UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_________________________
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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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`Case No. IPR2015-01039
`U.S. Patent No. 7,003,357
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`PATENT OWNER’S REPLY IN SUPPORT OF
`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
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`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
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`
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`PATENT OWNER’S REPLY IN SUPPORT OF
`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
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` Case No. IPR2015-01039
`Attorney Docket No. 25199-0016IP1
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`I. INTRODUCTION
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`Petitioner’s Opposition does nothing to establish the admissibility of the
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`Challenged Evidence. Patent Owner thus requests the Board exclude the Challenged
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`Evidence for the reasons discussed herein and in Patent Owner’s Motion.
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`II. ARGUMENTS
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`A. Numerous conclusory paragraphs should be excluded.
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`Paragraphs 13-14, 43, and 46 in Exhibit 1009 and Paragraphs 3, 8, 12, 17-18,
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`26-27, and 29 in Exhibit 1019 should be excluded under at least FRE 702, 703, and
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`37 C.F.R. § 42.65(a), as they are conclusory and unsupported by additional evidence,
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`and merely “parrot” Petitioner’s conclusory arguments. Edmund Optics, Inc. v.
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`Semrock, Inc., IPR2014-00583, 2014 WL 4731775, at *6 (Sept. 19, 2014).
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`1.
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`Dr. Rosenberg’s interpretation of “handheld device.”
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`Contrary to Petitioner’s assertions on pages 3-4 of its Opposition, the Board
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`is not required to “piece together” various statements from unrelated Paragraphs in
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`an attempt to substantiate Dr. Rosenberg’s conclusory statements. Indeed, by his
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`own admission, the only documentary evidence Dr. Rosenberg relied on for his
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`conclusion that a “handheld device” includes a laptop was the Dictionary.com
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`definition of “handheld” published more than a decade after the filing date of
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`the ’357 application. See Exhibit 2018 at 12:13-13:2, 14:9-15:5. Paragraphs 13, 14,
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`43 and 46 of Exhibit 1009 and Paragraph 3 of Exhibit 1018 should be excluded
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`1
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` Case No. IPR2015-01039
`Attorney Docket No. 25199-0016IP1
`because they merely parrot Petitioner’s conclusory argument regarding a “handheld
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`device” and fail to disclose the underlying facts or data on which Dr. Rosenberg’s
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`opinion is based. FRE 702, 703; 37 C.F.R. § 42.65(a).
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`2.
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`Dr. Rosenberg’s interpretation of claim terms is improper.
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`Contrary to Petitioner’s assertions on pages 4-5 of its Opposition, Dr.
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`Rosenberg provided no objective support for his “agreements” with Petitioner’s
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`claim constructions. Claim construction is a matter of law. See Markman v. Westview
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`Instruments, Inc., 517 U.S. 370, 372 (1996). Dr. Rosenberg is not an expert in U.S.
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`patent law and/or patent examination practice. 37 C.F.R. § 42.65(a); see also Logic
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`Tech. Dev., LLC v. Fontem Holdings 1 B.V., IPR2015-00098, 2015 WL 2231961, at
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`*5 (May 11, 2015). The Paragraphs that implicate Dr. Rosenberg’s “agreements”
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`with claim constructions should thus be excluded. FRE 401, 402, 602, 701, and 702.
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`3.
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`Conclusory statements regarding motivation to combine.
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`Contrary to Petitioner’s assertions on pages 5-6 of its Opposition, Paragraphs
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`8 and 12 are not in “direct response” to arguments made in Patent Owner’s Response,
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`and Petitioner has not shown a need to rely on this evidence now. Vibrant Media,
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`Inc. v. Gen. Elec. Co., IPR2013-00170, 2014 WL 2965703, at *19 (June 26, 2014).
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`Both Paragraphs should be excluded because they are vague, conclusory, and merely
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`attempt to re-characterize and expand on Petitioner’s previously insufficient
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`evidence. See Edmund Optics, 2014 WL 4731775, at *6 (according little or no
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`2
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`Attorney Docket No. 25199-0016IP1
`weight to declarations that “provide[d] no sufficiently meaningful discussion or
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`analysis that would constitute articulated reasoning with rational underpinning”).
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`4.
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`Paragraphs 18 and 26 in Exhibit 1018 are inadmissible.
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`Petitioner’s recitation on pages 7-8 of its Opposition of Dr. Rosenberg’s
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`observations in Paragraphs 18 regarding pixels and GUI requirements and his
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`discussion of Scott in Paragraph 26 does not change the fact that those Paragraphs
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`should be excluded because they are replete with conclusory statements. See
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`Edmund Optics, 2014 WL 4731775, at *6; FRE 701, 702, and 703.
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`B. Numerous paragraphs lack foundation and evidentiary support.
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`Petitioner concedes that Paragraphs 13, 14, 20, 22, 28, 31, 34-36, 38, 40, 42,
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`56, 61, 65, and 70-75 of Exhibit 1009 and Paragraphs 17, 27, and 29 of Exhibit 1018
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`are inadmissible because they lack foundation under Rule 602, and are unsupported
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`by sufficient facts, data or reasoned explanation under Rules 701, 702, and 703. In
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`recognition of these issues, Petitioner now files an “amended” Exhibit 1009A, which
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`includes citations to many of the above-referenced paragraphs, explaining on page
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`12 of its Opposition that Patent Owner’s objections are now “cured.” Patent Owner,
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`however, maintains its objections to the above-referenced Paragraphs in Exhibit
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`1009 and Exhibit 1018 and will move for permission to strike Exhibit 1009A if relied
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`upon by Petitioner because, among other things, Exhibit 1009A constitutes
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`improperly filed and served supplemental information. 37 C.F.R. § 42.123.
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`3
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` Case No. IPR2015-01039
`Attorney Docket No. 25199-0016IP1
`C. Numerous Paragraphs impermissibly present new arguments.
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`Petitioner’s blanket assertion on pages 13-14 of its Opposition that the
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`challenged Paragraphs are “responsive” to Patent Owner’s opposition does not
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`establish their admissibility. Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd.,
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`No. 2015-1693, --- F.3d ---, 2016 WL 2620512, at *8 (Fed. Cir. May 9, 2016) (“Once
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`the Board identifies new issues presented for the first time in reply, . . . the Board
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`[need not] parse the reply brief to determine which, if any, parts of that brief are
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`responsive and which are improper.”). Indeed, Dr. Rosenberg admitted that he had
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`not previously discussed at least two of his new “theories.” Ex. 1018, ¶¶ 11, 12; see
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`also Exhibit 2018 at 25:2-12, 26:5-27:16, and 43:21-44:15. Paragraphs 3, 11-12, 18,
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`26-27, 29, and 32 in Exhibit 1018 are inadmissible because they present new
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`arguments on the merits and constitute improperly filed supplemental information.
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`37 C.F.R. § 42.123.
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`D. Exhibit 1019 should be excluded for numerous reasons.
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`Exhibit 1019 should be excluded as it is improperly filed and served supplemental
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`information (37 C.F.R. § 42.123), has not been properly authenticated (FRE 901), lacks
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`foundation (FRE 602), constitutes inadmissible hearsay (FRE 801, 802), and the
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`probative value of the information in it is substantially outweighed by a danger of
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`unfair prejudice (FRE 403). See Toshiba Corp., IPR2014-01447, 2016 WL 932016,
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`at *22. Contrary to Petitioner’s assertions on page 14 of its Opposition, Exhibit 1019
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`4
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` Case No. IPR2015-01039
`Attorney Docket No. 25199-0016IP1
`is neither admissible as a learned treatise, Smith v. United States, No. 3:95CV445,
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`2012 WL 1453570, at *13 (S.D. Ohio Apr. 26, 2012) (although Rule 803(18)
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`“permits a learned treatise to be read, it does not allow its introduction into
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`evidence”), nor an ancient document, Hicks v. Charles Pfizer & Co. Inc., 466 F.
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`Supp. 2d 799, 807 (E.D. Tex. 2005) (“the ancient documents exception permits the
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`introduction of statements only where the declarant is the author of the document”).
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`Moreover, the “ancient documents” exception is irrelevant here: the exception
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`relates to hearsay within an authenticated document, not the authentication of that
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`document—Petitioner has not overcome Patent Owner’s objections, and thus none
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`of the contents of Exhibit 1019 should be admitted.
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`E. Unreferenced paragraphs in Exhibit 1009 are inadmissible.
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`On pages 14-15 of its Opposition, Petitioner urges the Board to consider
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`unreferenced Paragraphs 15-29, 63, 64, and 75 in Exhibit 1009 because they “form[]
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`a large part of the facts and data underlying Dr. Rosenberg’s opinion testimony,” but
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`those Paragraphs are irrelevant because none are referred to in Petitioner’s Petition
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`(FRE 402), and incorporation by reference of these paragraphs is prohibited under
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`37 C.F.R. § 42.6(a)(3).
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`IV. CONCLUSION
`For the foregoing reasons and those detailed in Patent Owner’s Motion to
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`Exclude, Patent Owner requests that the Challenged Evidence be excluded as
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`inadmissible.
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`5
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` Case No. IPR2015-01039
`Attorney Docket No. 25199-0016IP1
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` /P. Weston Musselman, Jr./
`P. Weston Musselman, Jr.
`Reg. No. 31,644
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`Respectfully submitted,
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`
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`Date: June 2, 2016
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`Customer Number 26171
`Fish & Richardson P.C.
`Telephone: (612) 337-2508
`Facsimile: (612) 288-9696
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`6
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` Case No. IPR2015-01039
`Attorney Docket No. 25199-0016IP1
`CERTIFICATE OF SERVICE
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`I certify that pursuant to 37 C.F.R. § 42.6(e)(4) and 42.205(b), a complete and
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`entire copy of the foregoing PATENT OWNER’S REPLY IN SUPPORT OF
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`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE was filed and served
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`on June 2, 2016 by electronic mail, as agreed to by the parties, upon the following:
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`HOVEY WILLIAMS LLP
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`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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`
`
` /Christine Rogers/
`Christine Rogers
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(650) 839-5092
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`7
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