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