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
`______________
`
`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. 7,429,827
`
`IPR Case No.: IPR2014-00938
`______________
`
`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. IPR2014-00938
`Patent 7,429,827
`
`
`
`I.
`
`INTRODUCTION
`Petitioner contends its Reply (Paper 50) evidence “directly respond[ed] to
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`arguments that patent owner raised in its response.” Opposition (Paper 62, “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).
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`In its Motion to Exclude (Paper 54, “Mot. Exclude”), Patent Owner
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`meaningfully discussed arguments that might have triggered Petitioner’s reliance
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`on the testimony that Patent Owner now seeks to exclude, namely that Petitioner
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`seeks to admit new evidence to support the construction of “varying colour” (Exs.
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`1058 – 1060), to support a new construction of the term “accessible” (Exs. 1061 –
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`1062), to submit a new argument and for the first time to show “the substitution of
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`different LEDs (e.g., green and blue) in Chliwnyj would just result in a differently
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`colored flame” (see Ex. 1047, ¶69 (citing Ex. 1065) and 71), and that the level of
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`skill in the art is evidenced by the prior art references and the education level of
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`those working in the field (Exs. 1048 - 1057), including adding qualifications of
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`Dr. Shackle not previously relied upon (see Ex. 1047 (¶¶ 26, 27)). Petitioner cannot
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`now in its reply brief seek to fill in the gaps and correct the deficiencies in its
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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. IPR2014-00938
`Patent 7,429,827
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`purported prima facie case for invalidity of the patent claims (Paper 13, “Pet.”)—
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`to prove by a preponderance of the evidence that the instituted claims are
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`unpatentable. Admission of such evidence would be manifestly unfair to Patent
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`Owner, who has not had an opportunity to respond to such belated evidence, which
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`reasonably could have been anticipated and raised in the Petition. For the further
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`reasons stated below, such evidence, including the identified portions of Dr.
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`Ducharme’s testimony should be excluded.
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`II.
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`PETITIONER’S REPLY EVIDENCE EXCEEDS THE PROPER
`SCOPE OF A REPLY
`A. Exhibits 1058 – 1060 Should Be Excluded
`Petitioner seeks to improperly rely on Exs. 1058 - 1060 to make its case for
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`its construction of “varying colour,” as “a direct response to patent owner’s
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`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 20 at 8 - 9), which for purposes of the
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`IPR proceeding neither party contested (see the Response (Paper 34) at 18 and
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`Petitioner's Reply (Paper 50) at 9). Furthermore, at the time of its Response (June
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`25, 2015), Patent Owner did not know that Petitioner would withdraw reliance on
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`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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`REPLY IN SUPPORT OF PATENT OWNER’S MOTION TO EXCLUDE
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`Case No. IPR2014-00938
`Patent 7,429,827
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`was irrelevant. See Petitioner’s Motion to Exclude, Paper 56, 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. 1061 - 1062 to
`
`make its case for construction of the term “accessible.” Petitioner chose not to put
`
`forth a construction for this term in its Petition. But now, in its Reply (Paper 50 at
`
`Page 11) Petitioner seeks to create a prima facie case for invalidity of the patent
`
`claims using the term “accessible,” based on a new and never before presented
`
`construction. Accordingly, Exs. 1061 – 1066 should be excluded.
`
`B. Exhibit 1065 Should Be Excluded
`Petitioner submits a new argument (Ex. 1047, ¶71) that “the substitution of
`
`different LEDs (e.g., green and blue) in Chliwnyj would just result in a differently
`
`colored flame” and uses Ex. 1065 and the testimony of Dr. Ducharme to support it.
`
`See Ex. 1047, ¶69 (citing Ex. 1065). These arguments reasonably, including Ex.
`
`1065, could have been brought in the Petition in anticipation of Patent Owner
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`contending that even if a person of ordinary skill could substitute a red, blue, and
`
`green LED of Lau into the flame simulation device of Chliwnyj to produce any
`
`color, that person would not have done so because it would have rendered
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`Chlinwyj inoperable for its intended purpose—a flame simulation. See, e.g.,
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`Response, 36 – 37. In other words, Ex. 1065, and the related testimony, should be
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`excluded because Petitioner failed from the onset to show that the asserted
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`REPLY IN SUPPORT OF 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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`combination would have a reasonable expectation of success, and only tried to fix
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`that deficiency in its Reply.
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`C. Exhibits 1048 - 1057 Should Also Be Excluded
`Even if admissible over hearsay objections, Exs. 1048 - 1057 should have
`
`been part of the prima facie case of level of skill offered in the Petition. In his
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`declaration, Dr. Shackle recites that “the level of skill in the art is evidenced by the
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`prior art references” and “the education level of those working in the field.” Ex.
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`1002, para. 35. Patent Owner pointed out (at Response, 10 - 14) that Dr. Shackle
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`did not correctly assess the level of skill in the art. In fact, he did not cite one
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`example of a prior art reference or any education level of a person working in the
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`field, including the education and experience level of those purportedly identified
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`in Exs. 1048 - 1057, in his initial analysis. See Ex. 1002, 35 - 37. Furthermore, it
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`should not take Patent Owner calling out the deficiencies in Dr. Shackle’s
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`qualifications (at Response, 14 - 15) for Petitioner for the first time to assert the
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`same experience Dr. Shackle had as when he wrote his first declaration. There is
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`no evidence that Dr. Shackle relied on this evidence in formulating his opinions of
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`the first declaration, including his initial determination of the level of skill, and its
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`submission now is late and improper.
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`III. CERTAIN PORTIONS OF DR. DUCHARME’S TESTIMONY
`SHOULD BE EXCLUDED
`Regarding Dr. Ducharme’s purported testimony regarding Chliwnyj’s
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`“simple user interface” (Ex. 1046, 133: 14 – 25, 134: 1 – 12, 135, 3 – 10),
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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. IPR2014-00938
`Patent 7,429,827
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`Petitioner asserts that it laid the foundation for the question when Dr. Ducharme
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`confirmed (without objection) that Chliwnyj discloses “a flame pattern stimulation
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`[sic] device for relaxation which flame pattern a user may control by using…a
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`simple user interface.” Opp., 14 (citing Ex. 1046, 133:6 – 13). Petitioner further
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`asserts that Dr. Ducharme was asked to give his opinion “regarding the types of
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`‘simple user interfaces’ in the context of Chliwnyj.” Opp., 13 (emphasis added to
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`the quoted portion of counsel’s question). Patent Owner did not fail to cite all
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`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
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`Opposition) and instead asks Dr. Ducharme to speculate outside the context of
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`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
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`testimony, the cited portions should be excluded.
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`IV. CONCLUSION
`Wherefore, Patent Owner respectfully submits that Exhibit 1047 (¶¶ 26-27,
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`35-38, and 69, and 71), Exhibits 1048-63 and the objected to portions of Dr.
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`Ducharme’s testimony be excluded from further consideration by the Board for
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`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. IPR2014-00938
`Patent 7,429,827
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`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
`
`
`
`
`
`
`
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`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. IPR2014-00938
`Patent 7,429,827
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`CERTIFICATE OF SERVICE
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`
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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 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:
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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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`
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`
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`Dated: September 2, 2015
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`Respectfully submitted,
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`______/Theodore F. Shiells/________
`Theodore F. Shiells
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`REPLY IN SUPPORT OF PATENT OWNER’S MOTION TO EXCLUDE
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`7
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