Case IPR2016-01268
`Patent No. 8,365,742
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________
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`R.J. REYNOLDS VAPOR COMPANY,
`Petitioners
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`v.
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`FONTEM HOLDINGS 1 B.V.,
`Patent Owner
`______________
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`Case IPR2016-01268
`Patent No. 8,365,742
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`______________________________________________________________
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`PATENT OWNER’S MOTION TO EXCLUDE
`PURSUANT TO 37 C.F.R. §§ 42.62 AND 42.64
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`LEGAL136666899.1
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`Patent No. 8,365,742
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________
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`R.J. REYNOLDS VAPOR COMPANY,
`Petitioners
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`v.
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`FONTEM HOLDINGS 1 B.V.,
`Patent Owner
`______________
`
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`Case IPR2016-01268
`Patent No. 8,365,742
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`______________________________________________________________
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`PATENT OWNER’S MOTION TO EXCLUDE
`PURSUANT TO 37 C.F.R. §§ 42.62 AND 42.64
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`LEGAL136666899.1
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`Case IPR2016-01268
`Patent No. 8,365,742
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`Pursuant to 37 C.F.R. §§ 42.62 and 42.64(c), the Board’s Scheduling Order
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`dated January 4, 2017 (Paper 11) and the Board’s Order dated July 5, 2017 (Paper
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`29), Patent Owner Fontem Holdings 1 B.V. (“Fontem”) moves to exclude the
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`Reply Declaration of Dr. Robert H. Sturges (Ex. 1027). Under FRE 403, any
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`probative value of the declaration is outweighed by unfair prejudice to Fontem
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`because the declaration presents new evidence that should have been presented
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`with the Petition, thus depriving Fontem of the opportunity to respond. Under FRE
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`702 and 703, the declarant fails to provide and reliably apply the requisite
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`scientific, technical, or specialized knowledge, skill, expertise, training, or
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`education to testify to the opinions presented.
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`Fontem also moves to exclude Exhibits 1028-1032 because those exhibits
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`are only cited to support Dr. Sturges’s improper Reply Declaration, and Exhibits
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`1005-1008 and 1022 because those exhibits were not relied on by the Board in its
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`decision to institute trial or Petitioner in its Reply. The admission of these exhibits
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`fails to make any facts more or less probable than without their admission under
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`FRE 401 and 402. Under FRE 403, any probative value of Exhibits 1028-1032 is
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`outweighed by unfair prejudice to Fontem because those exhibits present new
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`evidence that should have been presented with the Petition.
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`LEGAL136666899.1
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`Case IPR2016-01268
`Patent No. 8,365,742
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`I.
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`Dr. Sturges’s Reply Declaration Should Be Excluded
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`Pursuant to 37 C.F.R. § 42.64(b)(1), Patent Owner objected to Dr. Sturges’s
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`Reply Declaration because it includes new evidence regarding “deformation,” axial
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`displacement “with respect to” or “relative to” the cavity wall, radial support
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`against “low rigidity” materials, and “misalignment” of the ejection holes. Paper
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`32 at 1-3. Pursuant to 37 C.F.R. § 42.64(c), Patent Owner explains those
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`objections below.
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`It is Petitioner’s burden to set out in the Petition a “full statement of the
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`reasons for the relief requested, including a detailed explanation of the significance
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`of the evidence.” 37 C.F.R. § 42.22(a)(2). “It is axiomatic that a Petition cannot
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`provide a detailed explanation of the significance of evidence when that evidence
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`is not presented until the Petitioner files its Reply.” Intri-Plex Techs., Inc. v. Saint-
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`Gobain Performance Plastics Rencol Ltd., IPR2014-00309, Paper 83 at 13 (PTAB
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`March 23, 2014) (Ex. 2031). Dr. Sturges’s Reply Declaration “is in effect a 50-
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`page supplemental declaration” that presents new evidence that should have been
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`provided with the Petition. Veeam Software Corp. v. Symantec Corp., IPR2013-
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`00141, Paper 35 at 4 (PTAB April 7, 2014) (Ex. 2032) (excluding reply declaration
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`that “raise[d] new issues and provide[d] additional evidence that could have been
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`provided in the original motion”).
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`Patent No. 8,365,742
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`Petitioner has filed three declarations from Dr. Sturges in this IPR. Ex.
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`1015; Ex. 1020; Ex. 1027.1 Dr. Sturges’s Petition Declaration is 40 pages long,
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`including 12 pages dedicated to background and legal standards and a claim chart
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`spanning 13 pages. Ex. 1015 (background ¶¶ 1-31, claim chart ¶ 63). Dr.
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`Sturges’s Supplemental Declaration is only 12 pages. Ex. 1020. At 50 pages in
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`length, Dr. Sturges’s Reply Declaration is nearly as long as his first two
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`declarations combined, and does not include a claim chart or any of the
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`background included in his Petition Declaration. Ex. 1027 ¶¶ 1-4.
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`Dr. Sturges’s Reply Declaration is filled with new opinions that should have
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`been included with the Petition. For example, Patent Owner pointed out in its
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`Opposition that “Petitioner’s brief and two expert declarations say nothing about
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`deformation prevention,” and that the first time Dr. Sturges mentioned deformation
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`was at his cross-examination. Paper 24 at 1, 25. Indeed, the word “deform”
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`appears nowhere in the Petition or Dr. Sturges’s first two declarations. See Paper
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`2; Ex. 1015; Ex. 1020. Yet Dr. Sturges uses the words “deform,” “deformed,” and
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`1 Petitioner served, but has not filed, a fourth Sturges declaration in response to
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`Patent Owner’s Objections (Paper 32). That declaration is 13 pages long, and
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`addresses “standard drawing practices,” “aerodynamic forces,” “compression,”
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`“tensile strength,” and “electrical resistance.”
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`Patent No. 8,365,742
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`“deformation” 37 times in his Reply Declaration, each time in reference to
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`Hon ’043’s porous body. Ex. 1027 ¶¶ 9, 16, 25-33, 44, 46.
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`Likewise, Dr. Sturges’s Reply Declaration includes the new opinion that the
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`cavity wall in Hon ’043 “will not prevent the axial movement of porous body 27
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`with respect to shell 14,” only that “cavity wall 25 prevents the axial displacement
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`of porous body 27 with respect to cavity wall 25.” Ex. 1027 ¶ 25. Dr. Sturges
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`discusses axial displacement of the porous body “with respect to” or “relative to”
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`the cavity wall ten times in his Reply Declaration. Id. ¶¶ 18, 19, 23-27, 31. But
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`this “with respect to” or “relative to” discussion appears nowhere in the Petition or
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`Dr. Sturges’s first two declarations, which only refer generally to “axial
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`displacement of the porous body” or “axial displacement when the porous body 27
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`is forcibly inserted into the solution storage porous body.” Paper 2 at 15-16; Ex.
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`1015 ¶¶ 44-45; Ex. 1020 ¶ 4.
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`In fact, Patent Owner even objected to the paragraphs of Dr. Sturges’s
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`Petition Declaration discussing “axial displacement” on the ground that his opinion
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`was not based on sufficient facts or data and was not the product of reliable
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`principles and methods. Paper 16 at 4-5. Dr. Sturges said he “considered Patent
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`Owner’s Objections” in his Supplemental Declaration, yet, tellingly, failed to
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`include any discussion of displacement of the porous body “with respect to” the
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`cavity wall. Ex. 1020 ¶ 3.
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`Dr. Sturges’s Reply Declaration also contains a new opinion that Hon ’043’s
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`porous body may “sag and potentially collapse” when made of a “low rigidity”
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`material. Ex. 1027 ¶ 10, 30, 31, 44. But the only alleged rigidity problems
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`identified in the Petition and Dr. Sturges’s first two declarations were when
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`materials had “similar and relatively high rigidity” or “due to blowing on the
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`mouthpiece.” Ex. 1015 ¶¶ 45, 47; Ex. 1020 ¶¶ 4-13; Paper 2 at 16.
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`Finally, Dr. Sturges’s Reply Declaration includes a new opinion regarding
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`“misalignment of the two portions of the ejection holes.” Ex. 1027 ¶ 18-19, 32.
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`But alignment of “the two portions” of the ejection holes is discussed nowhere in
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`the Petition or Dr. Sturges’s first two declarations. See Paper 2; Ex. 1015; Ex.
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`1020.
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`Dr. Sturges’s Reply Declaration should be excluded. If there was evidence
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`that Hon ’043’s porous body is “supported by” the cavity wall because the cavity
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`wall prevents the porous body from “deforming,” that Hon ’043’s cavity wall only
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`prevents axial displacement with respect to itself, and that the cavity wall supports
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`against “sagging,” Petitioner should have included that evidence and a “detailed
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`explanation of the significance of the evidence” in the Petition. 37 C.F.R. §
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`Case IPR2016-01268
`Patent No. 8,365,742
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`42.22(a)(2). Petitioner has deprived Patent Owner of the chance to refute this
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`evidence by withholding it until after Patent Owner filed its last substantive paper.
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`FRE 403. The Board should exclude Dr. Sturges’s Reply Declaration in its
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`entirety. The Scotts Company LLC v. Encap LLC, IPR2013-00110, Paper 79 at 6
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`n.3 (PTAB June 24, 2014) (Ex. 2034) (“The fact that two declarations may contain
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`some material appropriate for a response does not require our consideration of
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`them, as the Board will not attempt to sort the proper from the improper portions.
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`See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14,
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`2012).”).
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`II. The Exhibits Supporting Dr. Sturges’s Reply Declaration Should Be
`Excluded
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`Patent Owner objected to Exhibits 1028, 1029, 1030, 1031, and 1032 as
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`irrelevant, misleading, confusing the issues, unfairly prejudicial, and outside the
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`scope permitted in a reply pursuant to 37 C.F.R. § 42.23(b) and FRE 401, 402 and
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`403. Paper 32 at 3-5. These exhibits are only cited in Dr. Sturges’s Reply
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`Declaration, which should be excluded for the reasons explained above. FRE 402,
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`403; 37 C.F.R. § 42.23(b); Ex. 1027 ¶¶ 42, 57. Additionally, because Petitioner
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`does not directly rely on these exhibits in its Reply brief, their admission does not
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`tend to make any fact more or less probable than it would be without their
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`admission. FRE 401; see Paper 30. Exhibits 1028-1032 should be excluded.
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`Case IPR2016-01268
`Patent No. 8,365,742
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`III. The Exhibits Not Relied On Should Be Excluded
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`Patent Owner objected to Exhibits 1005, 1006, 1007, and 1008 as creating
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`unfair prejudice, confusing the issues, or as a waste of time pursuant to FRE 403
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`because the Board did not rely on those exhibits in its decision to institute trial.
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`Paper 16 at 1-4. Patent Owner objected to Exhibit 1022 under FRE 401 and 402
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`because Petitioner did not rely on that exhibit in its Reply. Paper 32 at 1. Because
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`these exhibits were not relied on by the Board or the parties, their admission does
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`not tend to make any fact more or less probable than it would be without their
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`admission. Exhibits 1005-1008 and 1022 should be excluded.
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`IV. Conclusion
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`For the foregoing reasons, the Board should exclude Exhibits 1005-1008,
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`1022, and 1027-1032.
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`Date: August 25, 2017
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`By:
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`Respectfully submitted,
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`/Michael J. Wise/
`Michael J. Wise, Reg. No. 34,047
`Perkins Coie LLP
`1888 Century Park East, Suite 1700
`Los Angeles, CA 90067
`Phone: 310-788-3210
`Facsimile: 310-788-3399
`MWise@PerkinsCoie.com
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`Case IPR2016-01268
`Patent No. 8,365,742
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that service on Petitioner was made as
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`follows, in accordance with 37 CFR 42.6(e):
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`Date of service:
`Manner of service:
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`Persons served:
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`August 25, 2017
`1. Electronic submission through the USPTO Patent Trial
`and Appeal Board End-to-End System
`2. Electronic mail
`Document(s) served: PATENT OWNER’S MOTION TO EXCLUDE
`PURSUANT TO 37 C.F.R. §§ 42.62 AND 42.64
`Ralph J. Gabric, Lead Counsel
`Robert Mallin, Backup Counsel
`Yuezhong Feng, Backup Counsel
`Brinks Gilson & Lione
`Suite 3600 NBC Tower
`455 N. Cityfront Plaza Dr.
`Chicago, Illinois 60611
`Attorneys for Petitioner
`rgabric@brinksgilson.com
`rmallin@brinksgilson.com
`yfeng@brinksgilson.com
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` /Peter Sher/
`Peter Sher
`Paralegal
`Perkins Coie LLP
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`LEGAL136666899.1
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