP1@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 0300
`Attorneys for Petitioner
`
`7
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