UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`JIAWEI TECHNOLOGY (HK) LTD., JIAWEI TECHNOLOGY (USA) LTD.,
`SHENZHEN JIAWEI PHOTOVOLTAIC LIGHTING CO., LTD., ATICO
`INTERNATIONAL (ASIA) LTD., ATICO INTERNATIONAL USA, INC.,
`CHIEN LUEN INDUSTRIES CO., LTD., INC. (CHIEN LUEN FLORIDA),
`CHIEN LUEN INDUSTRIES CO., LTD., INC. (CHIEN LUEN CHINA),
`COLEMAN CABLE, LLC, NATURE’S MARK, RITE AID CORP., SMART
`SOLAR, INC., AND TEST RITE PRODUCTS CORP.
`Petitioner,
`v.
`
`SIMON NICHOLAS RICHMOND
`Patent Owner.
`______________
`
`U.S. Patent No. 7,196,477
`
`IPR Case No.: IPR2014-00936
`______________
`
`REPLY IN SUPPORT OF PATENT OWNER’S
`MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`
`
`
`
`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`JIAWEI TECHNOLOGY (HK) LTD., JIAWEI TECHNOLOGY (USA) LTD.,
`SHENZHEN JIAWEI PHOTOVOLTAIC LIGHTING CO., LTD., ATICO
`INTERNATIONAL (ASIA) LTD., ATICO INTERNATIONAL USA, INC.,
`CHIEN LUEN INDUSTRIES CO., LTD., INC. (CHIEN LUEN FLORIDA),
`CHIEN LUEN INDUSTRIES CO., LTD., INC. (CHIEN LUEN CHINA),
`COLEMAN CABLE, LLC, NATURE’S MARK, RITE AID CORP., SMART
`SOLAR, INC., AND TEST RITE PRODUCTS CORP.
`Petitioner,
`v.
`
`SIMON NICHOLAS RICHMOND
`Patent Owner.
`______________
`
`U.S. Patent No. 7,196,477
`
`IPR Case No.: IPR2014-00936
`______________
`
`REPLY IN SUPPORT OF PATENT OWNER’S
`MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`
`
`
`
`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`Case No. IPR2014-00936
`Patent 7,196,477
`
`I.
`
`INTRODUCTION
`Petitioner contends its Reply (Paper 48) evidence “directly respond[ed] to
`
`arguments that patent owner raised in its response.” Opposition (Paper 60, “Opp.”),
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`3. Like federal courts, the Board will decline to “consider new evidence presented
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`at the end of a briefing schedule when the other party no longer has an opportunity
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`to respond.” Corning, Inc. v. DSM IP Assets B.V., Case IPR2013-00052, Paper 88
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`(PTAB 2014) at 13 (refusing to consider data submitted in a reply that was
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`necessary for petitioner to make its case of inherent anticipation).
`
`In its Motion to Exclude, Patent Owner meaningfully discussed arguments
`
`that might have triggered Petitioner’s reliance on the testimony that Patent Owner
`
`now seeks to exclude, namely that Petitioner seeks to admit new evidence to
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`support the construction of “varying colour” (Exs. 1061 – 1063), to support a new
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`construction of the term “exposed” (Exs. 1064 – 1066), and to for the first time
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`show that the level of skill in the art is evidenced by the prior art references and the
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`education level of those working in the field (Exs. 1051 - 1060), including adding
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`qualifications of Dr. Shackle not previously relied upon. Petitioner cannot now in
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`its reply brief seek to fill in the gaps and correct the deficiencies in its purported
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`prima facie case for invalidity of the patent claims (Paper 10, “Pet.”)—to prove by
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`a preponderance of the evidence that the instituted claims are unpatentable.
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`Admission of such evidence would be manifestly unfair to Patent Owner, who has
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`not had an opportunity to respond to such belated evidence, which reasonably
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`REPLY IN SUPPORT OF PATENT OWNER’S MOTION TO EXCLUDE
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`1
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`Case No. IPR2014-00936
`Patent 7,196,477
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`could have been anticipated and raised in the Petition. For the further reasons
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`stated below, such evidence, including the identified portions of Dr. Ducharme’s
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`testimony should be excluded.
`
`II.
`
`PETITIONER’S REPLY EVIDENCE EXCEEDS THE PROPER
`SCOPE OF A REPLY
`A. Exhibits 1061 - 1066 Should Be Excluded
`Petitioner seeks to improperly rely on Exs. 1061 - 1063 to make its case for
`
`its construction of “varying colour,” as “a direct response to patent owner’s
`
`continued argument regarding the claim construction of varying colour.” Opp., 6.
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`However, as Petitioner acknowledges, the Board in its Decision chose its own
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`construction of varying colour (see Paper 21 at 8), which for purposes of the IPR
`
`proceeding neither party contested (see the Response at 17 and Petitioner's Reply
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`(Paper 48) at 9). Furthermore, at the time of its Response (June 25, 2015), Patent
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`Owner did not know that Petitioner would withdraw reliance on its original
`
`construction (Paper 48 filed on August 11, 2015) and adopt the Board's
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`construction. Petitioner cannot now complain that its own exhibits concerning
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`“varying colour” are relevant and admissible when it argued that Patent Owner’s
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`argument regarding the construction of “varying colour” in its Response testimony
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`was irrelevant. See Petitioner’s Motion to Exclude, Paper 55, pgs. 4 – 5. In any
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`event, the briefing here clearly reflects that the parties do not contest the Board’s
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`construction for purposes of this proceeding, and the issue is moot.
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`Similarly, Petitioner now seeks to improperly rely on Exs. 1064 - 1066 to
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`REPLY IN SUPPORT OF PATENT OWNER’S MOTION TO EXCLUDE
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`Case No. IPR2014-00936
`Patent 7,196,477
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`make its case for construction of the term “exposed.” Petitioner chose not to put
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`forth a construction for this term in its Petition. But now, in its Reply (Paper 48 at
`
`21, fn. 2) Petitioner seeks to create a prima facie case for invalidity of claims using
`
`the term exposed based on a new and never before presented construction.
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`Accordingly, Exs. 1061 – 1066 should be excluded.
`
`B. Exhibits 1051 - 1060 Should Also Be Excluded
`Even if admissible over hearsay objections, Exs. 1051 - 1061 should have
`
`been part of the prima facie case of level of skill offered in the Petition. In his
`
`declaration, Dr. Shackle recites that “the level of skill in the art is evidenced by the
`
`prior art references” and “the education level of those working in the field.” Ex.
`
`1002, para. 35. Patent Owner pointed out (at Response, 9 - 12) that Dr. Shackle did
`
`not correctly assess the level of skill in the art. In fact, he did not cite one example
`
`of a prior art reference or any education level of a person working in the field,
`
`including the education and experience level of those purportedly identified in Exs.
`
`1051 - 1060, in his initial analysis. See Ex. 1002, 35 - 37. Furthermore, it should
`
`not take Patent Owner calling out the deficiencies in Dr. Shackle’s qualifications
`
`(at Response, 13) for Petitioner for the first time to assert the same experience Dr.
`
`Shackle had as when he wrote his first declaration. There is no evidence that Dr.
`
`Shackle relied on this evidence in formulating his opinions of the first declaration,
`
`including his initial determination of the level of skill, and its submission now is
`
`late and improper.
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`REPLY IN SUPPORT OF PATENT OWNER’S MOTION TO EXCLUDE
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`Case No. IPR2014-00936
`Patent 7,196,477
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`III. CERTAIN PORTIONS OF DR. DUCHARME’S TESTIMONY
`SHOULD BE EXCLUDED
`Regarding the objectionable testimony regarding Wu’s disclosure of a “light
`
`sensitive switch” (Ex. 1049, 119: 4-13), Petitioner fails to address that the elicited
`
`response should be excluded, because the question asked Dr. Ducharme to divest
`
`“Module A of the Wu reference” from its context, and consider it in “isolation”
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`(Ex. 1049, 119:4 – 6), which is why Dr. Ducharme qualified his answer with “[i]f
`
`you consider the point between the circuit elements or circuit blocks A and C…”
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`(Ex. 1049, 119:8 – 13). Dr. Ducharme is saying here that if you take Module A out
`
`of Wu you get a light sensitive switch. It is obvious that Petitioner sought an
`
`answer to a different question, thus making the question misleading and the answer
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`inadmissible. See Reply, 12.
`
`Regarding the purported testimony that Dr. Ducharme “limited his focus to
`
`the eternal flame embodiment” (8/3,171: 20 – 25, 172: 1 – 25, 173: 1 – 25, 174: 1 –
`
`16), the first question asked if he “limited” his analysis to Chliwnyj’s flame
`
`embodiment, and the next questions asked if he “focused” on that embodiment,
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`which not having omitted this testimony, Patent Owner quoted him answering
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`“yes.” See Mot. Exclude, 9. Dr. Ducharme never said he focused “solely” on one
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`embodiment, which is how Petitioner characterizes this testimony (see Reply, 14
`
`and Opp, 12), which makes the questions confusing and misleading, and the
`
`answers inadmissible.
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`REPLY IN SUPPORT OF PATENT OWNER’S MOTION TO EXCLUDE
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`4
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`Case No. IPR2014-00936
`Patent 7,196,477
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`Regarding Dr. Ducharme’s purported testimony regarding Chliwnyj’s
`
`“simple user interface” (8/3, 133: 14 – 25, 134: 1 – 12, 135, 3 – 10), Petitioner
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`asserts that it laid the foundation for the question when Dr. Ducharme confirmed
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`(without objection) that Chliwnyj discloses “a flame pattern stimulation [sic]
`
`device for relaxation which flame pattern a user may control by using…a simple
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`user interface.” Opp., 14 (citing Ex. 1049, 133:6 – 13). Petitioner further asserts
`
`that Dr. Ducharme was asked to give his opinion “regarding the types of ‘simple
`
`user interfaces’ in the context of Chliwnyj.” Opp., 14 (emphasis added to the
`
`quoted portion of counsel’s question). Patent Owner did not fail to cite all relevant
`
`testimony (see Opp., 13), because the question asked did not include the
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`qualification “in the context of Chliwnyj” (which Petitioner added in its
`
`Opposition) and instead asks Dr. Ducharme to speculate outside the context of
`
`Chliwnyj—what “could be used to control this device or the Chliwnyj device,”
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`which made the question confusing and its response of low probative value and
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`unduly prejudicial to Patent Owner. Despite any marginal relevancy of the
`
`testimony, the cited portions should be excluded.
`
`IV. CONCLUSION
`Wherefore, Patent Owner respectfully submits that Exhibit 1050 (¶¶ 26-27,
`
`35-38, and 71), Exhibits 1051-66 and the objected to portions of Dr. Ducharme’s
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`testimony be excluded from further consideration by the Board for these reasons
`
`stated in the Motion to Exclude and in this Reply.
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`REPLY IN SUPPORT OF PATENT OWNER’S MOTION TO EXCLUDE
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`5
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`
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`Case No. IPR2014-00936
`Patent 7,196,477
`
`Respectfully submitted,
`
`__/Theodore F. Shiells/_______
`Theodore F. Shiells
`Reg. No. 31,569
`SHIELLS LAW FIRM P.C.
`Pacific Place Building
`1910 Pacific Avenue - Suite 14000
`Dallas, Texas 75201
`
`Attorney for Patent Owner
`
`
`
`
`
`
`Dated: September 2, 2015
`
`
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`REPLY IN SUPPORT OF PATENT OWNER’S MOTION TO EXCLUDE
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`6
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`Case No. IPR2014-00936
`Patent 7,196,477
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`CERTIFICATE OF SERVICE
`
`
`
`Pursuant to 37 C.F.R. §§ 42.6(e)(4)(i) et seq. and 42.105(b), the undersigned
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`certifies that on September 2, 2015, a copy of the REPLY IN SUPPORT OF
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`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE was served on
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`Lead and Backup Attorneys for Petitioner, via the consented to method of email to
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`the following email addresses:
`
`mark.nelson@dentons.com, lissi.mojica@dentons.com,
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`kevin.greenleaf@dentons.com, daniel.valenzuela@dentons.com, and
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`iptdocketchi@dentons.com,
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`
`
`
`
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`
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`Dated: September 2, 2015
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`
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`Respectfully submitted,
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`______/Theodore F. Shiells/________
`Theodore F. Shiells
`
`REPLY IN SUPPORT OF PATENT OWNER’S MOTION TO EXCLUDE
`
`7
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