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
`_________________________
`
`
`
`PATENT OWNER’S REPLY IN SUPPORT OF ITS
`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
`_________________________
`
`
`
`PATENT OWNER’S REPLY IN SUPPORT OF ITS
`MOTION TO EXCLUDE CERTAIN EVIDENCE
`
`
`
`
`
`Patent Owner Furanix Technologies B.V. (“Furanix” or “Patent Owner”)
`
`hereby submits this reply brief in support of its Motion to Exclude (PTO Paper No.
`
`34). In their Opposition (PTO Paper No. 38), Petitioners provided no basis to
`
`overcome Patent Owner’s objections and reasons set forth to exclude each of the
`
`exhibits addressed in the motion. All of that evidence should be excluded.
`
`1. Paragraphs of Dr. Martin’s Original Declaration (Exhibit 1009)
`
`Petitioners did not dispute that paragraphs 18-19, 26, 29, 31, 38-39, 41, 46-
`
`48, 50-52, 54-60, 62, 67, 69, 72, 75-76, 78-83, 85, 92-93, and 95 of Exhibit 1009
`
`are not cited or referenced anywhere in their Petition See PTO Paper No. 38.
`
`Rather, without naming a specific paragraph, Petitioners merely assert that “some”
`
`of the above paragraphs were properly included in Petitioners’ Reply (PTO Paper
`
`No. 29) and that “these paragraphs” are relevant to laying a foundation for Dr.
`
`Martin’s testimony on the state of the art at the relevant time and the level of skill
`
`of a person of ordinary skill in the art. See id. at 2.
`
`Dr. Martin’s proffered definition of a person of ordinary skill in the art does
`
`not refer to any of the above paragraphs or their supposed relation to the state of
`
`the art at the relevant time or the level of skill of such a person. See Exhibit 1009
`
`at paragraph 14. Petitioners’ mere arguments, untethered to any specific
`
`paragraph, do not render any of the above paragraphs relevant. All of the above
`
`1
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`
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`paragraphs from Exhibit 1009 should be excluded at least because they lack
`
`relevance to the issues presented in this IPR under Fed. R. Evid. 402.
`
`2. Exhibit 1010 (Prosecution History of EP Application 2 486 028)
`
`Petitioners argue that the prosecution history of this EP application is
`
`relevant to this IPR because it involves another administrative agency looking at
`
`the validity of a “related” patent to the ‘921 patent at issue here, relative to the
`
`prior art ‘732 publication. See PTO Paper No. 38 at 2-3. Petitioners ignore that the
`
`EPO application has different claims and the EPO applies different law.
`
`Moreover, other than a passing attorney argument, Petitioners did not fully explain
`
`the purported relevance of this lengthy EPO prosecution history. This document is
`
`not even cited or discussed in the first Declaration of Dr. Kevin J. Martin (Exhibit
`
`1009) or Declaration #2 of Dr. Kevin J. Martin (Exhibit 1028). For all these
`
`reasons, Exhibit 1010 should be excluded at least because it lacks relevance to this
`
`IPR proceeding under Fed. R. Evid. 402.
`
`3. Exhibit 1014 (Kreile et al. and translation); Exhibit 1017
`(U.S. 3,071,599); and Exhibit 1020 (Claude Moreau et al.)
`
`Exhibit 1014 is not cited or discussed in the first Declaration of Dr. Kevin J.
`
`Martin (Exhibit 1009), although it is mentioned in a footnote in the Petition (PTO
`
`Paper No. 1), and Exhibits 1017 and 1020 are not cited anywhere in the Petition
`
`including by reference to the first Declaration of Dr. Kevin J. Martin (Exhibit
`
`1009). Nevertheless, Petitioners assert in their Opposition to the Motion to
`2
`
`
`
`
`
`
`Exclude that each of these references is relevant to the state of the art at the
`
`relevant time and to the level of skill of a person of ordinary skill in the art. See
`
`PTO Paper No. 38 at 3-4.
`
`Dr. Martin’s proffered definition of a person of ordinary skill in the art does
`
`not refer to any of these three references or their supposed relation to the state of
`
`the art at the relevant time or the level of skill of such a person. See Exhibit 1009
`
`at paragraph 14. Petitioners’ mere attorney argument cannot change those facts.
`
`Exhibits 1014, 1017 and 1020 should be excluded at least because they lack
`
`relevance to the issues presented in this IPR under Fed. R. Evid. 402.
`
`4. Parts of Declaration #2 of Dr. Martin (Exhibit 1028)
`
`Patent Owner moved to exclude parts of Declaration #2 of Dr. Kevin J.
`
`Martin (Exhibit 1028) under 37 C.F.R. § 42.23 because the exhibit contains
`
`improper reply evidence. In their Opposition, Petitioners argue that 37 C.F.R. §
`
`42.23 should not apply to Declaration #2 of Dr. Kevin J. Martin (Exhibit 1028) that
`
`underlies Petitioners’ Reply, and that this same section should not be a basis for a
`
`motion to exclude. See PTO Paper No. 38 at 3-7.
`
` Patent Owner of course does not dispute that it is fully within the Board’s
`
`discretion to consider and assign the appropriate weight to all of the evidence
`
`submitted by both parties to this IPR proceeding, whether or not any objection was
`
`lodged. However, Petitioners raised numerous issues in Dr. Martin’s Declaration
`
`3
`
`
`
`
`
`
`#2 that were wholly new arguments and not a rebuttal to anything in Patent
`
`Owner’s Opposition to the Petition or Dr. Schammel’s supporting Declaration.
`
`These new arguments could have and should have been made with the original
`
`Petition. In any case, even taken in its entirety, Dr. Martin’s Declaration #2 does
`
`not provide any basis to overcome the validity of any claim at issue in the ‘921
`
`patent.
`
`5. Exhibit 1029 (U.S. Patent No. 8,519,167, “the ‘167 patent’)
`
`Contrary to Petitioners’ assertion, Patent Owner did not introduce Exhibit
`
`1029 (the ‘167 patent) into this IPR proceeding. Dr. Schammel, Patent Owner’s
`
`expert, merely referenced the ‘167 patent in his Declaration to disclose the fact that
`
`he worked in the past as a consultant for Patent Owner, which resulted in the ‘167
`
`patent on which he is named an inventor. See Exhibit 2003, at paragraph 8. He is
`
`not an employee of Patent Owner and does not presently have a consultancy with
`
`them (other than in connection with this IPR).
`
`Nevertheless, Petitioners proffered text from the ‘167 patent as “evidence”
`
`based on their own interpretations of same. For all the reasons set forth in the
`
`Motion to Exclude, the ‘167 patent should be excluded at least based on Patent
`
`Owner’s hearsay and relevance objections.
`
`
`
`
`
`4
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`
`
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`6. Exhibit 1030 (WO 2010/111288 A2)
`
`Petitioners argue that a hearsay objection was raised against Petitioners’
`
`statements about Exhibit 1030 in their Reply (see PTO Paper No. 29 at 24) instead
`
`of against Exhibit 1030 itself. See PTO Paper No. 38 at 8. However, those
`
`statements in the Reply and the exhibit itself are inextricably intertwined because
`
`Petitioners are proffering Exhibit 1030 for the “truth” of its disclosure and how that
`
`disclosure supposedly changes how Exhibit 2004 should be viewed. Petitioners’
`
`Opposition to the Motion to Exclude aptly demonstrates this once more. There,
`
`Petitioners again seek to use their erroneous view of Exhibit 1030 to attack the
`
`strong evidence of copying of the ‘921 patent by Petitioners demonstrated through
`
`Exhibit 2004. See PTO Paper No. 38 at 9. Thus, Exhibit 1030 should be excluded
`
`at least because it is hearsay and it lacks relevance to this IPR.
`
`
`Dated: November 1, 2016
`
`
`
`Respectfully submitted,
`
`/ Paul M. Richter, Jr. /
`Paul M. Richter, Jr., Reg. No. 36,254
`Mark A. Chapman (admitted pro hac vice)
`
`ANDREWS KURTH KENYON LLP
`One Broadway
`New York, NY 10004-1007
`Tel: 212-425-7200
`Fax: 212-425-5288
`
`Counsel for Patent Owner Furanix
`Technologies B.V.
`
`5
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the foregoing “PATENT OWNER’S
`
`REPLY IN SUPPORT OF ITS MOTION TO EXCLUDE CERTAIN
`
`EVIDENCE” was served via email as follows:
`
`
`Jonathan W. S. England
`Reg. No. 71,223
`BLANK ROME LLP
`1825 Eye Street NW
`Washington, DC 20006
`Tel (202) 420-2747
`Fax (202) 420-2201
`jwengland@blankrome.com
`
`/ Paul M. Richter, Jr. /
`Paul M. Richter, Jr.
`
`Counsel for Patent Owner Furanix
`Technologies B.V.
`
`
`Michael S. Marcus
`BLANK ROME LLP
`1825 Eye Street NW
`Washington, DC 20006
`Tel (202) 420-3702
`Fax (202) 420-2201
`mmarcus@blankrome.com
`
`Dipu A. Doshi
`Reg. No. 60,373
`BLANK ROME LLP
`1825 Eye Street NW
`Washington, DC 20006
`Tel (202) 420-2604
`Fax (202) 420-2201
`ddoshi@blankrome.com
`
`
`
`
`Dated: November 1, 2016
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