UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`KAWASAKI RAIL CAR, INC.
`Petitioner,
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`v.
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`SCOTT BLAIR,
`Patent Owner.
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`Case No. IPR2017-00117
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`Patent No. 6,700,602
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`Issue Date: March 2, 2004
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`Title: Subway TV Media System
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`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`KAWASAKI RAIL CAR, INC.
`Petitioner,
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`v.
`
`SCOTT BLAIR,
`Patent Owner.
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`
`
`
`Case No. IPR2017-00117
`
`Patent No. 6,700,602
`
`Issue Date: March 2, 2004
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`Title: Subway TV Media System
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`
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`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
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`I.
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`II.
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`TABLE OF CONTENTS
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`INTRODUCTION .......................................................................................... 1
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`ARGUMENT .................................................................................................. 1
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`A.
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`B.
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`PO-8 Should Be Excluded Because It Was Not Timely
`Disclosed and Goes Beyond the Scope of the Direct Testimony
`Set Forth in the Supplemental Declaration of Lowell Malo ................ 1
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`PO-8 Also Should Be Excluded on Relevance, Authenticity and
`Hearsay Grounds .................................................................................. 5
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`III. CONCLUSION ............................................................................................... 8
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`CERTIFICATE OF SERVICE ............................................................................... 10
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`- i -
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`I.
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`INTRODUCTION
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`Pursuant to 37 C.F.R. § 42.64(c), Petitioner Kawasaki Rail Car, Inc. moves
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`to exclude an inadmissible four-page exhibit (Ex. 2006-325-328, marked as PO-8
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`(“PO-8”)) that Patent Owner attempted to introduce for the first time on November
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`28, 2017 at the deposition of Petitioner’s expert, Lowell Malo. In addition to
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`objections made at the deposition relating to that particular line of questioning (Ex.
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`2006-99, at 88:3-4), Petitioner, on November 29, 2017, timely served Patent
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`Owner via email with objections to the admissibility of PO-8 pursuant to §
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`42.64(b)(1). Ex. 1029. Patent Owner’s new exhibit (PO-8) is an attempt to
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`introduce new evidence that Patent Owner failed to raise in its Patent Owner
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`Response by using Mr. Malo’s deposition as a vehicle to circumvent the Board’s
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`rules.
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`As explained below, the exhibit should be excluded because Patent Owner
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`failed to disclose it in a timely manner, because it goes beyond the scope of direct
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`testimony in Petitioner’s expert’s reply declaration, and also on relevance,
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`authenticity and hearsay grounds.
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`II. ARGUMENT
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`A.
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`PO-8 Should Be Excluded Because It Was Not Timely Disclosed
`and Goes Beyond the Scope of the Direct Testimony Set Forth in
`the Supplemental Declaration of Lowell Malo
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`PO-8 should be excluded because it is untimely under the Board’s rules.
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`Patent Owner did not submit this exhibit in support of its Patent Owner’s
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`- 1 -
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`Preliminary Response (Paper No. 6) or Patent Owner Response (Paper No. 13).
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`Patent Owner instead attempted to introduce it during the deposition of Petitioner’s
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`expert, and now attempts to move this exhibit into evidence through a post-reply
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`deposition of Mr. Malo and observations on cross-examination regarding that
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`deposition. This is improper.
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`According to 37 C.F.R. § 42.53(5)(ii), the scope of cross-examination
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`testimony “is limited to the scope of the direct testimony.” For cross-examination
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`testimony relating to a reply witness, the scope of the examination is limited to the
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`scope of the direct testimony of the reply witness, which is the witness’s
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`declaration submitted in support of the reply.
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`In this regard, the Office Trial Practice Guide has recognized two discovery
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`periods for a patent owner. The first discovery period begins after the institution
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`decision but ends before the patent owner files its response. Office Trial Practice
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`Guide, 77 Fed. Reg. 48757-8 (Aug. 14, 2012). In cases where patent owner is not
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`seeking to amend the claims, the second discovery period takes place after the
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`petitioner’s reply to the patent owner’s response. Id. Patent owner can cross-
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`examine a reply witness in the second discovery period, but any such cross-
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`examination testimony can be called to the Board’s attention only by filing a
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`motion for observation. Id. at 78767-8. Moreover, the scope of any such
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`observation is limited to the testimony concerning petitioner’s reply to the patent
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`owner’s response. Respironics, Inc. v. Zoll Medical Corp., IPR2013-00322, Paper
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`26 at 4 (PTAB May 7, 2014). “It is improper to introduce issues into the
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`proceeding that could have been presented during the first discovery period after
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`Petitioner’s Reply has been filed.” American Express Co. v. MetaSearch Systems,
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`LLC, CBM2014-00001, Paper. No. 70 at 27-28 (PTAB Mar. 13, 2015) (citing
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`Respironics, at 4). Otherwise, Patent Owner may improperly “defer deposing [the
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`witness] until after filing the Patent Owner Response in an attempt to introduce
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`new issues into the proceeding after Patent Owner’s response period and after first
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`discovery period had concluded.” Respironics, at 4. This is precisely what Patent
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`Owner has done here.
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`Both the Petition and the original supporting declaration of Petitioner’s
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`expert, Lowell Malo (Ex. 1014), identified the prior art and the proposed
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`regulations from the Federal Railroad Administration (“FRA”), as well as other
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`information, as material that would have been known to one of ordinary skill in the
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`art at the time of the alleged invention. In its Preliminary Response filed on
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`February 6, 2017 (Paper No. 6) and Patent Owner Response filed on August 7,
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`2017 (Paper No. 13), and the accompanying declarations of Patent Owner’s expert,
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`Jack Long (Exs. 2002 and 2004), Patent Owner never raised ventilation or fire
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`safety as an issue to be addressed in this proceeding. Patent Owner also chose not
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`to take the deposition of Petitioner’s expert with respect to his original declaration
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`(Ex. 1014) prior to filing the Patent Owner Response.
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`After Petitioner filed its Reply (Paper No. 17), along with a supplemental
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`declaration of Lowell Malo (Ex. 1025) that directly addressed points actually
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`raised in Patent Owner’s Response, Patent Owner asked to depose Mr. Malo. The
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`deposition occurred on November 28, 2017. PO-8, the exhibit being challenged,
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`does not relate to the points that were actually addressed in Mr. Malo’s
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`supplemental declaration, namely: (i) the existence of a cavity between the interior
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`wall and exterior shell of railcars, including the existence of such a cavity in
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`Namikawa; (ii) the types of display devices to which Sasao is directed; (iii) the
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`position of Namikawa’s screens at the junction; (iv) the ability of one of skill in the
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`art to modify the shape of the junction as needed; (v) the knowledge of one of skill
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`in the art relating to systems for mounting televisions in subway cars, including
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`mounting to structural members in the cavity; and (v) the definition of “interior
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`fitting” in the FRA regulations.
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`If Patent Owner deems PO-8 relevant to the arguments made in the Petition
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`and the original declaration of Mr. Malo, as it states in its Motion for Observation
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`(Paper No. 22),1 Patent Owner should have submitted it earlier in this proceeding.
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`1 For example, Patent Owner asserts that testimony relating to PO-8 is relevant to
`paragraph 38 of Mr. Malo’s original declaration (Exhibit 1014). See Paper No. 22
`at ¶ 6. Patent Owner’s arguments relating to fire safety and ventilation in
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`For example, Patent Owner could have submitted this exhibit with his Response or
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`even Preliminary Response. Indeed, in the Scheduling Order, the Board
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`specifically cautioned Patent Owner “that any argument for patentability not raised
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`in the [Patent Owner] response will be deemed waived.” See Paper No. 12 at 3.
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`Yet, Patent Owner is attempting to introduce this exhibit and new arguments after
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`Petitioner submitted its last substantive paper. Petitioner is prejudiced by the
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`belated introduction of this exhibit and the newly presented arguments relating to
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`the same because Petitioner does not have any additional opportunity to respond.
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`See Order – Conduct of Proceeding, Paper 19 at 2 (“[I]t is the petitioner, under the
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`applicable rules governing inter partes review, who bears the burden of proof and
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`who makes the last submission to the panel.”). Accordingly, PO-8 should be
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`excluded for being untimely under the Board’s rules and for exceeding the scope of
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`direct testimony in Petitioner’s expert’s reply declaration.
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`B.
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`PO-8 Also Should Be Excluded on Relevance, Authenticity and
`Hearsay Grounds
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`In addition to the procedural impropriety of Patent Owner’s attempt to
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`belatedly introduce PO-8, the exhibit also should be excluded for lack of relevance
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`under Fed. R. Evid. 401 because it does not tend to make the statements it is
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`paragraphs 3-5 and 7-10 in Paper No. 22 also allegedly relate to the Petition and
`Mr. Malo’s original declaration, and are thus similarly untimely.
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`- 5 -
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`offered to prove more probable.
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`PO-8 was purportedly released on June 1, 1974. However, the patent at
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`issue was filed almost 23 years after the issue date of this communication. Since
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`1974, LCD televisions have been introduced that generate significantly less heat
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`than their CRT counterparts. Both Namikawa, the primary reference relied on by
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`Petitioner, and challenged claim 6, relate to LCD televisions. Because LCD
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`televisions did not even exist at the time of the purported Consumer Product Safety
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`Commission communication marked as PO-8, the exhibit should be excluded
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`because it does not make more probable Patent Owner’s arguments about alleged
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`fire safety issues relating to combinations of prior art references with Namikawa’s
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`LCD televisions.
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`Additionally, PO-8 should be excluded because it has not been properly
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`authenticated under Fed. R. Evid. 901(a).
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`To properly authenticate an item of evidence, “the proponent must produce
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`evidence sufficient to support a finding that the item is what the proponent claims
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`it to be.” Fed. R. Evid. 901(a). Patent Owner has not provided any evidence to
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`authenticate this exhibit. Nor has Patent Owner established that this exhibit is self-
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`authenticating under Fed. R. Evid. 902.
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`Furthermore, PO-8 should be excluded because it contains inadmissible
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`hearsay under Fed. R. Evid. 802.
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`Patent Owner apparently intends to support various arguments relating to
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`ventilation and fire safety based on the statements in PO-8. Therefore, this exhibit
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`is being offered to prove the truth of a statement that appears in it, and thus,
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`constitutes hearsay. Fed. R. Evid. 801(c)(2); see also United States v. Jackson,
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`208 F.3d 633, 637 (7th Cir. 2000) (finding web postings from the Internet to be
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`inadmissible hearsay); St. Clairv. Johnny’s Oyster & Shrimp, Inc., 76 F. Supp. 2d
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`773, 775 (S.D. Tex. 1999) (“[A]ny evidence procured off the Internet is adequate
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`for almost nothing, even under the most liberal interpretation of the hearsay
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`exception rules . . . .”).
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`No hearsay exception applies. For example, the public records exception of
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`Fed. R. Evid. 803(8) does not apply as Patent Owner has failed to establish any
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`information “about the circumstances under which the documents were created, the
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`duty of the authors to prepare such documents, the procedures and methods used to
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`reach the stated conclusions, and … the identities of the authors.” See, e.g., United
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`States v. El-Mezain, 664 F.3d 467, 499 (5th Cir. 2011), as revised (Dec. 27, 2011).
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`Similarly, the ancient documents exception, Fed. R. Evid. 803(16), does not apply
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`as this exception requires that authenticity be established under Fed. R. Evid.
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`901(b)(8), which Patent Owner has failed to do. Among other things, Fed. R.
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`Evid. 901(b)(8) requires that the proponent produce evidence that the document
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`“was in a place where, if authentic, it would likely be.” However, Patent Owner
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`has not produced any evidence of where this exhibit was located. Therefore, PO-8
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`has not been authenticated under this sub-paragraph of rule 901.
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`III. CONCLUSION
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`For the reasons stated above, PO-8 should be excluded as untimely under the
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`Board’s procedural rules, and also excluded under Fed. R. Evid. 401, 802 and
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`901(a).
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`Dated: December 22, 2017
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`Respectfully submitted,
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`/s/ Sheila Mortazavi
`Sheila Mortazavi (Reg. No. 43,343)
` Lead Counsel
`Zaed M. Billah (Reg. No. 71,418)
` Backup Counsel
`Armin Ghiam (Reg. No. 72,717)
` Backup Counsel
`Andrews Kurth Kenyon LLP
`One Broadway
`New York, NY 10004
`Telephone: (212) 425-7200
`Fax: (212) 425-5288
`Email:
`SheilaMortazavi@andrewskurthkenyon.com
`ZaedBillah@andrewskurthkenyon.com
`ArminGhiam@andrewskurthkenyon.com
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that on December 22, 2017, a complete and entire
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`copy of this PETITIONER’S MOTION TO EXCLUDE EVIDENCE and
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`EXHIBIT 1029 were served via e-mail on the following:
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`Jennifer Meredith
`jmeredith@meredithkeyhani.com
`205 Main Street
`East Aurora, New York 14052
`Tel: (212) 760-0098
`Fax: (212) 202-3819
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`Respectfully submitted,
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`/s/ Armin Ghiam
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`Armin Ghiam
`ANDREWS KURTH KENYON LLP
`One Broadway
`New York, NY 10004
`Telephone: (212) 425-7200
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`- 10 -
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