UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`ARKEMA AND ARKEMA FRANCE
`Petitioner,
`v.
`
`HONEYWELL INTERNATIONAL INC.,
`Patent Owner.
`
`
`
`Case No.: PGR2016-00011
`Patent No.: 9,157,017
`
`
`PATENT OWNER’S REPLY IN SUPPORT OF ITS
`
`MOTION TO EXCLUDE PURSUANT TO 37 C.F.R. § 42.64(C)
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`ARKEMA AND ARKEMA FRANCE
`Petitioner,
`v.
`
`HONEYWELL INTERNATIONAL INC.,
`Patent Owner.
`
`
`
`Case No.: PGR2016-00011
`Patent No.: 9,157,017
`
`
`PATENT OWNER’S REPLY IN SUPPORT OF ITS
`
`MOTION TO EXCLUDE PURSUANT TO 37 C.F.R. § 42.64(C)
`
`
`
`
`
`
`
`
`
`
`
`
`
`Honeywell submits this reply in support of its motion to exclude Petitioner’s
`
`Exhibit 1163 as hearsay.
`
`I.
`
`INTRODUCTION
`
`Recognizing the hearsay nature of Exhibit 1163, Arkema tries to salvage its
`
`exhibit by claiming that it is “used for the non-hearsay purpose of impeaching Dr.
`
`Bivens.” Opp. at 3. But Exhibit 1163 cannot be used for impeachment evidence
`
`because it is not a prior statement by Dr. Bivens, but instead, an earlier declaration
`
`of someone unrelated in any way to Dr. Bivens. As explained in Honeywell’s
`
`motion to exclude, Arkema is transparently attempting to use Exhibit 1163 as
`
`substantive rebuttal evidence and offering it for its truth, despite its plainly hearsay
`
`nature. Further supporting Honeywell’s motion, Arkema admits that Exhibit 1163
`
`is not something it is even relying on as necessary to support its contentions
`
`regarding the alleged desirability of a low-GWP refrigerant during the time period
`
`leading up to Honeywell’s invention. Accordingly, because Exhibit 1163 is
`
`undisputedly hearsay, is being offered for its truth, and is admittedly of little to no
`
`relevance to Arkema’s contentions, it should be excluded.
`
`II. ARGUMENT
`
`A. Exhibit 1163 Is Hearsay
`
`Arkema attempts to avoid the clear case for exclusion by arguing that it is
`
`not relying on Exhibit 1163 for its truth, but rather for “impeaching Dr. Bivens.”
`
`Opp. at 1, 4. Arkema does not cite any support for its proposition that using a
`
`
`
`
`1
`
`
`
`
`
`document that the witness did not write, had never seen, and disagrees with is
`
`proper “impeachment.” See Ex. 1177 at 30:4-18; 32:18-21. And for good reason:
`
`because that is neither proper impeachment nor an end-run around Honeywell’s
`
`valid hearsay objection. See Fisher v. United States, 78 Fed. Cl. 710, 712–13
`
`(2007) (improper to impeach expert with statements “not made by the witness
`
`himself”). Under Arkema’s theory, every piece of evidence could conceivably
`
`come in as “impeachment” evidence if it in any way is offered by a party in
`
`response to an opposing expert’s opinion. The rules of evidence, and basic fairness,
`
`say otherwise.
`
`Traditionally, impeachment “involves evidence that calls into question the
`
`witness's veracity. It deals with ‘matters like the bias or interest of a witness, his or
`
`her capacity to observe an event in issue, or a prior statement of the witness
`
`inconsistent with his or her current testimony.’” United States v. Harris, 557 F.3d
`
`938, 942 (8th Cir. 2009) (citation omitted). Arkema does not use Exhibit 1163 for
`
`any of those impeachment purposes, or for any impeachment purpose in the
`
`Federal Rules. See Fed. R. Evid. 801(d)(1) (advisory committee notes) (“Prior
`
`inconsistent statements traditionally have been admissible to impeach….”); Fed. R.
`
`Evid. 609 (governing impeachment by evidence of a criminal conviction); Fed. R.
`
`Evid. 613 (governing use of prior inconsistent statements by a witness); Fed. R.
`
`Evid. 607 (equating impeachment with “attack[ing] the witness’s credibility”).
`
`
`
`
`2
`
`
`
`
`
`Arkema instead attempts to use Exhibit 1163 to substantively rebut, rather
`
`than impeach, Dr. Bivens’ assertion that “[t]he only logical conclusion from this is
`
`that Inagaki, like all others skilled in the art at that time, presumed that all of the
`
`compounds covered by its formula would share the same toxicity and other
`
`concerns.” Opp. at 3 (citing Ex. 2126 ¶ 91) (emphasis Arkema’s). Arkema points
`
`to two things as “impeaching” Dr. Bivens’ above assertion: (1) his “failure to
`
`consider Dr. Shibanuma’s declaration”; and (2) his “admission that he, in fact, did
`
`not know why Daikin did not pursue Inagaki.” Opp. at 4.
`
`Dr. Shibanuma’s declaration in no way supports those points. Dr.
`
`Shibanuma’s declaration says nothing about Dr. Bivens’ consideration of it in this
`
`proceeding. How could it? The declaration was authored in 2014, and this
`
`proceeding began in 2016.
`
`Nor does Dr. Shibanuma’s declaration say anything about Dr. Bivens’
`
`knowledge about why Daikin did not pursue Inagaki. Why would it? What reason
`
`would Dr. Shibanuma have to talk about Dr. Bivens’ knowledge in his declaration?
`
`Indeed it does no such thing.
`
`Rather, Arkema cites only portions of Dr. Bivens’ deposition transcript to
`
`support its two above points. Opp. at 4 (citing Ex. 1177). By Arkema’s own
`
`admission then, Exhibit 1163 is not even impeachment evidence.
`
`
`
`
`3
`
`
`
`
`
`To the contrary, Arkema has plainly been called out for trying to use Exhibit
`
`1163—a declaration from a different proceeding by someone Arkema did not offer
`
`as a declarant here—to prove the truth of the matter asserted therein. By submitting
`
`it as an exhibit, Arkema intends the Board to weigh Exhibit 1163 against Dr.
`
`Bivens’ conclusions. Opp. at 4 (asserting Ex. 1163 is relevant to showing the
`
`“baseless[ness]” of Dr. Bivens’ assertion). Yet implicit in that weighing is the
`
`assumption that the Board will consider the statements in Exhibit 1163 for their
`
`truth. If not offered for their truth, statements by someone other than Dr. Bivens
`
`cannot possibly “impeach” Dr. Bivens’ conclusions. The whole purpose of
`
`Arkema’s reliance on Exhibit 1163 is to allegedly provide evidence to the Board as
`
`to why Daikin abandoned the Inagaki reference—i.e. for the truth of Arkema’s
`
`assertion.
`
`B. Honeywell’s Motion Did Not Include Improper Substantive
`Arguments
`
`Arkema also argues that Honeywell’s motion includes improper substantive
`
`arguments. To the contrary, Honeywell properly set forth evidentiary bases for
`
`excluding Exhibit 1163, namely: (1) it does not support Arkema’s propositions,
`
`and should therefore be excluded on that basis as irrelevant, and (2) does not carry
`
`any guarantees of trustworthiness to somehow qualify under the residual hearsay
`
`exception despite its facially hearsay nature. See Motion at 5, 7.
`
`
`
`
`4
`
`
`
`
`
`III. CONCLUSION
`
`For the foregoing reasons, Patent Owner moves that Exhibit 1163 be
`
`excluded from the record.
`
`Respectfully submitted,
`
`/s/ Gregg F. LoCascio, P.C.
`
`Gregg F. LoCascio, P.C. (Reg. No. 55,396)
`Noah Frank (Reg. No. 67,279)
`glocascio@kirkland.com
`noah.frank@kirkland.com
`KIRKLAND & ELLIS LLP
`655 Fifteenth Street, NW
`Suite 1200
`Washington, DC 20005
`Telephone: (202) 879-5200
`Fax: (202) 879-5200
`
`Attorneys For Patent Owner
`
`
`
`
`Date: April 24, 2017
`
`Eugene Goryunov (Reg. No. 61,579)
`egoryunov@kirkland.com
`KIRKLAND & ELLIS LLP
`300 North LaSalle
`Chicago, Illinois 60654
`Telephone: (312) 862-2000
`Fax: (312) 862-2200
`
`
`
`
`
`
`
`
`
`
`5
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Patent
`
`Owner’s Reply in Support of its Motion to Exclude was served on the 24th day of
`
`April, 2017, via electronic mail directed to counsel of record for the Petitioners:
`
`Mark D. Sweet
`Mark J. Feldstein
`Erin M. Sommers
`Charles W. Mitchell
`
`
`mark.sweet@finnegan.com
`mark.feldstein@finnegan.com
`erin.sommers@finnegan.com
`charles.mitchell@finnegan.com
`Arkema_PTAB@finnegan.com
`
`
`
`
`
`
`
`
`/s/ Gregg F. LoCascio, P.C.
`Gregg F. LoCascio, P.C.
`
`
`
`
`
`6
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
