Trials@uspto.gov
`571-272-7822
`
`Paper 58
`Entered: October 20, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ARKEMA FRANCE,
`Petitioner,
`
`v.
`
`HONEYWELL INTERNATIONAL, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00916
`Patent 8,710,282 B2
`____________
`
`
`
`Before JO-ANNE M. KOKOSKI, JON B. TORNQUIST, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`DECISION
`Petitioner’s Motion to Exclude Evidence
`37 C.F.R. § 42.64(c)
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 58
`Entered: October 20, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ARKEMA FRANCE,
`Petitioner,
`
`v.
`
`HONEYWELL INTERNATIONAL, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00916
`Patent 8,710,282 B2
`____________
`
`
`
`Before JO-ANNE M. KOKOSKI, JON B. TORNQUIST, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`DECISION
`Petitioner’s Motion to Exclude Evidence
`37 C.F.R. § 42.64(c)
`
`
`
`
`
`
`
`
`IPR2015-00916
`Patent 8,710,282 B2
`
`
`Arkema France (“Petitioner”) moves to exclude from evidence certain
`exhibits filed by Honeywell International, Inc. (“Patent Owner”) (Paper 46,
`“Mot.”). Patent Owner filed an Opposition (Paper 50, “Opp.”), and
`Petitioner filed a Reply (Paper 51, “Reply”). For the following reasons,
`Petitioner’s motion is granted-in-part and denied-in-part.
`Pursuant to our Rules, a motion to exclude evidence must be filed to
`preserve any previously-made objections to evidence. 37 C.F.R. § 42.64(c).
`The motion must identify where in the record the objections were made, and
`must explain the objections. Id. Petitioner’s Motion seeks to exclude the
`following exhibits on the ground that they are not properly authenticated:
`
`Exhibit
`2007
`2009
`
`2014
`2017
`2020
`2023
`2025
`2027
`2028
`
`
`
`Description from Exhibit List (Paper 21, vi–vii)
`March 26, 2008 email from Haluk Kopkalli
`Project Permit Change Form to Permit # 626 dated May 16,
`2008
`August 2008 Monthly Highlights Report of Dr. Tung
`September 2008 Monthly Highlights Report of Dr. Tung
`November 2008 Monthly Highlights Report of Dr. Tung
`January 2009 Monthly Highlights Report of Dr. Tung
`February 2009 Monthly Highlights Report of Dr. Tung
`March 2009 Monthly Highlights Report of Dr. Tung
`PowerPoint entitled “Apollo Technology Review
`Dehydrofluorination of 236ea and 245eb” and dated August
`21, 2009
`
`Petitioner identifies where in the record it previously served
`objections to these exhibits (Mot. 2 (citing Paper 23)), and the Motion is,
`therefore, procedurally proper. As the moving party, Petitioner bears the
`burden of proof to establish that it is entitled to the requested relief: the
`exclusion of the evidence as inadmissible under the Federal Rules of
`Evidence (“FRE”). See 37 C.F.R. §§ 42.20(c), 42,64(a).
`
`
`
`2
`
`
`
`IPR2015-00916
`Patent 8,710,282 B2
`
`
`Federal Rule of Evidence 901(a) states that, “[t]o satisfy the
`requirement of authenticating or identifying an item of evidence, the
`proponent must produce evidence sufficient to support a finding that the
`item is what the proponent claims it is.” The Rule provides several
`examples of evidence that may satisfy the requirement, including the
`testimony of a witness with knowledge that the item is what it is claimed to
`be. FRE 901(b)(1). Patent Owner argues that it “relies on testimony from
`multiple witnesses combined with the appearance, contents, and substance of
`each exhibit” in order authenticate the exhibits. Opp. 1 (emphasis omitted).
`Exhibit 2007
`A.
`Patent Owner provides the testimony of named inventor Dr. Harry S.
`Tung that Exhibit 2007 is “a true and accurate copy of the Kopkalli Email
`dated March 26, 2008 and associated attachments which [Dr. Tung] received
`from Mr. Kopkalli in the ordinary course of business.” Ex. 2006 ¶ 11.
`Patent Owner argues that this testimony, along with the contents of Exhibit
`2007, establishes that “there is at least a reasonable likelihood that Exhibit
`2007 contains the Kopkalli e-mail.” Opp. 8–9.1 Petitioner argues that,
`because Patent Owner relies on Exhibit 2007 to corroborate Patent Owner’s
`argument and Dr. Tung’s testimony that the claimed invention was
`conceived by March 26, 2008, “Dr. Tung’s declaration is insufficient to
`properly authenticate Exhibit 2007.” Mot. 3–5.
`Normally, the testimony of Dr. Tung—a witness having personal
`knowledge of the documents—could be sufficient to “support a finding that
`
`1 Patent Owner also cites to additional testimony from Dr. Tung in the
`“Tung Supplement Declaration.” Opp. 9. Because the Tung Supplemental
`Declaration does not appear to be in the record, this testimony is
`unsupported and we do not consider it in our analysis.
`3
`
`
`
`
`
`IPR2015-00916
`Patent 8,710,282 B2
`
`the item is what the proponent claims it is,” the context in which this exhibit
`is offered requires more. Specifically, because Patent Owner relies on
`Exhibit 2007 to corroborate Dr. Tung’s testimony that Exhibit 2007
`demonstrates conception of the claimed invention at least as early as March
`26, 2008, independent evidence of authenticity is required:
`It is well established that in order for a contemporaneous
`document to be accorded any corroborative value[,] the
`testimony of a witness other than the inventor, who is shown to
`have understood the recorded information, is generally necessary
`to authenticate the document’s contents as well as to explain the
`witness’ relationship to the document in question.
`Horton v. Stevens, 7 U.S.P.Q. 2d 1245, 1988 WL 252359 at *4 (BPAI Mar.
`8, 1988) (emphasis added). This is to avoid “circular” situations in which a
`party seeks to rely on a document to corroborate a witness’ testimony, but
`relies on that witness’ testimony to provide the date or other authentication
`of that document. See In re NTP, Inc., 654 F.3d 1279, 1297 (Fed. Cir.
`2011); Chen v. Bouchard, 347 F.3d 1299, 1308 (Fed. Cir. 2003) (rejecting
`authentication of a document because it was not established by anything
`other than the circular testimony of the inventor). The purpose of
`corroboration is to prevent fraud by providing independent confirmation of
`the inventor’s testimony. See, e.g., Kridl v. McCormick, 105 F.3d 1446,
`1450 (Fed. Cir. 1997) (“The tribunal must also bear in mind the purpose of
`corroboration, which is to prevent fraud, by providing independent
`confirmation of the inventor’s testimony.”). A document authenticated only
`by an inventor does not achieve that purpose because it is not sufficiently
`independent.
` For this reason, Dr. Tung’s testimony cannot be used to authenticate
`Exhibit 2007, when Exhibit 2007 is offered to corroborate Dr. Tung’s
`
`
`
`4
`
`
`
`IPR2015-00916
`Patent 8,710,282 B2
`
`testimony regarding the conception date of the claimed invention. We
`determine that Exhibit 2007 should be excluded as lacking authentication
`under FRE 901.
`Exhibit 2009
`B.
`Patent Owner provides the testimony of Angela Goodie and Diana
`Overton in order to authenticate Exhibit 2009. Opp. 13–15 (citing Exs.
`2037, 2040). Ms. Goodie testifies that she performed experiments in July
`2008 according to instructions received from Dr. Selma Bektesevic, “using
`the lab setup described in the Project Permit Change Form (EX2009).”
`Ex. 2037 ¶ 4. Ms. Overton testifies to Patent Owner’s policies with respect
`to the preparation and retention of project permit change forms such as
`Ex. 2009, including that it is the policy
`for researchers or scientists to prepare permits or permit change
`forms in order to pursue experiments and changes or addendums
`thereto (such as process, chemicals, people), respectively. Once
`the permit or permit change form is approved by the appropriate
`personnel, the signed original of the document is routed to the
`[Health, Safety and Environment] department, where it is
`maintained in the ordinary course of business.
`Ex. 2040 ¶ 5.
`Petitioner argues that “Ms. Goodie never states that Exhibit 2009 is a
`true and accurate copy of the original Project Permit Change Form dated
`May 16, 2008,” and Ms. Overton did not work at Patent Owner in her
`current capacity until June 2015, and thus does not have personal knowledge
`related to Exhibit 2009. Mot. 6–8. Patent Owner responds that
`“Ms. Goodie’s testimony and the ‘appearance, contents, [or] substance’ of
`Exhibit 2009 demonstrate at least a ‘reasonable likelihood’ that Exhibit 2009
`contains the Project Permit Change Form received by Angela Goodie on or
`
`
`
`5
`
`
`
`IPR2015-00916
`Patent 8,710,282 B2
`
`near July 16, 2008.” Opp. 13. Patent Owner also argues that “Ms. Overton
`testified only to her personal knowledge as a record-keeper of the process
`for keeping records in the past.” Id. at 14–15.
`We determine that Ms. Goodie’s testimony that she used the lab setup
`described in Exhibit 2009 to perform experiments following
`Dr. Bektesevic’s instructions, coupled with identifying information on
`Exhibit 2009 (such as the identification of Dr. Bektesevic as the “sender” of
`the form and the employee responsible for the project), is adequate to
`support a finding that Exhibit 2009 is the Project Permit Change Form to
`Permit # 626 dated May 16, 2008 as Patent Owner claims. Ms. Overton’s
`testimony regarding Patent Owner’s document retention practices further
`supports this determination. Accordingly, we decline to exclude Exhibit
`2009.
`
`Exhibits 2014, 2017, 2020, 2023, 2025, and 2027
`C.
`Patent Owner provides testimony from Dr. Tung in order to
`authenticate Exhibits 2014, 2017, 2020, 2023, 2025, and 2027 (collectively,
`“the Tung Monthly Highlights”). Ex. 2006 ¶¶ 33, 39, 44, 47, 49, 51. Patent
`Owner argues that Dr. Tung testified from his personal knowledge that the
`Tung Monthly Highlights are true and accurate copies, and that Dr. Tung’s
`testimony, along with the date, title, and identified author of each exhibit,
`establishes that “there is at least a reasonable likelihood” that the Tung
`Monthly Highlights are authentic. Opp. 9–12. Petitioner argues that Patent
`Owner relies on the Tung Monthly Highlights “to support and corroborate
`arguments and testimony related to diligence,” and, as discussed above with
`respect to Exhibit 2007, Dr. Tung’s testimony cannot authenticate
`
`
`
`6
`
`
`
`IPR2015-00916
`Patent 8,710,282 B2
`
`corroborating documents because it is not sufficiently independent. Mot. 8–
`9.
`
`For the reasons set forth above with respect to Exhibit 2007,
`Dr. Tung’s testimony cannot be used to authenticate the Tung Monthly
`Highlights, when the Tung Monthly Highlights are offered to corroborate
`Dr. Tung’s testimony regarding diligence. We determine that Exhibits 2014,
`2017, 2020, 2023, 2025, and 2027 should be excluded as lacking
`authentication under FRE 901.
`Exhibit 2028
`D.
`Patent Owner provides testimony from Dr. Tung in order to
`authenticate Exhibit 2028. Ex. 2006 ¶ 53. Patent Owner argues that
`Dr. Tung testified “from his personal knowledge that Exhibit 2028 is a true
`and authentic copy of a presentation related to the caustic
`dehydrofluorination experiments given by Dr. Bektesevic at a meeting on
`May 13, 2009,” and that Dr. Tung’s testimony also “confirms the contents of
`the slides.” Opp. 12. Petitioner argues that Exhibit 2028 “does not have an
`indication of source or authorship” (Reply 5), and that, because Dr. Tung
`relies on Exhibit 2028 to support and corroborate arguments related to
`diligence, Dr. Tung’s testimony cannot authenticate Exhibit 2028 because it
`is not sufficiently independent (Mot. 10; Reply 5).
`For the reasons set forth above with respect to Exhibit 2007,
`Dr. Tung’s testimony cannot be used to authenticate Exhibit 2028, when
`Exhibit 2028 is offered to corroborate Dr. Tung’s testimony regarding
`diligence. We determine that Exhibit 2028 should be excluded as lacking
`authentication under FRE 901.
`
`
`
`
`7
`
`
`
`IPR2015-00916
`Patent 8,710,282 B2
`
`
`ORDER
`In consideration of the foregoing, it is
`ORDERED that Petitioner’s Motion to Exclude Evidence is granted-
`
`in-part with respect to Exhibits 2007, 2014, 2017, 2020, 2023, 2025, 2027,
`and 2028, and otherwise is denied-in-part.
`
`
`PETITIONER:
`
`Jon Beaupré
`Allen R. Baum
`Allyn B. Elliott
`Joshua E. Ney
`Richard K. DeMille
`BRINKS GILSON & LIONE
`jbeaupre@brinksgilson.com
`Arkema_HoneywellIPRs@brinksgilson.com
`
`
`
`PATENT OWNER:
`
`Bruce J. Rose
`Christopher TL Douglas
`S. Benjamin Pleune
`ALSTON & BIRD LLP
`bruce.rose@alston.com
`chris.douglas@alston.com
`ben.pleune@alston.com
`
`
`
`
`
`
`
`8
`
`
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