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 OPPOSITION TO PETITIONER’S
`
`MOTION TO EXCLUDE UNDER 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 OPPOSITION TO PETITIONER’S
`
`MOTION TO EXCLUDE UNDER 37 C.F.R. § 42.64(C)
`
`
`
`
`
`
`
`
`
`
`
`I.
`
`HONEYWELL TIMELY SUBMITTED EXHIBITS 2165 AND 2166
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`Arkema’s primary objection with Exs. 2165 and 2166 is that they were not
`
`served until Honeywell filed its opposition to Arkema’s motion to exclude, which
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`under Arkema’s reading of the rules is untimely. But Arkema neglects to mention
`
`that its original objections were not particular at all, depriving Honeywell of the
`
`required notice as to what Arkema was actually objecting. See HTC Corp. v. Adv.
`
`Audio Dev., LLC., IPR2014-01156, Paper 36 at 26 (Dec. 29, 2015) (concluding
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`general objection that document was not “within the business record exception”
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`was “insufficient to put [Petitioner] on notice that [Patent Owner] was specifically
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`objecting to the copyright data of the reference as hearsay”) (citing 37 C.F.R.
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`§ 42.64(b)(1)). Rather, Honeywell timely served Exs. 2165 and 2166 ten business
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`days after Arkema first particularized its objection to Ex. 2103 in its Motion to
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`Exclude. Paper 42; Paper 36; 37 C.F.R. § 42.64(b)(1).
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`Initially, Arkema’s only objection to Ex. 2103 stated:
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`
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`Paper 25 at 16. That boilerplate objection does not convey Arkema’s objection
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`with “sufficient particularity” and thus does not make clear what evidence could
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`correct one of any number of unidentified alleged issues with Ex. 2103. B/E
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`Aerospace, Inc. v. Mag Aerospace Indus., LLC, IPR2014-01513, Paper 104 at 7-8
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`
`
`
`1
`
`
`
`
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`(Mar. 18, 2016) (holding “boilerplate” objections ineffective). Arkema’s further
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`statement in its objections that it “reserve[d] [the] right to cross-examine [Mr.]
`
`Winick and Dr. Thomas,” is not even an objection—it is a mere reservation of
`
`right—and says nothing to tie Arkema’s lack of cross-examination to its generic
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`hearsay objection. Paper 25 at 16-17.
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`Over a month later, Arkema emailed asking to depose Dr. Thomas. Ex.
`
`1187. That email cannot be an objection as it is not filed with the Board. 37 C.F.R.
`
`§ 42.64(b)(1)(“objection… must be filed”). Even assuming it is an objection—it is
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`not—there was no basis to assume it was related to Arkema’s previous objection.
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`To be clear, the requested deposition is not routine discovery as Dr. Thomas did
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`not submit a declaration in this proceeding. 37 C.F.R. § 42.51(b)(1)(ii). Arkema
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`could have, but chose not to, request the deposition as additional discovery.
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`Finally, for the very first time, in its motion to exclude, Arkema arguably
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`particularized its claim that Ex. 2103 was hearsay because Arkema did not have an
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`opportunity to cross Dr. Thomas. Paper 36 at 8-10. Honeywell timely responded
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`thereafter. Paper 42 (citing Exs. 2165 and 2166); see 37 C.F.R. § 42.64(b)(2).
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`II. HONEYWELL HAD AUTHORITY TO FILE EXHIBITS 2165 & 2166
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`Arkema next objects, in its motion, that even if Exs. 2165 and 2166 were
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`timely served—they were—then they should be expunged because Honeywell did
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`not request authorization to file them. Paper 50 at 2-3.
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`
`
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`2
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`
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`Arkema’s cited cases are inapposite. In Taiwan Semiconductor Mfg. Co. v.
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`Godo Kaisha IP Bridge 1, the Board merely articulated the standard procedure of
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`serving—but not filing—supplemental evidence in response to an objection.
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`Authorization to file supplemental evidence was not addressed. IPR2016-01249,
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`Paper 12 (Jan. 20, 2017) at 2-4. In Symantec Corp. v. Finjan, Inc., the Board
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`denied a request to serve additional supplemental evidence in response to a party’s
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`“initial” objections when the party had already served a “first set” of supplemental
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`evidence. IPR2015-01892, Paper 23 at 2-3 (May 24, 2016).
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`Unlike Symantec, where the objections had clearly been made with
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`particularity—as the party had already served supplemental evidence—here
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`Honeywell contemporaneously served and filed its supplemental evidence with its
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`opposition to Arkema’s motion to exclude—the first time Arkema made particular
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`objections—and need not have sought authorization. 37 C.F.R. § 42.64(b)(2).
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`III. EXHIBITS 2165 AND 2166 ARE RELEVANT
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`Arkema argues that Exs. 2165 and 2166 are irrelevant because they are not
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`relied upon in Honeywell’s substantive papers nor do they support the
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`admissibility of Ex. 2103. Paper 50 at 3. Supplemental evidence is not used to
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`support an argument on the merits. See Handi-Quilter, Inc. v. Bernina Int’l AG,
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`IPR2013-00364, Paper 30 at 2-3 (June 12, 2014) (“Supplemental information, on
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`the other hand, is evidence a party intends to support an argument on the merits.”)
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`
`
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`3
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`
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`
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`(emphasis original). Exs. 2165 and 2166 do support the admissibility of Ex. 2103.
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`Arkema contends Ex. 2103 is hearsay, in part because Arkema was allegedly
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`“deprived . . . of the opportunity to cross-examine [Dr. Thomas] regarding the
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`basis for [his] opinions.” Paper 36 at 9. Not true. Arkema asked for a deposition
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`which was not authorized under the rules. 37 C.F.R. § 42.51(b)(1)(ii). Arkema
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`could have moved for additional discovery. 37 C.F.R. § 42.51(b)(2)(i). Arkema
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`made a strategic choice not to and now is asking the Board to alleviate its mistake.
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`Exs. 2165 and 2166 were submitted to rebut Arkema’s claim, first made in
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`its motion to exclude, that it was deprived cross-examination. Paper 42 at 11-12.
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`Exhibit 2165 is Dr. Rajiv Singh’s sworn declaration addressing the same stability
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`testing data on which Dr. Thomas based his opinion. Compare Ex. 2103 at 6-7, 53-
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`54, with, Ex. 2165 at 4-5, 6. And Ex. 2166 excerpts Arkema’s cross-examination of
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`Dr. Singh on that data. Ex. 2166 at 2. That Arkema switched counsel is of no
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`moment. Arkema’s cross-examination of a Honeywell witness under oath on the
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`same stability data in Ex. 2103 shows circumstantial guarantees of that data’s
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`trustworthiness and that Arkema would suffer no prejudice from its admission.
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`Exs. 2165 and 2166 are thus relevant as supporting the admissibility of Ex. 2013.
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`And Exs. 2165 and 2166 are not hearsay as Honeywell does not rely on their truth.
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`Date: May 9, 2017
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`
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`
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`Respectfully submitted,
`
`/s/ Gregg F. LoCascio, P.C.
`
`4
`
`
`
`
`
`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
`
`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
`
`
`
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`
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`5
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`
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Patent
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`Owner’s Opposition to Petitioner’s Motion to Exclude Under 37 C.F.R. § 42.64(c)
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`was served on the 9th day of May, 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
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`
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