Filed on behalf of: Arkema Inc. and Arkema France
`By: Mark D. Sweet
`
`Mark J. Feldstein
`
`Erin M. Sommers
`
`Charles W. Mitchell
`
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, L.L.P.
`Telephone: 202-408-4000
`Facsimile: 202-408-4400
`E-mail: mark.sweet@finnegan.com; mark.feldstein@finnegan.com
`
` erin.sommers@finnegan.com; charles.mitchell@finnegan.com
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`Filed: April 24, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`ARKEMA INC. AND ARKEMA FRANCE
`Petitioner
`
`v.
`
`HONEYWELL INTERNATIONAL INC.
`Patent Owner
`______________________
`
`PGR2016-00011
`Patent No. 9,157,017
`______________________
`
`PETITIONER’S REPLY TO PATENT OWNER’S OPPOSITION
`PURSUANT TO 37 C.F.R. § 42.64(c)
`
`
`
`
`
`
`
`
`By: Mark D. Sweet
`
`Mark J. Feldstein
`
`Erin M. Sommers
`
`Charles W. Mitchell
`
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, L.L.P.
`Telephone: 202-408-4000
`Facsimile: 202-408-4400
`E-mail: mark.sweet@finnegan.com; mark.feldstein@finnegan.com
`
` erin.sommers@finnegan.com; charles.mitchell@finnegan.com
`
`
`
`
`
`
`
`
`
`
`Filed: April 24, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`ARKEMA INC. AND ARKEMA FRANCE
`Petitioner
`
`v.
`
`HONEYWELL INTERNATIONAL INC.
`Patent Owner
`______________________
`
`PGR2016-00011
`Patent No. 9,157,017
`______________________
`
`PETITIONER’S REPLY TO PATENT OWNER’S OPPOSITION
`PURSUANT TO 37 C.F.R. § 42.64(c)
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`U.S. Patent No. 9,157,017
`PGR2016-00011
`
`Page
`
`I.
`
`II.
`
`Exhibits 2101-2103 and Exhibit 1057, Table 3, Are Not
`Admissible under FRE 703 .............................................................................. 1
`
`Being Part of the File History Does Not Immunize Against
`Exclusion ......................................................................................................... 3
`
`III. Exhibits 2101-2103 Are Not Admissible under FRE 807 ............................... 4
`
`IV. Exhibit 1057 (and 1180) Can Be Excluded in Part ......................................... 5
`
`
`
`i
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`
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`U.S. Patent No. 9,157,017
`PGR2016-00011
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`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Federal Cases
`Brace v. United States,
`72 Fed. Cl. 337 (2006), aff’d, 250 F. App’x 359 (Fed. Cir. 2007) ....................... 2
`
`Info-Hold, Inc. v. Muzak LLC,
`No. 1:11-CV-283, 2013 WL 4482442 (S.D. Ohio Aug. 20, 2013),
`aff’d in part, rev’d in part on other grounds,
`783 F.3d 1365 (Fed. Cir. 2015) ............................................................................ 1
`
`Mike’s Train House, Inc. v. Lionel, L.L.C.,
`472 F.3d 398 (6th Cir. 2006) ................................................................................ 1
`
`Board Decisions
`Actelion Pharm. Ltd. v. ICOS Corp.,
`IPR2015-00561, Paper 50 (PTAB Aug. 3, 2016) ................................................. 3
`
`Corning Optical Comms. RF, LLC v. PPC Broadband, Inc.,
`IPR2013-00345, Paper 76 (PTAB Nov. 21, 2014) ............................................... 5
`
`Mexichem Amanco Holdings S.A. de C.V. v. Honeywell Int’l, Inc.,
`IPR2013-00576, Paper 36 (PTAB Sept. 5, 2014) ................................................. 3
`
`Praxair Distribution Inc. v. INO Therapeutics LLC,
`IPR2015-00529, Paper 33 (PTAB Dec. 22, 2015) ............................................... 3
`
`Square, Inc. v. REM Holdings 3, LLC,
`IPR2014-00312, Paper 58 (PTAB July 7, 2015) .................................................. 5
`
`Rules
`
`Fed. R. Evid. 701 ....................................................................................................... 1
`
`Fed. R. Evid. 703 ........................................................................................... 1, 2, 3, 4
`
`Fed. R. Evid. 805 ....................................................................................................... 5
`
`
`
`ii
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`
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`U.S. Patent No. 9,157,017
`PGR2016-00011
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`Fed. R. Evid. 807 ....................................................................................................... 4
`
`Regulations
`
`Office Patent Trial Practice Guide,
`77 Fed. Reg. 48,756 (Aug. 14, 2012) ................................................................... 4
`
`
`
`
`
`
`
`iii
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`
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`U.S. Patent No. 9,157,017
`PGR2016-00011
`
`I.
`
`Exhibits 2101-2103 and Exhibit 1057, Table 3, Are Not Admissible
`under FRE 703
`
`Honeywell wrongly asserts that hearsay Exs. 2101-2103 and Ex. 1057
`
`¶¶ 30-33, including Table 3, are admissible under FRE 703. Paper 42 at 6-7. This
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`rule does not apply to the present facts, and it does not mandate admission of
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`hearsay even where applicable.
`
`First, FRE 703 relates to expert testimony. But Dr. DesMarteau is, by his
`
`own repeated admissions, not an expert in lubricants. E.g., Ex. 1178 at 37:2-11;
`
`see also id. at 15-18; Paper 31 at 13. His reliance on purported lubricant-
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`refrigerant stability analyses in Ex. 2103 and Ex. 1057, Table 3 (see Ex. 2161,
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`§ VII.C) is thus beyond his expertise and beyond the scope of FRE 703. Compare
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`FRE 703, with FRE 701. Even if considered under FRE 703, Exs. 2101-2103 are
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`substantially opinion testimony and one expert cannot, as Dr. DesMarteau seeks to
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`do, rely “upon the opinion of others who were not even qualified as experts, nor
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`present at the trial.” Mike’s Train House, Inc. v. Lionel, L.L.C., 472 F.3d 398, 409
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`(6th Cir. 2006) (quotations omitted); see also Info-Hold, Inc. v. Muzak LLC, No.
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`1:11-CV-283, 2013 WL 4482442, at *5 (S.D. Ohio Aug. 20, 2013), aff’d in part,
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`rev’d in part on other grounds, 783 F.3d 1365, 1371 (Fed. Cir. 2015).
`
`Second, Honeywell’s declarants have not established that “experts in the
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`particular field would reasonably rely on those kinds of facts or data in forming an
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`
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`1
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`U.S. Patent No. 9,157,017
`PGR2016-00011
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`opinion on the subject.” FRE 703. Honeywell is not helped in this regard by the
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`additional hearsay of Dr. Singh1 in which, according to Honeywell, “he disclosed
`
`and explained the same data set forth in Table 3.” Paper 42 at 11 (citing Ex. 2165
`
`at 4). Repetition of hearsay does not make it any more reliable or admissible.
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`Moreover, Dr. Singh testified that he did not know whether fluoride numbers,
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`visual appearance data, and the presence of dimers were data that the lubricant
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`industry would rely on to determine whether a refrigerant/lubricant combination is
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`stable. Ex. 2166 at 363:6-14, 364:13-22, 370:24-371:15.
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`And third, automatically allowing the admission of untested, hearsay
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`testimony (Dr. Thomas’s and Mr. Winick’s) under FRE 703 simply because there
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`is no jury would allow declarants in PTAB proceedings unilateral control over
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`admissibility to, for example, improperly load the record for appeal with untested
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`evidence. However, “Rule 703 was not intended to abolish the hearsay rule and to
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`allow a witness, under the guise of giving expert testimony, to in effect become the
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`mouthpiece of the witnesses on whose statements or opinions the expert purports
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`to base his opinion.” Brace v. United States, 72 Fed. Cl. 337, 352 (2006), aff’d,
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`250 F. App’x 359 (Fed. Cir. 2007) (citations and quotations omitted). To hold
`
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`1 Honeywell submitted Ex. 2165 and 2166 with its Opposition. Arkema timely
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`objected, and intends to approach the Board for guidance. Paper 44.
`
`
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`2
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`U.S. Patent No. 9,157,017
`PGR2016-00011
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`otherwise would encourage evidentiary gamesmanship, such as Honeywell’s
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`attempts here to support hearsay with more hearsay. It would also prejudice the
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`opposing party’s ability to obtain, and undermine the Board’s ability to consider,
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`cross-examination testimony specific to a given proceeding.
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`For each of these reasons, Exs. 2101-2103 and Ex. 1057 ¶¶ 30-33, including
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`Table 3, are not admissible under FRE 703.
`
`II. Being Part of the File History2 Does Not Immunize Against Exclusion
`Contrary to Honeywell’s arguments (Paper 42 at 7-10), the Board’s case law
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`does not suggest that a declaration filed during prosecution is admissible where the
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`declarant is not cross-examined. Mexichem and Praxair, for example, certainly did
`
`not hold that such declarations were admissible absent cross-examination.
`
`IPR2013-00576, Paper 36 at 3; IPR2015-00529, Paper 33 at 2.
`
`Honeywell’s assertion that “Arkema could not, as a matter of routine
`
`discovery, depose Mr. Winick and Dr. Thomas” is also wrong. Paper 42 at 7.
`
`IPR2015-00561, Paper 50 at 37, n. 14 (“[E]ven though [the declarations] were
`
`submitted to the Patent Office during the prosecution . . . , because Patent Owner
`
`
`2 Contrary to Honeywell’s assertions (Paper 42 at 3), Ex. 2103 is not part of the
`
`’017 file history; Exs. A-G thereto (including Table 3) do not appear to be in the
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`’017 file history.
`
`
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`3
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`
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`U.S. Patent No. 9,157,017
`PGR2016-00011
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`relies on them substantively, Petitioner was entitled to cross-examine the
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`declarant.” (emphasis added)); see also Office Patent Trial Practice Guide, 77 Fed.
`
`Reg. 48756, 48761 (Aug. 14, 2012) (“[A] party presenting a witness’s testimony
`
`by affidavit should arrange to make the witness available for cross-
`
`examination.”).3 The burden was not on Arkema to seek additional relief outside
`
`its motion to exclude. See Paper 42 at 7, n. 2. Honeywell cannot, therefore,
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`unilaterally refuse to make Dr. Thomas and Mr. Winick available for deposition
`
`and still rely on their untested declarations. Ex. 1187.
`
`III. Exhibits 2101-2103 Are Not Admissible under FRE 807
`In an attempt to demonstrate that Ex. 2103 is trustworthy, Honeywell relies
`
`on prior district court depositions of Dr. Thomas and Dr. Singh. Paper 42 at 11-12.
`
`Such arguments, however, do not establish the reliability of Dr. Thomas’s
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`testimony, and certainly not Mr. Winick’s. First and foremost, Honeywell did not
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`provide the entirety of Dr. Singh’s deposition transcript and did not provide any
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`portion of Dr. Thomas’s deposition transcript. Second, those depositions occurred
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`almost 3 years before the ’017 patent was filed, precluding Arkema from even
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`theoretically having foreseen and enquired about the ’017 patent. Ex. 2166 at 1.
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`Third, Dr. Singh’s transcript (Ex. 2166) is marked as “Highly Confidential” on its
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`3 Those exhibits were ultimately admitted but not under FRE 703. Id. at 37-38.
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`4
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`U.S. Patent No. 9,157,017
`PGR2016-00011
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`face. Ex. 2166 at 1. Presumably Dr. Thomas’s transcript, which was not provided,
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`is likewise labeled “Highly Confidential,” precluding Arkema from accessing them
`
`and from using them in this proceeding. Ex. 1188 ¶¶ 2.2, 2.3, 3.1, 4.1(a)-(e), 4.2.
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`Honeywell’s attempted use of them is thus highly prejudicial. Here again
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`Honeywell relies on untested hearsay in an effort to preclude cross-examination of
`
`Dr. Thomas and Mr. Winick.
`
`IV. Exhibit 1057 (and 1180) Can Be Excluded in Part
`Contrary to Honeywell’s arguments (Paper 42 at 14-15), impermissible
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`hearsay statements, short of the entire document, may be excluded just like
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`portions of witness testimony, short of the entire testimony, may be excluded.
`
`Indeed, “hearsay” relates to individual statements and not to documents in their
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`entirety. See, e.g., FRE 805 (hearsay within hearsay). And the cases cited by
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`Honeywell do not hold otherwise. In Square, the Board refused to exclude the
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`same statement used by both parties. IPR2014-00312, Paper 58 at 37 (“the same
`
`evidence”). Corning is likewise inapposite because there the Board “relied upon
`
`Exhibit 2019 to the extent it was asserted by PPC—not by Corning,” obviating
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`PPC’s motion to exclude Ex. 2019. IPR2013-00345, Paper 76 at 51. Here,
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`Arkema does not rely on ¶¶ 30-33 and Table 3 of Ex. 1057 or Table 3 in Ex. 1180.
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`Nevertheless, Arkema would not object to expunging both Exs. 1057 and 1180
`
`should the Board exclude Ex. 2103.
`
`
`
`5
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`
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`Respectfully submitted,
`
`Date: April 24, 2017
`
`U.S. Patent No. 9,157,017
`PGR2016-00011
`
`
`
`By: /Mark J. Feldstein/
`Mark D. Sweet, Reg. No. 41,469
`Mark J. Feldstein, Reg. No. 46,693
`Erin M. Sommers, Reg. No. 60,974
`Charles W. Mitchell, Reg. No. 73,228
`FINNEGAN, HENDERSON, FARABOW,
`
`GARRETT & DUNNER, L.L.P.
`901 New York Avenue, N.W.
`Washington, D.C. 20001-4413
`Telephone: 202-408-4000
`Facsimile: 202-408-4400
`
`Counsel for Petitioner
`Arkema Inc. and Arkema France
`
`
`
`
`6
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`U.S. Patent No. 9,157,017
`PGR2016-00011
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`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a copy of the foregoing Petitioner’s Reply to
`
`Patent Owner’s Opposition Pursuant to 37 C.F.R. § 42.64(c) and Exhibit 1188
`
`were served electronically via email on April 24, 2017, in their entirety, on the
`
`following:
`
`Gregg F. LoCascio, P.C.
`Noah Frank
`KIRKLAND & ELLIS LLP
`615 Fifteenth Street, NW
`Suite 1200
`Washington, DC 20005
`Telephone: (202) 879-5290
`Fax: (202) 879-5200
`glocascio@kirkland.com
`noah.frank@kirkland.com
`
`Eugene Goryunov
`KIRKLAND & ELLIS LLP
`300 North LaSalle
`Chicago, Illinois 60654
`Telephone: (312) 862-2000
`Fax: (312) 862-2200
`egoryunov@kirkland.com
`
`
`Patent Owner has consented to electronic service by email to
`HON_PTAB_Service@kirkland.com.
`
`/Erin M. Sommers/
`Erin M. Sommers, Reg. No. 60,974
`
`
`
`
`
`
`
`
`
`
`
`
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