UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`LINDSAY CORPORATION
`Petitioner
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`v.
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`VALMONT INDUSTRIES, INC.
`Patent Owner
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`_______________________
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`Case No. IPR2015-01039
`U.S. Patent No. 7,003,357
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`PATENT OWNER’S MOTION FOR OBSERVATION ON CROSS-
`EXAMINATION OF PETITIONER’S REPLY WITNESS,
`CRAIG ROSENBERG, PH.D.
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`LINDSAY CORPORATION
`Petitioner
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`v.
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`VALMONT INDUSTRIES, INC.
`Patent Owner
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`_______________________
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`Case No. IPR2015-01039
`U.S. Patent No. 7,003,357
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`PATENT OWNER’S MOTION FOR OBSERVATION ON CROSS-
`EXAMINATION OF PETITIONER’S REPLY WITNESS,
`CRAIG ROSENBERG, PH.D.
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`
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`Case No. 2015-01039
`U.S. Patent 7,003,357
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`EXHIBIT LIST
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`Exhibit
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`Description
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`VALMONT 2001 eBay Enterprise, Inc. and eBay, Inc. v. Lockwood, No.
`CBM2014-00026 (PTAB 2014), Institution Decision
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`VALMONT 2002 Kinetic Technologies, Inc. v. Skyworks, Solutions, Inc., No.
`IPR2014-00529 (PTAB 2014), Decision Denying Institution
`of Inter Partes Review
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`VALMONT 2003 LG Display Co., Ltd. v. Acacia Research Corp., No.
`IPR2014-01094 (PTAB 2014), Decision Denying Institution
`of Inter Partes Review
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`VALMONT 2004 Merriam-Webster’s Collegiate Dictionary, Tenth Addition
`(2001) (excerpts)
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`VALMONT 2005 Random House Webster’s Unabridged Dictionary, Second
`Edition (2001) (excerpts)
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`VALMONT 2006 Professor Melvin Ray Mercer’s Declaration
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`VALMONT 2007 Deposition Transcript of Dr. Rosenberg
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`VALMONT 2008 OneStat Website Statistics and website metrics Press
`Room (July 24, 2002)
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`VALMONT 2009 Kyocera QCP 6035 Specs (Feb. 29, 2008)
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`VALMONT 2010 Laptop Vs. PDA, eHow article, by David Sandoval
`VALMONT 2011 HP iPAQ 2210/2215 Pocket PC 2003 PDA, Mobile Tech
`Review by Lisa Gade (June 19, 2003)
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`VALMONT 2012 Apple iBook G3/600 14-inch (Early 2002) review
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`VALMONT 2013 Zimmatic by Lindsay, Articles list
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`VALMONT 2014 Brown, PCMag re Sprint PCS TP3000 (February 6, 2001)
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`i
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`Case No. 2015-01039
`U.S. Patent 7,003,357
`VALMONT 2015 Evolution of Cell Phones, Web Designer Depot (May 22,
`2009)
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`VALMONT 2016 Professor Melvin Ray Mercer’s CV
`VALMONT 2017 List of reviewed materials for Professor Melvin Ray
`Mercer’s Declaration
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`VALMONT 2018 Professor Melvin Ray Mercer’s claim chart for claim 1
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`VALMONT 2019 Deposition transcript of Craig Rosenberg, Ph.D.
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`ii
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`Case No. 2015-01039
`U.S. Patent 7,003,357
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`Pursuant to Paper No. 8, Patent Owner submits the following Observations on
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`Cross-Examination of Petitioner’s Reply witness, Craig Rosenberg, Ph.D. (Exhibit
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`2019), which show inconsistencies and errors in Petitioner’s reply arguments:
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`Deposition Section No. 1 (15:12-25)
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`Q. You just mentioned that handheld is a commonly understood
`word or term?
`A. Yes.
`Q. And in [paragraph] 46, you do reference some extrinsic evidence
`by pointing to a definition from dictionary.com; is that right?
`That’s correct, yes. Small enough to be used or operated while
`held – while being held in the hand or hands.
`Q. Now, this definition from dictionary.com is not from the time of
`the invention of the ’357 patent; right?
`A. No.
`Observation No. 1
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`A.
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`This section of deposition is significant because Dr. Rosenberg concedes that
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`the only support he provides for his purported understanding of the term “handheld”
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`is from an online dictionary definition from over a decade after the time of the
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`invention of the ’357 Patent. Accordingly, Dr. Rosenberg’s testimony is relevant to
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`the issue of whether he fails to provide any support from the pertinent time period
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`for construing handheld to mean “small enough to be used or operated while held in
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`the hand or hands.”
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`1
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`U.S. Patent 7,003,357
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`Deposition Section No. 2 (17:6-18:1)
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`A.
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`Q. So my question is: If the board disagrees and holds that the
`definition of handheld requires that only one hand is used, then a
`laptop would not meet -- would not be a handheld display under
`that 13 definition; is that right?
`I would have to give that some more thought to -- to think about
`that. As I just said, operating a laptop about the size of the laptop
`that you're using right now would not be feasible to -- if you had
`one hand tied behind your back, it wouldn't be feasible to operate
`it unless you could set it on a surface.
`Q. And certainly, in neither one of your declarations do you provide
`any opinions where the word handheld is limited to just one
`hand?
`A. No, I certainly don't say that handheld means that it needs to be
`one hand. I believe I've always offered the opinion and agreed
`with the proposed construction held in the hand or hands, which
`can imply the use of two hands to operate the device too.
`Observation No. 2
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`This section of deposition is significant because Dr. Rosenberg agrees that his
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`opinions are based on a construction of handheld that allows for a handheld device
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`to held and operable “in the hand or hands.” Therefore, if the Board finds that a
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`person of ordinary skill in the art at the time of the invention would have understood
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`“handheld” to refer to devices held and operable in a single hand, Dr. Rosenberg’s
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`testimony is relevant to whether his opinions are entitled to little or no weight, for
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`failure to provide any testimony under that appropriate construction of the term
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`Case No. 2015-01039
`U.S. Patent 7,003,357
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`“handheld.”
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`Deposition Section No. 3 (27:15-24)
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`Q.
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`In paragraph 11, the second sentence, your reply declaration
`states, “Scott discloses a division between preliminary set up,
`e.g. rendering of site maps and subsequent monitoring and
`control functionality.” Did I read that correctly?
`A. You did, yes.
`Q. Now, you don’t discuss the division between preliminary set up
`and this subsequent functionality in your original declaration;
`right?
`I don’t . . . .
`A.
`Observation No. 3
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`This section of deposition is significant because Dr. Rosenberg admits that he
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`has included opinions in his reply declaration that were not included within his
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`original declaration. This is relevant to the issue of whether the Board should not
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`consider the new declaration or the Reply brief arguments it supports, since Dr.
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`Rosenberg’s reply declaration includes new arguments that are improper for not
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`having first been raised in the Petition.
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`Deposition Section No. 4 (28:13-30:1)
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`If we could turn to paragraph 12 in your reply declaration.
`Q.
`A. Okay.
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`3
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`U.S. Patent 7,003,357
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`Q. The second sentence states, “I disagree with this opinion because
`over the course of my career with systems architecture, design,
`and programming, there has been a consistent desire and goal of
`shrinking hardware and software
`to squeeze
`the most
`functionality out of the smallest hardware package available.”
`Did I read that correctly?
`A. You did, yes.
`. . .
`Q. But the first time you refer to this desire and goal is in your reply
`declaration; right?
`A. Responding to Dr. Mercer’s concern, yes.
`Observation No. 4
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`This section of deposition is significant because Dr. Rosenberg admits that he
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`has included opinions in his reply declaration that were not included within his
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`original declaration. This is relevant to the issue of whether the Board should not
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`consider the new declaration or the Reply brief arguments it supports, since Dr.
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`Rosenberg’s reply declaration includes new arguments that are improper for not
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`having first been raised in the Petition.
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`Deposition Section No. 5 (33:6-10)
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`Q. So the explanation that you gave about why you believe
`paragraph 17 is a method analog to claim 1 is not contained in
`your reply declaration or your original declaration; right?
`A. No.
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`U.S. Patent 7,003,357
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`Observation No. 5
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`This section of deposition is significant because Dr. Rosenberg admits that he
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`has included opinions in his reply declaration that were not included within his
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`original declaration. This is relevant to the issue of whether the Board should not
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`consider the new declaration or the Reply brief it arguments it supports, since Dr.
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`Rosenberg’s reply declaration includes new arguments that are improper for not
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`having first been raised in the Petition. The testimony is further relevant to the issue
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`of whether Dr. Rosenberg’s testimony is entitled to little or no weight, given that he
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`admits that he did not provide any explanation for why he asserts that claim 17 is a
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`“method analogue” to claim 1.
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`Deposition Section No. 6 (37:16-38:4)
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`Q. The last sentence there after thereby states, “this knowledge
`would be held by one of ordinary skill in the art at the time of the
`filing of the 357 patent application because it is problem solving
`capabilities such as this that any electrical or computer engineer
`or computer scientist would learn to obtain their degree.” Did I
`read that correctly?
`A. You did, yes.
`Q. You did not discuss the problem solving capabilities of electrical
`computer engineers or computer scientists in your original
`declaration; correct?
`A. No, I did not . . . .
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`U.S. Patent 7,003,357
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`Observation No. 6
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`This section of deposition is significant because Dr. Rosenberg admits that he
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`has included opinions in his reply declaration that were not included within his
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`original declaration. This is relevant to the issue of whether the Board should not
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`consider the new declaration or the Reply brief it arguments it supports, since Dr.
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`Rosenberg’s reply declaration includes new arguments that are improper for not
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`having first been raised in the Petition.
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`Deposition Section No. 7 (45:21-46:14)
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`Q. You discuss here that “Scott distinguishes between the
`generation of a site map rending and the use of a site map by a
`user.” Did I read that correctly?
`A. Yes.
`Q. You don’t refer to or discuss this distinction in your original
`declaration, though; right?
`A. We talked about this earlier in response to Dr. Mercer’s concerns
`that the CAD drawings would need to be transmitted, so here I
`am responding to Dr. Mercer’s criticism and concern that these
`PDAs and remote user interfaces wouldn't be able to handle the
`transmission of CAD drawings.
`Q. Okay. So you’re responding to Dr. Mercer, but this discussion
`wasn't included in your original declaration?
`I was responding to Doctor -- that is correct. That is correct.
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`A.
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`Case No. 2015-01039
`U.S. Patent 7,003,357
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`Observation No. 7
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`This section of deposition is significant because Dr. Rosenberg admits that he
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`has included opinions in his reply declaration that were not included within his
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`original declaration. This is relevant to the issue of whether the Board should not
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`consider the new declaration or the Reply brief it arguments it supports, since Dr.
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`Rosenberg’s reply declaration includes new arguments that are improper for not
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`having first been raised in the Petition.
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`Deposition Section No. 8 (58:6-59:5)
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`Q. Sure. Let me just read the first sentence. “One of ordinary skill
`in the art would recognize not only that digital communications
`could achieve wireless direct control of irrigation equip, Scott,
`but contrary to Dr. Mercer's opinion in paragraph 62 of his
`declaration, that those wireless digital communications would
`not send CAD drawings or other graphical representations of
`command, but would instead send control signals and receive
`status 25 signals via digital signals.” Did I read that correctly?
`A. Yes.
`Q. And this idea of digital signals you're raising for the first time
`here in this reply declaration; correct?
`In response to Dr. Mercer's concerns, yes.
`A.
`Q. And aside from your personal experience, you don’t cite to any
`extrinsic support for this statement; correct?
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`7
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`Case No. 2015-01039
`U.S. Patent 7,003,357
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`Q.
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`A.
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`In my reply declaration? You’re talking about extrinsic support
`in my reply declaration.
`In your reply declaration that a person of ordinary skill in the art
`would understand this idea of using digital signals?
`A. Correct.
`Observation No. 8
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`
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`This section of deposition is significant because Dr. Rosenberg admits that he
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`has included opinions in his reply declaration that were not included within his
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`original declaration. This is relevant to the issue of whether the Board should not
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`consider the new declaration or the Reply brief it arguments it supports, since Dr.
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`Rosenberg’s reply declaration includes new arguments that are improper for not
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`having first been raised in the Petition. The testimony is further relevant to the issue
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`of whether Dr. Rosenberg’s opinions are entitled to little or no weight, since Dr.
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`Rosenberg also admits that he did not provide any support for his opinion with
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`respect to “digital signals.”
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`Deposition Section No. 9 (65:1-24)
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`Q. You do not discuss OLE in your original declaration; correct?
`A. Yeah.
`. . .
`Q. OLE is not in your original declaration; correct?
`A.
`I'll take your representation on that.
`Q. And same for DLL?
`A.
`If you say so, I have no reason to dispute that.
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`Case No. 2015-01039
`U.S. Patent 7,003,357
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`Q. And it’s the same for API?
`A. Okay.
`Observation No. 9
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`This section of deposition is significant because Dr. Rosenberg admits that he
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`has included opinions in his reply declaration that were not included within his
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`original declaration. This is relevant to the issue of whether the Board should not
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`consider the new declaration or the Reply brief it arguments it supports, since Dr.
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`Rosenberg’s reply declaration includes new arguments that are improper for not
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`having first been raised in the Petition.
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`Deposition Section No. 10 (67:8-70:18)
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`Q. So let's look at your declaration, paragraph 37. In paragraph 37,
`five lines down there's a sentence that starts, I disagree. “I
`disagree with Valmont and Dr. Mercer on this point because both
`Valmont and Dr. Mercer improperly read in a requirement of
`claim 10 that the GUIs be shaped to identify the operating
`irrigation patterns for specific irrigation equipment which only
`requires a GUI change shape in response to a change of status in
`irrigation equipment.” Did I read that correctly?
`A. You did, yes.
`Q. How can you make that statement, considering we just agreed
`that claim 11 contains the limitation of claim ten?
`. . . Okay. I guess perhaps my wording was not as clear as it could
`be, but I am saying here, claim 11 requires a GUI change shape
`in response to a change of status irrigation equipment, so I’m not
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`A.
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`9
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`Case No. 2015-01039
`U.S. Patent 7,003,357
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`implying that claim 11 doesn’t require some sort of shape
`change.
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`. . .
`Q. And I understand your position on the prior art and what it
`discloses with respect to these claims.
`A. Yes.
`Q.
`I just want to make sure that I understand whether you continue
`to claim that there's an improper reading of claim ten.
`Requirement of claim ten into claim 11 by Valmont and Dr.
`Mercer or whether you no longer feel that as the case and your
`sentence is maybe miswritten or could be written better?
`A. Uh-huh.
`Q. That’s not the basis for your opinion?
`A. Yeah. Let me just read the two claims once more. . . . [I]f I were
`editing this paper today, I would pull out the first part of that
`sentence and just say, claim 11 requires a GUI change in shape
`in response to a change in status. And I think it’s clear to all that
`claim 11 is dependent on claim ten.
`Observation No. 10
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`This section of deposition is significant because Dr. Rosenberg admits his
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`opinion in his reply declaration with respect to dependent claims 10 and 11 is
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`inconsistent with the language of the claims. Though his declaration alleges that
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`Patent Owner and its expert, Dr. Mercer, improperly read limitations from claim 10
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`into claim 11, in his deposition Dr. Rosenberg admits that claim 11 depends from
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`claim 10 and therefore includes all of the limitations of claim 10. Dr. Rosenberg’s
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`Case No. 2015-01039
`U.S. Patent 7,003,357
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`opinion regarding claim 11 is relevant to the issue of whether his opinions should
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`therefore be afforded little or no weight.
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`Respectfully submitted,
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`
`/P. Weston Musselman, Jr./
`P. Weston Musselman, Jr.
`Reg. No. 31,644
`Lead Counsel for Patent Owner
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`Date: May 16, 2016
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`Customer Number 26171
`Fish & Richardson P.C.
`Telephone: (612) 337-2508
`Facsimile: (612) 288-9696
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`Case No. 2015-01039
`U.S. Patent 7,003,357
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`CERTIFICATE OF SERVICE
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`
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`Pursuant to 37 CFR § 42.6(e)(4), the undersigned certifies that on May 16,
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`2016, a complete and entire copy of this Patent Owner’s Motion for Observation on
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`Cross-Examination of Petitioner’s Reply Witness, Craig Rosenberg, Ph.D., and
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`corresponding exhibit was provided via email to the Petitioner by serving the
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`correspondence email address of record as follows:
`
`HOVEY WILLIAMS LLP
`
`Scott R. Brown, Reg. No. 40,535
`Matthew B. Walters, Reg. No. 65,343
`10801 Mastin Blvd., Suite 1000
`Overland Park, Kansas 66210
`P: (913) 647-9050; F: (913) 647-9057
`srb@hoveywilliams.com
`mbw@hoveywilliams.com
`ATTORNEYS FOR PETITIONER
`
`
`
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`
`
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`
`
` /Christine Rogers/
`Christine Rogers
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(650) 839-5092
`
`
`12
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