`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GARMIN INTERNATIONAL, INC. ET AL.
`Petitioner
`
`v.
`
`CUOZZO SPEED TECHNOLOGIES LLC
`Patent Owner
`____________
`
`
`
`IPR2012-00001
`
`Case:
`
`
`
`Patent No.:
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`6,778,074
`
`
`
`
`
`
`
`Filed:
`
`Issued:
`
`Inventors:
`
`Title:
`
`March 18, 2002
`
`August 17, 2004
`
`Giuseppe A. Cuozzo
`
`Speed Limit Indicator and Method for Displaying Speed and
`the Relevant Speed Limit
`
`Docket No.:
`
`CUO0001-RE
`
`____________
`
`
`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
`
`
`
`Attorney’s Docket No.: CUO0001-RE
`
`Case No.: IPR2012-00001
`Page 1
`
`Patent No: 6,778,074
`Garmin International, Inc., et al. (“Petitioner”) has relied upon deposition
`
`
`
`testimony from Professor James Morris (“Prof. Morris”), an expert witness retained
`
`by Cuozzo Speed Technologies LLC (“Patent Owner”). Pursuant to 37 C.F.R. §
`
`42.64(c), Patent Owner moves to exclude certain portions of that testimony, because
`
`it was elicited by Petitioner during improper cross-examination.
`
`Specifically, Prof. Morris submitted direct testimony in the form of a
`
`declaration (Ex. 2002). His direct testimony was focused on a single issue: “whether
`
`there is a reasonable basis to interpret ‘integrally attached’ to cover the case of a
`
`single electronic display that itself operates both as a speedometer and a colored
`
`display.” Ex. 2002 at ¶ 7.
`
`At his deposition, Petitioner repeatedly questioned Prof. Morris about matters
`
`outside the scope of his direct testimony in violation of 37 C.F.R. § 42.53(d)(5)(ii)
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`(“For cross-examination testimony, the scope of the examination is limited to the
`
`scope of the direct testimony”). Patent Owner timely objected to each improper
`
`question during the deposition in accordance § 41.155(a) and now moves to exclude
`
`the inadmissible testimony upon which Petitioner relies.
`
`Patent Owner moves to exclude the following portions of Exhibit 1021 (cited
`
`by transcript page and line numbers):
`
`
`
`Ex. 1021, Transcript (“Tr.”) at 76:6-78:3.
`
`
`
`
`
`Attorney’s Docket No.: CUO0001-RE
`
`Case No.: IPR2012-00001
`Page 2
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`Patent No: 6,778,074
`Petitioner asked four questions to Prof. Morris about what he believed was
`
`
`
`“covered” by the claim language “continuously update the delineation of which
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`speed readings are in violation of the speed limit” -- a subject not addressed
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`anywhere in Prof. Morris’s direct testimony. Counsel for Patent Owner objected to
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`each question on the record at 76:12, 77:5, 77:21, and 78:1. Petitioner relies upon
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`this cross-examination testimony in its Opposition to Patent Owner’s Motion to
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`Amend (Paper 39) at pages 3-4 as its only alleged support that proposed substitute
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`claim 23 enlarges the scope of the original claims.
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`This cross-examination testimony should be excluded, because it is outside the
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`scope of Prof. Morris’s direct testimony. Rule § 42.53(d)(5)(ii) clearly states: “For
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`cross-examination testimony, the scope of the examination is limited to the scope of
`
`the direct testimony.” Prof. Morris did not provide any opinion regarding the claim
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`language “continuously update the delineation of which speed readings are in
`
`violation of the speed limit” in his direct testimony. In fact, Prof. Morris expressly
`
`stated the scope of his direct testimony: “I have been asked to provide my opinion
`
`regarding whether there is a reasonable basis to interpret ‘integrally attached’ to
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`cover the case of a single electronic display that itself operates both as a speedometer
`
`and a colored display.” Ex. 2002 at ¶ 7. For this reason alone, the cross-examination
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`testimony at 76:6-78:3, to which Patent Owner properly and timely objected, should
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`be excluded.
`
`
`
`
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`Attorney’s Docket No.: CUO0001-RE
`
`Case No.: IPR2012-00001
`Page 3
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`Patent No: 6,778,074
`At his deposition, Prof. Morris explained that he could spend more time
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`
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`considering the issues about which he was being unfairly cross-examined, and he
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`testified that he did not analyze those issues in preparing his Declaration because he
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`was focused on the “integrally attached” term:
`
`
`
`
`
`
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`Attorney’s Docket No.: CUO0001-RE
`
`Case No.: IPR2012-00001
`Page 4
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`Patent No: 6,778,074
`Following his deposition, Prof. Morris considered the questions asked by
`
`
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`Petitioner, which were beyond his direct testimony. Prof. Morris then provided
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`clarification in his sworn errata. Petitioner never sought to cross-examine Prof.
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`Morris about his errata yet now challenges the admissibility of it. The parties have
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`notified the Board of these issues and have requested a teleconference to obtain
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`guidance on whether to submit Petitioner’s challenge by motion to exclude.
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`Conclusion
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`The Board should exclude evidence secured through improper cross-
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`examination, including Prof. Morris’ answers to questions that were outside the
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`scope of his direct testimony.
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`No fees are required for filing this motion; however, the Commissioner is
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`authorized to charge any additional fees that may be required, or to credit any
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`overpayment, to Kasha Law LLC, Deposit Account No. 50-4075.
`
`Respectfully submitted,
`
`/John R. Kasha/
`John R. Kasha
`Reg. No. 53,100
`Attorney for the Patent Owner
`
`
`
`
`
`
`
`
`
`
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`Customer No. 67050
`Date: July 12, 2013
`
`
`
`
`
`Case No.: IPR2012-00001
`Patent No: 6,778,074
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Attorney’s Docket No.: CUO0001-RE
`Page 5
`
`In accordance with 37 C.F.R § 1.550(f), a copy of the Patent Owner’s
`Motion To Exclude Evidence filed by the Cuozzo Speed Technologies LLC on
`July 12, 2103 was duly served on the Inter Partes Requester via e-mail on July 12,
`2013 to the following e-mail addresses:
`
`jbailey@hoveywilliams.com (Jennifer C. Bailey, Lead Counsel)
`sbrown@hoveywilliams.com (Scott R. Brown, Back-Up Counsel)
`jcrawford@hoveywilliams.com (Justin Crawford, Paralegal)
`
`
`Respectfully submitted,
`
`/John R. Kasha/
`Registration No. 53,100
`Attorney for Cuozzo Speed Technologies
`LLC
`
`
`
`Kasha Law LLC
`14532 Dufief Mill Rd.
`North Potomac, MD 20878
`(703) 867-1886, telephone
`(301) 340-3022, facsimile
`Email: john.kasha@kashalaw.com
`
`
`
`
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`
`
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