`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`AUTEL U.S. INC. and AUTEL INTELLIGENT TECHNOLOGY CO. LTD.
`Petitioners
`v.
`BOSCH AUTOMOTIVE SERVICE SOLUTIONS LLC
`Patent Owner
`Case IPR2014-00183
`Patent No. 6,904,796
`PATENT OWNER’S RESPONSE TO MOTION TO EXCLUDE
`
`Patent Owner, BOSCH AUTOMOTIVE SERVICE SOLUTIONS LLC.,
`
`submits this Response to Petitioner’s Motion to Exclude Patent Owner’s Exhibit
`
`2031.
`
`Respectfully submitted,
`
`BOSCH AUTOMOTIVE SERVICE
`SOLUTIONS LLC
`
`By: /Timothy M. McCarthy/
`
`
`John E. Berg
`CLARK HILL PLC
`500 Woodward Ave. Suite 3500
`Detroit, Michigan 48226
`jberg@clarkhill.com
`tel 313-965-8417
`
`Timothy M. McCarthy
`Reg. No. 42,855
`CLARK HILL PLC
`150 N. Michigan Ave., 27th Fl.
`Chicago, Illinois 60601
`tmccarthy@clarkhill.com
`tel 312-985-5561
`
`
`
`
`
`
`
`
`Patent Owner submitted a Second Declaration of Michael Nranian, Exhibit
`
`2031. The declaration states “All statements herein made of my knowledge are
`
`true, and all statements herein made based on information and belief and believe to
`
`be true.” Exhibit 2013 at ¶ 2. Petitioner objected that this declaration is not an
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`affidavit.
`
`This affirmation meets the standard of 28 U.S.C. Section 1746. That statute
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`suggests a form of language but notes that affirmation need only be in
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`“substantially” the form suggest. The language used in Mr. Nranian’s Second
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`Declaration is substantially similar to the form required by the statute.
`
`Please note that Petitioner does not suggest any suspicious circumstances to
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`Mr. Nranian’s Second Declaration, or that the circumstances of execution of the
`
`declaration indicate untrustworthiness. Petitioner appears to object solely to the
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`fact that the affirmation does not exactly track the language of Section 1746.
`
`(Please note, however, that Patent Owner did not actually say so in its objection,
`
`Exhibit 2031, which does not refer to Section 1746.) Accordingly, the Board
`
`should find that the affirmation substantially complies with the statute and deny the
`
`Motion to Exclude.
`
`In the event that the Board disagrees, Patent Owner requests leave to submit
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`an amendment to Exhibit 2031, signed by Mr. Nranian, stating “I, Michael
`
`Nranian, declare under penalty of perjury under the laws of the United States of
`
`Patent Owner’s Response to Motion to Exclude
`Case IPR20014-00183
`Page 2
`
`
`
`America that the statements may in my Second Declaration, executed by me on
`
`October 8, 2014, are true and correct.” (copy attached) This amendment is not the
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`submission of new and additional evidence, but is instead the correction of a
`
`technical error and, in the interests of justice, the Board should allow this
`
`submission and deny the Motion to Exclude. There is no prejudice to Petitioner in
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`allowing this submission, as Patent Owner does not introduce any substantive
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`change in Mr. Nranian’s opinion. See T-Mobile USA, Inc. v. Mobile
`
`Telecommunications Technologies, LLC, IPR2015-00015, Paper 7 (November 3,
`
`2014) at 5.
`
`In a different context, the Board has ruled that to meet the “interests of
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`justice” standard for additional discovery, “more than a ‘mere possibility’ or ‘mere
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`allegation that something useful [to the proceeding] will be found.’” Apple, Inc. v.
`
`Achates Reference Publishing, Inc., IPR2013-00080, Paper No. 18 at 4 (April 3,
`
`2013). In the present matter, Patent Owner does not seek additional discovery, but
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`notes that admission into evidence of Mr. Nranian’s Second Declaration will be
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`most definitely be useful to the proceeding, not merely possible.
`
`Similarly, in Garmin International, Inc. v. Cuozzo Speed Technologies LLC,
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`IPR2012-00001, Paper No. 26 (March 5, 2013), the Board stated, also in the
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`context of additional discovery, that the “interests of justice” standard required a
`
`party to show “beyond speculation that in fact something useful will be
`
`Patent Owner’s Response to Motion to Exclude
`Case IPR20014-00183
`Page 3
`
`
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`uncovered.” Id. at 6. In the view of the Board, “useful” means “favorable in
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`substantive value to a contention of the party.” Id. at 7. In the present matter,
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`Patent Owner does not seek additional discovery, but it is beyond speculation that
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`Mr. Nranian’s Second Declaration is favorable in substantive value to Patent
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`Owner’s contentions with respect to its Contingent Motion to Amend.
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`Accordingly, Patent Owner requests that the Board find the Second
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`Declaration of Michael Nranian to be in substantial compliance with the statute, or,
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`alternatively, to permit the submission of the attached correction.
`
`Respectfully submitted,
`
`BOSCH AUTOMOTIVE SERVICE
`SOLUTIONS LLC
`
`By: /Timothy M. McCarthy/
`
`
`Timothy M. McCarthy
`Reg. No. 42,855
`CLARK HILL PLC
`150 N. Michigan Ave., 27th Fl.
`Chicago, Illinois 60601
`tmccarthy@clarkhill.com
`tel 312-985-5561
`
`John E. Berg
`CLARK HILL PLC
`500 Woodward Ave. Suite 3500
`Detroit, Michigan 48226
`jberg@clarkhill.com
`tel 313-965-8417
`
`
`
`
`
`
`Patent Owner’s Response to Motion to Exclude
`Case IPR20014-00183
`Page 4
`
`
`
`Certificate of Service
`
`I served the foregoing Patent Owner’s Response to Motion to Exclude on the
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`following counsel by email on November 12, 2014:
`
`
`John G. Smith
`Reg. No. 33,818
`Drinker Biddle & Reath LLP
`1500 K Street, N.W.
`Washington, DC 20005-1209
`Email: Autel00183@dbr.com
`
`Zhun Lu
`Reg. No. 53,242
`Drinker Biddle & Reath LLP
`222 Delaware Ave., Ste. 1410
`Wilmington, DE 19801-1621
`Email: Autel00183@dbr.com
`
`
`s/Timothy M. McCarthy/
`
`
`
`
`
`
`Patent Owner’s Response to Motion to Exclude
`Case IPR20014-00183
`Page 5
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`AUTEL U.S. INC. and AUTEL INTELLIGENT TECHNOLOGY CO. LTD.
`
`Petitioners
`
`V.
`
`BOSCH AUTOMOTIVE SERVICE SOLUTIONS LLC
`
`Patent Owner
`
`Case IPR2014-00183
`
`Patent No. 6,904,796
`
`DECLARATION OF MICHAEL NRANIAN
`
`I, Michael Nranian, declare under penalty of perjury under the laws of the
`
`United States of America that the statements may in my Second Declaration,
`
`executed by me on October 8, 2014, are true and correct.
`
`Executed on November ll, 2014.
`
`
`
`:
`-- I
`Michael MEI-18.11 P.E.
`
`
`
`