Paper 46
`Entered: August 27, 2014
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`Trials@uspto.gov
`Tel: 571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_______________
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`K-40 ELECTRONICS, LLC
`Petitioner
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`v.
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`ESCORT, INC.
`Patent Owner
`_______________
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`Case IPR2013-00203
`Patent 7,999,721
`______________
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`Before GLENN J. PERRY, THOMAS L. GIANNETTI, and
`TRENTON A. WARD, Administrative Patent Judges.
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`
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`WARD, Administrative Patent Judge.
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`ORDER
`Motion to Seal Under 37 C.F.R. § 42.54,
`Motion to Exclude Under 37 C.F.R. § 42.64, and
`Motion Requesting Acceptance of Non-Electronic Submission
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`

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`IPR2013-00203
`Patent 7,999,721
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`I. PATENT OWNER’S MOTION TO SEAL
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`On March 10, 2014, K-40 Electronics, LLC (“Petitioner”) filed a request to
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`seal the deposition transcript of Mr. Steve Orr (Ex. 1017) based on Patent Owner’s
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`designation of certain portions of the transcript as confidential. Paper 19, 1.
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`Additionally, Petitioner filed a redacted version of the same deposition transcript.
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`See Ex. 1023. We issued an Order on March 14, 2014 deeming Petitioner’s
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`request to be a motion to seal and denied the motion for failure to explain why the
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`information redacted from the non-confidential version of the document is
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`confidential. Paper 20, 2. On March 27, 2014, Escort Inc. (“Patent Owner”) filed
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`an Unopposed Motion to Seal seeking to seal the Deposition Transcript of Mr.
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`Steven K. Orr (Ex. 1017) under 37 C.F.R. § 42.54. Paper 24, 1.
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`As stated in the Office Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760
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`(Aug. 14, 2012):
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`The rules aim to strike a balance between the public’s interest in
`maintaining a complete and understandable file history and the parties’
`interest in protecting truly sensitive information.
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`A party wishing to file a document or thing under seal must show good cause for
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`the relief requested. 37 C.F.R. § 42.54. As the moving party, Patent Owner bears
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`the burden of proof. 37 C.F.R. § 42.20(c). As part of its showing, Patent Owner
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`must explain why the information is appropriate to be filed under seal. In the
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`motion, Patent Owner identifies the confidential nature of the testimony redacted
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`from Mr. Orr’s deposition transcript, including a discussion of private family legal
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`matters, Mr. Orr’s personal relationships, and business confidential information not
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`relevant to the proceeding. Paper 24, 7-9.
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`The Board’s final decision does not rely upon any of testimony redacted
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`from the deposition transcript. Thus, the public’s interest in maintaining a
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`complete and understandable file history with respect to the redacted information
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`IPR2013-00203
`Patent 7,999,721
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`does not outweighPatent Owner’s interest in protecting the sensitive information.
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`In consideration of the above, we determine that Patent Owner has shown good
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`cause and the motion to seal Ex. 1017 is granted.
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`II. PATENT OWNER’S MOTION TO EXCLUDE
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`On April 24, 2014, Patent Owner filed a motion to exclude the following:
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`(1) Second Declaration of Dr. Bartone (Ex. 1021);
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`(2) Patents incorporated by reference in Hoffberg and Fleming, III (Exs.
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`1006, 1016, and 1022);
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`(3) Alleged new evidence raised in Petitioner’s Reply (Ex. 1013);
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`(4) Petitioner’s supplemental “level of ordinary skill” evidence (Exs. 1014,
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`1015);
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`(5) Supplemental claim construction evidence;
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`(6) Portions of the deposition of Dr. John R. Grindon (Ex. 1019 at 45:3–17,
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`46:2–17, 7:24–49:15, 110:20–114:23, 138:18–145:6, 145:17–146:2,
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`157:20–158:12); and
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`(7) Petitioner’s Reply (Paper 18).
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`Paper 25 (“Mot. to Exclude”), 2–15.
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`The party moving to exclude evidence bears the burden of proof to establish
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`that it is entitled to the relief requested—namely, that the material sought to be
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`excluded is inadmissible under the Federal Rules of Evidence. See 37 C.F.R. §§
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`42.20(c), 42.62(a).
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`The rules governing inter partes review set forth the proper procedure for
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`objecting to, and moving to exclude, evidence when appropriate. When a party
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`objects to evidence that was submitted during a preliminary proceeding, such an
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`objection must be served within ten business days of the institution of trial. See 37
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`IPR2013-00203
`Patent 7,999,721
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`C.F.R. § 42.64(b)(1). Once a trial has been instituted, an objection must be served
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`within five business days. See id. The objection to the evidence must identify the
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`grounds for the objection with sufficient particularity to allow correction in the
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`form of supplemental evidence. Id. This process allows the party relying on the
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`evidence to which an objection is served timely the opportunity to correct, by
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`serving supplemental evidence within ten business days of the service of the
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`objection. See 37 C.F.R. §§ 42.64(b)(1), 42.64(b)(2). If, upon receiving the
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`supplemental evidence, the opposing party is still of the opinion that the evidence
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`is inadmissible, the opposing party may file a motion to exclude such evidence. 37
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`C.F.R. § 42.64(c).
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`A. Item (1): Second Declaration of Dr. Bartone (Ex. 1021)
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`Petitioner has agreed to withdraw this exhibit. See Paper 30, 15. Exhibit
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`1021 is referenced in a sentence in Petitioner’s Reply (Paper 18, 6), which was not
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`relied upon by the Board in its final decision. Furthermore, Exhibit 1021 was not
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`referenced at the oral hearing. Accordingly, Exhibit 1021 is hereby expunged as
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`withdrawn and the motion to exclude Exhibit 1021, and any arguments relying
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`upon Exhibit 1021 in Petitioner’s Reply, is denied.
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`B. Items (2): Patents incorporated by reference in Hoffberg and Fleming,
`III (Exs. 1006, 1016, and 1022); (3) Alleged new evidence raised in
`Petitioner's Reply (Ex. 1013); and (7) Petitioner’s Reply (Paper 18)
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`With respect to the evidence identified in items (2), (3), and (7) above,
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`Patent Owner’s motion to exclude fails to indicate that Patent Owner timely served
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`Petitioner with an objection. See Mot. to Exclude 2–15. Furthermore, Patent
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`Owner’s motion does not identify or explain its objections to these items. See Mot.
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`to Exclude 2–15. Petitioner argues that Patent Owner failed to timely to object to
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`the materials subject to the motion to exclude and, thus, deprived Patent Owner of
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`any potential remedial measures provided by 37 C.F.R. § 42.64(b)(2). Paper 30,
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`IPR2013-00203
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`1–2. In view of Patent Owner’s failure to comport with the requirements of 37
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`C.F.R. § 42.64, Patent Owner’s motion to exclude the evidence identified in items
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`(2), (3), and (7) above is denied. See Google Inc. et al. v. Jongerius Panoramic
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`Technolgies, LLC, IPR2013-00191, Paper 70, 64–65 (denying a motion to exclude
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`because Patent Owner failed to identify and explain the associated objections);
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`Apple Inc. v. Achates Reference Publishing, Inc., IPR2013-00080, Paper 90, 49
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`(denying a motion to exclude for failure to allege that an objection was timely
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`served).
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`C. Items (4): Petitioner’s supplemental “level of ordinary skill” evidence
`(Exs. 1014, 1015); (5) Supplemental claim construction evidence; and (6)
`Portions of the deposition of Dr. John R. Grindon (Ex. 1019)
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`With respect to this evidence, Patent Owner’s motion to exclude identifies
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`objections made by Patent Owner at the deposition of Dr. Grindon. See Mot. to
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`Exclude 8, 10, 11. Specifically, Patent Owner references a conference call
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`conducted with the Board during the deposition of Dr. Grindon in which Patent
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`Owner raised objections as to the relevance of certain questions asked of Dr.
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`Grindon. Mot. to Exclude 8; see also Ex. 1019, 62:19–94:13. Specifically, the
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`Motion to Exclude states that the Patent Owner objected to the relevance of a line
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`of questioning of Dr. Grindon regarding the ’493 patent (Ex. 1015). Mot. to
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`Exclude 8 (citing Ex. 1019, 45:8, 13, 16; 46:5, 9, 17, 20–24; 47:2–5, 14–16, 18–22;
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`48:16; 49:3, 16–24; 50:5–17; 51:20–25; 62:19–83:3). The Board permitted the line
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`of questioning as relevant to the level of skill in the art. See Ex. 1019, 92:5–9.
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`Patent Owner alleges that the line of questioning was improper because there was
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`ultimately no dispute as to the level of skill in the art; therefore, Patent Owner
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`moves to exclude the Expert Report of Dr. Grindon from another lawsuit on which
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`the questioning was based (Ex. 1014), U.S. Patent No. 6,201,493 (Ex. 1015), any
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`other patents referenced in this discussion, and the testimony of Dr. Grindon
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`IPR2013-00203
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`during the deposition regarding the questions under objection (Ex. 1019, 45:3–17,
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`46:2–17, 47:24–49:15, 110:20–114:23, 138:18–145:6, 145:17–146:2, 157:20–
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`158:12). Mot. to Exclude, 8-14.
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`Patent Owner’s objections based on relevance are focused upon the extent to
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`which the Petitioner ultimately relied upon the portions of Dr. Grindon’s testimony
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`subject to an objection. Mot. to Exclude 8-14. We determine that Patent Owner’s
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`objections go to the weight of the evidence in question rather than its admissibility.
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`There is a strong public policy for making all information filed in a non-jury,
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`quasi-judicial administrative proceeding available to the public, especially in an
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`inter partes review which determines the patentability of claim in an issued patent.
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`It is within the Board’s discretion to assign the appropriate weight to be accorded
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`to evidence. See, e.g., In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed.
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`Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the
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`lack of factual corroboration warrants discounting the opinions expressed in the
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`declarations.”). Accordingly, we deny Patent Owner’s motion to exclude the
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`evidence identified in items (4), (5) and (6) above.
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`In view of the foregoing, Patent Owner’s motion to exclude is denied on all
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`grounds.
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`III. PETITIONER’S MOTION REQUESTING ACCEPTANCE OF
`NON-ELECTRONIC SUBMISSION
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`On May 30, 2014, we issued an Order on Request for Rehearing, which
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`granted Petitioner the ability to submit up to 30 minutes of the video record of the
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`deposition of Mr. Orr. Paper 36, 4. In view of that Order, Petitioner filed a
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`Motion Requesting Acceptance of Non-Electronic Submission requesting that the
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`Board accept a DVD video file (Ex. 1024) providing a copy of 30 minutes of
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`IPR2013-00203
`Patent 7,999,721
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`excerpts from the deposition of Mr. Orr. Paper 43. We hereby grant the motion
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`and accept the submission of the DVD video file.
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`This video was not uploaded into the record through the Board’s PRPS
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`electronic filing system, however, because the video file exceeds the PRPS
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`maximum file size. See Patent Review Processing System (“PRPS”) FAQ A4
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`(http://www.uspto.gov/ip/boards/bpai/prps.jsp). The Board, therefore, requests
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`that, through PRPS, Petitioner file the previously submitted Ex. 1024 video file in
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`multiple parts, each file being less than 25 megabytes, no later than five business
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`days after the mailing date of this order. Should there be any difficulty uploading
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`the files, Petitioner should contact the Board for further guidance.
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`In view of the foregoing, it is, therefore,
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`ORDER
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`ORDERED Patent Owner’s motion to seal Ex. 1017 is granted;
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`FURTHER ORDERED that Ex. 1021 is expunged as withdrawn;
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`FURTHER ORDERED that Patent Owner’s motion to exclude is denied;
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`FURTHER ORDERED that Petitioner’s Motion Requesting Acceptance of
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`Non-Electric Submission is granted; and
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`FURTHER ORDERED that Petitioner file the previously submitted video
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`file of Mr. Orr’s deposition testimony, Ex. 1024, in multiple parts complying with
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`the file size requirements of PRPS, no later than five business days after the
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`mailing date of this order.
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`IPR2013-00203
`Patent 7,999,721
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`For PETITIONER:
`Greg Gardella
`Scott McKeown
`Michael Kiklis
`OLBON SPIVAK
`cpdocketgardella@oblon.com
`cpdocketmckeown@oblon.com
`CPDocketKiklis@oblon.com
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`For PATENT OWNER:
`Thomas W. Humphrey
`John Paul Davis
`WOOD HERRON & EVANS, LLP
`thumphrey@whe-law.com
`jdavis@whe-law.com
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