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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
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`PEAG LLC (d/b/a JLab Audio), AUDIO PARTNERSHIP LLC and
`AUDIO PARTNERSHIP PLC (d/b/a Cambridge Audio),
`Petitioner,
`
`v.
`
`VARTA MICROBATTERY GMBH,
`Patent Owner.
`____________
`
`Case No. IPR2020-01212
`U.S. Patent No. 9,153,835 B2
`____________
`
`
`
`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
`UNDER 37 C.F.R. § 42.64(c)
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`

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`IPR2020-01212
`U.S. Patent No. 9,153,835 B2
`
`TABLE OF CONTENTS
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`B. 
`
`C. 
`
`I. 
`INTRODUCTION ........................................................................................... 1 
`II.  MR. GARDNER’S SUPPLEMENTAL DECLARATION
`(EXHIBIT 1041) SHOULD BE EXCLUDED ............................................... 2 
`A.  New Opinions Concerning Motivation to Combine Kaun With
`Kobayashi’s Separator—Dendrites ....................................................... 2 
`New Opinions Concerning Additional Motivations to Modify Kaun
`With Kobayashi ..................................................................................... 5 
`New Opinions Concerning Reasonable Expectation of Success—
`Kaun’s Center Fastener ......................................................................... 6 
`D.  New Opinions Concerning Reasonable Expectation of Success—
`Kobayashi’s Electrode Assembly ......................................................... 7 
`III.  CONCLUSION ................................................................................................ 9 
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`i
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`IPR2020-01212
`U.S. Patent No. 9,153,835 B2
`TABLE OF AUTHORITIES
`
`Cases 
`BancFirst ex rel. Estate of M.J.H. v. Ford Motor Co.,
`422 F. App’x 663 (10th Cir. 2011) ......................................................................... 7
`Belden Inc. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) .............................................................................. 1
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd.,
`821 F. 3d 1359 (Fed. Cir. 2016) .........................................................................2, 6
`JTEKT Corporation v. GKN Automotive, Ltd.,
`IPR2016-00046, Paper 27 (PTAB Jan. 23, 2017) .................................................. 6
`Resideo Technologies, Inc. v. Ubiquitous Connectivity, LP,
`IPR2019-01335, 2021 WL 262372 (P.T.A.B. Jan. 26, 2021) ............................... 9
`Sumitomo Electric Industry, Ltd. v. United Technologies Corporation,
`IPR2017-00966, Paper 29 (PTAB Sep. 12, 2018) ................................................. 6
`
`Toyota Motor Corporation v. American Vehicular Sciences LLC,
`IPR2013-00424, Paper 50 (P.T.A.B. Jan. 12, 2015) .............................................. 4
`Other Authorities 
`P.T.A.B. Consolidated Trial Practice Guide (Nov. 2019) ................................ 2, 4, 7
`Rules 
`37 C.F.R. § 42.23 ...................................................................................................1, 2
`37 C.F.R. § 42.61 ....................................................................................................... 1
`37 C.F.R. § 42.62 ....................................................................................................... 1
`37 C.F.R. § 42.64 ....................................................................................................... 1
`Fed. R. Evid. 401 .......................................................................................... 1, 2, 7, 9
`Fed. R. Evid. 402 .......................................................................................... 1, 2, 7, 9
`Fed. R. Evid. 403 .............................................................................................. 1, 2, 9
`
`ii
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`IPR2020-01212
`U.S. Patent No. 9,153,835 B2
`
`I.
`
`INTRODUCTION
`Petitioner’s Supplemental Declaration of William H. Gardner (Ex. 1041,
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`“Gardner’s Supplemental Declaration”) presents new opinions and theories that
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`were not provided in the Petition. Pursuant to 37 C.F.R. §§ 42.23(b), 42.61, 42.62,
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`and 42.64(c) and Federal Rules of Evidence 401–403, Patent Owner respectfully
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`moves to exclude Sections III–VI of Mr. Gardner’s Supplemental Declaration.
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`Mr. Gardner’s Supplemental Declaration is not a reply declaration. He did
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`not cite or even indicate that he reviewed the Declaration of Patent Owner’s expert,
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`Dr. Peckerar, (Ex. 2043). See Ex. 1041, ¶ 4; Ex. 2051, 31:5–32:5. Mr. Gardner’s
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`Supplemental Declaration attempts to fill gaps in Petitioner’s obviousness grounds
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`set forth in the Petition. He provides new opinions and theories that a POSA
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`would have been motivated to combine Kaun (Ex. 1005) and Kobayashi (Ex.
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`1006) and would have expected success in making the combination. This new
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`evidence could have been presented in his original declaration and should be
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`excluded. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1081 (Fed. Cir. 2015)
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`(“[A] party may move to exclude evidence, whether as improper under the
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`response-only regulation, under the Trial Practice Guide’s advice, or on other
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`grounds.”).
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`1
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`IPR2020-01212
`U.S. Patent No. 9,153,835 B2
`II. MR. GARDNER’S SUPPLEMENTAL DECLARATION (EXHIBIT
`1041) SHOULD BE EXCLUDED
`Mr. Gardner’s Supplemental Declaration was submitted in reply to Patent
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`Owner’s Response. Petitioner relied on the Supplemental Declaration to support
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`new arguments that should have been made in the Petition, not for the first time in
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`Petitioner’s Reply. See 37 C.F.R. § 42.23(b); P.T.A.B. Consolidated Trial Practice
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`Guide, at 74–5 (Nov. 2019), (“Trial Practice Guide”); Intelligent Bio-Sys., Inc. v.
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`Illumina Cambridge Ltd., 821 F. 3d 1359, 1370 (Fed. Cir. 2016). Those portions
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`of the Reply and supporting Supplemental Declaration (Sections III–VI) are not
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`relevant to the instituted grounds of review. FED. R. EVID. 401, 402. The belatedly
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`presented evidence and arguments should also be excluded as unfairly prejudicial,
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`see FED. R. EVID. 403, at least because the undue delay prevented Patent Owner
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`from fully responding to them prior to the institution decision and significantly
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`truncated the amount of time available to Patent Owner to address the belated
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`evidence and arguments in its Sur-Reply.
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`A. New Opinions Concerning Motivation to Combine Kaun With
`Kobayashi’s Separator—Dendrites
`The Petition (supported by Mr. Gardner’s original Declaration, Ex. 1003)
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`argued that a POSA would have understood the z-shaped separator in Kaun’s
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`battery design to have overlapping edges. Pet. (Paper 1) at 34–37; Ex. 1003,
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`¶¶ 135–138. Petitioner argued that a POSA would have been motivated to
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`2
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`

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`IPR2020-01212
`U.S. Patent No. 9,153,835 B2
`combine Kaun (Ex. 1005) with Kobayashi (Ex. 1006) because “[t]he lack of
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`overlapping separator edges in the electrode assembly of Kobayashi would allow a
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`[person of ordinary skill in the art (“POSA”)] to reduce the separator thickness to
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`the ‘minimum required thickness,’ thereby increasing the amount of usable power
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`produced by the cell.” Pet. at 37 (citing Ex. 1003, ¶ 138 (“[A] POSA would be
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`motivated to include the electrode assembly of Kobayashi in the housing of Kaun,
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`as it provides for reduced separator thickness, as desired by Kaun.”)).
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`In response, Patent Owner demonstrated that Kaun discloses a Z-shaped
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`separator without overlapping separator edges. Patent Owner Response (Paper 15)
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`at 26–27 (citing Ex. 1005 at FIG. 6 (below), [0108] (“The separator edges can form
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`a butt-joint to separate the successive electrode layers.”); Ex. 2043, ¶¶ 199–200,
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`202).
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`Mr. Gardner’s Supplemental Declaration provides a new opinion regarding a
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`motivation to combine Kaun and Kobayashi. Ex. 1041, ¶¶ 13–17; see also
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`3
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`IPR2020-01212
`U.S. Patent No. 9,153,835 B2
`Petitioner’s Reply (Paper 23) (“Reply”) at 9–10. He now opines that the
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`arrangement in FIG. 6 would lead to gaps that “[allow] for electrode materials to
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`indirectly contact one another through the creation of dendrites.” Ex. 1041, ¶¶ 13–
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`17 at ¶ 16; Ex. 2051, 56:1–17.
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`Mr. Gardner should have presented his dendrite theory in his original
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`Declaration. Between the time of his original Declaration and the Supplemental
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`Declaration, Mr. Gardner did not perform any experiments to show the formation
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`of dendrites in any alleged gaps formed in separators used by Kaun nor did he
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`conduct any other testing. Ex. 2051, 58:12–20. He had developed his
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`understanding of dendrite formation before he prepared his original Declaration.
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`Id., 56:20–57:4.
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`The Petition likewise should have been supported by Mr. Gardner’s
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`untimely dendrite theory, particularly where Kaun’s express disclosure is that the
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`z-shaped separators do not overlap. Petitioner’s attempt to now “gap-fill”
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`deficiencies in its Petition by presenting new expert testimony that could have been
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`presented in its prior filing is improper. See Toyota Motor Corp. v. Am. Vehicular
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`Sci. LLC, IPR2013-00424, Paper 50 at 21 (P.T.A.B. Jan. 12, 2015); Trial Practice
`
`Guide at 74. Accordingly, Mr. Gardner’s new opinions should be excluded.
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`4
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`IPR2020-01212
`U.S. Patent No. 9,153,835 B2
`B. New Opinions Concerning Additional Motivations to Modify
`Kaun With Kobayashi
`As mentioned above, the motivation given in the Petition for combining
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`Kaun and Kobayashi was the alleged improvement of Kobayashi’s “continuous
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`separator” as compared to Kaun’s z-shaped separator. Pet. at 34–37. Petitioner
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`provided no reason why a POSA would have been motivated to replace the entire
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`Kaun electrode assembly with that of Kobayashi.
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`Specifically, the Petition did not address why a POSA would have been
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`motivated to modify Kaun to include Kobayashi’s insulating plates 8, 9, which
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`would prevent short direct current paths from the electrodes to the housing because
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`they are integral with Kobayashi’s winding axis core. Ex. 1006 at [0019], [0030];
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`Ex. 2043, ¶¶ 520-21. The Petition therefore did not explain why a POSA would
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`have been motivated to deviate from Kaun’s principal solution to the problems of
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`internal resistance and heat generation.
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`Mr. Gardner’s Supplemental Declaration attempts to address gaps in the
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`Petition with untimely opinions regarding additional motivations to combine Kaun
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`and Kobayashi. See, e.g., Ex. 1041, ¶¶ 19, 34, 36, 44, 97, 98; see also Reply at 10–
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`11, 13. He opines for the first time that a POSA would have ignored Kaun’s
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`express teachings because Kaun is directed to “high powered batteries.” See, e.g.,
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`Ex. 1041 at ¶¶ 19 (“the short current paths of Kaun are intended to solve problems
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`of resistance that can occur in ‘high powered batteries.’”) (quoting Ex. 1005 at
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`5
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`IPR2020-01212
`U.S. Patent No. 9,153,835 B2
`¶ [0018]), 34 (“those [short] current paths are only critical … for high-power
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`applications”). Mr. Gardner also adds that a POSA would have been motivated “to
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`incorporate Kobayashi’s insulating elements into Kaun’s cell, particularly because
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`Kobayashi discloses a safe and productive electrode assembly for battery cells.”
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`Id. at ¶ 36; see also id. at ¶ 98; Reply at 12. These new opinions regarding the
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`nature of Kaun’s high powered cell and safety concerns are untimely. They should
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`be excluded. See Sumitomo Elec. Indus., Ltd. v. United Techs. Corp., IPR2017-
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`00966, Paper 29 at 26–28 (PTAB Sep. 12, 2018) (refusing to consider “additional
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`reasons to combine” set forth only in reply); JTEKT Corp. v. GKN Auto., Ltd.,
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`IPR2016-00046, Paper 27 at 29–30 (PTAB Jan. 23, 2017) (rejecting new
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`motivation to combine theory); Intelligent Bio-Sys., 821 F.3d at 1369–70.
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`C. New Opinions Concerning Reasonable Expectation of Success—
`Kaun’s Center Fastener
`The Petition did not explain how a POSA would have reasonably expected
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`to succeed in replacing the Kaun electrode assembly with that of Kobayashi in
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`light of Kaun’s center fastener. See Pet. at 44. Mr. Gardner agreed that a POSA
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`“would need to find a way to incorporate the fastener of Kaun,” Ex. 2030
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`(Deposition Transcript of Mr. Gardner), 114:18–24, but none was provided in the
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`Petition.
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`To address this deficiency, Mr. Gardner now opines that Kaun does not
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`require a center fastener within its housing. Ex. 1041, ¶¶ 23–25; see also Reply at
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`6
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`IPR2020-01212
`U.S. Patent No. 9,153,835 B2
`14–15. He previously testified to the contrary, i.e., that the fastener is required.
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`Ex. 2030, (Gardner Tr.) 114:18–115:2. The Petition makes no mention of the
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`fastener. See generally Pet. at 23–24. But, the Petition suggests that there is a
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`“unitary embodiment” of Kaun: “To the extent that Kaun is read as disclosing
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`separate embodiments, a POSA would have understood them to be experimental
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`variations of the same unitary embodiment disclosed in Kaun, and would have
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`viewed them together when considering the disclosure of Kaun.” Id. at 24, n.2
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`(emphasis added). Any such unitary embodiment would necessarily include the
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`center fastener.
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`Because Mr. Gardner’s new declaration is contradicted by his prior
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`declaration testimony and lacks relevance to any of the instituted grounds, it should
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`be excluded. FED. R. EVID. 401, 402; see also BancFirst ex rel. Est. of M.J.H. v.
`
`Ford Motor Co., 422 F. App’x 663, 665–66 (10th Cir. 2011) (excluding
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`declaration testimony attempting to substantively change prior deposition
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`testimony). Raising new evidence in a reply to make out a prima facie case for
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`unpatentability of a claim at issue is improper. Trial Practice Guide at 74.
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`D. New Opinions Concerning Reasonable Expectation of Success—
`Kobayashi’s Electrode Assembly
`Mr. Gardner’s Supplemental Declaration includes a hypothetical sketch
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`purporting to show how he would combine Kaun in view of Kobayashi. Ex. 1041,
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`¶¶ 26–30; see also Reply at 15. Mr. Gardner’s original declaration did not disclose
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`7
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`

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`IPR2020-01212
`U.S. Patent No. 9,153,835 B2
`his proposed modification. Ex. 2051, 61:2–62:3. He earlier testified that he had
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`no opinion as to how the Kobayashi structure would be modified in order to
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`include the center fastener of Kaun. Ex. 2030, 228:19–229:2.
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`Mr. Gardner now opines that superimposing Kaun’s housing onto
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`Kobayashi’s electrode assembly would involve “quite minor” modifications and
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`that “a POSA would easily be able to incorporate them with minimal
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`experimentation and testing.” Ex. 1041, ¶ 29. Yet, Mr. Gardner’s proposal (shown
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`below) includes a housing that is not closed (see areas within red circles), Ex.
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`2051, 62:4–63:22, contradicting his view that these modifications would be trivial.
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`Gardner Proposed Modification
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`
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`The Petition did not present Mr. Gardner’s proposed modifications. It
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`offered only conclusory argument of a reasonable expectation of success
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`8
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`IPR2020-01212
`U.S. Patent No. 9,153,835 B2
`“considering the similarity of Kaun and Kobayashi as well as their shared
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`objectives.” Pet. at 44.
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`There is simply no reason why such evidence or argument was not included
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`in the Petition. Thus, Mr. Gardner’s sketch and supporting theory should be
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`excluded as untimely. Resideo Techs., Inc. v. Ubiquitous Connectivity, LP,
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`IPR2019-01335, 2021 WL 262372, at *23 (P.T.A.B. Jan. 26, 2021) (disregarding
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`new argument raised in Reply).
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`III. CONCLUSION
`Mr. Gardner’s Supplemental Declaration (Ex. 1041) includes testimony that
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`could have, and should have, been set forth in a prior filing. Because the inclusion
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`of such evidence is prohibited by the applicable Rules and is inadmissible and
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`unfairly prejudicial to Patent Owner under Federal Rules of Evidence 401–403,
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`Patent Owner requests that Sections III–VI of Exhibit 1041 be excluded.
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`9
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`

`
`Date: October 13, 2021
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`
`
`IPR2020-01212
`U.S. Patent No. 9,153,835 B2
`Respectfully Submitted,
`
`
`
`
`/H. Michael Hartmann/
`H. Michael Hartmann, Reg. No. 28,423
`Wesley O. Mueller, Reg. No. 33,976
`Robert T. Wittmann, Reg. No. 54,549
`Leydig, Voit & Mayer, Ltd.
`Two Prudential Plaza, Suite 4900
`180 North Stetson Avenue
`Chicago, Illinois 60601-6745
`Telephone: (312) 616-5600
`Facsimile:
`(312) 616-5600
`mhartmann@leydig.com
`wmueller@leydig.com
`bwittmann@leydig.com
`
`Attorneys for Patent Owner
`VARTA Microbattery GmbH
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`10
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`
`
`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e), I hereby certify service of PATENT
`
`OWNER’S MOTION TO EXCLUDE EVIDENCE UNDER 37 C.F.R.
`
`§ 42.64(c) by PTAB E2E electronic notification and electronic mail to each of the
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`following individuals on the date indicated below:
`
`Paul A. Ragusa
`Email: paul.ragusa@bakerbotts.com
`Jennifer Tempesta
`Email: Tempesta@bakerbotts.com
`BAKER BOTTS LLP
`30 Rockefeller Plaza
`New York, New York 10112
`
`
`Date: October 13, 2021
`
`
`
`
`
`
`
`
`/H. Michael Hartmann/
`H. Michael Hartmann, Reg. No. 28,423
`Leydig, Voit & Mayer, Ltd.
`Two Prudential Plaza, Suite 4900
`180 North Stetson Avenue
`Chicago, Illinois 60601-6745
`Telephone: (312) 616-5600
`Facsimile:
`(312) 616-5600
`mhartmann@leydig.com
`
`Attorney for Patent Owner
`VARTA Microbattery GmbH
`
`
`
`