UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`GARMIN INTERNATIONAL, INC. ET AL.
`Petitioner
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`v.
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`Patent of CUOZZO SPEED TECHNOLOGIES LLC
`Patent Owner
`
`____________
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`Case IPR2012-00001
`Patent 6,778,074
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`____________
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`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION TO EXCLUDE EVIDENCE
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`
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`GARMIN INTERNATIONAL, INC. ET AL.
`Petitioner
`
`v.
`
`Patent of CUOZZO SPEED TECHNOLOGIES LLC
`Patent Owner
`
`____________
`
`Case IPR2012-00001
`Patent 6,778,074
`
`____________
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`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION TO EXCLUDE EVIDENCE
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`TABLE OF CONTENTS
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`I. The Board should Deny Cuozzo’s Motion to Exclude ....................................... 1
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` A. The Expert Testimony was Reasonably within the
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` Scope of the Declaration ..................................................................................... 2
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` B. Cuozzo did not Object to Scope and/or Waived any Objection to Scope
`During the Deposition ........................................................................................ 7
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`II. Conclusion ........................................................................................................ 11
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`Case No.: IPR2012-00001
`Patent No.: 6,778,074
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`I. The Board should Deny Cuozzo’s Motion to Exclude
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`This is the third effort Patent Owner, Cuozzo Speed Technologies LLC
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`(“Cuozzo”), has made to repair damaging testimony of its expert, Dr. Morris. The
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`first effort occurred at the deposition when Cuozzo’s counsel tried to have Dr.
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`Morris change his answers to the four questions at issue on redirect. The second
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`attempt occurred when Cuozzo filed errata sheets with the Board that attempted to
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`substantively alter Dr. Morris’s testimony after the fact. The Board recently
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`rejected that effort and expunged the errata sheets from the record. (See Paper 50 at
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`4.) In its third and current attempt to undo testimony of its own expert, Cuozzo
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`asks the Board to exclude certain testimony as allegedly being outside the scope of
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`his declaration—an objection that Cuozzo did not make at the deposition and only
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`later developed in hopes of preventing the Board from considering this problematic
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`testimony.
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`Petitioner Garmin International, Inc. (“Garmin”) respectfully requests that
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`the Board call strike three on Cuozzo and deny its Motion. First, there is little
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`doubt that Dr. Morris’s testimony was reasonably within the scope of his
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`declaration and no doubt that it was not “clearly outside the scope” under the
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`standard applied by the Board. Second, Cuozzo’s counsel did not object to this
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`line of questioning on the grounds that it was allegedly outside the scope during
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`the deposition, but only objected to the “form” of certain questions. Not only did
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`Cuozzo’s counsel never suggest that this questioning was outside the scope during
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`the deposition, Cuozzo’ counsel extensively questioned Dr. Morris on the very
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`same subject matter on redirect, further evidencing that there was no objection to
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`the scope of the testimony at the time. For either of these reasons, Cuozzo’s motion
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`to exclude should be denied.
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`A. The Expert Testimony was Reasonably within the Scope of the
`Declaration
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`The Board should deny Cuozzo’s motion in the first instance as the
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`testimony Cuozzo seeks to exclude is reasonably within the scope of the
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`declaration and certainly not “clearly outside the scope” under the standard applied
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`by the Board.
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`Dr. Morris originally submitted his declaration in support of Cuozzo’s
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`motion for discovery authorization (Paper 21 at 4, citing Ex. 2002), and Cuozzo
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`subsequently relied on this declaration in its Patent Owner Response (Paper 31 at
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`5, 11-12, citing Ex. 2002). In his declaration, Dr. Morris opined that the term
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`“integrally attached” should be interpreted more broadly than construed by the
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`Board to allow claim 10 to encompass the case of a single electronic display that
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`itself operates as both the speedometer and the colored display of claim 10 of the
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`‘074 Patent. (See Ex. 2002 at ¶¶ 7, 32). Dr. Morris’s declaration included, among
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`other things, an analysis of the language of claim 10, an analysis of the
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`specification, a discussion of other claims, including claims 12 and 18, and a
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`discussion of the file history. (See id. at ¶¶ 19-24, 30-31). Dr. Morris’s declaration
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`discussed how he believed the patent’s teaching of a mechanical embodiment
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`“might be modified to include an LCD according to the Board’s interpretation of
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`‘integrally attached.’” (Id. at ¶ 25). In that regard, Dr. Morris described how the
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`specification teaches that “a region of speeds above the speed limit is displayed by
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`rotating the solid red plastic filter along the same axis as plastic needle 20 of the
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`speedometer relative to speed denoting markings 16 painted on backplate 14.” (Id.
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`at ¶ 26). Dr. Morris then discussed how he believed this mechanical embodiment
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`could be modified to replace the rotating red filter with an LCD. (Id. at ¶¶ 27-28).
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`And ultimately Dr. Morris opined that “it would be natural for one skilled in the
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`art” to implement the invention on a single LCD and that he felt such an electronic
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`embodiment was “implie[d]” by the patent. (Id. at ¶¶ 28-29, 32).
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`As the Board is aware, Petitioner scrutinized Dr. Morris’s opinions through
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`various lines of cross-examination, including those based on the plain claim
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`language and the specification. (See Petitioner’s Reply, Paper 40 at 3-4;
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`Petitioner’s Opposition to Motion to Amend, Paper 39 at 2-4; see also Ex. 1021).
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`Cuozzo takes issue with four questions asked of Dr. Morris pertaining to how
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`claim 10’s recitation of “adjust[ing] a colored display . . . to continuously update
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`the delineation of which speed readings are in violation of the speed limit” was
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`inconsistent with Dr. Morris’s opinions that the claim could encompass a single
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`electronic display that itself served as the speedometer and colored display. (See
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`Ex. 1021 at 76:6-78:23). In response to these questions, Dr. Morris conceded that
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`his prior testimony (which Cuozzo does not seek to exclude) was incorrect and that
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`the claim did not encompass changing the color of a current speed numeral (e.g.,
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`“56 mph”) shown graphically on an electronic display upon the vehicle exceeding
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`the speed limit. (See id. at 76:13-17 (“Contradicting what I said a few minutes
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`ago, this seems to clearly indicate that the display controller adjusts a colored
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`display, so it is at all times showing the range of appropriate speed limits; so this
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`claim requires, strongly requires, that the relation between your current speed and
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`the permissible speeds is evident all the time.”); see also Petitioner’s Opposition,
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`Paper 39 at 3-4).
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`Cuozzo now seeks to exclude Dr. Morris’s admissions in response to these
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`four questions as allegedly being outside the scope of his declaration. Petitioner
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`submits that this position lacks support in the law and is incorrect in view of the
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`facts.
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`As recognized by Cuozzo, cross-examination is limited in scope by the
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`content of the direct examination, which in the present context is Dr. Morris’s
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`declaration. See 37 C.F.R. §42.53(d)(5)(ii). While Cuozzo would like to limit the
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`scope of Dr. Morris’s testimony to the two specific words, “integrally attached,”
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`this position ignores a fundamental precept of claim interpretation – that “[c]laim
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`terms are not interpreted in a vacuum, devoid of the context of the claim as a
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`whole.” See Ex Parte Richard Farrar and Callam Coloquhon, Appeal No. 2011-
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`006632, 2013 WL 1229101, *5 (Patent Tr. & App. Bd., March 21, 2013) (citing
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`Hockerson-Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369, 1374 (Fed. Cir.
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`1999) (“[p]roper claim construction ... demands interpretation of the entire claim in
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`context, not a single element in isolation.”); ACTV, Inc. v. Walt Disney Co., 346
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`F.3d 1082, 1088 (Fed. Cir. 2003) (“While certain terms may be at the center of the
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`claim construction debate, the context of the surrounding words of the claim also
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`must be considered....”).1 Thus, it is legally improper to suggest that Dr. Morris can
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`be allowed to opine on two words in claim 10 without considering the language of
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`the claim as a whole, including the immediately preceding claim limitation. In fact,
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`Dr. Morris acknowledged on redirect that he was retained in connection with and
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`provided testimony regarding “primarily claim 10.” (Ex. 1021 at 21, tr. 82:15-
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`83:2). And Dr. Morris looked beyond claim 10 to other claims in the patent in
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`forming his opinions. (See Ex. 2002 at ¶¶21-23 (discussing claims 12 and 18)).
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`1 “ Importantly, the person of ordinary skill in the art is deemed to read the claim
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`term not only in the context of the particular claim in which the disputed term
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`appears, but also in the context of the entire patent, including the specification.”
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`Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (emphasis added).
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`Consequently, for Dr. Morris to be able to opine that he believes claim 10
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`should be interpreted as encompassing an electronic embodiment in which a single
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`electronic display itself serves as the speedometer and the colored display, he must
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`have considered the language of the entire claim that further implicates operation
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`of the colored display, i.e., adjusting the colored display to update the delineation
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`of speed readings that are in violation of the speed limit. Through his declaration
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`and his testimony, he appears to have done so. (See Ex. 2002 at ¶¶26-32; Ex. 1021
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`at Tr. 76:6-78:23, Tr. at 89:18-97:15). For Cuozzo now to contend that its expert’s
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`testimony regarding claim 10 should be excluded because he allegedly did not
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`consider all of the language of claim 10 or was somehow unprepared to discuss
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`other parts of claim 10 seems to be an act of desperation. (See Paper 38, at 3).
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`More importantly, it is a natural outcome of the truth-eliciting capability of cross
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`examination that a witness may give answers other than those a party wished their
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`witness had been prepared to give. The inquiry into the scope of his cross-
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`examination is properly directed at the subject matter of his direct testimony –
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`which is the interpretation of claim 10 – not his preparedness to take certain
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`positions.
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`As the Board recently recognized, it “generally allows some leeway as to
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`questions seemingly out of the scope of the direct testimony on cross examination.
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`Questions, however, that are clearly outside the scope of direct are not permitted.”
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`Corning Inc. v. DSM IP Assets B.V., IPR2013-00043 (Pat. Tr. & App. Bd., July 8,
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`2013 Order at p. 2). While Garmin adamantly believes that its cross examination
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`was well within the scope of Dr. Morris’s direct testimony, there is little doubt that
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`the cross examination did not rise to the level of being “clearly outside the scope”
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`of the declaration as it relates to the interpretation of claim 10.2
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`Because the line of questioning was directed toward the proper interpretation
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`of claim 10—the very subject that Dr. Morris was retained to opine on, Petitioner
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`submits that the questions were reasonably within the scope of his declaration and
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`certainly not clearly outside the scope. Petitioner, therefore, respectfully submits
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`that the Board should deny the motion.
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`B. Cuozzo did not Object to Scope and/or Waived any Objection to
`Scope During the Deposition
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`Because Petitioner’s cross-examination was not outside the scope, it is not
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`surprising that Cuozzo’s counsel, in fact, did not object to this questioning as being
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`outside the scope during the deposition. Indeed, Garmin did not learn of this
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`objection to the scope until after the deposition and after Garmin had already filed
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`papers relying on the testimony. Cuozzo’s failure to properly and timely object is
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`fatal to its motion.
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`2 As discussed further below, this is clear from the fact that Cuozzo’s counsel
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`questioned Dr. Morris on redirect regarding this function and even enlarged the
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`scope of the initial cross-examination.
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`Each of the four objections referenced in Cuozzo’s motion are identical:
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`“Object(ion) to form.” (Ex. 1021 at 19-20, Tr. 76:12, 77:5, 77:21 and 78:1). This is
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`not a proper objection to the scope of the testimony, nor was there any indication
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`that counsel at the time intended to object to the questions as allegedly outside the
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`scope. While the Board has stated its preference that objections be stated concisely,
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`it has not stated that the basis for an objection can be disguised or changed after the
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`fact in a motion to exclude—nor would such a rule be fair or logical.
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`The Trial Practice Guide provides in part:
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`2. An objection at the time of the examination—whether to evidence,
`to a party’s conduct, to the officer’s qualifications, to the manner of
`taking the testimony, or any aspect of the testimony— must be noted
`on the record, but the examination still proceeds; testimony is taken
`subject to any such objection.
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`3. An objection must be stated concisely in a non-argumentative and
`non-suggestive manner. Counsel must not make objections or
`statements that suggest an answer to a witness. Objections should be
`limited to a single word or term. Examples of objections that would be
`properly stated are: ‘‘Objection, form’’; ‘‘Objection, hearsay’’;
`‘‘Objection, relevance’’; and ‘‘Objection, foundation.’’ Examples of
`objections that would not be proper are: ‘‘Objection, I don’t
`understand the question’’; ‘‘Objection, vague’’; ‘‘Objection, take your
`time answering the question’’; and ‘‘Objection, look at the document
`before you answer.’’ An objecting party must give a clear and concise
`explanation of an objection if requested by the party taking the
`testimony or the objection is waived.
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`Office Patent Trial Practice Guide, Fed. Reg. Vol. 77, No. 157, Appendix D,
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`Testimony Guidelines, p. 48772, col. 3 (emphasis added). The Guide further
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`provides that a party “must timely object to the evidence at the point it is offered
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`and then preserve the objection by filing a motion to exclude the evidence.” Id. at
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`p. 48767, col. 3. The Rules further address the impact of failing to object:
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`Any objection to the content, form, or manner of taking the
`deposition, including the qualifications of the officer, is waived unless
`made on the record during the deposition and preserved in a timely
`filed motion to exclude.
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`37 C.F.R. §42.53(f)(8) (emphasis added); see also 37 C.F.R. §42.64(a) and (c).
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`The purpose of these rules is obvious and adherence to them is essential to
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`maintain order and provide certainty in trials before the Board. See e.g., Paolo
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`Pevarello, et al. v. Nancy C. Lan, et al., Interference No. 105,394, 85 U.S.P.Q.2d
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`771, 2007 WL 594728 (Bd.Pat.App. & Interf., Jan. 12, 2007). In Pevarello, the
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`BPAI, in discussing a similar provision3 and the effect of a blanket objection to all
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`questions in a deposition, stressed the importance and reasoning of why a
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`questioning lawyer must be made aware of the basis of an objection. Id. at **3-4.
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`The BPAI noted that the reason for stating the basis of an objection is to permit a
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`deposing lawyer to ask additional questions or rephrase questions to overcome an
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`objection. Id.
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`This reasoning applies equally where the objecting attorney makes a
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`different objection at a deposition than that on which it relies to exclude testimony.
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`3 While the BPAI Cross-Examination Guidelines in effect at the time expressly
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`required stating a “legal basis for the objection,” Garmin believes that such a
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`requirement is implied, if not expressly stated, by the Trial Practice Guide.
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`For example, if a proper objection to the scope of the questions were made,
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`Petitioner’s counsel could have rephrased the questions, established further
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`foundation for the questioning being within the scope of the direct testimony of Dr.
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`Morris (which Petitioner believes it was already) or the parties could have had a
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`discussion on the record as to the proper scope and promptly contacted the Board if
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`necessary. However, because of Cuozzo’s failure to state its alleged intent for its
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`“form” objection to be a “scope” objection, Garmin is no longer in a position to
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`rephrase any questions or to resume its questioning and the exclusion of the
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`testimony would be prejudicial to Garmin. Allowing Cuozzo to exclude the
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`testimony now burdens both Garmin and the Board and is at odds with a “just,
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`speedy and inexpensive resolution of every proceeding.” 37 C.F.R. §42.1. Thus,
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`Cuozzo’s motion should be denied because it did not make a proper objection to
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`the scope of the cross-examination during the deposition.
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`Of further importance is that after objecting to the form of Garmin’s
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`questioning, Cuozzo’s counsel extensively questioned Dr. Morris on redirect on
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`the very same subject matter that Cuozzo now seeks to exclude. (See Ex. 1021 at
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`21-25, Tr. at 89:18-97:15; see, e.g., id. at 90:4-12 (“Q. So in the context of an
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`embodiment of Claim 10 where you have a single LCD screen . . . and the speed of
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`the vehicle is presented as a digital readout . . . how would that delineation of the
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`speeds that are in violation be presented to the driver?”)). The redirect even delved
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`into the prosecution history surrounding the subject matter that was the focus of
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`Garmin’s questioning. Garmin believes Cuozzo’s redirect, coupled with Cuozzo’s
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`failure to actually object to the scope, is conclusive evidence that Cuozzo did not
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`believe the testimony was outside the scope at the time. Indeed, it appears Cuozzo
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`has resorted to a motion to exclude because even Cuozzo’s own redirect elicited
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`damaging confirmatory admissions from Dr. Morris, including that changing the
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`color of a digital readout of a single current speed numeral was not covered by the
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`language of claim 10. (See, e.g., id. at 90:4-23) (“A. . . . . [W]ell, actually it would
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`be impossible to say what the speed limit was with a single number . . . . You could
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`say whether you were over of under the speed limit by a color or something, but
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`you couldn’t actually delineate all these speeds and continuously be changing the
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`speed readings which are in violation of the speed limit.”). Cuozzo should not now
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`be allowed to assert that it believes this subject matter is outside the scope of Dr.
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`Morris’s testimony simply because it has now seen the damage caused by the
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`testimony. The Board, therefore, should deny Cuozzo’s motion for this additional
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`reason.
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`II. Conclusion
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`In view of the above, Petitioner Garmin respectfully requests that Board
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`deny Patent Owner Cuozzo’s Motion to Exclude Evidence.
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`Respectfully submitted,
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`HOVEY WILLIAMS LLP
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`BY: /s/ Jason R. Mudd
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`Jason R. Mudd, Reg. No. 57,700
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`Eric A. Buresh, Reg. No. 53,394
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`ERISE IP, P.A.
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`6201 College Blvd., Suite 300
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`Overland Park, KS 66211
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`P: (913) 777-5600
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`F: (913) 777-5601
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`Jason.Mudd@eriseip.com
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`Eric.Buresh@EriseIP.com
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`Jennifer C. Bailey, Reg. No. 52,583
`Scott R. Brown, Reg. No. 40,535
`10801 Mastin Blvd., Suite 1000
`Overland Park, KS 66210
`P: (913) 647-9050
`F: (913) 647-9057
`jcb@hoveywilliams.com
`srb@hoveywilliams.com
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`ATTORNEYS FOR PETITIONER
`(IPR Trial No. 2012-00001)
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`Case No.: IPR2012-00001
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`CERTIFICATE OF SERVICE
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`I hereby certify that on the 26th day of July 2013, a true and correct copy of
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`Petitioner’s Opposition to Patent Owner’s Motion to Exclude Evidence has been
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`provided, via electronic mail to counsel of record as follows:
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`John Robert Kasha, Esq.
`KASHA LAW LLC
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`Email: john.kasha@kashalaw.com
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`Email: cconnor@reedscardino.com
`Email: jdeats@reedscardino.com
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`Cabrach J. Connor
`Jason W. Deats
`REED & SCARDINO LLP
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`David A. Skeels
`FRIEDMAN, SUDER & COOKE
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`ATTORNEYS FOR PATENT OWNER CUOZZO SPEED TECHNOLOGIES
`LLC
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`Email: skeels@fsclaw.com
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` /s/ Jennifer C. Bailey
` Jennifer C. Bailey
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`13
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