`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`GEP POWER PRODUCTS, INC.,
`PETITIONER,
`
`V.
`
`ARCTIC CAT INC.,
`PATENT OWNER.
`______________
`
`Case IPR2016-01385 (Patent 7,072,188 B2)
`Case IPR2016-01388 (Patent 7,420,822 B2)
`______________
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`Record of Oral Hearing
`Held: September 27, 2017
`______________
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`
`
`
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`Before MICHAEL R. ZECHER, JENNIFER S. BISK, and
`JESSICA C. KAISER, Administrative Patent Judges.
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`Case IPR2016-01385 (Patent 7,072,188 B2)
`Case IPR2016-01388 (Patent 7,420,822 B2)
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`APPEARANCES:
`
`
`ON BEHALF OF THE PETITIONER:
` Michael T. Griggs, Esq.
` Eric J. Lalor, Esq.
` Sarah M. Wong, Esq.
` BOYLE FREDRICKSON, S.C.
` 840 North Plankinton Avenue
` Milwaukee, Wisconsin 53203
` 414.225.9755
` mtg@boylefred.com
` ejl@boylefred.com
` smw@boylefred.com
`
`ON BEHALF OF THE PATENT OWNER:
` Jason Jackson, Esq.
` KUTAK ROCK LLP
` 1650 Farnam Street, The Omaha Building
` Omaha, Nebraska 68102-2186
` 402.231.8359
` jason.jackson@kutakrock.com
` and
` Niall A. MacLeod, Esq.
` KUTAK ROCK LLP, Suite 1750
` U.S. Bank Plaza South
` 220 South Sixth Street
` Minneapolis, Minnesota 55402-4511
` 612.334.5004
` niall.macleod@kutakrock.com
`
`The above-entitled matter came on for hearing on September 27,
`2017, commencing at 3:30 p.m. at the University of Minnesota Law School,
`229 19th Avenue S, Minneapolis, Minnesota.
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` PROCEEDINGS
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` JUDGE KAISER: Good afternoon. This is an
`oral hearing for IPR2016-01385 and IPR2016-01388 between
`Petitioner GEP Power Products, Inc. and the owner of U.S.
`Patent Nos. 7,072,188 and 7,420,822, Arctic Cat Inc.
` Just a few administrative matters before we
`begin. I'm Judge Kaiser. Along with me are Judge Zecher
`and Judge Bisk. As you know, per our order, each side has 45
`minutes to present their arguments for both proceedings.
`Because Petitioner has the burden to show unpatentability,
`Petitioner will proceed first followed by Patent Owner.
`Petitioner may reserve rebuttal time; however, Petitioner may
`only use this time to rebut Patent Owner's arguments.
` I'll do my best to keep the time and give
`periodic reminders of where we are in relation to the total
`time. I'll also ask counsel to state clearly if you're
`referring to a slide number or an exhibit number, which
`number that is, so that the record can be clear and everyone
`may follow along. And at this time I would like counsel to
`introduce themselves. Let's begin with Petitioner.
` MR. GRIGGS: Good afternoon. Michael Griggs
`with the Boyle Fredrickson firm in Milwaukee on behalf of the
`Petitioner. With me are Eric Lalor and Sarah Wong.
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` JUDGE KAISER: And for the Patent Owner?
` MR. JACKSON: Your Honor, this is Jason
`Jackson, lead counsel on behalf of Patent Owner Arctic Cat
`joined by co-counsel Niall MacLeod, also from Kutak Rock.
` JUDGE KAISER: Petitioner, would you like to
`reserve time for rebuttal?
` MR. GRIGGS: Yes, 15 minutes.
` JUDGE KAISER: Okay. When you're ready, you
`may begin.
` MR. GRIGGS: Thank you. Good afternoon.
`Again my name is Michael Griggs from the Boyle Fredrickson
`firm in Milwaukee. With me are Eric Lalor and Sarah Wong.
` May it please the Court, I would like to first
`address Petitioner's motion to exclude evidence, and with
`respect to that I would like to focus on the hearsay issue.
`Patent Owner has argued that the exhibits are not hearsay
`because it's not relying on those exhibits for the truth of
`the matter asserted, and I would just like to call to the
`Board's attention some exemplary exhibits that demonstrate
`otherwise. First, for example, if you look at page 26 of the
`response, and this is the chart that's attempting to lay out
`Patent Owner's diligence, and we've got it on the screen
`behind you. I don't know if you can see that on your
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`computers or not.
` JUDGE KAISER: Yes.
` MR. GRIGGS: If you look here, and then if you
`also look at Exhibit 2013, and as you can see, in the first
`box in the chart, Patent Owner is relying on Exhibit 2013 as
`saying that testing was being conducted, and that's also
`followed in this email. So Patent Owner is relying on this
`email as one example of evidence that testing of the PDM was
`being conducted at a certain time.
` As another example, Exhibit 2014, which is a
`design drawing, Patent Owner refers to this as showing an
`embodiment that was being developed at that time.
` JUDGE BISK: Can you cite what exhibit number
`this is?
` MR. GRIGGS: Yeah, this is Exhibit 2014.
` JUDGE BISK: Thank you.
` JUDGE ZECHER: Can you address Patent Owner's
`argument that essentially these exhibits go more to the
`conception issue rather than exactly what they state or show?
`Because I think that's their argument that it doesn't,
`because there's this exception, because they're in the record
`for an issue apart from the hearsay issue to show this
`conception, that we shouldn't consider this as hearsay.
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` MR. GRIGGS: And that's sort of a complicated
`question and it may require us to get into the specifics of
`the exhibits themselves because, for example, when you review
`many of these emails, there are comments in there where Tyco,
`Mr. Janisch is acknowledging that Tyco has provided
`recommendations as to a design or that Tyco has provided
`design proposals, and these are consistent statements that
`appear throughout these emails. And it doesn't so much
`pertain to the hearsay issue as it just simply is not
`evidence that Janisch conceived of these things, so I
`guess --
` JUDGE ZECHER: Well, I mean that kind of makes
`my point. I mean we're talking more about conception than we
`are hearsay.
` MR. GRIGGS: Yes, and what I'm referring to
`now is practice of diligence. So, you know, perhaps it may
`be admissible, you know, to support Patent Owner's attempt to
`show conception, but it should not be admissible for Patent
`Owner's attempt to rely on that to show diligence.
` JUDGE ZECHER: So that's still a separate
`issue because now we're talking about whether or not they
`were diligent during the entire appeal here as opposed to
`whether or not we should find that these are hearsay
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`statements.
` MR. GRIGGS: Sure. And Patent Owner may be
`relying on these for two different purposes. And what I'm
`trying to say is that when Patent Owner relies on it for the
`purpose of establishing diligence, that is a hearsay
`statement when Patent Owner, for example, is relying on this
`drawing that's dated to say this drawing shows that this
`design was being developed at this time shown in this
`drawing.
` And again this is another good example.
`Patent Owner also relies on this as evidence of Mr. Janisch's
`conception, but what is shown in this document is a Tyco
`drawing, and so that circles back to the point that I was
`making before is how does a Tyco drawing show that
`Mr. Janisch conceived of what is shown in that drawing?
` JUDGE KAISER: Counsel, I think really what
`you're getting to, though, is the appearance of what, the
`sufficiency of the evidence of conception or reduction of
`practice in this case. So maybe we could sort of start there
`and talk about what your arguments are that that evidence is
`sufficient.
` MR. GRIGGS: Sure. So with respect to
`conception, there is no evidence in the record showing that
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`Mr. Janisch independently conceived of this. As the Board is
`probably aware, there was a collaborative effort in
`developing this device. Patent Owner Arctic Cat was working
`with Tyco to develop the device that's shown on the screen
`right now, and it's Mr. Janisch's testimony that he conceived
`entirely of the device that's shown on the screen right now.
`However, as the Board is well aware, inventor testimony
`alone, such as what Mr. Janisch has presented, is not
`sufficient to establish conception.
` JUDGE KAISER: Counsel, what about the
`additional declarations from, I believe, Mr. Kalsnes and
`Mr. Christianson that are provided to corroborate his
`conception testimony?
` MR. GRIGGS: I don't believe those -- well,
`first of all, they're made by two employees of the Patent
`Owner, so you have to question the reliability of those
`statements as interested witnesses. Second, those statements
`basically just recite the legal standard that Mr. Janisch
`conceived of this. There are no surrounding facts or
`specific circumstances indicating what Mr. Janisch had
`conceived or when he did it.
` For example, if you look at their
`declarations -- I'll see if I can find it quickly --
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`Mr. Janisch, Mr. Kalsnes and Mr. Christianson each state
`three different things as to when, the time frame for when
`this technology was being developed. One of them says as
`early as 1999, another says as early as 2001, and the third
`says as early as 2000, and that's as specific as they get and
`it's not consistent with one another.
` JUDGE KAISER: They all put it before 2002,
`correct, before April 2002?
` MR. GRIGGS: They do put it before April 2002.
`However, part of my point is that there is nothing in the
`record that evidences that Mr. Janisch conceived of this
`prior to the collaboration with Tyco, which began in May of
`2001, other than perhaps this vague testimony from his
`coworkers, who say a couple of conclusory sentences such as,
`"I observed Mr. Janisch developing the PDM." And that is not
`the type of, that does not satisfy the level of corroboration
`that's required in order to prove a conception date.
` Again, I would like to get into the evidence
`that Patent Owner is relying on as evidence of conception.
`And just as a reminder, the standard for conception:
`Conception must be proved by corroborating evidence, which
`shows that the inventor disclosed to others his completed
`thought, expressed in such clear terms as to enable those
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`skilled in the art to make the invention.
` So, again, that sort of ties back to those
`declarations. Neither Mr. Kalsnes or Mr. Christianson
`provide the level of detail to show that Mr. Janisch conveyed
`to them, or anybody else, disclosures sufficient to enable
`someone else to practice the invention.
` So I would first like to look at Exhibit 2004,
`and this relates back to what I was saying earlier. Patent
`Owner relies on Exhibit 2004 as evidence of Mr. Janisch's
`conception. If you look at the first sentence in the second
`paragraph, Mr. Janisch says, "We have received your Tyco
`recommendations and part numbers for the terminal seals and
`plugs." So here what the record evidence text is showing is
`that Tyco is providing design recommendations and component
`recommendations; it's not flowing the other way. This is not
`Mr. Janisch providing design aspects to Tyco; it's the other
`way. And you'll notice this is a pattern throughout all of
`these emails.
` If you look at Exhibit 2007, which is another
`email, right near the bottom, basically the last,
`second-to-the-last sentence, this is again Mr. Janisch
`emailing a Tyco employee saying, "Thank you for the emailed
`design proposals for the ATV PCM." Again, Patent Owner is
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`relying on this email as evidence of Mr. Janisch's conception
`of various components, but what the evidence actually is
`showing is that Mr. Janisch is thanking Tyco for providing
`design proposals. So this is not evidence of Mr. Janisch's
`conception.
` Another email, Exhibit 2005, in the first
`sentence it says, and again this is Mr. Janisch in this
`instance emailing Ken Boyd, Mr. Boyd, who is the named
`inventor of the Boyd patent, if you look at the first
`sentence, it says, "When Dan Hissick was here on June 20th,
`2001, he gave me your," i.e., Mr. Boyd's, "updated design
`sketches." So what this email shows is that Mr. Boyd
`conveyed design sketches to Mr. Janisch.
` In the next paragraph Mr. Janisch asks, or
`says, "I have a few questions or comments about your latest
`proposal." So, again, Mr. Janisch is acknowledging that it
`is Mr. Boyd who is providing the design proposals to Tyco --
`or to the Patent Owner, yet Patent Owner is identifying this
`as evidence of Mr. Janisch's conception. This is not
`evidence of Mr. Janisch's conception.
` JUDGE ZECHER: So, Counselor, effectively
`you're arguing that Tyco and Boyd helped Janisch conceive of
`the invention but that he alone did not conceive the
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`invention? There's insufficient evidence in the record to
`demonstrate that?
` MR. GRIGGS: Yes, exactly. And it is
`Mr. Janisch's position, and he submitted his declaration
`saying, and they dedicate a lot of their brief saying:
`Everything in Boyd was mine, I conceived of that, I am
`responsible for this. And the evidence is directly to the
`contrary. What the evidence shows is that Tyco was
`responsible for making the recommendations and the design
`proposals and providing the sketches.
` And we were looking at Exhibit 2014, I
`believe, before, which was a Tyco design sketch. The only,
`the only design drawings, the three design drawings in the
`record are all Tyco documents. There's not a single Arctic
`Cat document showing any design by Mr. Janisch.
` JUDGE ZECHER: Okay, I think we understand
`your position in that regard. But let's assume that Janisch
`did conceive of the invention. Now my understanding is the
`critical date starts from April 1st, 2002 to October 29th,
`2002, is that correct?
` MR. GRIGGS: Yes, that's the critical period.
` JUDGE ZECHER: So can you speak more to the
`diligence issue now?
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` MR. GRIGGS: Certainly. I think we laid this
`out in our papers. And there are many, many gaps, and we've
`actually put together --
` You can put up our demonstrative exhibit.
` And so what this exhibit shows, the green
`circles represent the dates corresponding to the evidence
`that Patent Owner has submitted, and the X's are the dates
`showing the time in between, and the entire span is the span
`through which they need to show continuous reasonable
`diligence.
` And from the 10,000-foot view, there are just
`far too many unexplained gaps, very large, unexplained gaps,
`and I would like to walk through the record a little bit on
`this.
` JUDGE KAISER: Counsel, before you do, maybe
`looking at that sort of 10,000-foot view, I know one of the
`cases that Patent Owner points us to is the Federal Circuit
`case of Perfect Surgical. How, if at all, do you think that
`case affects how we analyze gaps in corroboration of
`diligence?
` MR. GRIGGS: Thank you for bringing that up.
`The Perfect Surgical case I think is pretty informative and
`instructive here, and what the case does not do is you're not
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`required, for example, to have a document corresponding to
`every red X on the chart. I think that's pretty well-settled
`and Perfect Surgical acknowledges that. However -- and in
`Perfect Surgical, you look at it through a rule of reason,
`you know, what does the evidence collectively show.
` And, again, in that case, and just in terms of
`the posture of that case, what happened there is that case
`was ultimately remanded, so the Federal Circuit did not make
`a determination that that fact scenario did constitute
`diligence sufficient to swear behind the reference. What
`they were asking, or what they were remanding to the Board
`was to take another look at the evidence because the Board
`had disregarded certain evidence.
` If you're familiar with the fact pattern of
`that case, that actually did not relate to actual reduction of
`practice. It was diligence and constructive. And so that
`related to a doctor who was working with his patent attorney
`to draft a patent application, and one of the main points of
`distinction between that case and this case is continuity of
`the evidence. And when you look in the Perfect Surgical
`case, there was a very linear and continuous narrative that
`was put together by the evidence of that case. And here,
`which is what I was about to get into, there is no such
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`continuity.
` So if we can turn to page 19, and this is
`Mr. Janisch's declaration --
` JUDGE KAISER: Page 19 or paragraph 19?
` MR. GRIGGS: I believe it's page 19. And this
`is --
` JUDGE KAISER: I think it's both actually.
` MR. GRIGGS: Well, that's coincidental. And
`so what this is is this is the purported diligence chart that
`Patent Owner has submitted. And so I would like to step
`through some of these so I can demonstrate the lack of
`continuity in the evidence.
` So if you look at Exhibit 2016, this is an
`email from Mr. Janisch to a Tyco employee that indicates that
`Patent Owner was going to provide some components so that
`Tyco could test, some testing that isn't identified or
`specified in this email, and this email is dated May 17th,
`2002. So, again, the critical period is beginning April 1st,
`2002. So this is one of the pieces of evidence that they're
`attempting to rely upon to show that testing was being
`conducted.
` And this email is actually on the back end, if
`you also look at Exhibit 2014, which is -- I'm sorry -- 2015,
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`which is an April 29th, 2002 email. Now this email
`references heat testing. And so what we have here in the
`timeline is -- I'm sorry, I did this in a bit of a reverse
`order -- but this is one of the first points on the diligence
`timeline, and this email is discussing heat testing. The
`other email is talking about Arctic Cat Patent Owner
`providing various components for some other type of testing.
` Mr. Janisch attempts to fill in this gap by
`testifying that Tyco was diligently testing, you know,
`testing the product during this time frame, but there's no
`correlation between these two emails. Like I said, there's
`just no continuity. Mr. Janisch doesn't explain what type of
`testing is being referenced in this email and there's no
`evidence in the record explaining what was going on during
`the time between these two emails.
` JUDGE BISK: Between the two emails, you're
`talking about the April 29th and the May 17th?
` MR. GRIGGS: Yes. Because what Patent Owner
`has basically done here is just collected sort of unrelated
`emails and other documents and tried to string them out in a
`timeline. And going back to the Perfect Surgical case, you
`know, there's continuity and there's a narrative that made
`sense under, or might make sense under a rule of reason. But
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`here, as I'm trying to demonstrate and as I walk through
`this, you will see that none of these emails in this timeline
`as we walk through it have anything to do with the previous.
` JUDGE KAISER: So what you're saying is, for
`example, in Exhibit 2015 it talks about preliminary heat rise
`test and the results, which we don't have, I believe, the
`attachment for that. In 2016 it talks about testing, but
`it's your position it's unclear whether it's the same
`testing, different testing, et cetera?
` JUDGE BRADEN:1 You have ten minutes left
`before you start going into rebuttal time.
` MR. GRIGGS: Thank you.
` And then again if we pull up Exhibit 2019, and
`so this is the next entry in the timeline after that May 21,
`2002 email, and Exhibit 2019 is an email about making a
`material change; in other words, changing the material that
`the PDM is made out of. Again, there's no apparent
`connection between the heat testing, the other unidentified
`testing and this email discussing changing the material. And
`again there is --
` JUDGE BISK: I guess I'm not following your
`
`1 Although Judge Georgianna Braden is an Administrative Patent Judge, she
`participated solely in the role of moderator and is not part of the panel
`assigned to this case.
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`Case IPR2016-01388 (Patent 7,420,822 B2)
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`argument here. So why does it matter? It seems like the
`picture that these are showing is that they're all talking
`about testing of the PDM of some sort, and why do we have to
`know how each of the emails relates to each other?
` MR. GRIGGS: Well, I think it goes back, if
`you look at the Gould case for example, you need to know what
`happened and when it happened. You need at least some
`explanation, and there's neither any testimony about what is
`going on in between these emails and, or any other documents,
`for example, test results showing the test schedule or
`something like that. Because, again, you need to have
`evidence to determine whether or not Patent Owner was
`continuously, they exercised continuous reasonable diligence.
` JUDGE BISK: I think actually that changed,
`and if you might just help us, give us an idea of what you
`think is the change. It went from "continuously reasonable
`diligence" to "reasonably continuous."
` MR. GRIGGS: That's what I'm trying to say
`because I understand that that's the standard. So I
`apologize if I said it wrong.
` JUDGE BISK: So what's the difference?
` JUDGE ZECHER: That's my question. What's the
`difference between "continuously exercising reasonable
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`diligence" and "reasonably continuous diligence"?
` MR. GRIGGS: And again I think, I don't --
`maybe it's a distinction without a difference. Because what
`the law says is you need to demonstrate that they were
`exercising reasonable diligence during this time, these time
`periods. And again I think it's also clear you don't need to
`be working on it every single day of the time period. But
`what I was trying to say before was you need to be able to
`apply the rule of reason to the evidence and say it was
`reasonable for the test, this test to occur over this amount
`of time. Does that heat test take an hour? Does it take
`half a day? Does it take a week? There is nothing in the
`record that, allowing the Board to make a determination that
`this was reasonable diligence here.
` JUDGE KAISER: Isn't the bottom line, though,
`that we're looking at all these emails as a whole and saying
`do they support the inventor's testimony and do they show
`that he was, he was being diligent in his efforts to reduce
`his invention to practice rather than abandoning or
`unreasonably delaying? I mean aren't we really taking a
`holistic approach, as Judge Bisk was saying, and not just
`looking to see how the emails match up and do they,
`themselves, tell a story? It's do they tell enough of a
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`story to corroborate what the inventor is saying?
` MR. GRIGGS: That's exactly right, and my
`point is they do not tell enough of a story and Mr. Janisch
`also does not provide enough information. If you read his
`declaration testimony, again all -- and it's up on the screen
`right there. For example, on the first box he says, "I
`continue to work diligently on developing the PDM both
`internally and" -- but he says, "I continue to work
`diligently on developing the PDM." And that's basically just
`reciting the legal standard, what the law requires. For
`example, the Gould case, that involved the laser where the
`inventor said, well, I was working on the laser, I was
`working on the laser, you know, I can't remember a day when I
`wasn't working on the laser. And the Court said you need
`more specific facts to identify what you were doing and when
`you were doing it. For example, is this Mr. Janisch's only
`project during this time or was he working on other projects?
` JUDGE BRADEN: Five minutes.
` MR. GRIGGS: Thank you.
` And you know it's the same -- that correlates
`to the testing, which was done by a third party outside of
`Mr. Janisch's control. Was it reasonable for them to conduct
`the testing over that time frame? Like I said, was it a
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`one-hour test or was it a two-week test? There's just
`absolutely no indication in the record on which the Board can
`determine whether the testing was done with reasonable
`diligence.
` JUDGE BISK: I have one more question about a
`different case. It's another recent case from the Federal
`Circuit called MSB Technology. It's very recent so I'm not
`sure if you're familiar with it.
` MR. GRIGGS: Okay.
` JUDGE BISK: But in that case, the issue of
`how much documentation and how much explanation you need
`from, say, in this case I believe it was 20 years ago, what
`do you, what can you expect. And in this case they said
`basically that -- how did they put it -- in this case it was
`evidence of conception, not diligence, but they said, "In the
`face of approximately ten years" -- oh, I'm sorry, that's
`different. "Here, however, the account of a period of a few
`months nearly 20 years ago is supported by documentary
`evidence," and basically saying you don't have to have
`perfect recall and you don't have to have every document;
`this was 20 years ago, we don't expect everybody to have kept
`all of that material. But you're saying even with that long
`time ago and even though this is really only over a few
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`months, that there's not enough here?
` MR. GRIGGS: That is precisely our position.
`You know, there is an amount that you need and they have not
`met that amount, as I've been saying. The timeline, I
`understand you consider the entire context of it, but it's
`very disjointed and it's not a continuous narrative. Like
`here we were doing the heat testing, here we were considering
`what materials to use, you know, so on and so forth, and
`filling in these gaps with at least testimony from
`Mr. Janisch explaining.
` I think it's also somewhat telling that there
`are no declarations or any testimony from anyone at Tyco
`who -- that's the other side of the coin here. They would be
`in a position possibly to explain, you know, these were the
`tests that were conducted, you know, here's records of our
`testing schedule from them, or these types of tests typically
`take this long. There is no evidence to that. And you can't
`remedy that lack of evidence by simply saying, as Mr. Janisch
`does, Tyco was diligently testing during this time. That is
`not, that does not remedy the lack of evidence. It's the
`other way. You need the evidence to show that Tyco was
`diligently testing, as Mr. Janisch is asserting, and they
`don't have that other than emails that span months in some
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`Case IPR2016-01388 (Patent 7,420,822 B2)
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`instances.
` I guess maybe to close the loop on this,
`because I think the last, the last entry in, the last two
`data points in this timeline, again just sort of to
`illustrate my point here, so if you look at Exhibit 2021 and
`then Exhibit 2022. Yeah, 2022. So these are the last two
`data points. Exhibit 2021 is an August 16th, 2002 email, and
`the title of it is basically "Design Objective," and again,
`again this is what I was discussing before. Mr. Janisch is
`thanking Tyco for the PDM product specifications and design
`objectives. So, again, Tyco was providing these
`specifications and objectives, design objectives to the
`Patent Owner.
` The next entry in the timeline is
`Exhibit 2022, which is a quote from Tyco to Patent Owner, and
`this quote is dated October 18th, 2002, so that's about two
`months later, and again it goes back to the continuity. How
`do you go from Tyco sending updated design objectives to Tyco
`sending a quote two months later, and Mr. Janisch saying,
`well, Tyco was diligently working on this in between.
` JUDGE BRADEN: 30 minutes.
` MR. GRIGGS: Thank you.
` JUDGE BRADEN: Just so you know, I'll give you
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`Case IPR2016-01388 (Patent 7,420,822 B2)
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`a five-minute warning before you reach the end.
` MR. JACKSON: Thank you.
` JUDGE KAISER: Whenever you're ready, Counsel.
` MR. JACKSON: Your Honors, if it will please
`the Court, I'm Jason Jackson on behalf of Patent Owner Arctic
`Cat, and we seem to be having some technical difficulties.
`You each have copies of our slide presentation so I will be
`sure to refer to the slide
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