UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`E. I. DU PONT DE NEMOURS AND COMPANY and
`ARCHER-DANIELS-MIDLAND COMPANY,
`Petitioners,
`
`v.
`
`FURANIX TECHNOLOGIES B.V.,
`Patent Owner.
`____________________
`
`Case IPR2015-01838
`Patent 8,865,921
`____________________
`
`
`
`PETITIONERS’ OPPOSITION TO PATENT OWNER’S
`MOTION TO EXCLUDE CERTAIN EVIDENCE
`
`
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`E. I. DU PONT DE NEMOURS AND COMPANY and
`ARCHER-DANIELS-MIDLAND COMPANY,
`Petitioners,
`
`v.
`
`FURANIX TECHNOLOGIES B.V.,
`Patent Owner.
`____________________
`
`Case IPR2015-01838
`Patent 8,865,921
`____________________
`
`
`
`PETITIONERS’ OPPOSITION TO PATENT OWNER’S
`MOTION TO EXCLUDE CERTAIN EVIDENCE
`
`
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`I.
`
`INTRODUCTION
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`Patent Owner’s Motion to Exclude Certain Evidence (“Paper 34”) largely
`
`ignores analyzing or applying the Federal Rules of Evidence (“FRE”) to the facts
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`at hand, but simply concludes, mostly without any explanation, that evidence
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`should be excluded either as irrelevant, hearsay, or improper reply evidence.
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`Patent Owner ignores that the P.T.A.B. has stated: “There is a strong public
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`policy for making all information filed in a non-jury, quasi-judicial administrative
`
`proceeding available to the public, especially in an inter partes review which
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`determines the patentability of claim in an issued patent. It is within the Board’s
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`discretion to assign the appropriate weight to be accorded to evidence.” Liberty
`
`Mutual Ins. Co. v. Progressive Casualty Ins. Co., CBM2012-00002, Paper 66, p.
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`60 (P.T.A.B. Jan. 23, 2014).
`
`The evidence Patent Owner seeks to exclude provides a foundation for
`
`Petitioners’ expert’s testimony or it directly rebuts Patent Owner’s arguments.
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`Moreover, because P.T.A.B. has clearly established that a motion to exclude is not
`
`the proper vehicle for use by a party to raise the issue of a reply exceeding the
`
`proper scope of a reply or reply evidence, this Board should strike or ignore Patent
`
`Owner’s arguments regarding the proper scope of a reply. Accordingly, Patent
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`Owner’s motion should be denied in its entirety.
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`
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`1
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`
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`II. ARGUMENT
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`a. Evidence Accompanying the Petition
`
`i. Exhibit 1009 (Dr. Martin Declaration)
`
`Patent Owner moves to exclude certain paragraphs of Dr. Martin’s original
`
`declaration under FRE 402 (relevance) and FRE 403 (confusing, waste of time),
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`simply because the certain paragraphs were not cited explicitly in the Petition.
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`However, Patent Owner ignores that some of the cited paragraphs were properly
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`included in Petitioners’ Reply (Paper 29) and also that these paragraphs are
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`relevant to laying foundation for other portions of Dr. Martin’s testimony,
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`including the state of the art at the relevant time and the level of skill of a person of
`
`ordinary skill in the art. As such, the testimony is relevant. As for Patent Owner’s
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`argument that the evidence is either confusing or a waste of time (FRE 403), Patent
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`Owner provides no reasons that the specific information is unduly prejudicial to
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`the fact finder or that the fact finder, i.e., the Board in this case, would find these
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`portions “confusing.”
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`ii. Exhibit 1010 (Prosecution History of EP Application)
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`Patent Owner objects to Exhibit 1010 under FRE 802 (hearsay) 402
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`(relevance) and 403 (confusing, waste of time). The only reason Patent Owner
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`provides for its objection is that the document is not prior art to the ’921 patent and
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`is not cited in Dr. Martin’s declaration. Exhibit 1010 is discussed in the Petition
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`
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`2
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`
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`and is a document produced by another administrative agency addressing the
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`validity of a patent related to the ’921 patent. Accordingly, the document is
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`relevant to the proceeding because it addresses the same subject matter—
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`comparing the ’921 patent and the ’732 publication—and supports Petitioners’
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`argument that the ’732 Publication invalidates the ’921 patent. The document is
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`not cited as being a ground of rejection and thus it is irrelevant whether the
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`document predates the ’921 patent.
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`iii. Exhibit 1014 (Kreile)
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`Contrary to Patent Owner’s assertion that it was not cited in the Dr. Martin’s
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`original declaration, Kreile was cited in footnote 6 of the Petition and lays
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`foundation for the conclusions reached by Lewkowski1, which cites to Kreile. In
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`addition, Kreile is relevant to the state of the art at the time of Lewkowski’s
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`writing and to the level of a person of ordinary skill in the art. “The level of
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`ordinary skill in the art is reflected by the prior art of record.” Fujitsu
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`Semiconductor Ltd., et al. v. Zond, LLC, Case IPR2014-00781, slip op. at 13
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`(PTAB Aug. 14, 2015) (Paper 53) (citing Okajima v. Bourdeau, 261 F.3d 1350,
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`1355 (Fed. Cir. 2001)); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
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`(finding that the Board did not err in concluding that the level of ordinary skill was
`
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`1 Patent Owner did not object to Lewkowski.
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`
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`3
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`
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`best determined by the references of record).
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`iv. Exhibit 1017 (U.S. Patent 3,071,599)
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`Exhibit 1017 is cited by Dr. Martin in ¶ 40 of Exhibit 1009 and lays
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`foundation for portions of his testimony in this matter. In addition, Ex. 1017 is
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`relevant to the state of the art and level of a person of ordinary skill in the art at the
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`time of its writing. See Fujitsu supra. Therefore, the evidence should not be
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`excluded from this proceeding.
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`v. Exhibit 1020 (Claude Moreau)
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`Exhibit 1020 is cited by Dr. Martin in ¶ 46 of Exhibit 1009 and lays
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`foundation for portions of his testimony in this matter. In addition, Ex. 1020 is
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`relevant to the state of the art and level of a person of ordinary skill in the art at the
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`time of its writing. See Fujitsu supra. Therefore, the evidence should not be
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`excluded from this proceeding.
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`b. Post-Institution Evidence
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`i. Exhibit 1028 (Dr. Martin Declaration # 2)
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`Patent Owner argues that portions of Dr. Martin’s Declaration # 2 should be
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`excluded because it contains improper reply evidence. See Paper 34 at 4. It is well
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`established that a motion to exclude is not the proper vehicle to argue that evidence
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`should have been cited in the petition. See e.g., Liberty Mutual Ins. Co.,
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`CBM2012-00002, paper 66, p. 62 (“a motion to exclude…is not an opportunity
`
`
`
`
`
`4
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`
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`to…argue that a reply contains new argument or relies upon evidence necessary to
`
`make out a prima facie case.”); Corning Gilbert Inc. v. PPC Broadband, Inc.,
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`IPR2013-00347, Paper 20, p. 3 (P.T.A.B. Jan. 2, 2014) (“a motion to exclude
`
`evidence is not intended as the vehicle for use by a party to raise the issue of a
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`reply exceeding the proper scope of a reply, or reply evidence exceeding the proper
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`scope of reply evidence, in the sense of going beyond what reasonably can be
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`deemed as responding to an opposition”). That is exactly what Patent Owner does
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`here. Instead, “in the absence of special circumstances, the Board will determine
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`whether the reply and its supporting evidence contain material exceeding the
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`proper scope when the Board reviews all of the pertinent papers and prepares the
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`final written decision.” Bloomberg Inc. v. Markets-Alert Pty Ltd., CBM2013-
`
`00005, Paper 56, p. 4 (P.T.A.B. Nov. 15, 2013). Therefore, Patent Owner’s
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`motion to exclude based upon improper scope of reply should be denied.2
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`Moreover, instead of relying upon the FRE regarding admissibility of
`
`evidence, Patent Owner relies upon 37 C.F.R. § 42.23 as its basis for excluding
`
`
`2 Petitioners note that Ex. 1028 (and Petitioners’ reply) complies with the rules and
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`regulations of the Board.
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`
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`
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`5
`
`
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`portions of Dr. Martin’s Declaration.3 See Paper 30 at 2-3. The relevant portion of
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`37 C.F.R. § 42.23 states:
`
`Oppositions and replies.
`(a) Oppositions and replies must comply with the content
`requirements for motions and, if the paper to which the
`opposition or reply is responding contains a statement of
`material fact, must include a listing of facts that are admitted,
`denied, or cannot be admitted or denied. Any material fact
`not specifically denied may be considered admitted.
`(b) All arguments for the relief requested in a motion must be
`made in the motion. A reply may only respond to arguments
`raised
`in
`the corresponding opposition, patent owner
`preliminary response, or patent owner response.
`
`Obviously, 37 C.F.R. § 42.23 is directed solely to oppositions and replies—not the
`
`underlying evidence or exhibits. As such, it is legal error to predicate an objection
`
`to an exhibit (Exh. 1028) on 37 C.F.R. § 42.23 because it is inapplicable to
`
`declarations or underlying exhibits. For this additional reason, Patent Owner’s
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`3 In Paper 30 Patent Owner additionally objected to Dr. Martin’s testimony under
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`FRE 802, 702, 703, 402, and 403. However, Patent Owner chose not to move to
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`exclude based upon these objections. Patent Owner has thus waived these
`
`objections; to the extent Patent Owner is allowed to raise these waived objections,
`
`Petitioners reserve their right to respond.
`
`
`
`
`
`6
`
`
`
`motion to exclude Dr. Martin’s testimony in Exhibit 1028 is without merit.
`
`Moreover, Patent Owner’s Motion to Exclude does not cite to or rely upon
`
`any FRE to argue that Dr. Martin’s testimony is inadmissible in this proceeding
`
`and thus should be excluded. Accordingly, Exhibit 1028 should be included in its
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`entirety in this proceeding.
`
`ii. Exhibit 1029 (U.S. Patent 8,519,167)
`
`Patent Owner again improperly objects to Exhibit 1029 as constituting
`
`improper reply evidence. Petitioners incorporate their arguments from Section
`
`II.B.i that responded to the same allegations with respect to Exhibit 1028.
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`Patent Owner additionally objects to Exhibit 1029 based on FRE 802 and
`
`402. Petitioners themselves, however, disclosed and relied upon this U.S. Patent
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`8,519,167, thus introducing the document into the proceeding, in establishing their
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`Expert’s credibility. See Exh. 2003 ¶ 8. For at least reason it is relevant to the
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`proceeding.
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`Patent Owner’s only arguments that the document is not relevant to the
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`proceeding is because it is not prior art to the ’921 patent and the statement
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`Petitioners’ rely upon is purported hearsay. But, as acknowledged by Patent
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`Owner, the ’167 patent “is assigned to Patent Owner” and also lists Dr. Schammel,
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`Patent Owner’s expert, as an inventor within his consulting role to Patent Owner;
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`thus it is a statement made by an opposing party and not hearsay. See FED. R. EVID.
`
`
`
`
`
`7
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`
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`801(d)(2). Therefore, Exh. 1029 should not be excluded from the proceeding.
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`iii. Exhibit 1030 (WO 2010/111288)
`
`Patent Owner objects to Exhibit 1030 on the grounds of FRE 802 and 402.
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`With respect to hearsay, Patent Owner appears to assert Petitioners’ statements,
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`which Patent Owner did not object to, were the hearsay, not Exh. 1030. Moreover,
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`Patent Owner fails to identify the truth of the matter within Exh. 1030 that
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`Petitioners are asserting. Instead, Petitioners provided Exh. 1030 as showing
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`similar applicants as Exh. 2004 and similar disclosures. The truth of the
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`underlying disclosures of either Exh. 1030 or Exh. 2004 are not being asserted,
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`only that the documents disclose similar information. Accordingly, Exh. 1030
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`cannot be hearsay.
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`Patent Owner also objects to Exhibit 1030 as not being relevant to the
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`proceeding. However, Patent Owner’s own objections expressly demonstrates its
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`relevance. Patent Owner raised the issue of purported copying by Petitioner
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`Archer-Daniels-Midland of the ’921 patent and relied upon Exh. 2004. In response,
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`Petitioners provided an earlier filed document by the same applicants and asserted
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`that Exh. 2004 was the product of further development of Exh. 1030. Thus, Exh.
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`1030 is at least relevant to this proceeding in it contradicts Patent Owner’s
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`assertion of copying by Archer-Daniels-Midland of the ’921 patent. Moreover,
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`because there is a connection between Exh. 2004 and Exh. 1030, as asserted by
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`8
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`Petitioners, it demonstrates that Exh. 2004 does not demonstrate that Archer-
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`Daniels-Midland copied the ’921 patent, but instead independently developed the
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`conditions arrived upon in Exh. 2004.
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`For the above reasons, Exhibit 1030 is relevant to the proceeding and not
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`hearsay, accordingly, Exhibit 1030 should not be excluded from the proceeding.
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`
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`Dated: October 25, 2016
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`Respectfully submitted,
`
`By: /Michael S. Marcus/
`
`Michael S. Marcus
`Registration No.: 31,727
`Dipu A. Doshi
`Registration No. 60,073
`Jonathan W.S. England
`Registration No.: 71,223
`BLANK ROME LLP
`1825 Eye Street NW
`Washington DC 20006
`Tel.: 202-420-4742
`
`Counsel for Petitioners
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`9
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that a copy of the foregoing PETITIONER’S
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`OPPOSITION TO PATENT OWNER’S MOTION TO EXCLUDE CERTAIN
`
`EVIDENCE is being served on counsel of record by filing this document via
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`electronic mail.
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`Dated: October 25, 2016
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`Respectfully submitted,
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`/Michael S. Marcus/
`
`Michael S. Marcus
`Registration No. 31,727
`BLANK ROME LLP
`1825 Eye Street NW
`Washington DC 20006
`Tel: 202-420-4742
`
`Counsel for Petitioners
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