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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
` ____________
`
`PARROT S.A. and PARROT, INC.
`Petitioners
`v.
`DRONE TECHNOLOGIES, INC.
`Patent Owner
`____________
`
`Case IPR2014-00730
`Patent 7,584,071
`____________
`
`
`
`
`PATENT OWNER’S RESPONSE TO PETITIONERS’
`MOTION TO CORRECT EXHIBIT TO PETITION [PAPER NO. 14]
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` 
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`

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`Patent Owner’s Response to the Petitioners’ Motion to Correct Exhibit
`Case IPR2014-00730
` 
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`EXHIBIT LIST
`
`Exhibit No.
`
`Description
`
`2002
`
`2003
`2004
`2005
`2006
`2007
`2008
`2009
`2010
`
`U.S. Patent 7,584,071
`1001
`U.S. Patent 5,043,646 (“Smith”)
`1002
`French Patent No. 2789765
`1003
`Certified Translation of French Patent No. 2789765
`1004
`U.S. Patent No. 7,219,861 (“Barr”)
`1005
`U.S. Patent No. 6,751,529 (“Fouche”)
`1006
`U.S. Publication No. 2006/0144994 (“Spirov”)
`1007
`U.S. Patent No. 7,145,551 (“Bathiche”)
`1008
`U.S. Publication No. 2004/263479 (“Shkolnikov”)
`1009
`Declaration of Raffaello D’Andrea (Attachments A-C)
`1010
`U.S. Patent No. 613,809 (“Tesla”)
`1010, Att. A
`U.S. Patent No. 3,101,569 (“Giardina”)
`1010, Att. B
`U.S. Patent No. 8,072,417 (“Jouanet”)
`1010, Att. C
`1010 (corrected) Corrected Declaration of Dr. Raffaello D’Andrea
`1011
`Claim Chart
`1012
`Declaration of Deborah Skolaski
`1013
`Declaration of James Hopenfeld
`1014
`Declaration of Dr. Raffaello D’Andrea
`2001
`D’Andrea Deposition Exhibit – Declaration Signature
`Page, ‘071
`D’Andrea Deposition Exhibit – Appendix A, Materials
`Considered by Dr. Raffaello D’Andrea
`D’Andrea Deposition Exhibit – Smith Patent
`D’Andrea Deposition Exhibit – Potiron Patent, French
`D’Andrea Deposition Exhibit – Translations Certification
`D’Andrea Deposition Exhibit – Declaration, ‘071
`D’Andrea Deposition Exhibit – Lee Patent, ‘071
`D’Andrea Deposition Exhibit – Bathiche Patent
`D’Andrea Deposition Exhibit – Declaration, ‘748
`D’Andrea Deposition Exhibit – Parrot Exhibits 1011 and
`1010
`D’Andrea Deposition Exhibit – Lee Patent, ‘748
`Transcript of Dr. Raffaello D’Andrea Deposition
`Declaration of Robert Sturges
`Declaration of Jay Smith, III
`Definition for term “motion”
`Mot. to Correct & Decls. from IPR 2014/00732
`ii 
`
`2011
`2012
`2013
`2014
`2015
`2016
`
` 
` 
`
`Date
`Filed
`5/6/2014
`5/6/2014
`5/6/2014
`5/6/2014
`5/6/2014
`5/6/2014
`5/6/2014
`5/6/2014
`5/6/2014
`5/6/2014
`
`
`
`2/9/2015
`5/6/2014
`2/9/2015
`2/9/2015
`2/9/2015
`Not filed
`
`Not filed
`
`Not filed
`Not filed
`Not filed
`Not filed
`Not filed
`Not filed
`Not filed
`Not filed
`
`Not filed
`2/11/2015
`2/11/2015
`2/11/2015
`2/11/2015
`2/16/2015
`
`

`

`Patent Owner’s Response to the Petitioners’ Motion to Correct Exhibit
`Case IPR2014-00730
` 
`
`On February 9, 2015, Petitioners filed a motion to correct an exhibit in the
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`above-captioned proceeding pursuant to 37 C.F.R. § 42.104(c). Paper No. 14
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`(“Motion”). At the same time, Petitioners filed a second motion to correct an
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`exhibit in the co-pending Inter Partes Review, Case No. 2014-00732 (“the ‘732
`
`Motion”). See ‘732 Proceeding, Paper No. 14, which is attached hereto as Ex.
`
`2016.1
`
`Patent Owner has separately filed its response to the ‘732 Motion. However,
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`some of the statements made in the ‘732 Motion and supporting declarations for
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`the first time raise serious concerns as to procedures used by Petitioners and Dr.
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`D’Andrea in this proceeding as well.2 More specifically, statements in Dr.
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`D’Andrea’s and Mr. Hopenfeld’s declarations in the ‘732 Proceeding suggest that
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`the declaration that this Honorable Board relied on, at least in part, in instituting
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`this proceeding may not be admissible.
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`I. WHAT DID DR. D’ANDREA ACTUALLY SIGN?
`
`In his 2/9/15 declaration supporting the ‘732 Motion (Ex. 1015, ‘732
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`Proceeding) (“D’Andrea Declaration”), Dr. D’Andrea references an email that he
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`purportedly sent to counsel for Petitioners attaching signature pages for his
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`declarations in both this proceeding and the ‘732 Proceeding:
`
`                                                            
`1
`For purposes of this brief, citations are to the exhibit numbers as used in the ‘732
`Proceeding.
`2
`Patent Owner’s response in the ‘732 IPR also addressed these concerns.
`1 
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`

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`Patent Owner’s Response to the Petitioners’ Motion to Correct Exhibit
`Case IPR2014-00730
` 
`
`Here are the signed forms. I have not had a chance to go
`over the documents one more time, but really, at this
`stage, it should only be typos and organizational. I can’t
`justify spending more time on it (to myself, and to the
`client). I am thus going to assume that you will
`personally ensure that the documents are ready to go.
`Id. ¶ 4 (Attachment A) (emphasis added). Mr. Hopenfeld explained that he
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`understood this email to be Dr. D’Andrea’s “authorization to finalize any
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`remaining typographical errors[.]” Ex. 1014 (‘732 Proceeding), ¶ 5 (“Hopenfeld
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`Decl.”).
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`Given that Dr. D’Andrea (i) admitted that he did not review the declarations
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`before executing the signature pages, and (ii) invited Petitioners’ counsel to make
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`changes after sending his signature pages—not to mention the numerous other
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`missing attachments and irregularities surrounding Dr. D’Andrea’s declarations—
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`the pointed question now becomes: Did Dr. D’Andrea’s declaration materially
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`change between April 30, 2014 (when he allegedly signed them) and May 6, 2014
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`(when the petitions and declarations were filed)?
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`More specifically, this Honorable Board and Patent Owner are left to
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`wonder:
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` Did Petitioners simply correct typographical errors?
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` What is a “typographical error” to Petitioners?
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` Did Petitioners undertake more substantive “organizational” changes
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`to the declaration, per Dr. D’Andrea’s authorization?
`2 
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`

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`Patent Owner’s Response to the Petitioners’ Motion to Correct Exhibit
`Case IPR2014-00730
` 
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`These questions are of critical importance because if the 4/30/14 and
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`5/6/2014 versions of D’Andrea’s declaration are materially different, then the
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`declaration is not admissible. See United States v. Mathies, 350 F.2d 963 (3d Cir.
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`1965) (holding a signed, but unreviewed declaration that was altered after its
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`original drafting was inadmissible). Petitioners can address these issues by
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`producing the 4/30/14 version of the declaration that Dr. D’Andrea allegedly
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`signed for comparison to what was filed on 5/6/14.
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`Though the correction of Petitioners’ alleged clerical mistake motivated the
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`submissions currently under consideration by this Honorable Board, those
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`submissions, for the first time, raise substantial concerns regarding the
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`admissibility of Dr. D’Andrea’s declarations. Unless and until Petitioners
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`demonstrate that Dr. D’Andrea’s declaration did not materially change between the
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`version he signed (but did not review) and the version that was filed with this
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`Honorable Board, Petitioners’ Motion should be denied.
`
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` Respectfully submitted,
`
`Date of Deposit: February 16, 2015
`
`/Gene A. Tabachnick/
`Gene Tabachnick; Reg. No. 33,801
`James Dilmore; Reg. No. 51,618
`BECK & THOMAS, P.C.
`Pittsburgh, PA 15216-1808
`(412) 343-9700
`
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`3 
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`Patent Owner’s Response to the Petitioners’ Motion to Correct Exhibit
`Case IPR2014-00730
` 
`
`CERTIFICATE OF SERVICE
`
`
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`Pursuant to 37 C.F.R. § 42.6, the undersigned certifies that on February 16,
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`2015, a copy of the foregoing document was served by email upon the following:
`
`James E. Hopenfeld (hopenfeld@oshaliang.com)
`Tammy J. Terry (terry@oshaliang.com) 
`
`
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`and via FedEx:
`
`James E. Hopenfeld
`Tammy J. Terry
`Osha Liang LLP
`909 Fannin Street, Suite 3500
`Houston, Texas 77010
`
`/Gene A. Tabachnick /
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`4 
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