UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`COLEMAN CABLE, LLC, JIAWEI TECHNOLOGY (HK) LTD., JIAWEI
`TECHNOLOGY (USA) LTD., SHENZHEN JIAWEI PHOTOVOLTAIC
`LIGHTING CO, LTD., ATICO INTERNATIONAL (ASIA) LTD., ATICO
`INTERNATIONAL USA, INC., SMART SOLAR, INC, AND TEST RITE
`PRODUCTS CORP.
`Petitioner,
`
`v.
`
`SIMON NICHOLAS RICHMOND
`Patent Owner.
`______________
`
`U.S. Patent No. 8,089,370 to Richmond
`Case No. IPR2014-00935
`
`PETITIONER’S REPLY TO PATENT OWNER’S
`RESPONSE TO PETITIONER’S MOTION TO EXCLUDE CERTAIN
`EVIDENCE OF RECORD
`
`
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`COLEMAN CABLE, LLC, JIAWEI TECHNOLOGY (HK) LTD., JIAWEI
`TECHNOLOGY (USA) LTD., SHENZHEN JIAWEI PHOTOVOLTAIC
`LIGHTING CO, LTD., ATICO INTERNATIONAL (ASIA) LTD., ATICO
`INTERNATIONAL USA, INC., SMART SOLAR, INC, AND TEST RITE
`PRODUCTS CORP.
`Petitioner,
`
`v.
`
`SIMON NICHOLAS RICHMOND
`Patent Owner.
`______________
`
`U.S. Patent No. 8,089,370 to Richmond
`Case No. IPR2014-00935
`
`PETITIONER’S REPLY TO PATENT OWNER’S
`RESPONSE TO PETITIONER’S MOTION TO EXCLUDE CERTAIN
`EVIDENCE OF RECORD
`
`
`
`I.
`
`Introduction.
`
`Petitioner respectfully submits this Reply to Patent Owner’s Response to
`
`Petitioner’s Motion to Exclude (“Response to Pet. Mot. to Exclude”). For the
`
`reasons discussed below and those provided in petitioner’s Motion to Exclude
`
`(“Motion”), the PTAB should exclude Exhibits 2054, 2062, 2064, 2066, and 2076.
`
`The PTAB should also exclude Dr. Shackle’s deposition testimony regarding the
`
`Unified Glare Rating Formula and “retrospective” review.
`
`II.
`
`Because Patent Owner “[R]eserves its [R]ight to [A]ppeal” the
`Denial of Its Motion to Terminate, Petitioner’s Motion to Exclude
`Exhibits 2054, 2062, 2064, 2066, and 2076 Is Not Moot.
`
`Patent Owner argues that Petitioner’s Motion to Exclude exhibits 2054, 2062,
`
`2064, 2066, and 2076 is moot because the Board denied Patent Owner’s motion.
`
`Patent Owner, however, purports to “reserve[] its right to appeal the decision of the
`
`Board.” Response to Pet. Mot. to Exclude, Paper No. 54 at 1. This reservation
`
`indicates that Patent Owner may attempt to appeal this rejection. Petitioner’s
`
`Motion, therefore, is not moot. Because Patent Owner fails to argue that the
`
`exhibits are not hearsay, or make any other argument justifying their admissibility,
`
`Petitioner respectfully requests these exhibits be excluded.
`
`1
`
`
`
`III. The Testimony Regarding “Retrospective Review” Should Be
`Excluded.
`
`Patent owner improperly argues that the testimony should be permitted
`
`because petitioner did not object and that Patent Owner’s hindsight inference is
`
`justified based on the testimony. Patent owner is wrong.
`
`First, petitioner’s counsel objected to the question regarding “retrospective
`
`analysis” in Ex. 2024 at page 278, line 15. Patent owner’s counsel then re-asked a
`
`similar question to which Petitioner’s counsel objected. Petitioner’s counsel then
`
`stated “[g]o ahead. I’m sorry” as he had interrupted and Patent Owner’s counsel
`
`then asked a similar question with “retrospective review.” Id. 278:22-25. The
`
`“objection to form” from the previously asked question was believed to be still in
`
`effect as the same vague “retrospective” term was being used.
`
`Second, patent owner attempts to convert Dr. Shackle’s answer into
`
`improper hindsight that should be excluded because it is not supported by Dr.
`
`Shackle’s testimony. As stated in Petitioner’s Motion, Dr. Shackle thought his
`
`response to the “retrospective review” question meant that he obtained the prior
`
`art, studied it, and provided an opinion. Patent Owner characterization of this
`
`analysis as improper hindsight is not supported by the evidence. Because the
`
`probative value of this testimony is extremely low, and the potential for unfair
`
`prejudice and confusion is very high (as demonstrated by Patent Owner’s
`
`argument), this testimony should be excluded under FRE 402 and 403. Petitioner
`2
`
`
`
`thus moves to exclude testimony in Ex. 2024, Shackle Depo. at 277:19-279:10,
`
`Patent Owner Response, Paper 29 at 7 and Ex. 2021, Ducharme Decl. at ¶ 35.
`
`IV. Testimony regarding the Unified Glare Rating Formula should Be
`Excluded as Irrelevant.
`
`Since filing Petitioner’s motion to exclude, Patent Owner relied upon the
`
`Unified Glare Rating Formula for
`
`its Observations #7 and #8. Mot.
`
`for
`
`Observations, paper 51, pp. 7-9 (citing Ex. 2084 at 99:17-19, 101:14-25, 107:24-
`
`108:3, 108:25-109:12, 110:6-14, 112:7-12, 131:21-132:2, and 147:13-16). Patent
`
`Owner complains that Petitioner’s objections were not timely, not explained or
`
`preserved, and the testimony was relevant. Patent Owner is incorrect.
`
`A.
`
`Petitioner objected timely and in the form required by
`the Board’s Practice Guide
`
`Patent Owner’s complaint about the lack of explanation of the objections is
`
`untimely. As explained Petitioner’s Motion to Exclude, Petitioner’s counsel
`
`objected many times to this line of questioning. Paper 49, p. 5 (“objections at
`
`102:1–4,103:11–17, 106:21–107:16, 110:6–14, 110:24–112:1, 112:7–114:20,
`
`116:16–117:14,122:22–123:10, 123:19–24, 129:12–23, and 136:25–137:12”). Per
`
`the Board’s Practice Guide, Petitioner limited its objection to single words. 77 Fed.
`
`Reg. 48772. Patent Owner cannot now complain about the form of the objection
`
`since it never requested clarification of the objection, and the Board does not
`
`permit attorneys to clarify objections absent a request from opposing counsel. Id.
`
`3
`
`
`
`Therefore, Petitioner objected timely and explained the objections per the Board’s
`
`guidance.
`
`B.
`
`The Unified Glare Rating Formula is irrelevant because
`Dr. Shackle testified it was
`
`Patent Owner opposes Petitioner’s objection on the basis that the objection
`
`goes to weight rather than relevance. As explained in the motion, that is irrelevant
`
`because the Unified Glare Rating Formula is used to assess glare caused by light
`
`that is orders of magnitude more intense than those generated by LED garden
`
`lights having relatively small batteries. Mot. to Ex., p. 5; see also, Resp. to
`
`Observ., paper 56, pp. 6–9. The testimony is irrelevant because the light is
`
`“100,000 times brighter than the context we are considering.” Id. Therefore, the
`
`Board should exclude the testimony as irrelevant under FRE 402 and 403.
`
`V.
`
`CONCLUSION
`
`The Board should GRANT Petitioner’s Motion to Exclude.
`
`4
`
`
`
`Respectfully submitted,
`
`Dated:
`
`September 2, 2015
`
`233 South Wacker Drive
`Suite 7800
`Chicago, IL 60606-6306
`
`DENTONS US LLP
`
`/Mark C. Nelson/
`
`Mark C. Nelson
`Reg. No. 43,830
`Lissi Mojica
`Reg. No. 63,421
`Kevin Greenleaf
`Reg. No. 64,062
`Daniel Valenzuela
`Reg. No. 69,027
`
`5
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a copy of the PETITIONER’S REPLY TO
`
`PATENT OWNER’S RESPONSE TO PETITIONER’S MOTION TO EXCLUDE
`
`CERTAIN EVIDENCE OF RECORD for Inter Partes Review of U.S. Patent No.
`
`8,089,370 was served on the Counsel for the patent owner via email to these email
`
`addresses:
`
`tfshiells@shiellslaw.com
`
`admin@shiellslaw.com
`
`marcusb@tlpmb.com
`
`Respectfully submitted,
`
`Dated: __September 2, 2015_____
`
`___/Nona Durham/_________
`
`Nona Durham
`
`6
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