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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
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`H&S MANUFACTURING COMPANY, INC.
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`Petitioner,
`v.
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`OXBO INTERNATIONAL CORPORATION
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`Patent Owner.
`______________
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`Case No.: IPR2016-00950
`U.S. Patent No. 8,166,739
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`______________
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`OPPOSITION TO PATENT OWNER’S MOTION TO EXCLUDE
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`UNDER 37 C.F.R. §42.64
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`IPR2016-00950
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`Inter Partes Review of U.S. Patent 8,166,739
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`I.
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`II.
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`Table of Contents
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` INTRODUCTION ........................................................................................... 1
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`THE MOTION FAILS TO COMPLY WITH GUIDANCE .......................... 1
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`III. THE EVIDENCE IS NOT EXCLUDABLE ................................................... 2
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`A.
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`B.
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`C.
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`D.
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`E.
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`F.
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`Ex.1023 - Carr Article ....................................................................... 2
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`Ex.1008 - Undersander Declaration .................................................... 3
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`Ex.1024 - Chaplin Declaration ............................................................ 3
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`Ex.1010 - Beougher ............................................................................. 4
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`Ex.1025 - Tri-Flex Manual ................................................................... 4
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`Ex.1026 - AE-50 Entry Form ............................................................... 5
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`IV. CONCLUSION ................................................................................................ 5
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`IPR2016-00950
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`Inter Partes Review of U.S. Patent 8,166,739
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`I.
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`INTRODUCTION
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`Patentee’s Motion to Exclude all or portions of Exhibits 1023, 1008, 1024,
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`1010, 1025, and 1026 should be denied. The Motion fails to comply with the
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`requirements in the Guidance for such motions and advances arguments that go to
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`the merits of the challenged evidence, not its admissibility. The challenged
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`evidence is admissible under the Federal Rules of Evidence (“FRE”), and the
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`Board can evaluate the appropriate weight to be accorded the evidence.
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`As the moving party, Patentee has the burden of establishing that the
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`challenged evidence is inadmissible. 37 C.F.R. § 42.20(c); Flir Sys., Inc. v. Leak
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`Surveys, Inc., Case IPR2014-00411, Paper 113, at 5 (PTAB Sept. 3, 2015).
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`Patentee’s Motion should be denied because it has not met that burden.
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`II. THE MOTION FAILS TO COMPLY WITH GUIDANCE
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`
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`A motion to exclude evidence must:
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`(a) Identify where in the record the objection originally was made;
`(b) Identify where in the record the evidence sought to be excluded
`was relied upon by an opponent;
`(c) Address objections to exhibits in numerical order; and
`(d) Explain each objection.
`Patent Trial Practice Guide, 77 Fed. Reg. 48765, 48767 (Aug. 14, 2012)
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`The Motion fails to comply with requirements (a), (b), and (c) set forth in
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`1
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`IPR2016-00950
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`Inter Partes Review of U.S. Patent 8,166,739
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`the Practice Guide. In addition, the explanation for many of the objections goes
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`beyond explaining why the evidence is not admissible. A motion “may not be used
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`to challenge the sufficiency of the evidence to prove a particular fact.” Id.
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`III. THE EVIDENCE IS NOT EXCLUDABLE
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`A.
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`Ex.1023 - Carr Article
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`The Motion argues that cross-examination of Patentee’s expert based on this
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`exhibit is irrelevant, hearsay, and outside the scope of direct. (Motion, pp.1-2).
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`These arguments go to the merits of the cross-examination and should have been
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`presented as observations on cross-examination, not as a motion to exclude. The
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`Carr article is within the scope of direct as it goes to the issue whether “material”
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`would be understood by a person skilled in the art as being limited to cut crops or
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`cut hay as testified by Patent Owner’s expert. (See, Reply, Section II.B, pp.7-9).
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`“[T]he law is well established that the Board will not exclude evidence that
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`is proffered to show what a person of ordinary skill in the art would have known
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`about the relevant field of art.” Apple Inc. v. DSS Tech. Mgmt., Inc., Case IPR2015-
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`00369, slip op. at 35-36 (PTAB June 17, 2016) (Paper 40). Under the balancing
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`test used by the Board for both relevance and hearsay objections, the use of the
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`Carr article to challenge the Patentee’s expert testimony on the understanding of a
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`person skilled in the art should not be excluded. Id.
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`2
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`IPR2016-00950
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`Inter Partes Review of U.S. Patent 8,166,739
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`B.
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`Ex.1008 - Undersander Declaration
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`
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`The Motion argues that five paragraphs of the Undersander declaration
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`should be excluded because they cite to references identified in the bibliography
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`but not expressly submitted as exhibits in this proceeding. (Motion, pp.2-4). The
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`Motion argues that the failure to submit such references as exhibits violates 37
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`C.F.R. §42.104(b)(5). This argument is baseless as neither of the references cited
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`in these five paragraphs form the basis of a ground of unpatentability that was
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`asserted in the Petition. The consideration of these five paragraph which address
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`the market forces influencing the development of farm machinery are evidence of
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`what is within the kin of one skilled in the art. Like the Carr article, the two
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`references are relevant to the knowledge and understanding of one skilled in the art
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`and Petitioner’s expert’s testimony in this regard should not be excluded. Id.
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`Moreover, Patentee was free to cross-examine Undersander about these paragraphs
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`and art during his deposition. To the extent Patentee did not, that provides no
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`justification for the requested motion.
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`C.
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`Ex.1024 - Chaplin Declaration
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`The Motion argues that certain portions of the Chaplin declaration should be
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`excluded as beyond the scope of direct. (Motion, pp.4-5). Each of these portions
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`are within the scope of direct as each goes to the issue whether “material” would
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`3
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`IPR2016-00950
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`Inter Partes Review of U.S. Patent 8,166,739
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`be understood by a person skilled in the art as being limited to cut crops or cut hay
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`as testified by Patentee’s expert. (See, Reply, Section II.B, pp.7-9).
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`Ex.1010 - Beougher
`D.
`The Motion argues that Beougher should be excluded because it was not
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`cited in the Petition. (Motion, p.6). The Motion fails to identify where Patentee
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`objected to Ex.1010; and, also fails to identify a proper basis for excluding this
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`exhibit. 37 C.F.R. §42.64(c). Beougher was cited in the Reply as a rebuttal to the
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`arguments by Patentee as to whether the claim term “material” is limited in the
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`manner that Patentee now argues. (Reply, p.9).
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`E.
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`Ex.1025 - Tri-Flex Manual
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`The Motion argues that the portion of the Tri-Flex manual should be
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`excluded because of hearsay and authentication. (Motion, pp.6-8). The Motion
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`does not present any arguments or evidence against the authenticity of the Tri-Flex
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`manual; rather it improperly argues the merits of this evidence, not just its
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`admissibility. In addition, the Motion improperly argues based on the district court
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`proceeding, even though the Board has yet to expressly authorize any such
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`argument. (Motion, p.7, citing to Ex.2020). The Tri-Flex manual is presented in the
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`Reply as support for the argument that Patentee has not satisfied its burden of
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`alleging copying, not for the truth of the matter asserted.
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`4
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`IPR2016-00950
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`Inter Partes Review of U.S. Patent 8,166,739
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`F.
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`Ex.1026 - AE-50 Entry Form
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`The Motion argues that the portion of the AE-50 Entry Form should be
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`excluded because of hearsay and authentication. (Motion, p.8). The Motion does
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`not present any arguments or evidence against the authenticity of the AE-50 Entry
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`Form. The AE-50 Entry Form is presented in the Reply as support for the
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`argument that Patentee has not satisfied its burden of alleging industry praise, not
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`for the truth of the matter asserted.
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`IV. CONCLUSION
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`Based on the arguments and prior art references disclosed and discussed in
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`the Petition, the exhibits, and this Reply, the ground of unpatentability of claim 1
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`of the ‘739 Patent should be confirmed.
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`Dated: July 7, 2017
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`Respectfully submitted,
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`
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`/Brad Pedersen/
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`Brad D. Pedersen
`Reg. No. 32,432
`Attorney for Petitioner
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`5
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`IPR2016-00950
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`Inter Partes Review of U.S. Patent 8,166,739
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`Certificate of Service
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`I hereby certify that on July 7, 2017, a copy of this Opposition to Patent
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`Owner’s Motion to Exclude was served electronically on counsel of record for the
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`Patent Owner, at the following addresses, as outlined in Patent Owner’s Mandatory
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`Notice:
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`
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`alagatta@merchantgould.com
`jward@merchantgould.com
`sbrunner@merchantgould.com
`gsebald@merchantgould.com
`tjohnson@merchantgould.com
`OxboIPR@merchantgould.com
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`Dated: July 7, 2017
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`Respectfully submitted,
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`/Brad Pedersen/
`Brad D. Pedersen
`Reg. No. 32,432
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`Attorney for Petitioner
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`6
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