UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`HYDRITE CHEMICAL CO.,
`Petitioner,
`
`v.
`
`SOLENIS TECHNOLOGIES, L.P.,
`Patent Owner.
`
`
`Case IPR2015-01592
`Patent 8,962,059
`
`
`
`PATENT OWNER’S REPLY IN SUPPORT OF ITS MOTION TO
`EXCLUDE PURSUANT TO 37 C.F.R. § 42.64(C)
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`HYDRITE CHEMICAL CO.,
`Petitioner,
`
`v.
`
`SOLENIS TECHNOLOGIES, L.P.,
`Patent Owner.
`
`
`Case IPR2015-01592
`Patent 8,962,059
`
`
`
`PATENT OWNER’S REPLY IN SUPPORT OF ITS MOTION TO
`EXCLUDE PURSUANT TO 37 C.F.R. § 42.64(C)
`
`
`
`
`
`
`
`
`
`Case IPR2015-01592
`U.S. Patent No. 8,962,059
`
`TABLE OF CONTENTS
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`
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`I.
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`Petitioner’s Reliance on New Evidence to Cure Deficiencies in Its Petition
`Is Improper and Prejudicial to Patent Owner .................................................... 1
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`II.
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`Petitioner Has Failed to Overcome the Objections to Exs. 1022 and 1029 ........ 2
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`A.
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`B.
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`Exhibit 1029 (“Jacobsen”) ...................................................................... 2
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`Exhibit 1022 (“CVEC slides”) ................................................................ 4
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`III. Conclusion ........................................................................................................ 5
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`Contrary to Petitioner’s assertions, Patent Owner’s Motion to Exclude
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`Case IPR2015-01592
`U.S. Patent No. 8,962,059
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`(“Motion”) is consistent with the Board’s Order of July 27, 2016 (Paper 24). That
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`order not only authorized the filing of a list of new issues raised in Petitioner’s Reply,
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`but reminded the parties that they may also file Motions to Exclude that address
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`admissibility of any evidence for which an objection was timely filed (Paper 24 at 3).
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`Patent Owner subsequently filed its motion to exclude based on the objections that it
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`had lodged in Paper 22. As stated in a Board decision cited by Petitioner, “[a] motion
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`to exclude can be based on ... evidence presented contrary to the applicable rules (37
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`C.F.R. § 42.62(a) and 37 C.F.R. § 42.61(a) (‘[e]vidence that is not taken, sought, or
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`filed in accordance with ... [Subpart 42] is not admissible.’)” (IPR2014-01555, Paper
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`50 at 72). Accordingly, Patent Owner’s Motion was proper.
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`I.
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`Petitioner’s Reliance on New Evidence to Cure Deficiencies in Its Petition
`Is Improper and Prejudicial to Patent Owner
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`Although Petitioner contends that “nothing” in its Reply is necessary to
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`establish its prima facie case of obviousness, that clearly is not true. Indeed, as
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`explained in the Motion, Petitioner improperly submitted new evidence on reply to
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`cure deficiencies in the Petition that Patent Owner had identified in its Response. See
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`IPR2013-00424, Paper 50 at 21 (PTAB Jan. 12, 2015) (“A Reply affords the
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`Petitioner an opportunity to refute arguments and evidence advanced by Patent
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`Owner, not an opportunity to cure deficiencies in its Petition.”).
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`In an attempt to downplay the prejudice to Patent Owner that would result
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`from admission of the new evidence, Petitioner notes that Patent Owner had the
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`Case IPR2015-01592
`U.S. Patent No. 8,962,059
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`opportunity to submit observations on cross-examination. Petitioner, however,
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`ignores the fact that observations on cross-examination are limited in scope and,
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`significantly, do not allow for the submission of rebuttal argument or evidence. As
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`the Board recently recognized, new evidence and argument in a Reply is improper
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`“because, as the Federal Circuit instructed…the agency ‘must allow ‘a party…to
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`submit rebuttal evidence…as may be required for a full and true disclosure of the
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`facts.’” IPR2013-00440, Paper 49 at 9 (PTAB Aug. 22, 2016). No such opportunity
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`for rebuttal evidence is available to Patent Owner here. Accordingly, Petitioner’s new
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`evidence should be excluded.
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`II.
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`Petitioner Has Failed to Overcome the Objections to Exs. 1022 and 1029
`A.
`Petitioner’s opposition trivializes and renders meaningless the Federal Rules of
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`Exhibit 1029 (“Jacobsen”)
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`Evidence (“FRE”). In particular, FRE 901 requires that the proponent produce
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`evidence sufficient to support a finding that an item is what the proponent claims it is.
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`For example, “[w]hen offering a printout of a webpage into evidence to prove the
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`website’s contents, the proponent of the evidence must authenticate the information
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`from the website itself, not merely the printout.” IPR2014-00148, Paper 41 at 10
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`(PTAB April 23, 2015).
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`Petitioner fails to meet this standard. Instead, Petitioner only alleges that
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`because the Jacobsen webpage bears “The Jacobsen” trade inscription, it is self-
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`Case IPR2015-01592
`U.S. Patent No. 8,962,059
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`authenticating under FRE 902(7). But Jacobsen is not an inscription, sign, tag, or
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`label – it is a printout of a web page. “Printouts from a web site do not bear the
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`indicia of reliability demanded…under FRE 902. To be authenticated, some
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`statement or affidavit from someone with knowledge is required.” In re
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`Homestore.com, Inc. Securities Litigation, 347 F. Supp. 2d 769, 782-83 (C.D. Cal.
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`2004), see also IPR2014-00148, Paper 41 at 10. Following Petitioner’s logic, any
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`webpage containing a trademark should be found authentic, even if the trademark had
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`been inserted fraudulently by someone other than the trademark’s owner, thus
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`rendering FRE 901 meaningless. See Victaulic Co. v. Tieman, 499 F.3d 227, 236 (3d
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`Cir. 2007).
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`Petitioner erroneously relies upon the decision in IPR2013-00534, Paper No.
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`81 at 24, in an attempt to support its self-authentication position. The facts in that
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`case differed in that the petitioner did not rely solely upon the fact that the document
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`at issue bore a Duke University trade inscription, but submitted an affidavit of the
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`person who obtained a copy of the original document detailing how it was obtained.
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`Similarly without merit is Petitioner’s assertion that Jacobsen does not contain
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`hearsay. Petitioner’s Reply offers Jacobsen for the truth of the matter asserted, not as
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`“evidence of what it describes to an ordinary artisan.” Notably, Petitioner’s expert,
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`Dr. Rockstraw, does not even consider Jacobsen in his analysis, let alone explain
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`what relevance, if any, one of ordinary skill would have ascribed to them.
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`Case IPR2015-01592
`U.S. Patent No. 8,962,059
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`Exhibit 1022 (“CVEC slides”)
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`B.
`There is no merit to Petitioner’s assertions regarding the sufficiency of Patent
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`Owner’s objections to Ex. 1022. During the Kohl deposition, Patent Owner entered
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`objections to Petitioner’s reliance upon Ex. 1022, and Petitioner did not cure such
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`objections during the deposition as required by 37 C.F.R. § 42.64(a). When Petitioner
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`filed Ex. 1022 in connection with Petitioner’s Reply, Patent Owner again filed timely
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`objections based upon the manner in which Petitioner was relying upon the exhibit.
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`Nothing more was needed. This is particularly true given that Petitioner raised
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`Ex. 1022 for the first time during a deposition. As the Board recognized, where a
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`petitioner produces a document for the first time during a deposition “and did not
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`notify Patent Owner of its intent to introduce [the] Exhibit[] prior to the deposition ...
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`it would be unfair to expect [Patent Owner] to provide the basis of its objections
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`during the deposition with a high degree of particularity.” IPR2014-00504, Paper 46
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`at 38 (PTAB Sept. 9, 2015). “[Section] 42.64(a) does not specify a level of
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`particularity with which an objection made during deposition must be made.” Id. at
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`38 n. 4.
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`Petitioner’s reliance on Ex. 1031 (“the Copa deposition”) to support the
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`admissibility of Ex. 1022 also misses the mark because Patent Owner challenged Ex.
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`1022 based on hearsay and relevance, not authenticity. That Mr. Copa is the “creator”
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`of Ex. 1022 does not change the fact that Ex. 1022 is an out of court statement being
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`Case IPR2015-01592
`U.S. Patent No. 8,962,059
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`offered for the truth of the matter asserted, namely, that Chippewa Valley Ethanol
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`Company allegedly added polysorbate 80/Tween 80 in a corn oil recovery process
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`(see Paper 21 at 1, 8). Petitioner has not disputed that it attempted to use Ex. 1022 for
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`the truth of the matter asserted. Rather, it now alleges that the exhibit can be offered
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`as evidence of what it describes to an ordinary artisan. But that is not how Petitioner
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`has offered Ex. 1022. In fact, Petitioner failed to have its own expert consider Ex.
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`1022, let alone testify as to how it would have been relevant to a person of ordinary
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`skill in the art.
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`Petitioner relies on Thomas & Betts, 720 F.2d at 1580-81, in an attempt to
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`support its allegation that the non-public nature of Ex. 1022 does not affect its
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`relevance to the level of skill in the art, but the Federal Circuit has admonished
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`parties for “read[ing] too much into Thomas & Betts because…the document at issue
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`in that case received additional support in the form of testimony about the state of the
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`art at the time of the publication.” In re Omeprazole Patent Litig., 84 F. App’x 76, 81
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`(Fed. Cir. 2003). Here, Petitioner has failed to establish when the document was
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`publicly available, how the information was obtained, who obtained it, or the
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`source(s) of the information.
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`III. Conclusion
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`For the reasons discussed above, and in Patent Owner’s Motion to Exclude,
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`Petitioner’s new reply evidence should be excluded.
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`Case IPR2015-01592
`U.S. Patent No. 8,962,059
`
`
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`Respectfully submitted,
`
`/Joseph Lucci/
`Joseph Lucci
`Registration No. 33,307
`BAKER & HOSTETLER LLP
`2929 Arch Street
`Cira Centre, 12th Floor
`Philadelphia, PA 19104-2891
`Telephone: 215.568.3100
`Facsimile: 215.568.3439
`jlucci@bakerlaw.com
`
`Attorneys for Patent Owner
`SOLENIS TECHNOLOGIES, L.P.
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`Dated: August 29, 2016
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`Case IPR2015-01592
`U.S. Patent No. 8,962,059
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`CERTIFICATE OF SERVICE
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`I, David N. Farsiou, hereby certify that on this 29th day of August, 2016, the
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`foregoing PATENT OWNER’S REPLY IN SUPPORT OF ITS MOTION TO
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`EXCLUDE PURSUANT TO 37 C.F.R. § 42.64(c) was served electronically via e-
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`mail on the following:
`
`Richard Roche
`Joel A. Austin
`Christopher J. Fahy
`QUARLES & BRADY LLP
`411 East Wisconsin Avenue
`Suite 2350
`Milwaukee, Wisconsin 53202
`richard.roche@quarles.com
`joel.austin@quarles.com
`christopher.fahy@quarles.com
`
`
`
`/David N. Farsiou/
`David N. Farsiou
`Reg. No. 44,104
`Baker & Hostetler LLP
`2929 Arch Street
`Cira Centre, 12th Floor
`Philadelphia, PA 19104-2891
`Telephone: 215.568.3100
`Facsimile: 215.568.3439
`dfarsiou@bakerlaw.com
`
`Attorney for Patent Owner
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`- 7 -
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