UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`VALEO NORTH AMERICA, INC., VALEO S.A., VALEO GMBH,
`VALEO SCHALTER UND SENSOREN GMBH,
`AND CONNAUGHT ELECTRONICS LTD.,
`
`Petitioner,
`
`v.
`
`MAGNA ELECTRONICS, INC.,
`
`Patent Owner.
`____________________
`
`Case IPR2015-014101
`Patent 8,643,724 B2
`___________________
`
` PETITIONERS’ OBJECTIONS UNDER 37 C.F.R. § 42.64
`TO EVIDENCE SUBMITTED BY PATENT OWNER
`
`
`1 Case IPR2015-01414 has been consolidated with this proceeding.
`
`
`
`
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`VALEO NORTH AMERICA, INC., VALEO S.A., VALEO GMBH,
`VALEO SCHALTER UND SENSOREN GMBH,
`AND CONNAUGHT ELECTRONICS LTD.,
`
`Petitioner,
`
`v.
`
`MAGNA ELECTRONICS, INC.,
`
`Patent Owner.
`____________________
`
`Case IPR2015-014101
`Patent 8,643,724 B2
`___________________
`
` PETITIONERS’ OBJECTIONS UNDER 37 C.F.R. § 42.64
`TO EVIDENCE SUBMITTED BY PATENT OWNER
`
`
`1 Case IPR2015-01414 has been consolidated with this proceeding.
`
`
`
`
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.64(b)(1), Petitioners object to the admissibility of
`
`the following exhibits filed by Patent Owner as follows:
`
`Paper 14: Patent Owner Response
`
`
`
`Petitioners object to Patent Owner’s response to the extent that it relies upon
`
`or incorporates inadmissible exhibits or declaration testimony to which Petitioners
`
`object herein.
`
`
`
`Petitioners object
`
`to Patent Owner’s
`
`response as
`
`impermissibly
`
`incorporating materials from other documents and exhibits by reference. 37 C.F.R.
`
`§ 42.6(a)(3). Petitioners further objects to Patent Owner’s Response as exceeding
`
`the page limit set forth in 37 C.F.R. § 42.24 (b) to the extent the improperly
`
`incorporated materials are counted toward the sixty-page limit for the Patent
`
`Owner Response. 37 C.F.R. § 42.24(a)(1). In particular, the Trial Practice Guide
`
`explains that “[c]laim charts submitted as part of a petition, motion, patent owner
`
`preliminary response, patent owner response, opposition, or reply count towards
`
`applicable page limits.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48764
`
`(Aug. 14, 2012). Patent Owner’s Response, however, improperly incorporates
`
`forty-three pages of claim charts from Ex. 2001, entitled “Magna’s Constructive
`
`Reduction to Practice Claim Chart.” Patent Owner further improperly incorporate
`
`by reference arguments and discussion from Exhibit 2004, the Declaration of Dr.
`
`Ralph Etienne-Cummings. (See, e.g., Paper 14 at 6-7, 9, 17, 31.)
`
`
`
`
`
`
`
`Exhibit 2001 Magna’s Constructive Reduction to Practice Chart
`
`
`
`Petitioners object to Exhibit 2001 to the extent it is being used to circumvent
`
`the page limits for Patent Owner’s Response, as set forth in 37 C.F.R. § 42.24 (b).
`
`In particular, “[c]laim charts submitted as part of a petition, motion, patent owner
`
`preliminary response, patent owner response, opposition, or reply count towards
`
`applicable page limits.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48764
`
`(Aug. 14, 2012).
`
`
`
`Petitioners further object to Exhibit 2001 as being not relevant under FED. R.
`
`EVID. 401 and inadmissible under FED. R. EVID. 402. In particular, Exhibit 2001
`
`fails to demonstrate the claimed subject matter of any challenged claim in this
`
`proceeding is entitled to an earlier priority date.
`
`Exhibit 2004: Expert Declaration of Dr. Ralph Etienne-Cummings with
`Appendix A – CV of Dr. Ralph Etienne-Cummings
`
`Petitioners object to Exhibit 2004 under FED. R. EVID. 402 and 702. Dr.
`
`
`
`Ralph Etienne-Cummings, the witness offering declaration testimony, (a) lacks the
`
`knowledge, skill, experience, training, or education to testify as an expert in a
`
`manner that is helpful to the Board; (b) provides opinions that are not based on
`
`sufficient facts or data; (c) has not applied reliable principles and methods; and (d)
`
`has not reliably applied such principles and methods to the facts of the case. For
`
`example, Dr. Etienne’s opinion regarding the priority date of U.S. Patent 8,643,724
`
`is not supported by any independent study or analysis. Instead, Dr. Etienne-
`
`
`
`
`3
`
`
`
`
`
`Cummings merely acts as a conduit for conclusory assertions in Exhibit 2001,
`
`entitled “Magna’s Constructive Reduction to Practice Claim Chart.”
`
`
`
`Petitioners further object to Exhibit 2004 under FED. R. EVID. 703. The
`
`witness offering declaration testimony does not base his opinion on facts or data
`
`that he has been made aware of or personally observed and the witness fails to
`
`demonstrate that such facts or data would be reasonably relied upon by experts in
`
`the particular field.
`
`
`
`Further, Petitioners object to Exhibit 2004 to the extent portions of Exhibit
`
`2004 are improperly incorporated by reference into Patent Owner’s Response
`
`(Paper 14) in violation of 37 C.F.R. § 42.6(a)(3). See e.g. Ex. 2004 at ¶¶ 54- 100.
`
`
`
`Dated: March 15, 2016
`
`
`
` Respectfully submitted,
`
`
`
`
`
`
`
`/s/ Russell E. Levine, P.C.
`Russell E. Levine, P.C. (Reg. No. 32,153)
` Lead Counsel
`Hari Santhanam (Reg. No. 68,828)
`KIRKLAND & ELLIS LLP
`300 North LaSalle Street
`Chicago, Illinois 60654
`rlevine@kirkland.com
`hsanthanam@kirkland.com
`
`for Petitioners Valeo North
`Counsel
`America, Inc., Valeo S.A., Valeo GmbH,
`Valeo Schalter Und Sensoren GmbH,
`Connaught Electronics Ltd.
`
`
`4
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`
`The undersigned hereby certifies that a copy of the foregoing document was
`served on March 15, 2016, via email by agreement of the parties directed to
`counsel of record for the Patent Owner at the following:
`
`
`David K.S. Cornwell
`Salvador M. Bezos
`Sterne, Kessler, Goldstein & Fox PLLC
`1100 New York Avenue NW
`Washington, DC 20005
`davidc-PTAB@skgf.com
`sbezos-PTAB@skgf.com
`
`Timothy A. Flory
`Terence J. Linn
`Gardner, Linn, Burkhart & Flory, LLP
`2851 Charlevoix Drive SE, Suite 207
`Grand Rapids, MI 49546
`flory@glbf.com
`linn@glbf.com
`
`Respectfully submitted,
`
`/s/ Russell E. Levine, P.C.
`
`Russell E. Levine, P.C. (Reg. No. 32,153)
` Lead Counsel
`rlevine@kirkland.com
`KIRKLAND & ELLIS LLP
`300 North LaSalle Street
`Chicago, Illinois 60654
`
`Counsel for Petitioners Valeo North
`America, Inc., Valeo S.A., Valeo GmbH,
`Valeo Schalter und Sensoren GmbH, and
`Connaught Electronics Ltd.
`
`
`
`
`Date: March 15, 2016
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
