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. 7,429,827
`
`IPR Case No.: IPR2014-00938
`______________
`
`
`
`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`PATENT OWNER’S RESPONSE TO PETITIONER’S MOTION TO
`EXCLUDE CERTAIN EVIDENCE OF RECORD
`
`
`
`
`______________
`
`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. 7,429,827
`
`IPR Case No.: IPR2014-00938
`______________
`
`
`
`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`PATENT OWNER’S RESPONSE TO PETITIONER’S MOTION TO
`EXCLUDE CERTAIN EVIDENCE OF RECORD
`
`
`
`
`Case No. IPR2014-00938
`Patent 7,429,827
`
`Patent Owner opposes Petitioner’s motion to exclude certain evidence of
`
`
`
`
`
`record for the reasons detailed below, and consists of mere argument regarding the
`
`weight of the evidence rather than its admissibility.
`
`I.
`
`Introduction
`Petitioner’s motion to exclude (Paper 56, “Mot. Exclude”) relies in most
`
`cases on late noticed or improperly preserved objections, and in all cases is without
`
`merit.
`
`II. The Motion to Exclude Exhibits 2042, 2050, 2052, 2054, and 2062 is
`Moot
`On August 21, 2015 at Paper 57, the Board denied Patent Owner's motion to
`
`terminate (Paper 37), which was the only paper (along with Patent Owner's reply
`
`related to the motion, Paper 47) that cited Exs. 2042, 2050, 2052, 2054, and 2062.
`
`The admission of these exhibits and Petitioner's objection to such admission are
`
`therefore moot issues. Patent Owner reserves its right to appeal the decision of the
`
`Board and address the Petitioner’s objections and any apparent lack of
`
`consideration of such exhibits by the Board in making its decision.
`
`III. The Testimony Regarding the Claim Term “Varying” Should not Be
`Excluded
`Petitioner asserts that Patent Owner drew inaccurate and misleading
`
`conclusions "that Dr. Shackle agreed with Patent Owner's claim construction for
`
`"varying color" in Patent Owner's Response (Paper 34, the “Response”), which
`1
`
`
`
`
`
`
`was filed on June 24, 2015. Mot. Exclude, 4 – 5. Petitioner's objection regarding
`
`Case No. IPR2014-00938
`Patent 7,429,827
`
`deposition testimony of Shackle (Exs. 2022 and 2023, cited as “Shackle Dep.”) as
`
`it was cited in Patent Owner's response, however, is late, and any objection is not
`
`properly preserved. Petitioner does not address any objection made during the
`
`deposition that relates to its present motion to exclude, and, therefore, waives those
`
`objections, if any.
`
`"Once a trial has been instituted, any objection must be served within five
`
`business days of service of evidence to which the objection is directed. The
`
`objection must identify the grounds for the objection with sufficient particularity to
`
`allow correction in the form of supplemental evidence." 37 CFR 42.64. Petitioner
`
`filed its motion to exclude on August 19, 2015, which is more than five business
`
`days since Patent Owner filed his Response, and, in any event, the motion to
`
`exclude is not a notice of objection, but rather the objection itself, which is
`
`procedurally improper.
`
`Furthermore, as Petitioner acknowledges the Board in its Decision chose its
`
`own construction of varying color (see Paper 20 at 6 - 9), which for purposes of the
`
`IPR proceeding neither party contested (see the Response at 18 - 9 and Petitioner's
`
`Reply (Paper 50) at 9 - 10). Furthermore, at the time of its Response (June 24,
`
`2015), Patent Owner did not know that Petitioner would withdraw reliance on its
`
`own construction (Paper 50 filed on August 11, 2015) and adopt the Board's
`
`
`
`2
`
`
`
`
`construction. Petitioner cannot now complain that Patent Owner’s argument
`
`Case No. IPR2014-00938
`Patent 7,429,827
`
`regarding the construction of varying color in his Response, which included
`
`citation to Dr. Shackle’s testimony was irrelevant, when it was Petitioner who put
`
`that construction at issue when it filed the Petition (see, e.g. Paper 13, pg. 17). In
`
`any event, Petitioner's objection is untimely and not preserved, and is further moot
`
`in the light of the Board's construction, and the lack of a dispute between the
`
`parties about that construction for purposes of this proceeding.
`
`IV. The Testimony Regarding “Exposed Switch” Should Not Be
`Excluded
`Again, Petitioner uses a shot-gun approach to present its objections seeking
`
`to exclude Dr. Shackle's testimony (Exs. 2022, 2023) related to "exposed" and
`
`"hidden switches." Mot. Exclude, 5 – 6. Petitioner, however, fails to explain any
`
`of its form objections, individually, except the objection at Shackle Dep., 100:15-
`
`20 and thus waives them. See Fed. Reg. Vol. 77, No. 157 at 48767 (A motion to
`
`exclude must: "Explain each objection."). Furthermore, Petitioner failed to object
`
`to the relevancy of the cited testimony, or the Patent Owner’s Response (Paper 34)
`
`and Dr. Ducharme’s declaration (Ex. 2021) which purportedly rely on that
`
`testimony. See 37 CFR 42.64 ("An objection to the admissibility of deposition
`
`evidence must be made during the deposition.") (emphasis added); Office Patent
`
`Trial Practice Guide, 37 CFR Part 42, 48772 ("Examples of objections that would
`
`be properly stated are: "Objection, form", "Objection, hearsay"; "Objection,
`3
`
`
`
`
`
`
`relevance"; and "Objection, foundation."). The objections, therefore, are not timely
`
`Case No. IPR2014-00938
`Patent 7,429,827
`
`or properly preserved.
`
`Even if the objections were timely or properly preserved, which they are not,
`
`Petitioner explains only one objection--the one at Shackle Dep., 100: 15- 20
`
`(which relates to objections stated at 99:10, 100:3, 7, and 12). See Mot. Exclude, 5
`
`- 6. This objection has no merit, because immediately following these objections,
`
`Patent Owner’s counsel qualifies his questions about the significance of a switch
`
`that is exposed in as a consideration in design as “depending on the consumer
`
`product” (Shackle Dep., 100:22- 25) and in “some consumer products” (id. at 101:
`
`2, 101: 6) and in “the context of solar garden lights.” Dr. Shackle responds to each
`
`question, without any further objection from counsel. It is clear from the record
`
`that any purported confusion or incompleteness in the hypothetical presented by
`
`Patent Owner’s counsel is alleviated by Patent Owner’s subsequent questions, and
`
`are relevant to show the proper construction and scope of the claims, including the
`
`term “accessible.” See, e.g., Response, 20 - 30. Furthermore, such questions are
`
`clear and relevant to at least Patent Owner’s assertion discussed at the Response,
`
`pg. 22 – 24, that switch placement is a design consideration for a person ordinarily
`
`skilled in the art.
`
`The other objections (cited at Mot. Exclude, 5, as Shackle Dep.at 99:1 -
`
`100:20, 106:16, 108:22, 109:9, 110:1, 110:12, 111:20, and 114:19) do not relate to
`
`
`
`4
`
`
`
`
`the purported "abstract consumer product with no definition" referred to in
`
`Case No. IPR2014-00938
`Patent 7,429,827
`
`Petitioner's counsel's objection at 100: 15 - 20, and thus were waived:
`
`• The objection at 106:16 relates to testimony regarding whether "ordinarily
`
`skilled designers" would be "motivated to make the switch accessible [in
`
`Chliwnyj's device that has a hidden switch (106:12)] to allow a user to
`
`inadvertently misoperate the switch." This line of questioning is clear and
`
`relevant to provide a foundation for Dr. Shackle’s understanding of the level
`
`of skill in the art regarding switches, at least.1 These questions are not
`
`misleading,because after clarifying questions from PO's counsel," Dr.
`
`Shackle responds at least at 108:8 - 11 and 16 - 18, which were answered
`
`without objection from Petitioner's counsel.
`
`• The objection at 108:22 relates to testimony regarding "tradeoffs" made in
`
`design choices. This line of questioning is clear and relevant to at least the
`
`discussion at Response, pg. 23 regarding “the importance of switch
`
`placement, and in particular switches that are modified from hidden to
`
`accessible.” The questions are further not misleading, because after the
`
`objection, PO's counsel offers clarifying questions to which Dr. Shackle
`
`
`1 Patent Owner did not directly rely on this testimony in his Response, but reserves
`
`the right to do so in further briefing or oral argument in this proceeding.
`
`
`
`5
`
`
`
`
`
`Case No. IPR2014-00938
`Patent 7,429,827
`
`responds at least at 109:3 - 6, without further objection from Petitioner's
`
`counsel.
`
`• The objections at 109:9, 110:1, 110:12, 110:7 all relate to testimony
`
`regarding what Chliwnyj teaches. This line of questioning is clear and
`
`relevant in providing a foundation for Dr. Shackle’s understanding of the
`
`scope of Chliwnyj.2 The questions are not misleading, because after each
`
`objection, PO's counsel offers a clarifying question that is responded to by
`
`Dr. Shackle, without further objection from counsel at least at 109:18 - 22,
`
`110: 8 -9, and 110:25 - 111:1, 8, 9 - 13.
`
`• The objection at 111:20 relates to testimony regarding whether "an
`
`ordinarily skilled designer using Chliwnyj" would have modified the "solar-
`
`powered lights of Chliwnyj to change the switch so that it is no longer
`
`hidden and can be manipulated by a user easily." This line of questioning is
`
`clear and relevant to the discussion at Response, pg. 27, regarding whether
`
`persons of ordinary skill would have utilized an accessible switch in the
`
`cited embodiment of Chliwnyj. The questions are not misleading, because
`
`after the objection, PO's counsel engages in a series of questions to address
`
`
`2 Patent Owner did not directly rely on this testimony in his Response, but reserves
`
`the right to do so in further briefing or oral argument in this proceeding.
`
`
`
`6
`
`
`
`
`
`Case No. IPR2014-00938
`Patent 7,429,827
`
`the issue, each of which Dr. Shackle answers at least at 112:4 - 5, 112:18 -
`
`25, 113:3 - 8 114:3 - 15, without any further objection by Petitioner's
`
`counsel.
`
`• The objection at 114:19 relates to testimony regarding whether Dr. Shackle
`
`is "aware of any commercial product made in accordance with the teachings
`
`of the Chliwnyj patent that has done what" Dr. Shackle suggests in his prior
`
`answer, 114:3 - 15. This line of questioning is clear and relevant in showing
`
`that Dr. Shackle made an incorrect obviousness analysis in light of his
`
`opinion that an “artificial fire arrangement” he had seen was a “consumer
`
`product which had every characteristic described in the Chliwnyj patent with
`
`a switch for switching on and off.”3 See 114:16 – 115:2. The question is not
`
`misleading because after the objection, PO's counsel engages in a series of
`
`questions that addresses the issue, each of which Dr. Shackle answers at
`
`least at 115:4 - 12, 15, 18 - 21.
`
`Petitioner's motion to exclude Dr. Shackle's testimony related to "exposed"
`
`and "hidden switches" is mere argument regarding the weight of the testimony,
`
`rather than the issue of admissibility, and should not be considered as a motion to
`
`
`3 Patent Owner did not directly rely on this testimony in his Response, but reserves
`
`the right to do so in further briefing or oral argument in this proceeding.
`
`
`
`7
`
`
`
`
`exclude. Furthermore, the portions of Patent Owner's Response and Dr.
`
`Case No. IPR2014-00938
`Patent 7,429,827
`
`Ducharme's declaration (”Patent Owner Response, Paper 34 at 40-42, and Ex. 2021
`
`Ducharme Decl. at ¶¶110 – 118”) that Petitioner seeks to exclude do not relate to
`
`the construction of "exposed" and "hidden switches," and for that additional reason
`
`the request to exclude should be denied. In any event, Petitioner fails to
`
`specifically cite and explain one objection lodged during the deposition against a
`
`portion of testimony that was cited by Patent Owner in his Response.
`
`V. The Motion to Exclude Testimony Regarding “Retrospective
`Review” Should not Be Excluded
`Petitioner asserts that Dr. Shackle’s admission he conducted a “retrospective
`
`review” “did not mean he employed hindsight bias,” and on that basis seeks to
`
`exclude Dr. Shackle’s testimony. Mot. Exclude, 6. This objection was not
`
`properly preserved because Dr. Shackle responded to the question “You conducted
`
`a retrospective review of certain prior art that was presented to you, correct?” with
`
`“Yes,” without any objection from Petitioner’s counsel. Shackle Dep., 278:19 – 25.
`
`It appears Petitioner’s counsel began an objection, but once the entire question was
`
`asked, he did not state an objection.
`
`Even if the objection was properly preserved, it is a fair and reasonable
`
`inference based on the testimony that Dr. Shackle's admitted retrospective review
`
`of the prior art was impermissible hindsight. Regarding hindsight, “[i]t is difficult
`
`but necessary that the decision maker forget what he or she has been taught . . .
`8
`
`
`
`
`
`
`about the claimed invention and cast the mind back to the time the invention was
`
`Case No. IPR2014-00938
`Patent 7,429,827
`
`made (often as here many years), to occupy the mind of one skilled in the art. ...”
`
`W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303, 313
`
`(Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
`
`"Retrospective" means looking back from the present to past events. The
`
`obviousness analysis calls on the analyst to “step back in time to before the
`
`moment of actual invention, and out of the actual inventor's shoes into those of a
`
`hypothetical, ordinary skilled person who has never seen the invention.” Bristol-
`
`Myers Squibb Co. v. Teva Pharm. USA, Inc., 923 F. Supp. 2d 602, 651 (D. Del.
`
`2013) aff'd, 752 F.3d 967 (Fed. Cir. 2014) cert. denied, 135 S. Ct. 2050, 191 L. Ed.
`
`2d 956 (2015) (citing W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540,
`
`1553 (Fed.Cir.1983).
`
` This inconsistency between Dr. Shackle's admitted
`
`"retrospective review" (at 277:19 – 25, 278: 1 – 25), which looked back from the
`
`present to the past, and the POSA’s review of the prior art at the time of the
`
`invention lends itself, within reason and fairness, to the arguable inference that Dr.
`
`Shackle conducted the wrong analysis--taking the invention and working
`
`backwards in time to arrive back at the invention pieced together from the prior art.
`
`Petitioner was free to argue a different interpretation of the Dr. Shackle’s
`
`testimony, and it did at Reply (Paper 50), at 8 - 9. Accordingly, Petitioner’s
`
`assertions are mere arguments regarding the weight of the testimony, rather than
`
`
`
`9
`
`
`
`
`the issue of admissibility, and should not be considered as part of a motion to
`
`Case No. IPR2014-00938
`Patent 7,429,827
`
`exclude.
`
`VI. Conclusion
`Patent Owner respectfully requests that Petitioner’s Motion to Exclude be
`
`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
`
`
`
`DENIED.
`
`
`
`
`Dated: August 26, 2015
`
`
`
`
`
`10
`
`
`
`
`
`
`
`Case No. IPR2014-00938
`Patent 7,429,827
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6(e)(4)(i) et seq. and 42.105(b), the undersigned
`
`
`
`
`
`certifies that on August 26, 2015, a copy of the PATENT OWNER’S NOTICE
`
`OF OBJECTION TO EVIDENCE was served on Lead and Backup Attorneys
`
`for Petitioner, via the consented to method of email to the following email
`
`addresses:
`
`mark.nelson@dentons.com, lissi.mojica@dentons.com,
`
`kevin.greenleaf@dentons.com, daniel.valenzuela@dentons.com, and
`
`iptdocketchi@dentons.com,
`
`
`
`
`
`
`
`
`
`
`Dated: August 26, 2015
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`______/Theodore F. Shiells/________
`
`Theodore F. Shiells
`
`
`
`11
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
