Filed on behalf of Lindsay Corporation
`
`
`By:
`
`Scott R. Brown, Reg. No. 40535
`Matthew B. Walters, Reg. No. 65343
`HOVEY WILLIAMS LLP
`10801 Mastin Boulevard, Suite 1000
`Overland Park, Kansas 66210
`(913) 647-9050 Fax: (913) 647-9057
`sbrown@hoveywilliams.com
`mwalters@hoveywilliams.com
`
`Paper 31
`Filed: May 30, 2016
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`LINDSAY CORPORATION,
`Petitioner,
`
`v.
`
`VALMONT INDUSTRIES, INC.,
`Patent Owner.
`
`
`Case No. IPR2015-01039
`U.S. Patent No. 7,003,357
`
`
`
`
`
`
`
`
`
`
`
`
`Before: SALLY C. MEDLEY, ROBERT J. WEINSCHENK, and
`WILLIAM M. FINK, Administrative Patent Judges.
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`
`By:
`
`Scott R. Brown, Reg. No. 40535
`Matthew B. Walters, Reg. No. 65343
`HOVEY WILLIAMS LLP
`10801 Mastin Boulevard, Suite 1000
`Overland Park, Kansas 66210
`(913) 647-9050 Fax: (913) 647-9057
`sbrown@hoveywilliams.com
`mwalters@hoveywilliams.com
`
`Paper 31
`Filed: May 30, 2016
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`LINDSAY CORPORATION,
`Petitioner,
`
`v.
`
`VALMONT INDUSTRIES, INC.,
`Patent Owner.
`
`
`Case No. IPR2015-01039
`U.S. Patent No. 7,003,357
`
`
`
`
`
`
`
`
`
`
`
`
`Before: SALLY C. MEDLEY, ROBERT J. WEINSCHENK, and
`WILLIAM M. FINK, Administrative Patent Judges.
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`IPR2015-01039
`Patent 7,003,357 B1
`
`
`INTRODUCTION ............................................................................................... 1
`
`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES ................................................................................... iii
`
`I.
`
`II. FACTUAL AND PROCEDURAL BACKGROUND ....................................... 1
`
`III. ARGUMENT ...................................................................................................... 2
`
`
` A. All of the Statements in Dr. Rosenberg’s Declarations that Valmont
` Attacks as “Conclusory” Are Relevant and Admissible. .............................. 2
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` 1. Dr. Rosenberg Has Properly Supported His Opinion that a
` “Handheld Device” Includes a “Laptop.” ................................................ 3
`
` 2. Dr. Rosenberg’s Agreement with Proposed Constructions and
` Identifications Is Supported and Admissible. .......................................... 4
`
` 3. Dr. Rosenberg’s Opinions Regarding Motivation to Combine Are
` Properly Submitted and Admissible. ........................................................ 5
`
` 4. The Opinions in Paragraphs 18 and 26 of Dr. Rosenberg’s Reply
` Declaration Are Supported and Admissible. ............................................ 7
`
` B. The Challenged Paragraphs of Dr. Rosenberg’s Declarations Are
` Properly Supported by Facts, Data, and Reasoned Explanation. .................. 9
`
` C. The Challenged Paragraphs in Dr. Rosenberg’s Reply Declaration Are
` Properly Submitted Reply Evidence. ..........................................................13
`
` D. The Design Patterns Excerpt Is Properly Authenticated and Is
` Admissible under Numerous Hearsay Exceptions. ......................................14
`
` E. The “Unreferenced” Paragraphs of Dr. Rosenberg’s Declaration Are
` Admissible. ...................................................................................................14
`
`i
`
`
`
`IPR2015-01039
`Patent 7,003,357 B1
`
`IV. CONCLUSION .................................................................................................15
`
`CERTIFICATE OF SERVICE ................................................................................16
`
`
`
`
`
`ii
`
`
`
`IPR2015-01039
`Patent 7,003,357 B1
`
`
`TABLE OF AUTHORITIES
`
`Cases
`
`
`Belden, Inc. v. Berk-Tek LLC
` 805 F.3d 1064 (Fed. Cir. 2015) .......................................................................6, 14
`
`Compass Bank v. Intellectual Ventures II, LLC
`
`IPR2014-00786, 2015 WL 5636372 (Sept. 23, 2015) ........................................... 3
`
`Corning Inc. v. DSM IP Assets B.V.
`
`IPR2013-00050, 2014 WL 1783280 (May 1, 2014) .............................................. 3
`
`Daubert v. Merrill Dow Pharmaceuticals
` 609 U.S. 579 (1993) ............................................................................................... 9
`
`Edmund Optics, Inc. v. Semrock, Inc.
`
`IPR2014-00583, 2014 WL 4731775 (Sept. 19, 2014) .....................................7, 10
`
`Google Inc. v. Visual Real Estate, Inc.
`
`IPR2014-01340, 2016 WL 763852 (PTAB Feb. 25, 2016) ................................... 5
`
`i4i Ltd. Partnership v. Microsoft Corp.
` 598 F.3d 831 (Fed. Cir. 2010)................................................................................ 8
`
`Logic Technology Development, LLC v. Fontem Holdings 1 B.V.
`
`IPR2015-00098, 2015 WL 2231961 (May 11, 2015) ............................................ 4
`
`Motorola Mobility, LLC v. Intellectual Ventures I, LLC
` CBM2015-00004, 2016 WL 1133073 (Mar. 21, 2016) ......................................... 2
`
`Sealed Air Corp. v. Pregis Innovative Packaging, Inc.
`
`IPR2013-00554, Paper 16 (Apr. 1, 2014) ............................................................11
`
`Summit 6, LLC v. Samsung Electronics Co.
` 802 F.3d 1283 (Fed. Cir. 2015) ............................................................................. 2
`
`iii
`
`
`
`IPR2015-01039
`Patent 7,003,357 B1
`
`Vibrant Media, Inc. v. General Electric Co.
`
`IPR2013-00170, 2014 WL 2965703 (June 26, 2014) ................................. 6, 8, 13
`
`Williams v. Illinois
` 132 S. Ct. 2221 (2012) ........................................................................................... 9
`
`
`
`Other Authorities
`
`
`37 C.F.R. § 42.23 .................................................................................................6, 14
`
`37 C.F.R. § 42.6 .......................................................................................................15
`
`37 C.F.R. § 42.64 .................................................................................................1, 11
`
`37 C.F.R. § 42.65 ............................................................................................ 2, 5, 15
`
`Fed. R. Evid. 803 .....................................................................................................15
`
`Fed. R. Evid. 901 .....................................................................................................15
`
`
`
`iv
`
`
`
`IPR2015-01039
`Patent 7,003,357 B1
`
`I.
`
`INTRODUCTION
`
`Virtually all of the arguments in Valmont’s Motion to Exclude go to the
`
`weight, rather than the admissibility, of the challenged evidence. Valmont’s
`
`arguments also ignore Lindsay’s supplemental evidence, which was timely
`
`submitted and cured the vast majority of the issues Valmont raised in its initial
`
`objections to Dr. Rosenberg’s Declaration.
`
`Because Dr. Rosenberg’s Declaration and Reply Declaration are relevant,
`
`reliable, and well-supported by facts and data, and because Valmont’s objections to
`
`the Design Patterns book excerpt and “unreferenced” paragraphs in the
`
`Declarations are without merit, the Board should deny Valmont’s motion.
`
`II.
`
`FACTUAL AND PROCEDURAL BACKGROUND
`
`After Valmont objected to Dr. Rosenberg’s Declaration (Exhibit 1009) on
`
`October 8, 2015 (Paper 9), Lindsay timely served supplemental evidence on
`
`Valmont pursuant to 37 C.F.R. § 42.64(b)(2), including an updated Declaration
`
`from Dr. Rosenberg adding the citations and support that Valmont asserted were
`
`lacking from the original Declaration. (See Paper 32, Appendix of Exhibits, and
`
`Exs. 1009A & 1020.) Valmont objected to the additional citations and support in
`
`Exhibit 1009A on grounds that they contained supplemental information. (Paper 10
`
`1
`
`
`
`IPR2015-01039
`Patent 7,003,357 B1
`
`at 3.) But Valmont’s Motion is based only on its original objections (Paper 9) and
`
`its objections to Lindsay’s rebuttal evidence (Paper 23).
`
`III. ARGUMENT
`
`A. All of the Statements in Dr. Rosenberg’s Declarations that
`Valmont Attacks as “Conclusory” Are Relevant and Admissible.
`
`The alleged absence of facts or data underpinning an expert’s opinion “is a
`
`matter relating to the weight to be given such evidence rather than to the
`
`admissibility of that evidence.” Motorola Mobility, LLC v. Intellectual Ventures I,
`
`LLC, CBM2015-00004, 2016 WL 1133073, at *5 (Mar. 21, 2016) (emphasis
`
`added); see also Summit 6, LLC v. Samsung Elecs. Co., 802 F.3d 1283, 1298 (Fed.
`
`Cir. 2015) Valmont acknowledges as much in its Motion. (Paper 28 at 2 (quoting
`
`C.F.R. § 42.65(a))). Nonetheless, Valmont urges the Board to exclude multiple
`
`paragraphs of Dr. Rosenberg’s Declaration and Reply Declaration in their entirety
`
`because they allegedly fail to disclose underlying supporting facts or data.
`
`These are improper grounds for a motion to exclude and, as shown below,
`
`Valmont’s arguments are substantively incorrect. Because Dr. Rosenberg has
`
`properly supported his opinions, the Board should consider them and deny
`
`Valmont’s Motion.
`
`2
`
`
`
`IPR2015-01039
`Patent 7,003,357 B1
`
`
`1.
`
`Dr. Rosenberg Has Properly Supported His Opinion
`that a “Handheld Device” Includes a “Laptop.”
`
`The Board gives little weight to an expert opinion that “parrots” attorney
`
`arguments or “echoes” them “word-for-word.” Compass Bank v. Intellectual
`
`Ventures II, LLC, IPR2014-00786, 2015 WL 5636372, at *17 (Sept. 23, 2015);
`
`Corning Inc. v. DSM IP Assets B.V., IPR2013-00050, 2014 WL 1783280, at *12
`
`(May 1, 2014). Valmont accuses Dr. Rosenberg of doing this. (Paper 28 at 3–4.)
`
`Valmont is wrong.
`
`Paragraphs 13 and 14 of Dr. Rosenberg’s Declaration describe his
`
`background developing software applications designed to run on smartphones,
`
`tablets, laptops, and other devices. (Ex. 1009 at 6.) Paragraphs 43 and 46 of the
`
`Declaration describe the materials Dr. Rosenberg has reviewed and searched for.
`
`(Id. at 26–27, 28–29.) And in paragraph 3 of the Reply Declaration, Dr. Rosenberg
`
`describes his personal experience operating laptops in a hand-held manner and
`
`observing others operating them in the same way. (Ex. 1018 at 2–3.)
`
`These supporting facts and data do far more than “parrot” arguments in
`
`Lindsay’s Petition and Reply. Dr. Rosenberg’s opinion that laptops are “handheld
`
`devices” is based on his own research, experience, and observation. See Fed. R.
`
`Evid. 703 (“An expert may base an opinion on facts or data in the case that the
`
`3
`
`
`
`IPR2015-01039
`Patent 7,003,357 B1
`
`expert has been made aware of or personally observed.”). In fact, Valmont’s
`
`Motion identifies one of the references Dr. Rosenberg considered. (Paper 28 at 4.)
`
`Valmont’s disagreement with Dr. Rosenberg’s conclusions goes—at most—to the
`
`weight of his opinions, not their admissibility.
`
`2.
`
`Dr. Rosenberg’s Agreement with Proposed Constructions
`and Identifications Is Supported and Admissible.
`
`The Board gives “no probative weight” to an expert’s “naked agreement”
`
`with a statement regarding the level of ordinary skill in the art. Logic Tech. Dev.,
`
`LLC v. Fontem Holdings 1 B.V., IPR2015-00098, 2015 WL 2231961, at *5 (May
`
`11, 2015). Valmont asserts that Dr. Rosenberg’s agreement with Lindsay’s
`
`proposed claim constructions should be excluded on these grounds. (Paper 28 at 4–
`
`5.) Again, Valmont is wrong.
`
`If an expert agrees with a claim construction “without providing any
`
`objective support,” his agreement is of little or no value. See Logic Tech. Dev.,
`
`LLC, 2015 WL 2231961, at *5. As shown in paragraphs 30 through 42 of his
`
`declaration, Dr. Rosenberg defined the hypothetical person of ordinary skill in the
`
`art and conducted a thorough review of the prior art cited in Lindsay’s Petition.
`
`(Ex. 1009 at 13–26.) Read in the context of the 14 pages of detailed, objective
`
`4
`
`
`
`IPR2015-01039
`Patent 7,003,357 B1
`
`support preceding it, paragraph 43 of Dr. Rosenberg’s Declaration is the opposite
`
`of a “naked agreement” prohibited under 37 C.F.R. § 42.65(a).
`
`3.
`
`Dr. Rosenberg’s Opinions Regarding Motivation to
`Combine Are Properly Submitted and Admissible.
`
`Valmont’s argument that paragraphs 8 and 12 of Dr. Rosenberg’s Reply
`
`Declaration are improper because they were submitted “without properly moving
`
`to supplement evidence” (Paper 28 at 6) is misdirected. The Reply Declaration is
`
`not “supplemental evidence” but reply evidence, which responds directly to
`
`Valmont’s arguments and its expert’s opinions and is expressly contemplated by
`
`the Scheduling Order. (See Paper 8 at 3, ¶ 6.a.)
`
`“A motion to exclude is not a proper vehicle for a party to raise the issue of
`
`testimony in a rebuttal declaration exceeding the permissible scope of reply
`
`testimony.” Google Inc. v. Visual Real Estate, Inc., IPR2014-01340, 2016 WL
`
`763852, at *19, (Feb. 25, 2016).
`
`[T]he mere fact that the rebuttal declaration includes evidence
`
`that was not discussed specifically in the petition is insufficient
`
`to establish the impropriety of such evidence, much less
`
`inadmissibility under the Federal Rules of Evidence. The very
`
`nature of a reply is to respond to the opposition, which in this
`
`case is the patent owner response. The need for relying on
`
`5
`
`
`
`IPR2015-01039
`Patent 7,003,357 B1
`
`
`evidence not previously discussed in the petition may not exist
`
`until a certain point has been raised in the patent owner
`
`response. Much depends on the specific arguments made in the
`
`patent owner response.
`
`Vibrant Media, Inc. v. Gen. Elec. Co., IPR2013-00170, 2014 WL 2965703, at *19
`
`(June 26, 2014).
`
`Valmont’s Motion “does not contain any meaningful discussion of the
`
`arguments that [it] has made in its patent owner response, which reasonably might
`
`or might not have triggered [Lindsay’s] reliance on the testimony [Valmont] now
`
`seeks to exclude.” Id. Because of this failure, Valmont has not met its burden to
`
`prove that it is entitled to exclusion of the evidence. Id.
`
`Moreover, paragraphs 8 and 12 of the Reply Declaration directly respond to
`
`arguments raised in Valmont’s Patent Owner’s Response. 37 C.F.R. § 42.23(b);
`
`Belden, Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1078–82 (Fed. Cir. 2015). Dr.
`
`Rosenberg notes in paragraph 7 that Valmont and its expert “misunderstood” his
`
`testimony regarding motivations to combine. (Ex. 1018 at 5.) Paragraph 8 responds
`
`to and corrects this misunderstanding, and cites testimony from Valmont’s expert
`
`that bolsters Dr. Rosenberg’s opinion. (Id. at 5–6.) Paragraph 12 also responds
`
`directly
`
`to Valmont’s expert, explaining
`
`the basis for Dr. Rosenberg’s
`
`6
`
`
`
`IPR2015-01039
`Patent 7,003,357 B1
`
`disagreement with his opinion. In support of his conflicting opinion, Dr. Rosenberg
`
`cites Valmont’s own exhibit showing the evolution of cell phones, a 1996 article
`
`submitted as evidence by Lindsay regarding the desire to improve mobility of PC-
`
`based irrigation software, the Pyotsia prior art, and the paragraphs in his first
`
`Declaration that touch on the relevant technology. (Id. at 8–9.)
`
`Thus, Dr. Rosenberg’s Reply Declaration and its cited references refute
`
`Valmont’s argument that these two paragraphs lack “sufficiently meaningful
`
`discussion or analysis that would constitute articulated reasoning with rational
`
`underpinning for combining the cited references.” (Paper 28 at 5.) And in any
`
`event, Valmont’s only cited authority reiterates that its attack goes to weight, not
`
`admissibility. Edmund Optics, Inc. v. Semrock, Inc., IPR2014-00583, 2014 WL
`
`4731775, at *6 (Sept. 19, 2014). It was entirely proper for Lindsay and its expert to
`
`respond to Valmont’s arguments and expert testimony on reply with opinions
`
`supported by underlying facts and data.
`
`4.
`
`The Opinions in Paragraphs 18 and 26 of Dr. Rosenberg’s
`Reply Declaration Are Supported and Admissible.
`
`Valmont assails Dr. Rosenberg’s opinions in paragraphs 18 and 26 of the
`
`Reply Declaration as lacking a sufficient basis in facts or data—apparently taking
`
`the position that any sentence in an expert declaration not followed immediately by
`
`7
`
`
`
`IPR2015-01039
`Patent 7,003,357 B1
`
`a citation to a document is inadmissible. (Paper 28 at 7–9.) But Rule 702 does not
`
`require chapter-and-verse citations after every sentence. “[T]he question is whether
`
`the expert relied on facts sufficiently related to the disputed issue” and met the
`
`“minimum standards of relevance and reliability.” i4i Ltd. P’ship v. Microsoft
`
`Corp., 598 F.3d 831, 856 (Fed. Cir. 2010).
`
`In paragraph 18, Dr. Rosenberg illustrates how a simple graphical user
`
`interface (“GUI”) element, rotated to various position on a display, could be used
`
`to show an irrigation system cycling through a pattern. (Ex. 1018 at 13–14.) This
`
`discussion responds to Valmont’s expert’s proffered opinion that a 26,000-pixel
`
`display is insufficient to display such a depiction. See Vibrant Media, Inc., 2014
`
`WL 2965703, at *19. In Paragraph 26, Dr. Rosenberg discusses the Scott prior
`
`art—also in response to Valmont’s expert’s opinions. (Ex. 1018 at 21–22.)
`
`Dr. Rosenberg’s initial declaration sets forth his qualifications, education,
`
`and experience in software development, user-interface design, and related fields.
`
`(See Ex. 1009 at 2–18 & Ex. A thereto.) Further, paragraph 26 cites Valmont’s
`
`expert’s own evidence and includes a picture of the Nokia 9000 smartphone that
`
`forms the basis of his opinion. (Ex. 1018 at 22.) This is more than sufficient to
`
`establish that his testimony about the history of the relevant technology has the
`
`8
`
`
`
`IPR2015-01039
`Patent 7,003,357 B1
`
`“reliable basis in the knowledge and experience of his discipline” required by
`
`Daubert v. Merrill Dow Pharmaceuticals, 609 U.S. 579, 592 (1993).
`
`Valmont’s argument that Dr. Rosenberg’s opinions should be excluded
`
`absent citations after each sentence would convert him from an expert to a mere
`
`conduit of knowledge possessed by others. This is not an expert’s role and, in fact,
`
`is diametrically opposed to the purpose of the Daubert analysis. See Williams v.
`
`Illinois, 132 S. Ct. 2221, 2241 (2012) (trial courts should screen out “experts who
`
`would act as mere conduits for hearsay” by enforcing Rule 702).
`
`Valmont cross-examined Dr. Rosenberg in a deposition about the opinions
`
`he proffered in response to Valmont’s expert and filed a motion for observations
`
`on cross-examination. (See generally Paper 29.) That motion was the proper
`
`vehicle to challenge the factual underpinnings of Dr. Rosenberg’s Reply
`
`Declaration, if Valmont wished to do so. The Board should disregard Valmont’s
`
`attempted second bite at the apple in its Motion.
`
`B.
`
`The Challenged Paragraphs of Dr. Rosenberg’s Declarations Are
`Properly Supported by Facts, Data, and Reasoned Explanation.
`
`The “statement”-based challenges in section IV.A of Valmont’s Motion and
`
`the “paragraph”-based challenges in section IV.B overlap considerably. (Compare
`
`Paper 28 at 3–8 with id. at 8–12.) In fact, Valmont’s only supporting authority for
`
`9
`
`
`
`IPR2015-01039
`Patent 7,003,357 B1
`
`its challenge to the various paragraphs is a repeat citation to Edmond Optics, Inc. v.
`
`Semrock, which establishes that Valmont’s challenges go to weight, not
`
`admissibility. (Id. at 9 (citing 2014 WL 4731775, at *6).)
`
`Valmont first attacks paragraphs 13 and 14 of Dr. Rosenberg’s Declaration
`
`on essentially the same grounds it attacks them in section IV.A.1. (Compare Paper
`
`28 at 9 with id. at 3–4.) Dr. Rosenberg’s opinion that “handheld devices” may
`
`include laptops, smartphones, tablets, and PDAs is based on his considerable
`
`research, experience, and observation and is admissible under Rule 703. (See also
`
`section III.A.1, supra.)
`
`Valmont next asserts that the statements in Paragraph 34 of Dr. Rosenberg’s
`
`Declaration are unsubstantiated and conclusory. (Paper 28 at 9.) As explained
`
`above, Rule 702 and Daubert require an expert to have a reliable basis in the
`
`knowledge and experience of the relevant discipline and to rely on facts
`
`sufficiently related to the disputed issue to meet minimum standards of relevance
`
`and reliability—not to provide a pinpoint citation after each sentence. (See section
`
`III.A.4, supra.) Further, Valmont’s argument ignores that Lindsay and Dr.
`
`Rosenberg have already provided the citations and support that Valmont asserts are
`
`lacking.
`
`10
`
`
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`IPR2015-01039
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`
`After Lindsay filed its IPR Petition, Valmont served objections to Lindsay’s
`
`evidence, asserting many of the same grounds that it now argues in its motion.
`
`(Paper 9.) Lindsay served supplemental evidence on Valmont pursuant to 37
`
`C.F.R. § 42.64(b)(2). The supplemental evidence included Exhibit 1009A—an
`
`updated version of Dr. Rosenberg’s Declaration with citations and support added
`
`in the locations Valmont argued were inadequately supported. Valmont objected
`
`again, characterizing each and every one of the additions as “new information” that
`
`“attempts to rewrite and add arguments that are untimely filed.” (Paper 10 at 3.)
`
`Because Valmont’s Motion renews the objections it initially asserted against
`
`Dr. Rosenberg’s Declaration, Lindsay “is entitled to file an opposition to the
`
`motion to exclude, which may be accompanied by exhibits containing any
`
`previously-served supplemental evidence.” Sealed Air Corp. v. Pregis Innovative
`
`Packaging, Inc., IPR2013-00554, Paper 16, at *3 (Apr. 1, 2014). Thus, Dr.
`
`Rosenberg’s updated Declaration and proof of its service accompany this
`
`Opposition. (Paper 32 and Exs. 1009A & 1020.)
`
`Paragraph 34 of Exhibit 1009A directly addresses Valmont’s objections,
`
`adding pinpoint citations to Pyotsia. (Ex. 1009A at 20.) Thus, even if the Board
`
`believes that support for this paragraph in Dr. Rosenberg’s original Declaration did
`
`11
`
`
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`IPR2015-01039
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`not meet the minimum standards of relevance and reliability, the additional
`
`citations in Exhibit 1009A cure Valmont’s objection.
`
`All of the other paragraph-based objections in section IV.B of Valmont’s
`
`motion to exclude are similarly addressed and cured by the citations and support
`
`added to Exhibit 1009A. (See Ex. 1009A at 9–10 ¶¶ 20, 22; id. at 12 ¶ 28; id. at 14,
`
`20–21 ¶¶ 31, 35–36; id. at 23–24, 48–51 ¶¶ 38, 65, id. at 26–28 ¶¶ 40, 42; id. at
`
`42–44 ¶ 61; id. at 54–60 ¶¶ 70–72; id. at 40 ¶ 56; id. at 60–62 ¶¶ 73–74.) Thus, to
`
`the extent Valmont believed Dr. Rosenberg’s citations and support for his opinions
`
`were lacking in his original Declaration, it received the timely served supplemental
`
`evidence in Exhibit 1099A nearly three months before it took Dr. Rosenberg’s first
`
`deposition and filed its Patent Owner’s Response. While Dr. Rosenberg’s initial
`
`Declaration was properly supported under the Rule 702 and Daubert standards of
`
`relevance and reliability, the additional material in Exhibit 1099A leaves no doubt
`
`that all of the challenged paragraphs are admissible.
`
`Finally, Valmont challenges paragraphs 17, 27, and 29 of Dr. Rosenberg’s
`
`Reply Declaration as “conclusory” and “unsupported” statements regarding the
`
`knowledge of a person of ordinary skill in the art. As discussed above, Dr.
`
`Rosenberg devotes 13 paragraphs of his initial Declaration to defining the
`
`12
`
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`IPR2015-01039
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`hypothetical person of ordinary skill in the art and thoroughly reviewing the prior
`
`art. (See section III.A.2, supra.) Further, the bulk of the Reply Declaration supports
`
`the challenged opinions—often accompanied by citation to and discussion of
`
`Valmont’s own evidence. (See Ex. 1018 at 10–23 ¶¶ 14–29.) Thus, the cited
`
`opinions in the Reply Declaration are adequately supported and meet the relevance
`
`and reliability requirements of Rule 702 and Daubert.
`
`C. The Challenged Paragraphs in Dr. Rosenberg’s Reply Declaration
`Are Properly Submitted Reply Evidence.
`
`As discussed above, challenging the scope of a rebuttal declaration in a
`
`motion to exclude is improper, and such a challenge ignores the very nature and
`
`purpose of a reply. (See section III.A.3, supra.) All of the paragraphs challenged in
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`section IV.C of Valmont’s motion to exclude are directly responsive to Valmont’s
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`opposition arguments (see Ex. 1018 at 2–3 ¶ 3), Valmont’s expert’s declaration
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`(see id. at 7–9 ¶¶ 11–12; id. at 13–15 ¶ 18; id. at 21–23 ¶¶ 26–27; id. at 24 ¶ 32),
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`or both (see id. at 23 ¶ 29).
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`“The very nature of a reply is to respond to the opposition,” and “[t]he need
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`for relying on evidence not previously discussed in the petition may not exist until
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`a certain point has been raised in the patent owner response.” Vibrant Media, Inc.,
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`2014 WL 2965703, at *19. Far from being “new theories” or “impermissible
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`13
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`IPR2015-01039
`Patent 7,003,357 B1
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`evidence,” the arguments and references in Dr. Rosenberg’s Reply Declaration
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`respond to Valmont’s arguments and its expert’s opinions. See 37 C.F.R.
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`§ 42.23(b). Valmont has not met its burden to exclude any of the challenged
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`paragraphs because it fails to discuss or even acknowledge the arguments
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`Dr. Rosenberg rebuts in his Reply Declaration. Belden, Inc., 805 F.3d at 1078–82.
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`D. The Design Patterns Excerpt Is Properly Authenticated and Is
`Admissible under Numerous Hearsay Exceptions.
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`Exhibit 1019 is an excerpt from the book Design Patterns: Elements of
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`Reusable Object-Oriented Software referenced and discussed in Dr. Rosenberg’s
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`Reply Declaration. Valmont’s various challenges are unavailing. The excerpt is
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`properly offered in rebuttal to Valmont’s expert’s opinions, and merely provides
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`background information within the knowledge of ordinary skill. The book is both a
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`learned treatise and an ancient document. Fed. R. Evid. 803(18); 901(b)(8).
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`Dr. Rosenberg’s Reply Declaration properly authenticates the document and lays
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`the foundation for the hearsay exception. (Ex. 1018 at 25 ¶ 32.)
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`E.
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`The “Unreferenced” Paragraphs of Dr. Rosenberg’s Declaration
`Are Admissible.
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`Finally, Valmont’s attack on 18 “unreferenced” paragraphs
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`in Dr.
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`Rosenberg’s Declaration is without merit. The challenged paragraphs provide
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`14
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`IPR2015-01039
`Patent 7,003,357 B1
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`background regarding Dr. Rosenberg’s qualifications and experience and the
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`relevant technology. This material forms a large part of the facts and data
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`underlying Dr. Rosenberg’s opinion testimony, see 37 C.F.R. § 42.65(a), and need
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`not be incorporated by reference in Lindsay’s briefing pursuant to 37 C.F.R.
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`§ 42.6(a)(3), as Valmont urges. Essentially, after complaining for nearly the length
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`of its Motion that Dr. Rosenberg did not provide enough support for his opinions,
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`Valmont closes with a complaint that he provided too much. The Board should
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`consider all of the facts and data underlying Dr. Rosenberg’s opinions, and reject
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`Valmont’s disingenuous argument that it should ignore large swaths of the detailed
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`Declarations he has provided.
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`IV. CONCLUSION
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`For the reasons discussed above, Lindsay respectfully requests that the
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`Board deny Valmont’s Motion to Exclude in its entirety.
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`
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`Respectfully submitted,
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`HOVEY WILLIAMS LLP
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`By: /s/ Scott R. Brown
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`Attorneys for Petitioner
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`15
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`IPR2015-01039
`Patent 7,003,357 B1
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`CERTIFICATE OF SERVICE
`
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`On May 30, 2016, a true copy of the foregoing Petitioner’s Opposition to
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`Patent Owner’s Motion to Exclude Evidence was filed through the Patent Review
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`Processing System and served on the following counsel of record by email:
`
`P. Weston Musselman, Jr.
`Ricardo J. Bonilla
`
`FISH & RICHARDSON P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, Minnesota 55402
`
`Attorneys for Patent Owner
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`musselman@fr.com
`rbonilla@fr.com
`IPR25199-0016IP1@fr.com
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` /s/ Matthew B. Walters
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`Attorney for Petitioner
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`16
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