UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Duk San Neolux Co., Ltd.,
`Petitioner,
`
`v.
`
`Idemitsu Kosan Co., Ltd.,
`Patent Owner
`
`CASE IPR2016-00148
`
`Patent No. 9,056,870
`
`PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE
`
`Date: January 20, 2017
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark
`Office P. O. Box 1450
`Alexandria, VA 22313-1450
`
`Idemitsu Ex. 2005, pg. 1
`IPR2017-00197
`DukSan v Idemitsu
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Duk San Neolux Co., Ltd.,
`Petitioner,
`
`v.
`
`Idemitsu Kosan Co., Ltd.,
`Patent Owner
`
`CASE IPR2016-00148
`
`Patent No. 9,056,870
`
`PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE
`
`Date: January 20, 2017
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark
`Office P. O. Box 1450
`Alexandria, VA 22313-1450
`
`Idemitsu Ex. 2005, pg. 1
`IPR2017-00197
`DukSan v Idemitsu
`
`
`
`Opposition to Motion to Exclude Evidence
`Case IPR2016-00148
`U.S. Patent No. 9,056,870
`
`I.
`
`Introduction
`
`Eschewing the opportunity to substantively respond through normal
`
`channels to evidence submitted by Petitioner in its Reply (Paper 17), Patent Owner
`
`(“PO”) has instead filed a Motion to Exclude Evidence (“the Motion”) (Paper 26)
`
`that seeks to bar any consideration of the evidence by the Board. PO’s Motion,
`
`however,
`
`lacks merit as it conflates the proper legal standard for excluding
`
`evidence with an attempt to rebut the substance of the evidence
`
`Each of the Exhibits that PO desires excluded, i.e., Exhibits 1028, 1029,
`
`1030, 1031, 1032, and portions of Exhibit 1033, were properly introduced, as being
`
`responsive to assertions made by PO in its submissions to this Board or to merely
`
`provide evidence of the state of the art at the time of filing of U.S. Patent No.
`
`9,056,870. Accordingly, those exhibits are probative and admissible, and PO’s
`
`attempts to rebut their significance while arguing against their admission should be
`
`rejected. PO’s Motion to Exclude should therefore be denied.
`
`II.
`
`PO’s Motion to Exclude is Facially Improper and Amounts to an
`Unauthorized Sur-Reply
`As a threshold matter, motions to exclude in an inter partes review (IPR)
`
`proceeding are limited to issues of admissibility based on evidentiary rules. 37
`
`C.F.R. § 42.64; Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767
`
`(Aug. 14, 2012); Liberty Mutual Inc. Co. v. Progressive Casualty Inc. Co.,
`
`- 1 -
`
`Idemitsu Ex. 2005, pg. 2
`IPR2017-00197
`DukSan v Idemitsu
`
`
`
`Opposition to Motion to Exclude Evidence
`Case IPR2016-00148
`U.S. Patent No. 9,056,870
`
`CBM2012-00002, Paper 66 at 61 (PTAB Jan. 23, 2014). In fact, other panels of the
`
`Board have consistently held -- and admonished parties -- that a motion to exclude
`
`“is not an opportunity to file a sur-reply, and also is not a mechanism to argue
`
`that a reply contains new arguments or relies on evidence necessary to make out a
`
`prima facie case.” Liberty Mutual Inc., Paper 66 at 61-62; see also Google, Inc. v.
`
`Visual Real Estate, Inc., IPR2014-01339, Paper 39 at 37 (PTAB Jan. 25, 2016)
`
`(finding arguments were improperly raised in a motion to exclude)
`
`(emphasis
`
`added).
`
`In addition, as reiterated by the Board in Abb Inc. v. ROY-G-BIV Corp.,
`
`IPR2013-00074, “[a] motion to exclude evidence is not the proper vehicle for
`
`resolution of a dispute regarding reply arguments and evidence exceeding the
`
`proper scope of a reply…If an issue arises regarding whether a reply argument or
`
`evidence in support of a reply exceeds the scope of a proper reply, the parties
`
`should contact the Board to discuss the issue.” Abb Inc. v. ROY-G-BIV Corp.,
`
`IPR2013-00074, Paper 80 at 13-14 (PTAB Apr. 11, 2014) (emphasis added).
`
`In the present case, a conference was held with the Board on Friday,
`
`December 2, 2016 at 12:30 p.m. During the conference, PO’s representative
`
`moved to “strike in whole or in part the petitioner's reply or in the alternative at
`
`least the authorization to file a list or supply identifying the arguments that are
`
`- 2 -
`
`Idemitsu Ex. 2005, pg. 3
`IPR2017-00197
`DukSan v Idemitsu
`
`
`
`Opposition to Motion to Exclude Evidence
`Case IPR2016-00148
`U.S. Patent No. 9,056,870
`
`believed to not be proper replies.” See Ex. 2024 at page 4, lines 17-23. Pursuant
`
`to this request, the Board agreed to allow PO to submit a list, identifying by page
`
`and line number in the reply and in the declaration what it believes constituted new
`
`matter. Id. at page 8, lines 8-12. PO filed such a paper on December 9, 2016.
`
`Now, disregarding the applicable rules and prior Board decisions, PO is
`
`improperly using the Motion as a mechanism to argue that the Reply contains new
`
`arguments. PO outright states that “Exhibits 1028–1033 are submitted to support
`
`arguments beyond the proper scope of a Reply (37 C.F.R. § 42.23(b)) and therefore
`
`lack relevance (Fed. R. Evid. 402).” Motion, p. 4, last para. Prior to substantively
`
`attacking facts set forth in Exhibits 1028-1033, PO continues to argue that Ex 1033,
`
`in particular, is further irrelevant because it allegedly exceeds the scope of a proper
`
`reply.
`
`Regarding the improper use of the Motion as a sur-reply, Petitioner notes
`
`that PO presents substantive arguments in response to Petitioner’s Reply and
`
`supporting documents. For example, PO asserts that “Dr. Schwartz’s assertions
`
`with respect to oxidative stability are an attempt to confuse the issues.” Motion at
`
`p. 8, first full para.
`
`In addition, in the paragraph bridging pages 11 and 12, PO
`
`argues that:
`
`In ¶¶ 8, 11–13, 22, 28, 34, 37–40, 45–47, 49, 55, 58–60, 63–67, 69, 73,
`76, 78, and 80 of Exhibit 1033, Dr. Schwartz mischaracterizes the
`
`- 3 -
`
`Idemitsu Ex. 2005, pg. 4
`IPR2017-00197
`DukSan v Idemitsu
`
`
`
`Opposition to Motion to Exclude Evidence
`Case IPR2016-00148
`U.S. Patent No. 9,056,870
`
`the cited references. For
`teachings of
`instance, Dr. Schwartz
`mischaracterizes the disclosure of Heil, stating that “Heil’s broadest
`statement could be B, C, Si, O, S, N and P (6:18-21).” Ex. 1033, ¶ 28;
`see also id. at ¶ 34, 49, 55. Heil, however, sets for 14 different X
`groups, stating that “X is on each occurrence, identically or differently,
`a divalent bridge selected from B(R1), C(R1)2, Si(R1)2, C=O,
`C=NR1, C=C(R1)2, O, S, S=O, SO2, N(R1), P(R1), P(=O)R1,
`P(=S)R1 or a combination of 2, 3 or 4 of these systems.” Ex. 1015, at
`6:18–21.
`(Emphasis added.)
`
`In the paragraph immediately following the above, PO goes on to attack
`
`additional substance in Dr. Schwartz’s second declaration (Ex. 1033), asserting
`
`that Dr. Schwartz has mischaracterized the Kawaguchi reference as well.
`
`As noted in Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1079 (Fed. Cir.
`
`2015), “[i]f the petitioner submits a new expert declaration with its Reply, the
`
`patent owner can respond in multiple ways. It can cross-examine the expert and
`
`move to file observations on the cross-examination. It can move to exclude the
`
`declaration. It can dispute the substance of the declaration at oral hearing before
`
`the Board. It can move for permission to submit a surreply responding to the
`
`declaration's contents. And it can request that the Board waive or suspend a
`
`regulation that the patent owner believes impairs its opportunity to respond to the
`
`declaration. The options are not mutually exclusive.” Id at 1081.
`
`- 4 -
`
`Idemitsu Ex. 2005, pg. 5
`IPR2017-00197
`DukSan v Idemitsu
`
`
`
`Opposition to Motion to Exclude Evidence
`Case IPR2016-00148
`U.S. Patent No. 9,056,870
`
`Of the several options PO had to choose from, PO has only moved for
`
`exclusion of Ex. 1033. At no point during the present proceedings has PO sought
`
`authorization from the Board to file a sur-reply. Additionally, PO expressly
`
`declined the opportunity to cross-examine Dr. Schwartz.
`
`Interestingly, PO states
`
`that “[b]ecause of the Patent Owner’s inability to respond to the untimely evidence
`
`and arguments, Exhibits 1028–1033 are unfairly prejudicial (Fed. R. Evid. 403).”
`
`Motion at p. 5, first para. However, PO has had the opportunity to consider and
`
`respond to Petitioner’s Reply and related Exhibits.
`
`Instead of following well
`
`established procedure, for example, and seeking to file a sur-reply, PO is
`
`attempting to shoe-horn substantive arguments against the evidence of record in its
`
`Motion to Exclude.
`
`III. Exhibits 1028-1033 are Admissible
`
`A.
`
`Brief Summary of Relevant Legal Authority
`
`As unequivocally stated by the Federal Circuit in Genzyme Therapeutic
`
`Prods. L.P. v. Biomarin Pharm. Inc., 825 F.3d 1360 (Fed. Cir. 2016), “[t]he
`
`purpose of the trial in an inter partes review proceeding is to give the parties an
`
`opportunity to build a record by introducing evidence—not simply to weigh
`
`evidence of which the Board is already aware.”
`
`Id. at 1367. Moreover, “the
`
`introduction of new evidence in the course of the trial is to be expected in inter
`
`- 5 -
`
`Idemitsu Ex. 2005, pg. 6
`IPR2017-00197
`DukSan v Idemitsu
`
`
`
`Opposition to Motion to Exclude Evidence
`Case IPR2016-00148
`U.S. Patent No. 9,056,870
`
`partes review trial proceedings and, as long as the opposing party is given notice of
`
`the evidence and an opportunity to respond to it, the introduction of such evidence
`
`is perfectly permissible....”
`
`Id. at 1366.
`
`In addition, as stated by the Federal
`
`Circuit in the Belden case, “[e]vidence admitted in rebuttal to respond to the patent
`
`owner's criticisms will commonly confirm the prima facie case. That does not
`
`make it necessary to the prima facie case.” 805 F.3d 1064, 1079.
`
`In Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359 (Fed. Cir.
`
`2015), the court determined that it is improper for the Board to exclude an Exhibit
`
`that is provided as further evidence of the background knowledge that a POSITA
`
`would have possessed on the basis that it was not identified at the petition stage as
`
`one of the pieces of prior art defining a combination for obviousness. The court
`
`opined that “[a]rt can legitimately serve to document the knowledge that skilled
`
`artisans would bring to bear in reading the prior art identified as producing
`
`obviousness.”
`
`Id at 1365 (citation omitted). Likewise, the court in Genzyme
`
`Therapeutic stated that “[t]his court has made clear that the Board may consider a
`
`prior art reference to show the state of the art at the time of the invention,
`
`regardless of whether that reference was cited in the Board's institution decision.”
`
`825 F.3d at 1369.
`
`- 6 -
`
`Idemitsu Ex. 2005, pg. 7
`IPR2017-00197
`DukSan v Idemitsu
`
`
`
`Opposition to Motion to Exclude Evidence
`Case IPR2016-00148
`U.S. Patent No. 9,056,870
`
`B.
`
`Exhibits 1028-1033 Rebut Patent Owner’s Arguments or
`Demonstrate The Level of Skill In The Art
`
`Petitioner maintains that the basis for obviousness of the challenged claims
`
`has not deviated from the grounds acknowledged by this Board in its Institution
`
`Decision, which remain: (a) claims 1, 3, 4, and 14–26 are unpatentable as being
`
`obvious under 35 USC § 103(a) over Heil and Kawaguchi; (b) claims 1, 3, 4, 15,
`
`16, and 22–26 are unpatentable as being obvious under 35 USC § 103(a) over Kai
`
`and Kawaguchi; and (c) claim 21 is unpatentable as being obvious under 35 USC §
`
`103(a) over Kai, Kawaguchi, and Heil. Further, each of Exhibits 1028-1033 were
`
`properly submitted either in response to issues raised by PO in its Response or to
`
`establish the state of the art at the time of filing of U.S. Patent No. 9,056,870.
`
`Exhibits 1028 and 1029, which are the Toray reference, and an English
`
`Translation thereof, are cited by Petitioner as evidence of state of the art, e.g., that
`
`compounds having the same heteroacene backbone as Kawaguchi can be used as
`
`OLED materials. By providing evidence the state of the art at the time of filing,
`
`Toray merely confirms that, in fact, the subject matter described in Kawaguchi
`
`does also relate to OLED materials.
`
`In paragraphs 32-34 of Exhibit 2007, Dr. Anthony attempted to distinguish
`
`the teachings of Kawaguchi from Heil and Kai by implying that subject matter
`
`described in Kawaguchi only “relates to unsymmetrical heteroacenes for OFET
`
`- 7 -
`
`Idemitsu Ex. 2005, pg. 8
`IPR2017-00197
`DukSan v Idemitsu
`
`
`
`Opposition to Motion to Exclude Evidence
`Case IPR2016-00148
`U.S. Patent No. 9,056,870
`
`devices.” Ex. 2007 at para. 32. Dr. Anthony went on to state that “OLEDs and
`
`OFETs are fundamentally different devices with respect to charge transport, and
`
`even more so when considering the underlying organic semiconductor materials
`
`employed.” Id. at para. 34. By providing evidence of the state of the art at the
`
`time of filing, Toray merely confirms that, in fact, the subject matter described in
`
`Kawaguchi does also relate OLED materials.
`
`Exhibit 1030, the exact same exhibit submitted by PO as its Exhibit 2002, is
`
`also cited to establish the state of the art at the time of filing. Exhibit 1030 (or
`
`2002 if PO would prefer) provides ample evidence of the level of skill in the art at
`
`the time of filing of U.S. Patent No. 9,056,870 and is of additional probative value
`
`because it was initially cited by PO.
`
`Exhibit 1031 is a publication authored by PO’s expert witness and was
`
`initially identified by PO in Exhibit 2023, i.e., Dr. Anthony’s CV. Even though
`
`PO itself implicitly introduced this reference, it argues that it is not relevant to any
`
`ground upon which trial was instituted.
`
`Petitioner disagrees. Exhibit 1031
`
`provides evidence that methods of preventing pi-stacking were well known by the
`
`POSITA at the time of filing and is of additional probative value as it is from a
`
`reference authored by PO’s expert. Again, Exhibit 1031 is being relied upon as
`
`evidence of the level of skill in the art at the time of filing.
`
`- 8 -
`
`Idemitsu Ex. 2005, pg. 9
`IPR2017-00197
`DukSan v Idemitsu
`
`
`
`Opposition to Motion to Exclude Evidence
`Case IPR2016-00148
`U.S. Patent No. 9,056,870
`
`Regarding Exhibit 1032, this exhibit was also submitted to establish the
`
`level of skill in the art at the time of filing, as well as to rebut the assertions made
`
`by PO to the contrary. For example, at page 63 of PO’s Response, it is argued that
`
`the POSITA would not prefer N/O heteroatoms over the N/N heteroatoms taught
`
`by Heil and Kai for use in Kawaguchi because the consequences would outweigh
`
`the benefits. However, Exhibit 1032 provides evidence that Kawaguchi’s N/N
`
`type compound DPh-IC -- which has the same structure as compound 6 of Exhibit
`
`1032, and is only different from Kawaguchi’s new N/O type compound in that it
`
`has N-phenyl on the heteroacene core instead of O -- is a useful OLED material.
`
`Thus, Exhibit 1032 is merely cited to establish the state of the art.
`
`Exhibit 1033, Dr. Schwartz’s Supplemental Declaration, was submitted to
`
`respond to assertions made by PO in its Response, as well as to further establish
`
`the state of the art at the time of filing for U.S. Patent No. 9,056,870. The
`
`obviousness of the claims at issue continues to rest on the same combination of
`
`references cited in the Petition. Exhibit 1033 discusses and cites additional
`
`evidence that clearly shows the state of the art and what POSITA would have
`
`known at the time of IDKs invention.
`
`- 9 -
`
`Idemitsu Ex. 2005, pg. 10
`IPR2017-00197
`DukSan v Idemitsu
`
`
`
`Opposition to Motion to Exclude Evidence
`Case IPR2016-00148
`U.S. Patent No. 9,056,870
`
`C.
`
`Exhibits 1028–1033 are not Untimely, Irrelevant or Prejudicial
`
`As set forth above, Petitioner presented Exhibits 1028-1033 as evidence of
`
`the state of the art at the time of filing of Patent No. 9,056,870 and in direct
`
`response to assertions made by PO in the patent owner preliminary response, or
`
`patent owner response.
`
`37 C.F.R. § 42.23 provides, in relevant part, that “[a] reply may only
`
`respond to arguments raised in the corresponding opposition, patent owner
`
`preliminary response, or patent owner response.” Thus, it follows that evidence
`
`rebutting arguments made in a corresponding opposition, patent owner preliminary
`
`response, or patent owner response should be admissible, provided that, as the
`
`Genzyme court notes, “the opposing party is given notice of the evidence and an
`
`opportunity to respond to it.” 825 F.3d at 1366. In the present case, PO was given
`
`sufficient notice, and PO certainly had an opportunity to respond to it, e.g., by
`
`motioning for a sur-reply or deposing Dr. Schwartz. In fact, PO had and continues
`
`to have the opportunity to respond to Exhibits 1028-1033 inasmuch as PO may still
`
`dispute the substance of
`
`the evidence at oral hearing before the Board.
`
`Accordingly, Petitioner maintains that Exhibits 1028-1033 are admissible in these
`
`proceedings and should not be excluded.
`
`- 10 -
`
`Idemitsu Ex. 2005, pg. 11
`IPR2017-00197
`DukSan v Idemitsu
`
`
`
`Opposition to Motion to Exclude Evidence
`Case IPR2016-00148
`U.S. Patent No. 9,056,870
`
`1.
`
`Timeliness
`
`PO asserts that Exhibits 1028–1033 are untimely because they present new
`
`opinions and evidence that could have been raised in the petition. Motion at p. 5,
`
`1st para. However, as established by the Relevant Authority in § III(A) above,
`
`Petitioner is entitled to provide evidence that serves to rebut arguments made by
`
`PO in its Response.
`
`As a basis for alleging the untimeliness of presenting Exhibits 1028-1033,
`
`PO improperly conflates the specific basis for obviousness established in present
`
`proceedings, which is found in the prior art teachings of Kai, Kawaguchi, and/or
`
`Heil, along with the knowledge of POSITA, with a single basis for obviousness
`
`asserted in co-pending IPR2017-00197 that relies on the express teachings of
`
`additional references.
`
`In doing so, PO is sua sponte inventing new grounds of
`
`obviousness that are simply not asserted by Petitioner. Nowhere in the present
`
`proceedings has Petitioner asserted that any claim in U.S. Patent No. 9,056,870 is
`
`invalid as being obvious over Moorthy (Ex. 1030), Anthony (Ex. 1031), Toray
`
`(Ex.1028/1029), or Hu (Ex. 1032). Thus, as stated in the co-pending IPR, the basis
`
`for obviousness is, in fact, “substantially different from [the grounds] instituted in”
`
`the present proceedings.
`
`- 11 -
`
`Idemitsu Ex. 2005, pg. 12
`IPR2017-00197
`DukSan v Idemitsu
`
`
`
`Opposition to Motion to Exclude Evidence
`Case IPR2016-00148
`U.S. Patent No. 9,056,870
`
`PO rests its assertion of untimeliness by stating that “[b]ecause of the Patent
`
`Owner’s inability to respond to the untimely evidence and arguments, Exhibits
`
`1028–1033 are unfairly prejudicial (Fed. R. Evid. 403).” However, as discussed,
`
`PO has had the opportunity to respond to Petitioner’s Reply and related Exhibits.
`
`Instead, PO chose not to cross-examine Dr. Schwartz or to request the Board’s
`
`permission to file a sur-reply.
`
`Instead, PO is misusing a Motion to Exclude as a
`
`mechanism to argue that a reply contains new arguments, which is clearly
`
`prohibited by the Board. For example, see Liberty Mutual Inc., Paper 66 at 61-62;
`
`see also Google, Inc. v. Visual Real Estate, Inc., IPR2014-01339, Paper 39 at 37
`
`(PTAB Jan. 25, 2016) (finding arguments were improperly raised in a motion to
`
`exclude).
`
`2.
`
`Relevance
`
`PO asserts that Exhibits 1028–1033 should be excluded because they “are
`
`submitted to support arguments beyond the proper scope of a Reply (37 C.F.R. §
`
`42.23(b)) and therefore lack relevance (Fed. R. Evid. 402).” Motion at p. 4, last
`
`para. Likewise, at page 5 of the Motion, PO asserts that “[p]aragraphs 8–10, 12,
`
`13, 15–20, 22, 24–28, 34, 36–40, 42–60, 62–70, 72–74, and 76–81 of Dr.
`
`Schwartz’s supplemental declaration (Ex. 1033) should be excluded as irrelevant
`
`as exceeding the scope of a proper reply.” Motion at page 5.
`
`- 12 -
`
`Idemitsu Ex. 2005, pg. 13
`IPR2017-00197
`DukSan v Idemitsu
`
`
`
`Opposition to Motion to Exclude Evidence
`Case IPR2016-00148
`U.S. Patent No. 9,056,870
`
`However, as discussed in § II above, it is well settled that “[a] motion to
`
`exclude evidence is not the proper vehicle for resolution of a dispute regarding
`
`reply arguments and evidence exceeding the proper scope of a reply.” IPR2013-
`
`00074, Paper 80 at 13-14. Again,
`
`the board has already granted PO the
`
`opportunity to file a paper asserting where new evidence and arguments are
`
`allegedly presented in Petitioner’s Reply and Related Exhibits. A Motion to
`
`Exclude is not the proper forum for such assertions.
`
`3.
`
`Non-Prejudicial
`
`PO asserts that, in particular, Exhibit 1033 should be excluded because
`
`allegedly “its probative value is substantially outweighed by its risk of unfair
`
`prejudice and confusing the issues as Dr. Schwartz’s statements contradict his
`
`original declaration (Ex. 1003) and the Petition (Paper 1).”
`
`PO then utilizes pages 5-8 of the Motion to characterize Dr. Schwartz’s
`
`declarations as being inconsistent. However, contrary to the conclusions drawn by
`
`PO, Petitioner maintains that in no way are Dr. Schwartz’s statements in Exhibits
`
`1003 and 1033 contradictory. To the contrary, the testimony in Exhibit 1033 is
`
`complimentary to, and not mutually exclusive from, the testimony in Exhibit 1003.
`
`As established by Dr. Schwartz, the issue of π-stacking is one of degree and
`
`it is well within the purview of the skilled artisan to finetune π-stacking interaction
`
`- 13 -
`
`Idemitsu Ex. 2005, pg. 14
`IPR2017-00197
`DukSan v Idemitsu
`
`
`
`Opposition to Motion to Exclude Evidence
`Case IPR2016-00148
`U.S. Patent No. 9,056,870
`
`as necessary for use in an emissive material. Nevertheless, PO asserts that
`
`“Petitioner belatedly presents a completely different theory that relies on the
`
`conversion of OFET materials to OLED materials.” Motion at p. 8. However,
`
`contrary to PO’s assertions, as confirmed by Dr. Anthony, the POSITA does not
`
`“classify materials by their application. So we were modifying polycyclic aromatic
`
`hydrocarbons for use as either OLEDs or OFETs or photovoltaics or bioimaging or
`
`whatever application our friends in physics and engineering were interested in.”
`
`Exhibit 1027, p. 21.
`
`In other words, PO’s insistence on distinguishing between
`
`compounds based on use is merely a red herring obfuscating the actual issue that
`
`the identified claims of U.S. Patent No. 9,056,870 are invalid in view of the
`
`express teachings in Heil, Kai, and Kawaguchi, taken together with the level of
`
`ordinary skill in the art, regardless of whether the references discuss the use of a
`
`particular compound for a particular application. The testimony in Exhibit 1033
`
`serves to respond to arguments made by PO and to further establish the level of
`
`skill in the art at the time of filing.
`
`At page 9 of the Motion PO asserts that Dr. Schwartz’s assertions with
`
`respect
`
`to oxidative stability are an attempt to “confuse the issues” and are
`
`therefore prejudicial. However, as noted above, Dr. Schwartz’s testimony
`
`addresses issues raised in arguments made by PO and further establishes the level
`
`- 14 -
`
`Idemitsu Ex. 2005, pg. 15
`IPR2017-00197
`DukSan v Idemitsu
`
`
`
`Opposition to Motion to Exclude Evidence
`Case IPR2016-00148
`U.S. Patent No. 9,056,870
`
`of skill in the art at the time of filing. Furthermore, if PO found Dr. Schwartz’s
`
`testimony confusing, it had the opportunity to cross-examine him and/or to request
`
`permission to file a proper sur-reply. A Motion to Exclude is not a mechanism for
`
`arguing the merits of expert testimony.
`
`On pages 10 and 11 of the Motion, PO argues that statements made in Dr.
`
`Schwartz’s testimony in Exhibit 1033 are improper because “no such statements
`
`were presented in the Petition,” a refrain that is repeated three times in the course
`
`of a few paragraphs. However, PO fails to provide relevant
`
`legal authority
`
`establishing the impropriety of presenting evidence not presented in an initial
`
`Petition, especially when such evidence is presented to rebut statements made in a
`
`Response submitted by PO.
`
`V.
`
`Conclusion
`
`In view of the foregoing, Petitioner respectfully requests that Patent Owner’s
`
`Motion to Exclude be Denied.
`
`Respectfully submitted,
`
`VORYS, SATER, SEYMOUR AND PEASE LLP
`
`Date: January 20, 2017
`Customer No. 20230
`Tel: 202-467-8800
`Fax: 202-533-9187
`
`William H. Oldach III
`Attorney for Petitioner
`DUK SAN NEOLUX CO., LTD.
`Registration No. 42,048
`
`- 15 -
`
`Idemitsu Ex. 2005, pg. 16
`IPR2017-00197
`DukSan v Idemitsu
`
`
`
`CERTIFICATION OF SERVICE (37 C.F.R. §§ 42.6(e), 42.105(a))
`
`The undersigned hereby certifies service of OPPOSITION TO PATENT
`OWNER’S MOTION TO EXCLUDE on counsel of record for the PO by filing
`this document through the Patent Review Processing System as well as delivering
`a copy via electronic mail to the following address:
`
`RICHARD D. KELLY
`OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
`1940 DUKE STREET
`ALEXANDRIA VA 22314
`TEL: 703-413-3000 / 703-412-6463
`EMAIL: CPDocketRKelly@oblon.com
`EMAIL: CPDocketDoughty@oblon.com
`EMAIL: CPDocketSK@oblon.com
`EMAIL: CPDocketBurton@oblon.com
`
`Respectfully submitted,
`
`VORYS, SATER, SEYMOUR AND PEASE LLP
`
`Date: January 20, 2017
`
`William H. Oldach III
`Attorney for Petitioner
`DUK SAN NEOLUX CO., LTD.
`Registration No. 42,048
`
`VORYS, SATER, SEYMOUR AND PEASE LLP
`1909 K Street NW, Ninth Floor
`Washington, D.C. 20006-1152
`Tel: 202-467-8800 / Fax: 202-533-9187
`
`Idemitsu Ex. 2005, pg. 17
`IPR2017-00197
`DukSan v Idemitsu
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
