`
`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.:
`
`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 REPLY TO PETITIONER’S OPPOSITION TO PATENT
`OWNER’S MOTION TO EXCLUDE EVIDENCE
`
`
`
`Case No.: IPR2012-00001
`Patent No: 6,778,074
`
`
`
`
`
`
`
`Attorney’s Docket No.: CUO0001-RE
`Page 1
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`Cuozzo Speed Technologies LLC (“Cuozzo”) submits this reply in support of
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`Patent Owner’s Motion to Exclude Evidence (Paper 48). Garmin’s response
`
`confirms that the testimony at issue concerned matters outside the scope of Prof.
`
`Morris’s direct testimony and should be excluded under 37 C.F.R. § 42.53(d)(5)(ii).
`
`I. Garmin Mischaracterizes Prof. Morris’s Direct Declaration Testimony.
`
`Garmin’s argument is based on the flawed premise that Prof. Morris “was
`
`retained to opine on” “the proper interpretation of claim 10.” Paper 54 at 7. Prof.
`
`Morris offered no opinion on the overall interpretation of claim 10 – a fact Garmin
`
`confirmed during the deposition (Ex. 1021 at 26:16-24):
`
`
`Nor did Prof. Morris offer an opinion on the legal question of claim interpretation.
`
`Rather, he was “asked to provide [his] opinion regarding 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.”
`
`Morris Decl., Ex. 2002, at ¶ 7.
`
`
`
`Garmin spent the first half of the deposition examining Prof. Morris on the
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`reasons and bases for his opinion that one skilled in the art, having reviewed the
`
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`Case No.: IPR2012-00001
`Patent No: 6,778,074
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`intrinsic record, would understand the “integrally attached” limitation to be met by
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`Attorney’s Docket No.: CUO0001-RE
`Page 2
`
`
`
`
`
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`the use of a single LCD for both the speedometer readout and colored display. But
`
`then Garmin changed topics altogether and began asking Prof. Morris questions
`
`directed to infringement, which was not the subject of his direct testimony.
`
`II. The Testimony at Issue Concerns Infringement, not the Meaning of “Integrally
`Attached” or any other Claim Term to One Skilled in the Art.
`
`On its face, Morris’s disputed testimony is outside the scope of the opinions
`
`offered in his declaration. Garmin’s questions were directed to infringement, asking
`
`for his opinion on whether certain hypothetical devices would be “covered” by
`
`certain claim language: “do you read that as covering a system which . . .” (Ex. 1021
`
`at 76:6-11); “changing the color of a numeral to red wouldn’t be covered by this
`
`claim language?” (id. at 77:3-4); “So an abrupt change to red wouldn’t be covered by
`
`that claim?” (id. at 77:19-20); and “So an abrupt change . . . isn’t what this claim
`
`language in Claim 10 is describing?” (id. at 77:23-4).
`
`These questions exceed the scope of Dr. Morris’s direct testimony, which
`
`Garmin itself articulates as “opinions that the claim could encompass a single
`
`electronic display that itself served as the speedometer and colored display.” Paper
`
`54 at 3-4. Prof. Morris did not address infringement in his declaration and was not
`
`prepared for questions about infringement. At one point, Prof. Morris replied to
`
`Garmin’s expansive cross-examination by stating, “I’m not sure what you mean by
`
`covered.” Ex. 1021 at 77:22. As further evidence that Garmin’s questions had
`
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`Case No.: IPR2012-00001
`Patent No: 6,778,074
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`nothing to do with claim interpretation, Garmin relied on the answers only for its
`
`Attorney’s Docket No.: CUO0001-RE
`Page 3
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`
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`
`
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`broadening argument and not for its claim construction arguments.
`
`III. Cuozzo Speed’s Re-Direct Confirmed That Garmin’s Questions Were Outside
`the Scope of Prof. Morris’s Direct Testimony and That He was Unprepared to
`Offer Reliable Opinion Testimony in Response to Them.
`
`Garmin turns the Rules of Evidence on their head by suggesting Cuozzo’s
`
`redirect examination of Prof. Morris somehow opened the door (retroactively) to
`
`Garmin’s improper questions or otherwise waived Cuozzo’s proper and timely
`
`objections. It is the scope of direct examination that defines the proper scope of
`
`cross-examination, not re-direct following cross. 37 C.F.R. § 42.53(d)(5)(ii) (setting
`
`a stricter standard than the discretionary standard in Fed. R. Evid. 611(b)). “The
`
`examination and cross-examination of a witness proceed as they would in a trial
`
`under the Federal Rules of Evidence.” Office Patent Trial Practice Guide, Fed. Reg.
`
`Vol. 77, No. 157, Appendix D, Testimony Guidelines, at 48772. Contrary to Rule
`
`611(b), which affords trial judges discretion (“Cross-examination should be limited
`
`to the subject matter of the direct examination”), § 42.53(d)(5)(ii) does not afford
`
`such discretion (“the scope of the examination is limited to the scope of the direct
`
`testimony”) (emphasis added to highlight mandatory language).
`
`On re-direct, Prof. Morris was asked about his qualifications and preparations
`
`(or lack thereof) to answer Garmin’s expansive questions. His responses confirmed
`
`he was not prepared to offer the expert opinion testimony elicited:
`
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`Case No.: IPR2012-00001
`Patent No: 6,778,074
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`Attorney’s Docket No.: CUO0001-RE
`Page 4
`
` Q: Did you analyze all of the claims in the ’074 Patent? A: No, no. (Ex.
`1021 at 83:3-5).
` When asked whether he analyzed the portion of the file history relating
`to the “delineation” term, Prof. Morris testified, “No. At least in my
`recollection I didn’t.” (id. at 87:1-7).
` Acknowledging the limit of his undertaking, Prof. Morris testified, “I
`was mostly focused on the integration of the two pieces of information
`into one display.” (id. at 87:8-11).
`Expert opinion testimony must be relevant to be admitted, and, here, Prof.
`
`Morris’s testimony on voir dire establishes he did not analyze the “delineation” term
`
`that was the subject of Garmin’s improper cross-examination. See Fed. R. Evid. 702.
`
`Prof. Morris’s outside-the-scope testimony about what is “covered” by the
`
`“delineation” claim term should be excluded.
`
`IV. Cuozzo’s Objections Were Timely, Complied with the Practice Guide, and
`were Perfected by the Motion to Exclude.
`
`
`
`Garmin seeks to exploit Cuozzo’s strict compliance with the Board’s rules and
`
`guidelines. Cuozzo’s counsel properly and timely objected to the improper cross-
`
`examination. The Practice Guide limits objections that may be made during cross-
`
`examination outside the presence of the Board. Office Patent Trial Practice Guide,
`
`Fed. Reg. Vol. 77, No. 157, Appendix D, Testimony Guidelines, at 48772 (“Counsel
`
`must not make objections or statements that suggest an answer to a witness.”). The
`
`rules state: “Objections should be limited to a single word or term,” and “Objection,
`
`form” is a proper objection. (Garmin made the same “form” objections.) Cuozzo
`
`perfected its objections by filing the motion to exclude. Id. at 48767. Cuozzo raised
`
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`
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`Case No.: IPR2012-00001
`Patent No: 6,778,074
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`the issue of Garmin’s objectionable questions with the Board in a teleconference, and
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`Attorney’s Docket No.: CUO0001-RE
`Page 5
`
`
`
`
`
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`the Board assured Cuozzo the objections would be perfected upon filing a motion to
`
`exclude.
`
`Garmin had the burden to explore, at the time of deposition, objections with
`
`which it did not agree. “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.” Id. (emphasis added). Garmin’s alleged failure to “learn of this objection
`
`to the scope until after the deposition” (Paper 54 at 7) is due solely to Garmin’s
`
`failure to avail itself of the rules by asking Cuozzo’s counsel to explain his
`
`objections. Garmin must not be permitted to pervert the rules by arguing that Cuozzo
`
`waived its objections when Cuozzo properly chose not to make impermissible
`
`speaking objections.
`
`Garmin’s references to the Practice Guide confirm that Cuozzo timely lodged
`
`proper objections and perfected them by timely filing the motion to exclude. The
`
`only support Garmin cites for its position is an interference decision, which followed
`
`BPAI rules that do not apply to, and are inconsistent with, the Board’s rules
`
`governing cross-examination in inter partes review proceedings.
`
`V. Conclusion
`
`
`In view of the above, Patent Owner Cuozzo respectfully requests that the
`
`Board grant Patent Owner Cuozzo’s Motion to Exclude Evidence (Paper 48).
`
`
`
`
`
`Case No.: IPR2012-00001
`Patent No: 6,778,074
`
`
`
`
`
`
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`Attorney’s Docket No.: CUO0001-RE
`Page 6
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`No fees are required for filing this reply; however, the Commissioner is
`
`authorized to charge any additional fees that may be required, or credit any
`
`overpayment, to Kasha Law LLC, Deposit Account No. 50-4075.
`
`
`
`
`
`
`
`Customer No. 67050
`Date: August 2, 2013
`
`Respectfully submitted,
`
`/John R. Kasha/
`John R. Kasha
`Reg. No. 53,100
`Attorney for the Patent Owner
`
`
`
`
`
`
`
`
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`Case No.: IPR2012-00001
`Patent No: 6,778,074
`
`
`
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`
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`Attorney’s Docket No.: CUO0001-RE
`Page 7
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`CERTIFICATE OF SERVICE
`
`In accordance with 37 C.F.R § 1.550(f), a copy of the Patent Owner’s Reply To
`Petitioner’s Opposition To Patent Owner’s Motion To Exclude, filed by the Cuozzo Speed
`Technologies LLC on August 2, 2013, was duly served on the Inter Partes Requester via e-mail
`on August 2, 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
`
`Cabrach J. Connor
`Taylor Dunham, LLP
`301 Congress Ave., Suite 1050
`Austin, TX 78701
`(512) 473-2257 (tel)
`(512) 478-4409 (fax)
`Email: cconnor@taylordunham.com
`
`
`
`
`
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