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. (SHIEN LUEN FLORIDA),
`CHIEN LUEN INDUSTRIES CO., LTD., INC. (SHIEN 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.
`______________
`
`Case No. IPR2014-00938
`Patent 7,429,827
`
`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
`
`______________
`
`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. (SHIEN LUEN FLORIDA),
`CHIEN LUEN INDUSTRIES CO., LTD., INC. (SHIEN 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.
`______________
`
`Case No. IPR2014-00938
`Patent 7,429,827
`
`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 2042, 2050, 2052, 2054, and 2062.
`
`The PTAB should also exclude Dr. Shackle’s deposition testimony regarding claim
`
`terms “varying color” and “exposed”/“exposed switch” (and paragraphs 110-119
`
`of Dr. Ducharme’s declaration), and Dr. Shackle’s
`
`testimony regarding
`
`“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 2042, 2050, 2052, 2054, and 2062 is not Moot.
`
`Patent Owner argues that Petitioner’s Motion to Exclude exhibits 2042, 2050,
`
`2052, 2054, and 2062 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. 59 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 the Ambiguous Claim Term “Varying”
`Should Be Excluded.
`
`Patent Owner argues that (i) Petitioner’s objections were not timely, and (ii)
`
`the issue is moot as both sides are using the Board’s construction.
`
`First, Petitioner timely objected. During the deposition of Dr. Shackle,
`
`Petitioner objected to this line of questioning column/line 58:20, 68:13, 69:3,
`
`69:15, 69:20, 70:7; same objection at 70:13, 70:20, etcetera. Patent owner’s line of
`
`questioning was misleading and confusing because Patent owner failed to define
`
`which construction of the term “varying” or “varying colour” was being used. See
`
`Motion at 5.1
`
`Patent owner also argues that because both parties are now applying the
`
`Board’s construction of “varying colour” the issue is moot.
`
`Patent owner,
`
`however, appears to be continuing to argue for an alternative definition of “varying
`
`colour.” The testimony, therefore, is not moot. Even if Patent owner now accepts
`
`the Board’s definition, the testimony should still be excluded under FRE 402 and
`
`403 because it is not relevant, and the potential for confusion and thus unfair
`
`1 Petitioner acknowledges that the referenced exhibit number (2023) is in error, it
`
`should be Ex. 2022 at Motion, page 5, line 4. Petitioner requests the following
`
`testimony be excluded from Ex. 2022 at 57:23- 65:5, 68:4-79:24, and 167:16-
`
`183:19.
`
`2
`
`
`
`prejudice to Petitioner would be high when compared to the probative value of
`
`zero.
`
`IV. The Testimony Regarding the Improper and Abstract
`Hypothetical Regarding “Exposed Switch” Should Be Excluded.
`
`Patent owner argues that Petitioner’s counsel’s purported failure to properly
`
`object and/or failure to explain his form objections somehow justifies patent
`
`owner’s counsel’s hypothetical. Patent owner is incorrect.
`
`First, petitioner’s counsel objected multiple time to patent owner’s counsel’s
`
`vague and abstract hypothetical. See generally Motion, at 5 indicating objections;
`
`Ex. 2022 at 99:1-100:20; 106:16; 108:22; 109:9; 110:1, 110:12, 110:17, 111:20,
`
`and 114:19. Petitioner’s counsel concisely captured the issue with his objection at
`
`100:15-20, which pertained to the entire line of questioning regarding the switch
`
`testimony.
`
`Second, patent owner’s discussion of the testimony in its Response is further
`
`evidence that questioning was improper. Patent owner argues that the questions
`
`were not misleading because patent owner’s counsel offered “clarifying questions”
`
`after objections and/or further qualified the questions. See Response to Pet. Mot.
`
`to Exclude, Paper No. 59 at 5-6. That counsel needed to offer clarifying questions
`
`is strong evidence that
`
`the original questions were improper.
`
`Further,
`
`the
`
`clarifying questions themselves were often the subject of an objection.
`
`Id. at 5-6
`
`and see e.g., Ex. 2022 at 108:22 and 109:9, 110:1, 110:7, and 110:12. Petitioner,
`3
`
`
`
`therefore, moves to exclude testimony in Shackle Depo., Ex. 2022 at 99:1-115:12,
`
`Patent Owner’s Response, Paper 31 at 40-42, and Ex. 2021, Ducharme Decl. at ¶¶
`
`110-118 because the hypothetical relating to the “exposed switch” was improper
`
`and abstract.
`
`V.
`
`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” at page Ex. 2023 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 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
`4
`
`
`
`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 thus moves to
`
`exclude testimony in Ex. 2023, Shackle Depo. at 277:19-279:10, Patent Owner
`
`Response, Paper 34 at 14-15 and Ex. 2021, Ducharme Decl. at ¶ 35.
`
`VI. CONCLUSION
`
`The Board should GRANT Petitioner’s Motion to Exclude.
`
`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.
`
`7,429,827 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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