UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________________________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________________________________________________
`
`JOHNSON MATTHEY INC., and JOHNSON MATTHEY PLC,
`
`Petitioners,
`
`v.
`
`BASF CORPORATION,
`
`Patent Owner
`
`______________________________________________________________
`
`Case IPR2015-01266
`
`Patent 9,039,982
`______________________________________________________________
`
`PATENT OWNER’S MOTION TO EXCLUDE
`
`
`
`
`
`
`
`
`
`______________________________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________________________________________________
`
`JOHNSON MATTHEY INC., and JOHNSON MATTHEY PLC,
`
`Petitioners,
`
`v.
`
`BASF CORPORATION,
`
`Patent Owner
`
`______________________________________________________________
`
`Case IPR2015-01266
`
`Patent 9,039,982
`______________________________________________________________
`
`PATENT OWNER’S MOTION TO EXCLUDE
`
`
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
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`Page
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`TABLE OF AUTHORITIES ...................................................................................... i
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`I.
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`II.
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`PRECISE RELIEF REQUESTED .................................................................. 1
`
`SHOULD EXCLUDE DR. TENNENT’S
`THE BOARD
`TESTIMONY AT ¶¶ 26-30 OF HIS DECLARATION .................................. 1
`
`III. CONCLUSION ................................................................................................ 5
`
`
`
`i
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`
`
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Nestlé Purina Petcare Co. v. Oil-Dri Corp. of Am., IPR2015-00737,
`Paper No. 37 at 17-18 (PTAB Jun. 20, 2016) ....................................................... 3
`
`Rambus Inc. v. Hynix Semiconductor Inc.,
`254 F.R.D. 597 (N.D. Cal. 2008) .......................................................................... 3
`
`Other Authorities
`
`37 C.F.R. 42.65(a) ...................................................................................................... 3
`
`37 C.F.R. § 42.64(c) ................................................................................................... 1
`
`Fed. R. Evid. 702 ....................................................................................................... 3
`
`
`
`i
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`
`
`
`
`
`
`
`I.
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`PRECISE RELIEF REQUESTED
`
`Pursuant to 37 C.F.R. § 42.64(c), BASF Corporation (“Patent Owner”)
`
`respectfully requests that the Patent Trial and Appeal Board (“the Board”) exclude
`
`¶¶ 26-30 of the declaration of David L. Tennent, Ph.D (Ex. 1003) offered by
`
`Petitioner. Patent Owner timely objected to this evidence on December 18, 2015.
`
`See Paper No. 12. Petitioner did not respond to this objection or serve any
`
`supplemental evidence purporting to address Patent Owner’s objection.
`
`The opinions in ¶¶ 26-30 of Dr. Tennent’s declaration are unsupported by
`
`any facts or evidence, and Dr. Tennent blocked questioning into the underlying
`
`facts and data that might support his opinions due to alleged confidentiality
`
`concerns. While the lack of supporting data is reason enough to exclude Dr.
`
`Tennent’s opinions, his selective use of confidentiality to shield his opinions from
`
`effective cross-examination was improper and requires that his opinions be
`
`excluded.
`
`II. THE BOARD SHOULD EXCLUDE DR. TENNENT’S TESTIMONY
`AT ¶¶ 26-30 OF HIS DECLARATION
`
`In ¶¶ 26-30 of his declaration, Dr. Tennent provides his opinion as to certain
`
`beliefs allegedly held by the entire automotive industry in the time frame prior to
`
`the filing of U.S. Patent No. 9,039,982 (“the ’982 patent”). For instance, Dr.
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`Tennent opines that by 2002 the automotive industry believed that meeting new
`
`emissions standards “required putting a very high SCR washcoat loading” onto a
`
`
`
`
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`wall flow filter. See Ex. 1003 ¶ 26. Likewise, Dr. Tennent opines that during this
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`time frame the automotive industry was engaged in an “intensive effort” to develop
`
`a filter that could accommodate higher washcoat loadings. See id. ¶ 30; see also
`
`id. ¶ 29.
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`Petitioner relies on these opinions to supports its contention that, prior to the
`
`’982 patent, the skilled artisan would have been motivated to combine a certain
`
`wall-flow filter type with an SCR catalyst coating. See, e.g., Paper No. 1 at 25, 31-
`
`32. Indeed, Dr. Tennent testified that he submitted his declaration to “give an
`
`opinion on state of the art of filters and the motivation for going to higher-porosity
`
`filters in that time period.” Ex. 2026 [Tennent Tr.] at 64:25-65:10; id. at 65:21-23
`
`(“I am only giving you the motivation of what was going on at the time.”).
`
`Dr. Tennent, however, fails to cite a single piece of evidence to substantiate
`
`his views regarding the beliefs of the automotive industry in the years leading up to
`
`the ’982 patent. Dr. Tennent testified that there were countless sources of
`
`information regarding the state of the industry during the relevant time frame,
`
`including proceedings of scientific meetings, “literally dozens of journals,” email
`
`correspondence, marketing literature, academic collaborations, and product
`
`literature:
`
`Q. So all of these things that you did to keep informed, the
`scientific meetings, the dozens of journals, the collaborations,
`
`2
`
`
`
`
`
`
`
`
`
`the correspondence you had with companies, the marketing
`information, all of this produced documentation regarding what
`was going on in the industry; correct?
`A. That’s correct.
`Ex. 2026 at 43:20-44:2; see also id. at 40:7-44:12, 90:16-19. Yet, Dr. Tennent’s
`
`key opinions regarding the “motivations” of the industry in ¶¶ 26-30 are based on
`
`nothing but his personal memory of 15-year old events, as he confirmed at
`
`deposition. See id. at 85:22-90:22, 108:21-109:20.
`
`His opinions are thus unreliable and should be excluded. The Federal Rules
`
`are clear that expert witness testimony may only be admitted if it “is based on
`
`sufficient facts or data.” Fed. R. Evid. 702; see also 37 C.F.R. 42.65(a) (“Expert
`
`testimony that does not disclose the underlying facts or data on which the opinion
`
`is base is entitled to little or no weight.”); Nestlé Purina Petcare Co. v. Oil-Dri
`
`Corp. of Am., IPR2015-00737, Paper No. 37 at 17-18 (PTAB Jun. 20, 2016)
`
`(giving no weight to an expert’s opinions based on that expert’s personal
`
`familiarity with the subject matter where the expert failed to identify the
`
`underlying facts and data on which his opinions were based). Thus, where, as
`
`here, an expert provides generalized statements about an industry without
`
`underlying evidence, Courts exclude that testimony. See, e.g., Rambus Inc. v.
`
`Hynix Semiconductor Inc., 254 F.R.D. 597, 608 (N.D. Cal. 2008) (excluding
`
`3
`
`
`
`
`
`
`
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`generalized statements based on personal experience because it “is not a sufficient
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`body of facts on which to form a reliable opinion about what the field felt about the
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`state of the technology”).
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`Importantly, this is not the typical case where an expert fails to provide
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`evidence supporting his opinions. The situation here is exacerbated and exclusion
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`is necessary because Dr. Tennent refused to allow the facts underlying his opinions
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`to be probed on cross-examination. Specifically, during deposition, Dr. Tennent
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`withheld all details and evidence that might relate to his opinions because such
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`evidence supposedly constituted confidential information of his former employer,
`
`Corning, Inc. For instance, Dr. Tennent testified as follows regarding the content
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`of ¶ 30 of his declaration:
`
`Q.
`
`It says: “In 2001 and 2002, the filter manufacturer industry
`began an intensive effort to develop a filter capable of being
`loaded with a catalyst washcoat while still achieving acceptable
`backpressure.” Do you see that?
`A. Yes.
`Q. Again, you don’t cite any evidence for this; right?
`A.
`I don’t cite evidence other than the fact that we were supplying
`to the marketplace.
`Q. Okay. And, again, the details of that is something you are not
`willing to provide due to confidentiality issues; right?
`A. Yes. I cannot tell you who we deployed materials to, no.
`
`4
`
`
`
`
`
`
`
`
`
`Q. You can’t even tell us who was asking for the materials; right?
`A. No, I will not tell you who was asking, other than I will tell you
`in general it was catalyst companies and it was the car
`companies and the truck companies. But I will not give you
`specific companies, no.
`Ex. 2026 at 109:9-20. Dr. Tennent repeatedly refused to provide information
`
`based on alleged confidentiality considerations. See, e.g., id. at 62:17-21 (“Any
`
`companies I could give you would be considered confidential because of my
`
`relationship with Corning….”); id. at 64:10-24 (“I am not willing to do that
`
`because I think I would be breaking confidentiality with Corning.”); id. at 86:21-
`
`90:22 (“Q. Okay. But you are not willing to identify any of the companies
`
`specifically? A. No, I am not, I am not. Q. Again, because of confidentiality
`
`concerns? A. Because of confidentiality.”)
`
`While Dr. Tennent’s failure to substantiate his opinions with evidence is
`
`reason enough for the Board to exclude his opinions, it is inconceivable that his
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`testimony would be admitted where he frustrated cross-examination of the facts
`
`underlying his opinions through the invocation of third-party confidentiality
`
`concerns.
`
`III. CONCLUSION
`For the foregoing reasons, the Board should exclude ¶¶ 26-30 of Dr.
`
`5
`
`Tennent’s declaration.
`
`
`
`
`
`
`
`Date: July 25, 2016
`
` Respectfully submitted,
`
`/Brian E. Ferguson/ l
`Brian E. Ferguson (Reg. No. 36,801)
`Anish R. Desai (Reg. No. 73,760)
`1300 Eye Street NW, Suite 900
`Washington, DC 20005
`T: 202-682-7000
`
`Derek C. Walter (Reg. No. 74,656)
`Backup Counsel
`Weil, Gotshal & Manges LLP
`201 Redwood Shores Pkwy.
`Redwood Shores, CA 94065
`
`6
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that on July 25, 2016, the foregoing
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`PATENT OWNER’S MOTION TO EXCLUDE
`
`
`was served via electronic mail, upon the following counsel of record:
`
`
`Dorothy P. Whelan
`Gwilym J. Attwell
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`IPR38411-0005IP1@fr.com
`
`
`
`/ Timothy J. Andersen / a
`Timothy J. Andersen
`Case Manager
`Weil, Gotshal & Manges LLP
`1300 Eye Street NW, Suite 900
`Washington, DC 20005
`T: 202-682-7075
`timothy.andersen@weil.com
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