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`______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________
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`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.
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`SIMON NICHOLAS RICHMOND
`Patent Owner.
`______________
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`U.S. Patent No. 7,429,827
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`IPR Case No.: IPR2014-00938
`______________
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`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
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`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Case No. IPR2014-00938
`Patent 7,429,827
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`Table of Contents
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`I.
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`II.
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`Summary of Argument .................................................................................... 1
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`Petitioner’s Reply Exhibits are Belated ........................................................... 2
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`III.
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`Petitioner’s Reply Exhibits violate the Federal rules of evidence .................. 4
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`A.
`B.
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`Certain Exhibits violate FRE 602, 801, and 802 ................................... 4
`Certain Exhibits violate FRE 401 and 403 ............................................ 5
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`IV. Excerpts from Dr. Ducharme’s Cross-Examination Testimony Exhibit
`1049 Should be Excluded ...................................................................... 6
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`B.
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`A. Dr. Ducharme’s Cross-Examination Testimony at 8/3, 119: 4-
`13 ........................................................ Error! Bookmark not defined.
`Dr. Ducharme’s Cross-Examination Testimony at 8/3,171: 20 –
`25, 172: 1 – 25, 173: 1 – 25, 174: 1 – 16Error! Bookmark not defined.
`Dr. Ducharme’s Cross-Examination Testimony at 8/3, 133: 14
`– 25, 134: 1 – 12, 135, 3 – 10 ................................................................ 6
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`C.
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`V.
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`Conclusion ....................................................................................................... 8
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`PATENT OWNER’S MOTION TO EXCLUDE
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`2
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`Table of Authorities
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`Cases
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`Personal Audio, LLC v. CBS Corp., 2:13-cv-270, *9 (E.D.Tx. March 20, 2014) .... 5
`Tank v. Deutche Telekom, AG, et al., 11-c-4619 (N.D.Ill. April 19, 2013) .............. 4
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`Rules
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`FRCP 32 ..................................................................................................................... 1
`FRE 401 ............................................................................................................ 2, 5, 6
`FRE 403 ............................................................................................................ 2, 5, 6
`FRE 602 ............................................................................................................ 2, 4, 5
`FRE 801 ............................................................................................................ 2, 4, 5
`FRE 802 ............................................................................................................ 2, 4, 5
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`Regulations
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`37 C.F.R. § 42.23 ...................................................................................................2, 4
`37 C.F.R. § 42.64 ....................................................................................................... 1
`77 Fed. Reg. 48,756, 48,767 ¶ I ................................................................................. 2
`77 Fed. Reg. 48,756, 48,772, App. D ........................................................................ 1
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`PATENT OWNER’S MOTION TO EXCLUDE
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`3
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`Case No. IPR2014-00938
`Patent 7,429,827
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`I.
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`SUMMARY OF ARGUMENT
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`The Board should exclude inadmissible evidence filed with Petitioner’s
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`Reply.
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`Belated evidence (i.e., new testimony, exhibits) that could have been, but
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`was not, presented in an earlier filing is barred from consideration by the Patent
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`Trials and Appeals Board’s Trial Practice Guide. Petitioner relies on new
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`testimony and exhibits to morph their arguments, once confronted with Patent
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`Owner’s response. Such new testimony by its expert, Dr. Peter W. Shackle
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`(“Shackle”) and the additional definitions and third party website information was
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`equally available to Petitioner in June 2014, when Petitioner filed its petition in
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`this matter, as it is now, and Petitioner has not alleged otherwise. Further, many of
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`Petitioner’s new Reply exhibits fail to satisfy the requirements of the Federal Rules
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`of Evidence. Patent Owner timely objected to this evidence pursuant to 37 C.F.R.
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`§ 42.64. Therefore, the Board should exclude the objected to exhibits and objected
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`to portions of Dr. Shackle’s new declaration testimony.
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`Further, the form of a question asked on cross-examination must be
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`sufficiently clear and specific. FRCP 32(d)(3); 77 Fed. Reg. 48,756, 48,772, App.
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`D. However, many of Petitioner’s Counsel’s questions during the deposition of
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`Patent Owner’s expert, Dr. Alfred A. Ducharme, were not. Patent Owner’s counsel
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`PATENT OWNER’S MOTION TO EXCLUDE
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`timely objected, and the Board should exclude responses to the questions on cross-
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`examination where the question was not sufficiently clear.
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`PETITIONER’S REPLY EXHIBITS ARE BELATED
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`II.
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`The Trial Practice Guide succinctly and clearly provides that “[a] reply may
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`only respond to arguments raised in the corresponding opposition. § 42.23…a new
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`issue or belatedly present[ed] evidence will not be considered and may be
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`returned… Examples of indications that a new issue has been raised in a reply
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`include…new evidence that could have been presented in a prior filing.” 77 Fed.
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`Reg. 48,756, 48,767 ¶ I.
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`Despite this strict prohibition, Petitioner elected to introduce new testimony
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`and present new exhibits that could reasonably have been, but were not, included
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`in an earlier filing, i.e., the Original/Revised Petition(s) or Dr. Shackle’s first
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`declaration. The list of Petitioner’s Belated Exhibits includes: Exhibit 1047, ¶¶
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`26-27, 35-38, 50 and 69 (Dr. Peter W. Shackle’s Declaration relying on other
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`belated Exhibits and/or offering new belated testimony); Exhibit 1048 (George
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`Mueller’s LinkedIn profile); Exhibit 1049 (Alfred Ducharme's LinkedIn profile);
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`Exhibit 1050 (Ihor Lys' LinkedIn profile); Exhibit 1051 (Kevin Dowling’s
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`LinkedIn profile); Exhibit 1052 (Frederick M. Morgan's Equilar Atlas profile);
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`Exhibit 1053 (Mike Blackwell's LinkedIn profile); Exhibit 1054 (Alex Chliwnyj's
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`LinkedIn profile); Exhibit 1055 (Steven Watts’ LinkedIn profile); Exhibit 1056
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`PATENT OWNER’S MOTION TO EXCLUDE
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`(Bethanne Felder's LinkedIn profile); Exhibit 1057 (LaDell Swiden's LinkedIn
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`profile); Exhibit 1058 (Synonyms for "Varying" from Roget’s A-Z Thesaurus,
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`Wiley Publishing, 1999); Exhibit 1059 (Definition of "Varying" from The
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`American Heritage Dictionary of the English Language, Houghton Mifflin
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`Company, 1978); Exhibit 1060 (Definition of "Varying" from Webster’s New
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`Universal Unabridged Dictionary, Barnes and Noble Publishing, Inc., 2003);
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`Exhibit 1061 (Definition of “Accessible” from Webster’s Ninth New Collegiate
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`Dictionary, Merriam-Webster
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`Inc., 1989); Exhibit 1062
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`(Synonyms
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`for
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`“Accessible” from Roget’s A-Z Thesaurus, Wiley Publishing, 1999); and, Exhibit
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`1063 (Expert Report of A. Ducharme, Docket Entry #111-3 through #113-13, Case
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`3:09-cv-02495, U.S. District Court of New Jersey).
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`For instance, Petitioner’s citation to Dr. Shackle’s experience stated in his
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`declaration at ¶ 35 – 38, which was not introduced until Petitioner’s Reply, is
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`belated. Dr. Shackle allegedly had the same experience when he wrote his first
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`declaration over a year earlier. Likewise, Petitioner has failed to even allege that
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`the various internet profiles that it belatedly submits now are remotely timely.
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`Petitioner’s failure to timely submit this evidence has prejudiced Patent Owner’s
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`ability to offer any arguments regarding the implications of such evidence and/or
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`what level of weight the Board should accord to such evidence.
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`Accordingly, the Board should follow its strict admonition against belated
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`evidence and exclude Exhibit 1047 (¶¶ 26-27, 35-38, 50 and 69) and Exhibits
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`1048-63 for a failure to comply with 37 C.F.R. § 42.23(b) (“A reply may only
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`respond to arguments raised in the corresponding opposition or patent owner
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`response.”)
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`III. PETITIONER’S REPLY EXHIBITS VIOLATE THE FEDERAL
`RULES OF EVIDENCE
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`A. Certain Exhibits violate FRE 602, 801, and 802
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`Patent Owner requests that certain aspects of Peter W. Shackle’s direct
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`testimony (Declaration by Dr. Shackle) be excluded. Specifically, Patent Owner
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`seeks to exclude paragraphs 26 and 27 of Exhibit 1047 because they include
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`hearsay statements and Dr. Shackle offers factual observations without laying a
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`proper foundation or otherwise demonstrating personal knowledge of the recited
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`facts, in violation of FRE 602, 702, 703, 801, and 802.
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`Paragraphs 26 and 27 reference Exhibits 1048-57 which appear to be
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`profiles obtained
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`from
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`third-party websites
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`(i.e., LinkedIn.com
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`and
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`people.equilar.com) and are offered to prove the truth of the matter asserted (i.e.,
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`hearsay without exclusion or exception), namely what experience and education
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`the persons identified in the profiles have. See Tank v. Deutche Telekom, AG, et
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`al., 11-c-4619, *3 (N.D.Ill. April 19, 2013) (“LinkedIn reference is hearsay”).
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`Additionally, Petitioner cannot substantiate the information contained in the
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`underlying exhibits. See Personal Audio, LLC v. CBS Corp., 2:13-cv-270, *9
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`(E.D.Tx. March 20, 2014) (“The Court finds that the LinkedIn Profile relied upon
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`by CBS is simply not reliable…”). Thus, the underlying exhibits 1048-57, too,
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`violate FRE 801 and 802.
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`Paradoxically, Petitioner strongly objected (Paper 38), on hearsay grounds,
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`when Patent Owner proffered LinkedIn profiles of Petitioner’s employees (in
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`support of Patent Owner’s motion to terminate), even though such LinkedIn
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`Profiles were offered on a different basis than merely the truth of their statements,
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`only to turn around and belatedly submit numerous internet based profiles (i.e.,
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`Exhibits 1048-57), which are offered as nothing but hearsay.
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`Accordingly, Exhibits 1047 (¶¶ 26, 27) and 1048-57 violate FRE 602, 801,
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`and 802, and should be excluded from further consideration by the Board.
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`B. Certain Exhibits violate FRE 401 and 403
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`Patent Owner seeks to exclude the following additional exhibits because
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`they lack any probative value in violation of FRE 401 and are unduly prejudicial to
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`Patent Owner in violation of FRE 403:
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`• Exhibit 1058 – Synonyms for "Varying" from Roget’s A-Z Thesaurus,
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`Wiley Publishing, 1999
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`• Exhibit 1059 – Definition of "Varying" from The American Heritage
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`Dictionary of the English Language, Houghton Mifflin Company, 1978
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`• Exhibit 1060 – Definition of "Varying" from Webster’s New Universal
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`Unabridged Dictionary, Barnes and Noble Publishing, Inc., 2003
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`For the purposes of this proceeding, both Petitioner (at pg. 9 of the Reply)
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`and Patent Owner (at pg. 18 of the Response) are applying the Board’s
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`construction on “varying” given in its Decision. This renders moot any further
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`arguments regarding the claim construction of the term varying, for the purposes of
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`this proceeding. Thus, Petitioner’s belatedly proffered Exhibits 1058 – 60 (citing
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`various definitions of the term “varying”) violate FRE 401 because they are not
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`relevant to an issue in dispute in these proceedings or the danger of undue
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`prejudice and unfairness to the Patent outweighs any probative value. Further, any
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`questionable relevance of these Exhibits is strongly outweighed by the likelihood
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`of confusing the issues and would likely cause a delay and be a waste of time, in
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`violation of FRE 403.
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`Accordingly Exhibits 1058-60 violate FRE 401 and 403, and should be
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`excluded from further consideration by the Board.
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`IV. EXCERPTS FROM DR. DUCHARME’S CROSS-EXAMINATION
`TESTIMONY EXHIBIT 1046 SHOULD BE EXCLUDED
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`A. Dr. Ducharme’s Cross-Examination Testimony at 8/3, 133: 14 – 25, 134:
`1 – 12, 135, 3 – 10
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`Patent Owner’s counsel objected to the form of the following:
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`8/3, 133: 14 Q. What kind of simple user interfaces are
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`PATENT OWNER’S MOTION TO EXCLUDE
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`15 you aware of that could be used to control this
`16 device or the Chliwnyj device, for example?
`17 MR. BENAVIDES: Objection; form.
`18 THE WITNESS: What kind of
`19 interfaces?
`20 Q. (By Mr. Nelson) Yeah. What -- what are
`21 some -- it says a "simple user interface," is
`22 there one type? Is there many types?
`23 MR. BENAVIDES: Objection; form.
`24 THE WITNESS: There is many types.
`135: 3 Q. So not -- not really any limitation
`4 on -- on the kind. Just something that would
`5 turn it on or off?
`6 MR. BENAVIDES: Objection; form.
`7 THE WITNESS: Yeah. I didn't say
`8 it was unlimited. I just said I don't know what
`9 kinds of switches that you could use. A switch
`10 is a switch.
`In its Reply (at page 15), Petitioner cited the above excerpt as support for
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`Dr. Ducharme's purported concession that "a switch is a type of user interface" of
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`Chliwnyj's disclosed "user interface to control parameters of the electronic flame."
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`Not only do the cited excerpts offer no support for that characterization, but the
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`testimony at 133:14 - 25, 134:1 - 12, and 135:3 - 10 is inadmissible because the
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`question (and line of questioning) is ambiguous, argumentative, and misleading.
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`Petitioner's counsel begins the line of questions by asking "what kind of simple
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`user interfaces are you aware of that could be used." This question is asking the
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`witness to speculate about his own knowledge of what user interfaces could be
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`used, in any context, rather than asking what user interfaces are taught within the
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`context of the reference Chliwnyj, which is the premise upon which the testimony
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`is cited in the Reply (at page 15). The questions, therefore, lacked a qualifier
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`sufficient to respond, attempted to move the witness from the context of the
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`Chliwnyj reference to another unspecified context, and was an attempt to gain an
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`admission on one point--the disclosure of Chliwnyj, which is different from the
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`premise of the question. As a result, the line of questioning has low probative
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`value, and if admitted would result in unfair and undue prejudice to the Patent
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`Owner. As noted in the record, above, counsel timely objected to this question as
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`one(s) lacking form. 133:17, 33. 135:6. Therefore, the above cited testimony
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`should be excluded.
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`V.
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` CONCLUSION
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`Wherefore, Patent Owner respectfully submits that Exhibit 1047 (¶¶ 26-27,
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`35-38, and 71), Exhibits 1048-63 and the objected to portion of Dr. Ducharme’s
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`testimony be excluded from further consideration by the Board.
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`Case No. IPR2014-00938
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`Respectfully submitted,
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`__/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
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`Dated: August 19, 2015
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`CERTIFICATE OF SERVICE
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`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 August 19, 2015, a copy of the PATENT OWNER’S NOTICE
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`OF OBJECTION TO EVIDENCE was served on Lead and Backup Attorneys
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`for Petitioner, via the consented to method of email to the following email
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`addresses:
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`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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`Dated: August 19, 2015
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`Respectfully submitted,
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`______/Theodore F. Shiells/________
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`Theodore F. Shiells
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