UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Motherson Innovations Co., Ltd.,
`Petitioner,
`
`v.
`
`Magna Mirrors of America, Inc.,
`Patent Owner.
`
`Case IPR2020-00777
`Patent No. 10,261,648
`
`Patent Owner’s Objections to Evidence Submitted with Petition
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Motherson Innovations Co., Ltd.,
`Petitioner,
`
`v.
`
`Magna Mirrors of America, Inc.,
`Patent Owner.
`
`Case IPR2020-00777
`Patent No. 10,261,648
`
`Patent Owner’s Objections to Evidence Submitted with Petition
`
`
`
`IPR2020-00777
`
` Patent No. 10,261,648
`
`I.
`
`INTRODUCTION
`Pursuant to 37 C.F.R. § 42.64(b)(1), Patent Owner Magna Mirrors of
`
`America, Inc. (“Magna”) objects under the Federal Rules of Evidence (FRE) to the
`
`admissibility of Exhibits 1002, 1006, 1008, 1011, and 1013–1015 (the “Challenged
`
`Evidence”) filed by Petitioner Motherson Innovations Co., Ltd. (“Motherson”) on
`
`March 31, 2020, with Motherson’s Petition for Inter Partes Review (“Petition”) of
`
`U.S. Patent No. 10,261,648 (the “‘648 Patent”). Magna’s Objections are filed
`
`within ten business days of the date of issuance of the Institution of Inter Partes
`
`Review; therefore, Magna’s Objections to Evidence are timely under 37 C.F.R.
`
`§ 42.64(b)(1). Magna files these Objections to provide notice to Motherson that
`
`Magna may move to exclude the Challenged Evidence under § 42.64(c), unless
`
`cured by Motherson.
`
`II.
`
`IDENTIFICATION OF CHALLENGED EVIDENCE AND GROUNDS
`FOR OBJECTIONS
`Magna objects to Exhibits 1002, 1006, 1008, 1011, and 1013–1015, and any
`
`reference to or reliance on this Challenged Evidence, under the Federal Rules of
`
`Evidence (FRE) as described below.
`
`A.
`
`Exhibit 1002 (“Expert Declaration of David R. McLellan”) is
`objected to on the following grounds:
`FRE 401–403: Test for Relevant Evidence; General Admissibility of
`
`Relevant Evidence; & Excluding Relevant Evidence for Prejudice, Confusion,
`
`Waste of Time, or Other Reasons. Any discussion of U.S. Patent No. 6,672,731 to
`
`- 1 -
`
`
`
`IPR2020-00777
`
` Patent No. 10,261,648
`
`Schnell et al. (“Schnell”), e.g., in paragraphs 69–71, 91, and 239, is objected to as
`
`irrelevant and/or prejudicial, confusing, and/or a waste of time, because Schnell is
`
`not relied upon in the Petition as a ground for unpatentability.
`
`FRE 703 & 705: Bases of an Expert’s Opinion Testimony & Disclosing the
`
`Facts or Data Underlying an Expert’s Opinion. The discussion of “yaw” and
`
`“roll” in paragraph 116 is objected to for being inconsistent with Exhibit 1009
`
`and the construction of “yaw” and “roll” in paragraphs 50 and 51. The opinions
`
`that “substantially vertical” and “substantially horizontal” encompass between 85
`
`and 90 degrees, as described in paragraphs 122 and 126, are objected to for
`
`failing to provide any basis for these opinions. The opinion that “[m]any exterior
`
`rearview mirrors prior to 2009 had outer perimeter edges that were rounded,” as
`
`described in paragraph 143, is objected to for failing to provide any basis for this
`
`opinion. The opinion that “Tsuyama describes an exterior rearview mirror
`
`assembly,” as described in paragraphs 222–224, is objected to for being
`
`inconsistent with the description of exterior rearview mirrors in paragraphs 38–
`
`43.
`
`B.
`
`Exhibit 1006 (“U.S. Patent No. 6,672,731 to Schnell”) is objected
`to on the following grounds:
`FRE 401–403: Test for Relevant Evidence; General Admissibility of
`
`Relevant Evidence; & Excluding Relevant Evidence for Prejudice, Confusion,
`
`Waste of Time, or Other Reasons. Exhibit 1006 is objected to as irrelevant and/or
`
`- 2 -
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`
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`IPR2020-00777
`
` Patent No. 10,261,648
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`prejudicial, confusing, and/or a waste of time, because Schnell is not relied upon in
`
`the Petition as a ground for unpatentability.
`
`C.
`
`Exhibit 1008 (“Curriculum vitae of David R. McLellan”) is
`objected to on the following grounds:
`FRE 401–403: Test for Relevant Evidence; General Admissibility of
`
`Relevant Evidence; & Excluding Relevant Evidence for Prejudice, Confusion,
`
`Waste of Time, or Other Reasons. Exhibit 1008 is objected to as irrelevant and/or
`
`prejudicial, confusing, and/or a waste of time, because Exhibit 1008 is not cited in
`
`the Petition.
`
`D.
`
`Exhibit 1011 (“Bracket_(architecture),Wikipedia,
`https://en.wikipedia.org/wiki/Bracket_(architecture)”) is objected
`to on the following grounds:
`FRE 401–403: Test for Relevant Evidence; General Admissibility of
`
`Relevant Evidence; & Excluding Relevant Evidence for Prejudice, Confusion,
`
`Waste of Time, or Other Reasons. Exhibit 1011 is objected to as irrelevant and/or
`
`prejudicial, confusing, and/or a waste of time, because Exhibit 1011 describes a
`
`“bracket” in the context of architecture, which is outside the field of the present
`
`Inter Partes Review and the scope of the ‘648 Patent.
`
`E.
`
`Exhibit 1013 (“Attach, dictionary.com,
`https://www.dictionary.com/browse/attach?s=t”) is objected to on
`the following grounds:
`FRE 401–403: Test for Relevant Evidence; General Admissibility of
`
`Relevant Evidence; & Excluding Relevant Evidence for Prejudice, Confusion,
`
`- 3 -
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`
`
`IPR2020-00777
`
` Patent No. 10,261,648
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`Waste of Time, or Other Reasons. Exhibit 1013 is objected to as irrelevant and/or
`
`prejudicial, confusing, and/or a waste of time, because (i) Exhibit 1013 is not cited
`
`in the Petition and (ii) Exhibit 1013 provides a definition for the verb “attach,”
`
`rather than the adjective “attached,” as recited in the claims of the ‘648 Patent.
`
`F.
`
`Exhibit 1014 (“Fixed, dictionary.com,
`https://www.dictionary.com/browse/fixed”) is objected to on the
`following grounds:
`FRE 401–403: Test for Relevant Evidence; General Admissibility of Relevant
`
`Evidence; & Excluding Relevant Evidence for Prejudice, Confusion, Waste of Time,
`
`or Other Reasons. Exhibit 1014 is objected to as irrelevant and/or prejudicial,
`
`confusing, and/or a waste of time, because (i) Exhibit 1014 is not cited in the Petition
`
`and (ii) Exhibit 1014 provides a definition for the adjective “fixed,” rather than the
`
`adverb “fixedly,” as recited in the claims of the ‘648 Patent.
`
`G.
`
`Exhibit 1015 (“Non-, dictionary.com,
`https://www.dictionary.com/browse/non?s=t”) is objected to on
`the following grounds:
`FRE 401–403: Test for Relevant Evidence; General Admissibility of Relevant
`
`Evidence; & Excluding Relevant Evidence for Prejudice, Confusion, Waste of Time,
`
`or Other Reasons. Exhibit 1015 is objected to as irrelevant and/or prejudicial,
`
`confusing, and/or a waste of time, because Exhibit 1015 is not cited in the Petition.
`
`III. CONCLUSION
`For at least the foregoing reasons, Magna objects to Exhibits 1002, 1006,
`
`1008, 1011, and 1013–1015.
`
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`
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`IPR2020-00777
`
` Patent No. 10,261,648
`
`Dated: October 21, 2020
`
`Respectfully submitted,
`
`
`
`/Dennis J. Abdelnour, Reg. No. 77,172/
`
`Dennis J. Abdelnour
`Registration No. 77,172
`Honigman LLP
`155 N. Wacker Drive, Suite 3100
`Chicago, IL 60606-1734
`Tel: (312) 701-9300
`Fax: (312) 701-9335
`dabdelnour@honigman.com
`
`Timothy A. Flory
`Registration No. 42,540
`Honigman LLP
`300 Ottawa Avenue NW, Suite 400
`Grand Rapids, MI 49503-2308
`Tel: (616) 649-1900
`tflory@honigman.com
`
`David J. Thomas
`Registration. No. 75,471
`Honigman LLP
`39400 Woodward Ave., Suite 101
`Bloomfield Hills, MI 48304
`Telephone: (248) 566-8642
`dthomas@honigman.com
`
`Counsel for Patent Owner Magna Mirrors of
`America, Inc.
`
`- 5 -
`
`
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`IPR2020-00777
`
` Patent No. 10,261,648
`
`CERTIFICATE OF SERVICE
`
`Under 37 C.F.R. § 42.6, I hereby certify that I served a copy of the foregoing
`
`document on counsel of record for the Petitioner by filing this document through the
`
`Patent Trial and Appeal Board End to End (PTAB E2E) System and by delivering a
`
`copy via e-mail to the addresses below.
`
`Lead Counsel
`
`Back-up Counsel
`
`Kenneth S. Luchesi (Reg. No. 58,673)
`JONES DAY
`901 Lakeside Ave.
`Cleveland, OH 44114
`(216) 586-7059
`kluchesi@jonesday.com
`
`Joseph M. Sauer (Reg. No. 47,919)
`David B. Cochran (Reg. No. 39,142)
`Robert M. Breetz (Reg. No. 75,550)
`JONES DAY
`901 Lakeside Ave.
`Cleveland, OH 44114
`jmsauer@jonesday.com
`dcochran@jonesday.com
`rbreetz@jonesday.com
`
`Dated: October 21, 2020
`
`HONIGMAN LLP
`
`/Dennis J. Abdelnour, Reg. No. 77,172/
`
`Dennis J. Abdelnour
`Registration No. 77,172
`HONIGMAN LLP
`155 N. Wacker Drive, Suite 3100
`Chicago, IL 60606-1734
`Tel: (312) 701-9300
`Fax: (312) 701-9335
`dabdelnour@honigman.com
`
`Counsel for Patent Owner Magna Mirrors of
`America, Inc.
`
`- 6 -
`
`
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