`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`
`Valeo North America, Inc. and Valeo Embrayages,
`Petitioners,
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`v.
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`Schaeffler Technologies AG & Co. KG,
`Patent Owner.
`
`__________________
`
`Case IPR2017-00441
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`U.S. Patent No. 8,573,374
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`__________________
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`DECLARATION OF JOCHEN STIES
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`Valeo Exhibit 1007, pg. 1
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`U.S. Patent No. 8,573,374
`Declaration of Jochen Sties
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`I, Jochen Sties, declare as follows:
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`1.
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`I am over the age of 21 and competent to make this
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`declaration.
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`2.
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`Although German is my native language, I am sufficiently
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`proficient in the English language to make this declaration in English.
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`3.
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`I have personal knowledge of the facts contained herein
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`unless otherwise indicated.
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`4.
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`I am a shareholder of the Prinz & Partner firm at its Munich
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`office in Germany.
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`5.
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`I passed the German patent attorney exam in 1997 and was
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`formally admitted January 27, 1998, and I have been familiar with the
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`laws, rules, and regulations governing German patent law since that
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`time.
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`6.
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`Exhibit 1024 is a German internal priority document, having
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`the serial number DE 196 09 553 (“the ’553 internal priority
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`document”).
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`7.
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`The ’553 internal priority document is identified as the
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`internal priority patent application on both the DE 196 54 894 A1 (Ex.
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`1
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`Valeo Exhibit 1007, pg. 2
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`U.S. Patent No. 8,573,374
`Declaration of Jochen Sties
`1022) published application and the DE 196 54 915 A1 (Ex. 1023)
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`published application.
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`8.
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`Both DE 196 54 894 A1 and DE 196 54 915 A1 are published
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`German applications. DE 196 54 894 A1 published December 4, 1997
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`and DE 196 54 915 A1 published February 5, 1998. The full text of both
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`applications has been publicly accessible and searchable through search
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`databases such as Espacenet and the German Patent Office’s
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`application database “DEPATISNET” since their respective dates of
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`publication.
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`9.
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`I have checked the prosecution file history of DE 196 54 894
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`A1 and determined that the ’553 internal priority document was part of
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`the prosecution file history since July 1997. And, the prosecution file
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`history was publicly available since December 4, 1997. Thus, one could
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`identify the ’553 internal priority document from the first page of DE
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`196 54 894 A1 or DE 196 54 915 A1 and would understand that the’553
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`internal priority document was related to the subject matter in DE 196
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`54 894 A1 and DE 196 54 915 A1.
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`10. Further, because the later application(s) could contain more
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`or less subject matter than the ’553 internal priority document, one
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`2
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`Valeo Exhibit 1007, pg. 3
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`
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`U.S. Patent No. 8,573,374
`Declaration of Jochen Sties
`could access the ’553 internal priority document to confirm or elaborate
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`on the disclosure of the later applications by simply requesting a copy of
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`the ’553 internal priority document from the German Patent Office.
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`11.
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` The DE 196 54 894 A1 and DE 196 54 915 A1 applications
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`are divisional applications from an original application (later
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`abandoned) that was based on the ’553 internal priority document.
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`Therefore if a person wanted to view whether or not the priority claim is
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`valid for the subject matter in the divisional applications or compare
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`the disclosure of the divisional applications with the ’553 internal
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`priority document, then that person could request a file inspection to
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`review the subject matter of the ’533 priority document.
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`12. Since at least 1997, German patent attorneys, researchers in
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`the scientific community, and interested members of the public could
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`have used the internal priority document information on German
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`patent applications to gain access to their internal priority documents,
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`which form part of the prosecution file history of a German patent
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`application. This was often done in situations where the validity of the
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`respective patent is challenged, intervening prior art is discovered, or
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`3
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`Valeo Exhibit 1007, pg. 4
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`U.S. Patent No. 8,573,374
`Declaration of Jochen Sties
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`when nullity or opposition actions are filed against the underlying
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`patent.
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`13. Therefore members of the public could have identified and
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`accessed the ’553 internal priority document since December 4, 1997.
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`In other words, under German law the ’533 priority application was
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`publicly available as of that date and therefore prior art in the same
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`way a book in a public library would be prior art.
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`14.
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`I hereby declare under penalty of perjury of the laws of the
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`United States of America that all statements made herein of my own
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`knowledge are true and that all statements made on information and
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`belief are believed to be true; and further that these statements were
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`made with the knowledge that willful false statements and the like so
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`made are punishable by fine or imprisonment, or both, under Section
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`1001 of Title 18 of the United States Code and that such willful false
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`statements may jeopardize the results of these proceedings.
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`'
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`/]L(\
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`/7
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`5 ‘
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`Q U
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`Munich, Germany
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`Valeo Exhibit 1007, pg. 5