Paper No. 34
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`FLIR SYSTEMS, INC.,
`FLIR MARITIME US, INC. (F/K/A RAYMARINE, INC.),
`
`Petitioners,
`
`v.
`
`GARMIN SWITZERLAND GmbH,
`
`Patent Owner.
`
`__________________
`
`Case IPR2017-00946
`
`Patent 7,268,703 B1
`__________________
`
`PETITIONERS’ RESPONSE TO PATENT OWNER’S
`MOTION FOR OBSERVATION REGARDING
`CROSS-EXAMINATION OF REPLY WITNESS
`
`ii
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`FLIR SYSTEMS, INC.,
`FLIR MARITIME US, INC. (F/K/A RAYMARINE, INC.),
`
`Petitioners,
`
`v.
`
`GARMIN SWITZERLAND GmbH,
`
`Patent Owner.
`
`__________________
`
`Case IPR2017-00946
`
`Patent 7,268,703 B1
`__________________
`
`PETITIONERS’ RESPONSE TO PATENT OWNER’S
`MOTION FOR OBSERVATION REGARDING
`CROSS-EXAMINATION OF REPLY WITNESS
`
`ii
`
`
`
`UPDATED TABLE OF EXHIBITS
`
`U.S. Patent No. 7,268,703 to Kabel et al. (“703 Patent”)
`
`Prosecution File History of U.S. Patent No. 7,268,703
`
`Declaration of Dr. Michael S. Braasch
`
`Curriculum Vitae of Dr. Michael S. Braasch
`
`W.J. de Jong, Automated Route Planning – A Network-Based Route
`Planning Solution for Marine Navigation, University of Nottingham
`(December 2001) (“de Jong”)
`Tetley et al., Electronic Navigation Systems, 3d Ed. (Butterworth-
`Heinemann 2001) (“Tetley”) (excerpts)
`
`B. Brogdon, Boat Navigation for the Rest of Us, 2d Ed., Introduction
`(McGraw-Hill 2001) (“Brogdon”) (excerpts)
`
`Fernão Vaz Dourado, Map of West Africa Waterways (circa 1571)
`
`National Oceanic and Atmospheric Administration, Nautical Chart 25664
`(1976) (Puerto Rico)
`
`National Oceanic and Atmospheric Administration, Nautical Chart 12283-
`02 (1990) (Annapolis Harbor)
`
`International Maritime Organization, Resolution A.817(19), Performance
`Standards for Electronic Chart Display and Information Systems (ECDIS)
`(Dec. 15, 1996)
`
`U.S. Patent No. 6,356,837 to Yokota et al. (“Yokota”)
`
`Wan Xiaoxia et al., Electronic chart display and
`information system, Geo-spatial Information Science, 5:1, 7-11 (Mar. 5,
`2002) (“Xiaoxia”)
`Declaration of Christine Middleton and attachments
`
`EX.
`1001
`EX.
`1002
`EX.
`1003
`EX.
`1004
`EX.
`1005
`
`EX.
`1006
`
`EX.
`1007
`
`EX.
`1008
`EX.
`1009
`
`EX.
`1010
`
`EX.
`1011
`
`EX.
`1012
`EX.
`1013
`
`EX.
`1014
`
`
`
`EX.
`1015
`EX.
`1016
`EX.
`1017
`
`EX.
`1018
`
`EX.
`1019
`EX.
`1020
`
`EX.
`1021
`
`EX.
`1022
`
`EX.
`1023
`EX.
`1024
`EX.
`1025
`EX.
`1026
`
`EX.
`1027
`
`EX.
`1028
`
`Declaration of Dr. Scott Bennett and attachments
`
`Declaration of Martijn van der Drift
`
`Hein Sabelis, Voyage Planning in ECDIS, International Hydrographic
`Review, Monaco, LXXVI(2) (September 1999)
`
`Nathaniel Bowditch, The American Practical Navigator, National Imagery
`and Mapping Agency, U.S. Government (2002 Bicentennial Edition)
`(excerpts)
`
`Encyclopedia of Electronics, 2d Ed. (McGraw-Hill 1990) (excerpts)
`
`Encyclopedia of Electronics, 2d Ed. (McGraw-Hill 1990) (excerpts from
`Library of Congress copy)
`
`Complaint filed in Garmin Switzerland GmbH and Garmin Corp. v. FLIR
`Maritime US, Inc. (f/k/a Raymarine, Inc.), Case No. 16-2806 (D. Kansas)
`
`Garmin’s Opposition to FLIR’s Motion to Dismiss the Complaint, Case
`No. 16-2806, D.I. 24 (D. Kansas Feb. 8, 2017)
`
`Declaration of Stephen Bosco in support of Pro Hac Vice Motion
`
`Curriculum Vitae of Stephen Bosco
`
`Second Declaration of Dr. Michael S. Braasch
`
`Garmin’s December 7, 2017 Disclosure of Asserted Claims and
`Preliminary Infringement Contentions served in Garmin Switzerland
`GmbH and Garmin Corp. v. FLIR Systems and FLIR Maritime US, Inc.
`(f/k/a Raymarine, Inc.), Case No. 3:17-cv-01147-SB (D. Oregon)
`Garmin’s Opening Claim Construction Brief in Garmin Switzerland
`GmbH and Garmin Corp. v. Navico, Inc. et al., Case No. 2:16-cv-02706-
`CM-GLR (D. Kansas)
`Garmin’s Answering Claim Construction Brief in Garmin Switzerland
`GmbH and Garmin Corp. v. Navico, Inc. et al., Case No. 2:16-cv-02706-
`CM-GLR (D. Kansas)
`
`
`
`EX.
`1029
`
`EX.
`1030
`
`EX.
`1031
`
`EX.
`1032
`EX.
`1033
`EX.
`1034
`
`EX.
`1035
`
`EX.
`1036
`EX.
`1037*
`
`EX.
`1038*
`
`EX.
`1039*
`
`EX.
`1040*
`
`Declaration of Dr. William Michalson in support of Garmin’s Opening
`Claim Construction Brief in Garmin Switzerland GmbH and Garmin Corp.
`v. Navico, Inc. et al., Case No. 2:16-cv-02706-CM-GLR (D. Kansas)
`Complaint filed by Garmin in the case Garmin Switzerland GmbH and
`Garmin Corp. v. FLIR Systems and FLIR Maritime US, Inc. (f/k/a
`Raymarine, Inc.), Case No. 3:17-cv-01147-SB (D. Oregon)
`Garmin’s Opposition to Defendants’ Motion to Dismiss in the case
`Garmin Switzerland GmbH and Garmin Corp. v. FLIR Systems and FLIR
`Maritime US, Inc. (f/k/a Raymarine, Inc.), Case No. 3:17-cv-01147-SB (D.
`Oregon)
`Deposition Transcript of Steven Browne, dated January 19, 2018
`
`GPSMAP 215/225 Owner’s Manual & Reference (April 2000)
`
`Portions of the Deposition Transcript of Jay Dee Krull, dated October 10,
`2013 taken in Silver State Intellectual Technologies, Inc. v. Garmin Int’l
`Inc. et al., Case No. 2:11-cv-1578-PMP-PAL (D. Nev.)
`Portions of the Trial Testimony of Jay Dee Krull, dated May 15, 2015
`from Silver State Intellectual Technologies, Inc. v. Garmin Int’l Inc. et al.,
`Case No. 2:11-cv-1578-PMP-PAL (D. Nev.)
`Webster’s New Collegiate Dictionary (G. & C. Merriam Co. 1977):
`definition of “vehicle”
`Internet archives certification of GARMIN GPSMAP 225 User's Manual
`taken from
`http://web.archive.org/web/20020604170940/http://www.garmin.com:80/p
`roducts/gpsmap225/manual.html
`Internet archives certification of GARMIN GPSMAP 225 taken from
`http://web.archive.org/web/20020803155817/http://www.garmin.com:80/p
`roducts/gpsmap225/index.html
`Internet archives certification of GARMIN Marine taken from
`http://web.archive.org/web/20020802195731/http://www.garmin.com:80/
`marine/products.html
`Internet archives certification of GARMIN Owner’s Manual and
`Reference GPSMAP 215-225
`
`* - Denotes an Exhibit that has been served on Patent Owner but not filed.
`
`
`
` Pursuant to the Scheduling Order (Paper 8), Petitioners FLIR Systems, Inc.
`
`and FLIR Maritime US, Inc. respectfully submit this response to Patent Owner’s
`
`motion for observation regarding cross-examination of reply witness Dr. Michael
`
`Braasch, Ph.D. The cited testimony is found in Exhibit 2008.1
`
`Response to Observations on Cross Examination
`
`Observation #1:
`
`Patent Owner cites pages 38:25-40:2 as being relevant to Patent Owner’s
`
`claim construction for “re-routing/”re-route.” As Dr. Braasch explained, it is clear
`
`from the plain language of the challenged claims of the 703 Patent that the claims
`
`require only a single route be calculated that avoids pre-selected conditions, and
`
`1
`
`Exhibit 2008 as filed by Patent Owner on February 20, 2018 included the
`
`wrong deposition transcript. As Patent Owner explained in an email
`
`communication to the Board on March 8, 2018, the filed version of Exhibit 2008 is
`
`the deposition transcript of Dr. Braasch from his deposition on October 16, 2017.
`
`A second deposition of Dr. Braasch was taken on February 8, 2018, and Patent
`
`Owner intended Exhibit 2008 to be the deposition transcript for the February 2018
`
`deposition. Patent Owner further requested that Exhibit 2008 as originally filed be
`
`expunged and that Patent Owner be authorized to file a corrected version of
`
`Exhibit 2008. Petitioners refer herein to the corrected version of Exhibit 2008.
`
`1
`
`
`
`the claims call that single route the “re-route” (or “re-routing”). See Ex. 2008 at
`
`30:16-31:11 (referring to paragraphs 17-27 of his Second Declaration, Ex. 1025);
`
`id. at 35:9-36:16 (Dr. Braasch concluding that a person of ordinary skill reading
`
`claim 1 would “understand that only one route is actually calculated”); id. at 37:4-
`
`10 (same); id. at 43:3-44:8 (Dr. Braasch concluding that “claim 1 requires the
`
`determination of a route, a single route, that avoids the preselected conditions”); id.
`
`at 47:17-48:7 (Dr. Braasch testifying that the “more reasonable construction” is
`
`that the output of the algorithm in the claims is a “route that avoids preselected
`
`conditions and the claims refer to that route as the reroute”). Dr. Braasch also
`
`testified that the examples in Figs. 4A and 4B of the 703 Patent do not correspond
`
`to the challenged claims as written. Ex. 2008 at 38:2-24; id. at 41:25-42:19; id. at
`
`44:24-45:25 (Dr. Braasch testifying that “the plain language of the claim is
`
`different than” the embodiment in Figs. 4A and 4B).
`
`Observation #2:
`
`Patent Owner cites pages 40:12-41:9 as being relevant to Patent Owner’s
`
`claim construction for “re-routing/”re-route.” As Dr. Braasch explained, it is clear
`
`from the plain language of the challenged claims of the 703 Patent that the claims
`
`require only a single route be calculated that avoids pre-selected conditions, and
`
`the claims call that route the “re-route” (or “re-routing”). See citations from Dr.
`
`Braasch’s testimony in Observation #1. Dr. Braasch also testified that the
`
`2
`
`
`
`examples in Figs. 4A and 4B of the 703 Patent do not correspond to the challenged
`
`claims as written. See citations from Dr. Braasch’s testimony in Observation #1.
`
`Observation #3:
`
`Patent Owner cites page 45:10-18 as being relevant to Patent Owner’s claim
`
`construction for “re-routing/”re-route.” Patent Owner claims that the testimony
`
`shows that Dr. Braasch understands the terms “calculating” and recalculating” used
`
`in the 703 Patent specification as being synonymous with the claimed terms
`
`“routing” and “re-routing,” respectively. Patent Owner’s citation is incomplete
`
`and therefore mischaracterizes Dr. Braasch’s testimony. When asked whether the
`
`terms were synonymous, Dr. Braasch testified “not quite, because ‘calculating’ and
`
`‘recalculating’ on their own have a variety of meanings.” Ex. 2008 at 46:1-11.
`
`Further, Dr. Braasch testified that the examples in Figs. 4A and 4B of the 703
`
`Patent, which contain the “calculating” and “recalculating” language, do not
`
`correspond to the challenged claims as written. See Ex. 2008 at 38:2-24; id. at
`
`41:25-42:19; id. at 44:24-45:25 (Dr. Braasch testifying that “the plain language of
`
`the claim is different than” the embodiment in Figs. 4A and 4B).
`
`Observation #4:
`
`Patent Owner cites page 49:8-13 as being relevant to Patent Owner’s claim
`
`construction for “re-routing/”re-route.” Patent Owner states that this testimony, as
`
`well as his testimony at page 48:12-17, confirms that claim 1 of the 703 Patent
`
`3
`
`
`
`
`
`requires the step of “analyzing cartographic data between the first location and the
`
`potential waypoint.” It is undisputed that claim 1 as written contains that
`
`limitation. It is equally clear, as Dr. Braasch testified, that the plain language of
`
`the challenged claims require only a single route be calculated that avoids pre-
`
`selected conditions, and the claims call that single route the “re-route” (or “re-
`
`routing”). See Ex. 2008 at 30:16-31:11 (referring to paragraphs 17-27 of his
`
`Second Declaration, Ex. 1025); id. at 35:9-36:16 (Dr. Braasch concluding that a
`
`person of ordinary skill reading claim 1 would “understand that only one route is
`
`actually calculated”); id. at 37:4-10 (same); id. at 43:3-44:8 (Dr. Braasch
`
`concluding that “claim 1 requires the determination of a route, a single route, that
`
`avoids the preselected conditions”); id. at 47:17-48:7 (Dr. Braasch testifying that
`
`the “more reasonable construction” is that the output of the algorithm in the claims
`
`is a “route that avoids preselected conditions and the claims refer to that route as
`
`the reroute”).
`
`Observation #5:
`
`
`
`Patent Owner cites pages 30:20-31:11 as being relevant to whether “res-
`
`routing” as used in the existing claims of the 703 patent should be construed
`
`differently than how the term is used in the proposed amended claims. This
`
`observation violates the Scheduling Order, Paper 8, at Section C, which requires
`
`that a motion for observation be limited to drawing the Board’s attention to
`
`
`
`4
`
`
`
`
`
`relevant cross-examination testimony of a reply witness because no further
`
`substantive paper is permitted after the reply (emphasis added). Here, Patent
`
`Owner had an opportunity to submit a substantive paper addressing the
`
`construction of the proposed amended claims: Patent Owner’s Reply in Support of
`
`its Motion to Amend the Claims, filed on February 20, 2018. Regardless, Patent
`
`Owner mischaracterizes Dr. Braasch’s testimony. As Dr. Braasch explained, in the
`
`proposed amended claims, it is “very clear that” they require a “first route, an
`
`analysis of that route,” and a “re-routing step.” Ex. 2008 at 31:7-11. This
`
`contrasts with the challenged claims, that do not specifically require a first route
`
`but rather are directed to a single route that is calculated that avoids pre-selected
`
`conditions, what the claims call the “re-route” (or “re-routing”). See Ex. 2008 at
`
`30:16-31:11 (referring to paragraphs 17-27 of his Second Declaration, Ex. 1025);
`
`id. at 35:9-36:16 (Dr. Braasch concluding that a person of ordinary skill reading
`
`claim 1 would “understand that only one route is actually calculated”); id. at 37:4-
`
`10 (same); id. at 43:3-44:8 (Dr. Braasch concluding that “claim 1 requires the
`
`determination of a route, a single route, that avoids the preselected conditions”); id.
`
`at 47:17-48:7 (Dr. Braasch testifying that the “more reasonable construction” is
`
`that the output of the algorithm in the claims is a “route that avoids preselected
`
`conditions and the claims refer to that route as the reroute”).
`
`
`
`
`
`
`
`5
`
`
`
`Dated: March 15, 2018
`
`Respectfully submitted,
`
`/s/ Brian E. Ferguson
`Brian E. Ferguson (Reg. No. 36,801)
`Christopher Pepe (Reg. No. 73,851)
`Stephen P. Bosco (pro hac vice)
`Weil, Gotshal & Manges LLP
`2001 M Street NW, Suite 600
`Washington, D.C. 20036
`T: 202-682-7000
`
`Anish R. Desai (Reg. No. 73,760)
`Weil, Gotshal & Manges LLP
`767 Fifth Avenue
`New York, NY 10153-0119
`T: 212-310-8730
`
`Counsel for Petitioners FLIR Systems
`and FLIR Maritime U.S., Inc.
`
`6
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that on March 15, 2018, the foregoing
`
`PETITIONER’S RESPONSE TO PATENT OWNER’s MOTION FOR
`
`OBSERVATION REGARDING REPLY WITNESS was served via electronic
`
`mail, upon the following:
`
`Jennifer C. Bailey (Reg. No. 52,583)
`Adam P. Seitz (Reg. No. 52,206)
`ERISE IP, P.A.
`6201 College Blvd., Suite 300
`Overland Park, KS
`913-777-5600
`jennifer.bailey@eriseip.com
`adam.seitz@eriseip.com
`PTAB@eriseip.com
`
`/ Timothy J. Andersen /
`Timothy J. Andersen
`Weil, Gotshal & Manges LLP
`2001 M Street NW, Suite 600
`Washington, D.C. 20036
`
`7
`
`
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