UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`WALMART INC.; Z-SHADE CO., LTD.;
`COSTCO WHOLESALE CORPORATION;
`LOWE’S HOME CENTERS, LLC; and
`SHELTERLOGIC CORP.,
`Petitioner,
`
`v.
`
`CARAVAN CANOPY INTERNATIONAL, INC.,
`Patent Owner.
`_________________
`
`Case IPR2020-01026
`Patent No. 5,944,040
`_________________
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION TO EXCLUDE
`
`
`
`
`
`
`
`
`
`_________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`WALMART INC.; Z-SHADE CO., LTD.;
`COSTCO WHOLESALE CORPORATION;
`LOWE’S HOME CENTERS, LLC; and
`SHELTERLOGIC CORP.,
`Petitioner,
`
`v.
`
`CARAVAN CANOPY INTERNATIONAL, INC.,
`Patent Owner.
`_________________
`
`Case IPR2020-01026
`Patent No. 5,944,040
`_________________
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION TO EXCLUDE
`
`
`
`
`
`
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`
`
`INTRODUCTION
`Patent Owner fails to meet its burden of proof to establish that it is entitled
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`Case IPR2020-01026
`Patent No. 5,944,040
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`
`I.
`
`to the requested relief. See 37 C.F.R. § 42.20(c). Patent Owner’s motion provides
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`no basis on which to exclude any of Petitioner’s evidence. Patent Owner instead
`
`improperly seeks to argue the merits of various evidence that have been offered.
`
`Patent Owner also asserts contradictions based on selective and out-of-context
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`quotes that are clear upon a complete reading of the record. And, Patent Owner
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`continues to make arguments to limit the scope of the challenged claims that are
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`unsupported by the ’040 Patent itself. Patent Owner’s motion should be denied,
`
`and the Board should weigh Petitioner’s invalidity grounds on the merits.
`
`II.
`
`PETITIONER’S EVIDENCE IS ADMISSIBLE
`A. Ex. 1003, ¶72
`As an initial matter, Patent Owner’s boilerplate objections to Exhibit 1003
`
`(Paper 14, at 1-2) failed to provide any explanation for the objection, much less
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`“sufficient particularity to allow correction in the form of supplemental evidence”
`
`as required by 37 C.F.R. § 42.64(b)(1). This deprived Petitioner and Dr. Klopp of
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`any opportunity to provide supplemental evidence, and Patent Owner’s motion
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`should be denied for this reason alone.
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`Even if Patent Owner’s objection was sufficient, Patent Owner’s motion
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`should be denied as moot. Patent Owner complains about a minor inconsistency
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`2
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`
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`between a parenthetical in paragraph 72 of Dr. Klopp’s declaration regarding
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`Case IPR2020-01026
`Patent No. 5,944,040
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`“facilitating easier entry and exhibit by users,” and his deposition testimony. But
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`that parenthetical is not a basis for any argument made in the Petition or Reply.
`
`The Petition and Reply do not argue that facilitating ease of entry or exit from the
`
`tent is a motivation to combine the prior art. Thus, “there is no substantive
`
`argument pertaining to that [assertion] that can be considered.” Microsoft Corp. v.
`
`FG SRC LLC, IPR2018-01605, Paper 72 at 13 (PTAB Apr. 9, 2020) (“[I]n
`
`evaluating Petitioner’s asserted grounds of unpatentability, we only consider
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`substantive arguments made by the parties in their papers during trial (i.e., the
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`Petitions, Response, Reply, and Sur-Reply).”).
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`Further, alleged inconsistent testimony is not a proper basis for exclusion.
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`The Board is capable of properly weighing the merits of Dr. Klopp’s declaration
`
`and deposition testimony. See Liberty Mutual Insurance Co. v. Progressive
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`Casualty Insurance Co., CBM2012-00002, Paper 66 at 67-68 (PTAB Jan. 23,
`
`2014) (finding that any inconsistency between experts reply declaration and cross
`
`examination testimony would affect the weight not admissibility of evidence).
`
`Indeed, Patent Owner’s cited cases do not support exclusion as the proper remedy
`
`for contradictory testimony but instead support that the Board should be able to
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`weigh the evidence appropriately. In Ralston v. Smith & Nephew Richards, Inc.,
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`the district court considered but disregarded contradictory testimony, but did not
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`3
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`Case IPR2020-01026
`Patent No. 5,944,040
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`exclude it under FRE 702, as it did other expert testimony. 275 F.3d 965, 968 (10th
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`Cir. 2001). Further, Chartier v. Brabender Technologie, Inc. involves the question
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`of “whether summary judgment can be defeated based on statements in the expert
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`report that are contradicted by the same expert’s subsequent deposition testimony.”
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`No. CIV.A. 08-40237-FDS, 2011 WL 4732940, at *7 (D. Mass. Oct. 5, 2011). The
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`court struck the experts report based on the disclosure requirements of Federal
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`Rule of Civil Procedure 26(a)(2), which are not applicable in an IPR. Id. at 7-8.
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`Patent Owner provides no authority for excluding testimony based on an alleged
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`inconsistency.
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`Finally, even if the parenthetical in paragraph 72 were somehow
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`inadmissible, Patent Owner cannot leverage alleged inadmissibility as to the
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`parenthetical to exclude other testimony that is undisputedly consistent with Dr.
`
`Klopp’s deposition. At most, Patent Owner’s argument would exclude the
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`parenthetical “(facilitating easier entry and exit by users)”—a parenthetical not
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`relied upon in the record—not Dr. Klopp’s common sense opinion that including
`
`the center pole would have increased headroom inside the tent, which is well-
`
`supported by Dr. Klopp’s consistent testimony. E.g., Ex. 1025, ¶¶112-29. That
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`testimony supports a finding of obviousness of the challenged claims.
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`4
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`Case IPR2020-01026
`Patent No. 5,944,040
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`In sum, the Board should deny Patent Owner’s motion as to Ex. 1003, ¶72 as
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`insufficiently preserved and/or moot, and should weigh the merits of Petitioner’s
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`invalidity grounds.
`
`B.
`Ex. 1025, ¶¶ 31-35
`Again Patent Owner’s boilerplate objections (Paper 28, at 1-2) failed to
`
`provide any explanation for the objection, much less “sufficient particularity to
`
`allow correction in the form of supplemental evidence” as required by 37 C.F.R.
`
`§ 42.64(b)(1). This deprived Petitioner and Dr. Klopp of any opportunity to
`
`provide supplemental evidence, and Patent Owner’s motion should be denied for
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`this reason alone
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`Patent Owner challenges out-of-context statements in Dr. Klopp’s
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`declaration and misrepresents Dr. Klopp’s opinion. Dr. Klopp’s opinion is that the
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`plain and ordinary meaning of “stretch” as used within the ’040 Patent “carries a
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`general meaning of at least ‘spreading out or extending during the pitching of the
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`tent.’” Ex. 1025, ¶35. His opinion is consistent with the plain and ordinary
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`meaning and the intrinsic record, and his opinion does not contradict the District
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`Court’s claim construction. Indeed, the District Court declined to construe the
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`term. Ex. 1018, at 10-11. As Dr. Klopp explains, when pitching the tent, “the tent
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`frame elements . . . push up the center pole and heighten the roof (as well as
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`spreading out the roof material to a more fully deployed state . . .).” Ex. 1025, ¶35.
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`5
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`
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`Dr. Klopp’s simple explanation of how the center pole stretches and sustains a
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`Case IPR2020-01026
`Patent No. 5,944,040
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`tent’s roof—which is plainly correct and apparent even to a layperson—does not
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`provide any basis for excluding his testimony.
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`Moreover, as Patent Owner acknowledges, when the Petition was filed, the
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`District Court had not rendered its claim construction order. Even after rendering
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`that order, the District Court’s claim construction is not binding on the PTAB, only
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`informative. See, e.g., Next Caller Inc. v. TrustID, Inc., IPR2019-00039, at (PTAB
`
`Feb. 24, 2020) (“[W]e are not bound by the district court’s construction
`
`interpreting the claim terms at issue . . . .”) (citing Power Integrations, Inc. v. Lee,
`
`797 F.3d 1318, 1326 (Fed. Cir. 2015)); 37 C.F.R. § 42.100(b). Thus even if Dr.
`
`Klopp’s testimony contradicted the District Court’s claim construction—and to be
`
`clear, it does not—the Board is more than capable of weighing that testimony
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`when independently construing the claims and rendering its final written decision.
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`Patent Owner also provides no authority suggesting that an expert is even
`
`required to consider a District Court’s claim construction order. Nor could it,
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`because there could be no such requirement. In many cases including this one, an
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`expert renders opinions before a district court claim construction issues. FRE 702
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`only requires that Dr. Klopp’s testimony be based on “sufficient facts or data.” Dr.
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`Klopp’s testimony, which relies on the clear intrinsic record, is based on sufficient
`
`facts and data. And to the extent Patent Owner is challenging the sufficiency of the
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`6
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`
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`evidence, such an argument is not proper in a motion to exclude. Consolidated
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`Case IPR2020-01026
`Patent No. 5,944,040
`
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`Trial Practice Guide (Nov. 2019), at 79 (“A motion to exclude . . . may not be used
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`to challenge the sufficiency of the evidence to prove a particular fact.”).
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`As discussed above, the District Court did not affirmatively construe the
`
`term “constructed for stretching and sustaining a tent’s roof.” Rather, the District
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`Court expressly declined to construe the term, finding that “a layperson could
`
`understand the term.” Ex. 1018, at 11. The District Court did not reach any
`
`determination regarding whether the claims require “tensioning” (as Patent Owner
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`incorrectly asserts for the first time in this proceeding) or “spreading out or
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`extending during the pitching of the tent” (as is supported by the intrinsic record).
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`Since the District Court did not even address the parties’ dispute here, there is no
`
`basis to exclude Dr. Klopp’s opinion based on his not remembering having
`
`reviewed it.
`
`Dr. Klopp’s testimony is directly relevant to the dispute at issue in this
`
`proceeding, which was not before the District Court. Dr. Klopp testified about how
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`a POSITA would understand “stretching” with significant discussion of the
`
`specification. As the Federal Circuit has repeatedly explained, the specification “is
`
`always highly relevant to the claim construction analysis. Usually, it is dispositive;
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`it is the single best guide to the meaning of a disputed term.” Phillips v. AWH
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`Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp. v.
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`7
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`
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`Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). By contrast, Patent
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`Case IPR2020-01026
`Patent No. 5,944,040
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`Owner’s expert, Mr. Rake, admitted that he did not rely on the specification to
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`inform his meaning of “stretching.” Ex. 1024, 39:18-43:19. Therefore, Dr. Klopp’s
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`discussion of the plain and ordinary meaning of a disputed term in the context of
`
`the specification should not be excluded and should be given weight, and Mr.
`
`Rake’s opinions, which are divorced from the intrinsic record, should be given no
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`weight.
`
`C. Ex. 1025, ¶¶50-53
`As an initial matter, Patent Owner failed to object on any basis to paragraphs
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`52-53 of Ex. 1025, and thus those objections are waived. Paper 28, at 1-2; 37
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`C.F.R. §42.64(b)(1) (“Once trial has been instituted, any objection must be filed
`
`within five business days of service of evidence to which the objection is
`
`directed.”); id., § 42.64(c) (“The motion [to exclude] must identify the objections
`
`in the record . . . .”). As to paragraphs 50-51, for the same reasons discussed in
`
`supra Section II.A, Patent Owner’s boilerplate objections to Exhibit 1003 (Paper
`
`28, at 1-2) failed to provide any explanation for the objection, much less “sufficient
`
`particularity to allow correction in the form of supplemental evidence” as required
`
`by 37 C.F.R. § 42.64(b)(1). For both these reasons, Patent Owner deprived
`
`Petitioner and Dr. Klopp from any opportunity to provide supplemental evidence,
`
`and Patent Owner’s motion should be denied for these reasons alone.
`
`8
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`
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`Patent Owner selectively quotes Dr. Klopp’s deposition testimony to
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`Case IPR2020-01026
`Patent No. 5,944,040
`
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`manufacture a non-existing contradiction. The testimony cited by Patent Owner
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`shows Dr. Klopp is not testifying about Yang and Tsai. Rather, Dr. Klopp is
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`describing a “hypothetical tent” where the center pole ribs do not want to fold up
`
`due to compression. Ex. 2033, 43:22-44:1, 44:19-24. Dr. Klopp is clear that the
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`tent frames in Yang and Tsai are like those in the ’040 Patent. Id., 45:7-12, 45:21-
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`46:1 (describing the compression forces on the slider of the tent frame of the ’040
`
`Patent); accord Ex. 1025, ¶50. Dr. Klopp’s testimony about another hypothetical
`
`tent is not relevant, is not inconsistent, and is not a testimonial concession
`
`regarding the ’040 Patent, as Patent Owner alleges. Dr. Klopp’s testimony is well-
`
`supported and should not be excluded.
`
`In sum, the Board should deny Patent Owner’s motion as to Ex. 1003, ¶¶50-
`
`53 as waived and insufficiently preserved, and should weigh the merits of
`
`Petitioner’s invalidity grounds.
`
`D. Exs. 1027-1030
`Patent Owner’s motion attempts to argue the merits of whether a
`
`backpacking tent is analogous art to a canopy tent. It is improper for Patent Owner
`
`to raise such a new argument in the first instance in a motion to exclude. Patent
`
`Owner’s relevance argument is also misplaced. Exhibits 1027-1030 demonstrate
`
`Patent Owner’s and Mr. Rake’s misuse of the term “freestanding tent.” Patent
`
`9
`
`
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`Owner and Mr. Rake base their argument in favor of patentability on the idea of a
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`Case IPR2020-01026
`Patent No. 5,944,040
`
`
`“freestanding tent”—a phrase nowhere used or described in the claims or
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`specification of the ’040 Patent, any of the cited art, and unsupported by the
`
`objective evidence. Dr. Klopp’s citation to Exhibits 1027-1030 are directly
`
`relevant to the credibility of Patent Owner and Mr. Rake’s testimony by showing
`
`that the term “freestanding tent” had a well-understood meaning in the industry at
`
`the time of the filing of the ’040 Patent, and that understanding contradicts Patent
`
`Owner and Mr. Rake’s arguments. These exhibits are thus relevant and admissible
`
`for determining “what certain terms would mean to one with ordinary skill in the
`
`art.” Yeda Research v. Mylan Pharm. Inc., 906 F.3d 1031, 1041 (Fed. Cir. 2018).
`
`Patent Owner’s motion also fails because it newly alleges a non-existing
`
`limitation on the scope of the ’040 Patent divorced from the claims and
`
`specification of the ’040 Patent. Patent Owner asserts that the “’040 Patent and
`
`every reference cited against it relate to canopy tents.” Mot. at 8. The ’040 Patent
`
`does not contain the word “canopy.”1 The description of the prior art states “[a]s
`
`well known to those skilled in the art, a tent is a collapsible shelter of canvas or
`
`
`1 While Petitioner relied on prior art teaching canopy tents for its invalidity
`
`grounds, Petitioner’s never argued that the ’040 Patent or the relevant art was
`
`limited to only “canopy tents.”
`
`10
`
`
`
`other material stretched over and sustained by a frame and is used for camping
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`Case IPR2020-01026
`Patent No. 5,944,040
`
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`outdoors or as a temporary structure.” Ex. 1001, 1:12-15. There can be no dispute
`
`that backpacking tent are used for camping outdoors and thus are relevant.
`
`
`
`Patent Owner invents yet another unclaimed limitation when it states that
`
`“canopy tents of the ’040 Patent and the cited references have a tent that is outside
`
`the frame.” As discussed repeatedly in the Reply, the challenged claims do not
`
`recite any specific roof configuration. The ’040 Patent claims only a tent frame.
`
`Thus, Patent Owner’s arguments regarding relevance should be rejected as
`
`improper arguments on the merits, and the Board should reject Patent Owner’s
`
`assertions regarding “freestanding tents.”
`
`E.
`Ex. 1032
`As a preliminary matter, Patent Owner did not object to Ex. 1032 on the
`
`
`
`grounds it asserts in its motion. See Paper No. 28, at 8-9 (objecting as to relevance
`
`only as to the exhibit being undated). Therefore, Patent Owner deprived Petitioner
`
`from any opportunity to provide supplemental evidence and an accurate screen
`
`capture of this webpage. Patent Owner’s motion should be denied for this reason
`
`alone.
`
`Ex. 1032 is a webpage currently available online at https://www.roofcorp
`
`.com/roof-systems/steep-slope/ (last visited September 1, 2021). As is immediately
`
`apparent when comparing the linked URL with Ex. 1032, the webpage was
`
`11
`
`
`
`improperly captured using PageVault, which removed some of the text from the
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`Case IPR2020-01026
`Patent No. 5,944,040
`
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`webpage. Petitioner disclosed the links to each exhibit, including Ex. 1032. Reply,
`
`at 7. While Patent Owner admitted that it “follow[ed] the link from Petitioner’s
`
`Reply” for Ex. 1027 (Mot. at 9), it inexplicably did not do so here. Had it done so,
`
`it would have seen the exact words and phrase it alleges is missing, as shown
`
`below in a screen shot of the webpage:
`
`
`Therefore, Patent Owner’s argument fails.
`
`
`
`
`
`Had Patent Owner identified its objection with the requires specificity,
`
`Petitioner would have corrected the issue. Now that Patent Owner has identified
`
`this issue, Petitioner will move to replace Ex. 1032 with a version that accurately
`
`captures the webpage for which the link was provided in Reply.
`
`F.
`Ex. 1031 and Ex. 1033
`Petitioner and Dr. Klopp offered Ex. 1031 and Ex. 1033 to rebut Patent
`
`
`
`Owner’s bizarre assertion that increasing the pitch of a roof impedes water
`
`shedding. Paper 20, 25-26 (citing Ex. 1029, ¶184); Paper 27 at 20-21.
`
`It is common sense and well understood that a steeper roof sheds water more
`
`readily than a less steep roof. This is reflected by Petitioner’s exhibits. These
`
`12
`
`
`
`references support Dr. Klopp’s testimony that a POSITA would understand that
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`Case IPR2020-01026
`Patent No. 5,944,040
`
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`water will shed faster from a steeper roof, and less water will dwell on a steeper
`
`pitch than on a shallower pitch. Reply, at 20-21. Patent Owner’s attempt to draw
`
`distinctions between roofs with overlapping components and rigid roofs without
`
`tensioning is a red herring. Petitioner has not asserted a reliance on any teaching of
`
`rigid or shingled roofs. Petitioner is relying instead on the teaching that the slope of
`
`a roof affects show quickly water will runoff, and that a “steep roof will shed
`
`runoff quickly and more easily” whereas a “flatter roof will cause the water to
`
`move more slowly.” Ex. 1031. Exhibits 1031 and 1033 support Petitioner’s
`
`argument that steeper roofs shed water better than flatter roofs and are relevant for
`
`this purpose.
`
`G. Ex. 1036, Ex. 1037, and Ex. 1025, ¶¶108-111
`As a preliminary matter, Patent Owner did not object to paragraphs 109 or
`
`111 of Exhibit 1025, and its objection to those paragraphs is therefore waived.
`
`Furthermore, Patent Owner’s boilerplate objections to Exhibit 1036, Exhibit 1037,
`
`and paragraphs 108 and 110 of Exhibit 1025 lack sufficient particularly and thus
`
`deprived Petitioner from any opportunity to provide supplemental evidence. Patent
`
`Owner’s motion should be denied for these reasons alone.
`
`Patent Owner makes two arguments. Its first argument that Ex. 1036 and
`
`1037 are irrelevant because they discuss rigid roofs fails as described supra in
`
`13
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`
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`Section II.F. Those exhibits demonstrate the improved ability of a steeper roof to
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`Case IPR2020-01026
`Patent No. 5,944,040
`
`
`shed precipitation. Patent Owner’s second argument that Dr. Klopp’s opinions
`
`exceed the proper scope of the Reply, is not properly the subject of a motion to
`
`exclude. Consolidated Trial Practice Guide (Nov. 2019), at 79 (“Nor should a
`
`motion to exclude address arguments or evidence that a party believes exceeds the
`
`proper scope of reply or sur-reply.”). Further, Patent Owner’s distinction between
`
`rainwater shedding and shedding snow is a distinction without a difference. There
`
`can be no dispute that the tents disclosed in the ’040 Patent and the cited references
`
`are meant for outdoor use. E.g., Ex. 1001, 1:12-15. Precipitation shedding is
`
`clearly within the scope of these proceedings. See Ericsson Inc., v. Intellectual
`
`Ventures I LLC, 901 F.3d 1347, 1381 (Fed. Cir. 2018) (reply argument not
`
`improper when it expands on the same argument made in the petition).
`
`III. CONCLUSION
`For the reasons set forth herein, the Board should deny Patent Owner’s
`
`motion to exclude.
`
`Dated: September 1, 2021
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`By: / David A. Reed /
`David A. Reed
`Reg. No. 61,226
`
`Counsel for Petitioner
`Walmart Inc.
`
`14
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`
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that on the date below copies of
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`Case IPR2020-01026
`Patent No. 5,944,040
`
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION TO
`
`EXCLUDE was served electronically via email upon the following:
`
`Kyle W. Kellar
`KKellar@lrrc.com
`
`Jason C. Martone
`JMartone@lrrc.com
`
`Sami I. Schilly
`SSchilly@lrrc.com
`
`
`Dated: September 1, 2021
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`By: / David A. Reed /
`David A. Reed
`Reg. No. 61,226
`
`Counsel for Petitioner
`Walmart Inc.
`
`15
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`
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