`
`
`Paper 35
`Entered: May 8, 2017
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`JOHNS MANVILLE CORPORATION and JOHNS MANVILLE, INC.,
`Petitioners,
`
`v.
`
`KNAUF INSULATION, INC. and KNAUF INSULATION SPRL,
`Patent Owners.
`____________
`
`Case IPR2016-00130
`Patent D631,670 S
`____________
`
`Before SCOTT A. DANIELS, KRISTINA M. KALAN, and
`JAMES A. WORTH, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
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`IPR2016-00130
`Patent D631,670 S
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`
`INTRODUCTION
`I.
`Petitioners, Johns Manville Corporation and Johns Manville, Inc.
`(“Johns Manville”) filed a Petition to institute an inter partes review of the
`sole claim of U.S. Patent No. D631,670 S (Ex. 1001, “the ’670 patent”).
`Paper 1 (“Pet.”). We instituted trial for the sole claim of the ’670 patent on
`certain grounds of unpatentability alleged in the Petition. Paper 7
`(“Decision to Institute” or “Inst. Dec.”).
`After institution of trial, Patent Owner Knauf Insulation, Inc. (the
`assignee of record) and Knauf Insulation SPRL (collectively, “Knauf”),
`responded to Johns Manville’s challenges including filing a Patent Owner
`Response, along with declarations by Knauf’s Declarants, James Worden
`(Ex. 2008), Professor Karen B. Schloss (Ex. 2010), Professor Lance Rake
`(Ex. 2012) and Greg Freemyer (Ex. 2013). Paper 14 (“PO Resp.”). Johns
`Manville timely filed a Reply. Paper 18 (“Reply”).
`A hearing for IPR2016-00130 was held on February 2, 2017. We
`have jurisdiction under 35 U.S.C. § 6. This final written decision is issued
`pursuant to 35 U.S.C. § 318(a).
`Based on the complete record now before us, we determine that Johns
`Manville has not shown by a preponderance of the evidence that the sole
`claim of the ’670 patent is unpatentable.
`A. Additional Proceedings
`In addition to this Petition, Johns Manville indicates that the ’670
`patent has been asserted against them by Knauf in the U.S. District Court for
`the Southern District of Indiana, in Knauf Insulation, LLC v. Johns Manville
`Corp., 1:15-cv-00111-WTL-MJD. Pet. 1–2. The ’670 patent was also
`challenged by Johns Manville in IPR2015-01453. In that proceeding, on
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`2
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`January 11, 2017, the Board entered a final written decision upholding the
`patentability of the sole claim. On March 10, 2017, Johns Manville filed a
`Notice of Appeal of the Board’s decision in that proceeding under 35 U.S.C.
`§ 141(c) to the United States Court of Appeals for the Federal Circuit.
`B. The ’670 Patent
`The ’670 patent (Ex. 1001), titled “Insulation Material,” relates to a
`design for mineral fiber insulation, for example, glass mineral wool
`insulation, used in commercial and residential construction applications.
`Ex. 1001, 1. The sole drawing illustrating “[t]he ornamental design for
`insulation material,” as recited in the ’670 patent claim is reproduced below,
`as a black and white photocopy reproduction on the left, and as a color
`image on the right. Exs. 1001, 3001.1
`
`
`
`
`This figure, on the left, is the
`This figure, on the right, is an image of
`claimed design as it appears on the
`the actual color photograph depicting
`front page of the ’670 patent as a
`the claimed design, as filed during
`photocopy of the color photograph
`prosecution of the ’670 patent.2 Ex.
`
`
`1 For efficiency in the record of this proceeding, we enter certain documents
`from the prosecution history of the ’670 patent as Exhibits 3001 et seq.
`2 The color photograph was accepted by the Examiner pursuant to a Petition
`under 37 C.F.R. 1.84(a)(2). See Ex. 1002, 10–11 (Notice of Allowance,
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`3
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`filed during prosecution. Ex. 1001,
`1.
`
`1002 (Reply to Off. Act. Aug. 6, 2010,
`4).
`
`
`
`C. The Instituted Grounds of Unpatentability
`We instituted a trial on the following specific grounds:
`Reference
`Basis
`JM 1997 Brochure and either Soundproofing or
`§ 103
`OC 2006 Report.
`JM 2000 Brochure and either Soundproofing or
`OC 2006 Report.
`JM 1997 Brochure.
`JM 2000 Brochure.
`
`
`§ 102
`§ 102
`
`§ 103
`
`
`
`Johns Manville supports its challenges with the Declarations of
`Mr. Martin J. Bide (Ex. 1013) (“Bide Declaration”), Mr. Mark A. Granger
`(Ex. 1015) (“Granger Declaration”), Ms. Teresa K. O’Brien (Ex. 1016)
`(“O’Brien Declaration”), Mr. Joe Mota (Ex. 1017) (“Mota Declaration”),
`Ms. Anne N. Barker (Ex. 1018) (“Barker Declaration”), and Mr. Michael
`Fay (Ex. 1019) (“Fay Declaration”). Pet. 19, 29, 33, 35 and Appendix – List
`of Exhibits.
`II. MOTION TO TERMINATE UNDER SECTION 315(e)(1)
`Based on the Board’s authorization, Knauf filed a Motion to
`Terminate (Paper 30, “Mot. to Terminate”) this proceeding, arguing that
`because a final written decision was entered in IPR2015-01453, Johns
`
`
`mailed Dec. 10, 2010, 1–2). The color photograph is part of the prosecution
`history of the ’670 patent and may be accessed via the USPTO’s Patent
`Application Information Retrieval (PAIR) system. See Ex. 1001,
`Description.
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`Manville is estopped from maintaining this proceeding. Mot. to Terminate,
`1; 35 U.S.C. § 315(e)(1). Knauf’s contention is that the current grounds
`each rely on either Exhibit 1004 (JM 1997 Brochure) or Exhibit 1005 (JM
`2000 Brochure), documents Johns Manville “reasonably could have raised”
`in the previous proceeding. Id. Johns Manville filed an Opposition to Patent
`Owner’s Motion to Terminate (Paper 31, “Opp. Mot. to Terminate”). Johns
`Manville disputes that Exhibits 1004 and 1005 are documents that a skilled
`researcher reasonably could have been expected to discover prior to filing its
`first petition in IPR2015-01453. Opp. Mot. to Terminate, 2.
`A. Patent Owner’s Argument
`In their Motion to Terminate, Knauf asserts specifically that “JM
`‘reasonably could have raised’ these grounds in its original petition in
`IPR2015-01453” because Exhibits 1004 and 1005 were in Johns Manville’s
`possession, and also notes that Johns Manville did not request joinder of this
`proceeding with IPR2015-01453. Mot. to Terminate, 1–2.
`Knauf argues initially that Johns Manville “did have knowledge of
`Exhibits 1004 and 1005 at the time of filing IPR2015-01453 because its
`employee, Mr. Joe Mota, possessed that knowledge as a result of his work
`for JM.” Id. at 2–3 (citing Kellogg Brown & Root Servs., Inc. v. U.S., 728
`F.3d 1348, 1369 (Fed. Cir. 2013)). Knauf insists, therefore, that section
`315 (e)(1) estoppel extends “to the references of which a petitioner
`reasonably should have known.” Id. at 3. Knauf argues that because Mr.
`Mota, and hence Johns Manville, had these exhibits in their possession,
`Johns Manville and Mr. Mota had knowledge of these advertising brochures
`and that “[a]ny reasonably diligent search by JM would have uncovered
`Exhibits 1004 and 1005 prior to the filing IPR2015-01453 on June 19,
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`2015.” Id. Knauf contends further that any reasonably diligent search
`conducted prior to the filing of IPR2015-01453 would have included
`“discussions with Mr. Mota and a review of his product literature
`collection.” Id. at 4 (citing Ex. 1017 ¶¶ 1–3; Ex. 1030 ¶¶ 1–3; Ex. 2019 at
`8:2–21, 10:5–17, 15:17–16:13, 30:18–31:18). Also, Knauf argues that if
`Exhibits 1004 and 1005 are in fact printed publications and were “distributed
`by the thousands” as Mr. Mota apparently testified, these brochures would
`have been easily discovered in a search because they were “widely known to
`many other JM employees and numerous third parties.” Id. (citing Ex. 2019
`75:3–8, 21–24.
`Further, Knauf contends that Johns Manville is estopped because it
`did not raise the grounds including Exhibits 1004 and 1005 in IPR2015-
`01453 by filing a request for joinder of these proceedings. Id. at 5. In other
`words, Knauf is arguing that Johns Manville reasonably could have raised
`the grounds in this proceeding, in the earlier IPR2015-01453 case by filing a
`request for joinder. Id.
`B. Petitioner’s Argument
`Johns Manville counters that “Exhibits 1004 and 1005 are not
`publications ‘a skilled researcher conducting a diligent search reasonably
`could have been expected to discover’ prior to filing IPR2015-01453.” Opp.
`Mot. to Terminate, 2. Johns Manville alleges that prior to filing the first
`inter partes review case, IPR2015-01453, both in-house and outside counsel
`conducted nearly thirty employee interviews in the Building Insulation and
`Performance Materials Divisions of Johns Manville. Id. (citing Ex. 1003 ¶
`3; Ex. 2019, 9–10; 60:22–61:4. Johns Manville states that none of the
`initially interviewed employees possessed the brochures now introduced in
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`this second proceeding as Exhibits 1004 and 1005. Id. (citing Ex. 2019,
`20:6–10; Ex. 2020, 29:18–22). Johns Manville explains that a professional
`research analyst conducted a search of the Internet Archives for relevant
`prior art and did not find these brochures, apparently because the brochures
`were never posted on-line or maintained in electronic form. Id. at 2–3
`(citing Ex. 1018 ¶¶ 2–6; Ex. 2006, 6:21–7:6, 7:23–8:1, 8:8–18, 9:18–10:8;
`Ex. 2019, 43:15–23). Johns Manville points out that a different brochure
`(Ex. 2022) including an image of the same Spin-Glas product disclosed in
`Exhibits 1004 and 1005 was discovered in the initial search. Also,
`according to Johns Manville the company has a 7 year document retention
`policy. Id. at 2 (citing Ex. 2020, 29:18–22).
`Subsequent to the searches noted above, Johns Manville filed
`IPR2015-01453 on June 19, 2015, within the one year statutory time allotted
`for filing an inter partes review in light of district court litigation between
`the parties. See 35 U.S.C. § 315(b).
`In August 2015, according to Johns Manville, a Johns Manville
`employee, Joe Mota, became the Director of Supply Chain and Customer
`Service. Opp. Mot. to Terminate, 3. According to Johns Manville, “this
`personnel change triggered a custodian interview with him on August 31,
`2015, from which counsel discovered Exhibits 1004 and 1005 among his
`personal hard-copy files.” Id. (citing Ex. 1003 ¶¶ 5–6). The brochures
`asserted in this proceeding as Exhibits 1004 and 1005 were apparently
`discovered in hard copy binders in Mr. Mota’s possession. Id. (citing
`Exhibit 2019 at 31:19–34:18). Johns Manville argues that where Mr. Mota
`maintained hard copies in “a ‘somewhat random’ and ‘not structured’
`collection of ‘five or six’ binders of hard-copy files’ Mr. Mota had collected
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`over ‘25, 30 years’” no skilled searcher would have reasonably been
`expected to discover, at least initially, these brochures in his personal files.
`Id. at 3–4. Also, Johns Manville contends that it was surprising Mota even
`had the documents, as it was a violation of the company’s 7 year document
`retention policy. Id. On these facts, Johns Manville contends that section
`315(e)(1) does not “charge JM with full knowledge of the content and
`significance of every document in the possession of every one of its
`thousands of employees worldwide at the time the first petition was filed.”
`Id. at 4. And, Johns Manville argues, such an interpretation “would vitiate
`‘reasonably’ from § 315.” Id.
`C. Estoppel Analysis under 35 U.S.C. § 315(e)(1)
`For the reasons below, we are not persuaded that Johns Manville
`reasonably could have raised Exhibits 1004 and 1005 in its first petition in
`IPR2015-01453.
`1. 35 U.S.C. § 315(e)(1)
`Section 315(e)(1) provides:
`(e) Estoppel. —
`(1) Proceedings before the office.—The petitioner in an inter
`partes review of a claim . . . that results in a final written decision
`. . . may not request or maintain a proceeding before the Office
`with respect to that claim on any ground that the petitioner raised
`or reasonably could have raised during that inter partes review.
`35 U.S.C. § 315(e)(1); see 37 C.F.R. 42.73(d).
`Neither JM 1997 Brochure nor JM 2000 Brochure were raised in any
`grounds in IPR2015-01453. Thus, the issue before us is whether the
`grounds in this proceeding are grounds Johns Manville “reasonably could
`have raised during that inter partes review.” 35 U.S.C. § 315(e)(1). Our
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`analysis, below, addresses initially the appropriate legal interpretation of
`Section 315(e)(1), and then applies the specific facts of this case to the
`proper interpretation.
`The plain language of section 315(e)(1) states that the estoppel applies
`to grounds a petitioner “reasonably could have raised.” (Emphasis added).
`The statute is grammatically clear in that the verb phrase or predicate,
`“reasonably could have raised,” is logically tied to its subject, “petitioner.”
`The word “reasonably” is not a mandatory word such as, “must,” or “shall.”
`The word “reasonably” is a qualifier that refers to the discretion applied by a
`qualified searcher in conducting an adequate search. This is consistent with
`the legislative history of section 315:
`The present bill also softens the could-have-raised estoppel that
`is applied by inter partes review against subsequent civil
`litigation by adding the modifier ‘reasonably.’ It is possible that
`courts would have read this limitation into current law’s estoppel.
`Current law, however, is also amenable to the interpretation that
`litigants are estopped from raising any issue that it would have
`been physically possible
`to
`raise
`in
`the
`inter partes
`reexamination, even if only a scorched-earth search around the
`world would have uncovered the prior art in question. Adding
`the modifier ‘reasonably’ ensures
`that could-have-raised
`estoppel extends only to that prior art which a skilled searcher
`conducting a diligent search reasonably could have been
`expected to discover.
`157 Cong. Rec. S1360-94 (daily ed. Mar. 8, 2011) at 1375 (stmt. of Sen.
`Kyl). A reasonable reading of section 315(e)(1) does not mandate estoppel
`of all prior art in the possession of a petitioner, or prior art which petitioner,
`e.g. via its employees, may have possessed or known about at some point in
`time. To the contrary, the prior art estopped is that which “a skilled searcher
`conducting a diligent search reasonably could have been expected to
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`discover.” Id. Congress easily could have broadened the estoppel provision
`to extend to “any ground that the petitioner raised or [] could have raised
`during that inter partes review,” but it did not. See id.
`As noted by both parties, and based on the legislative history of the
`statute noted above, the Board and courts have consistently applied the
`section 315(e)(1) “reasonably could have raised” estoppel provision to prior
`art “which a skilled searcher conducting a diligent search reasonably could
`have been expected to discover.” Compare Mot. to Terminate, 3 (citing
`Praxair Distribution, Inc. v. Ino Therapeutics LLC, IPR2016-00781, Paper
`10 at 7 (Aug. 25, 2016) (quoting 157 Cong. Rec. S1375) with Opp. to Mot.
`to Terminate, 2 (citing Clearlamp, LLC v. LKQ Corp., No. 12 C 2533, 2016
`WL 4734389 at *8 (N.D. Ill. March 18, 2016)). The proper interpretation of
`section 315(e)(1) essentially places “a skilled searcher” as proxy for
`petitioner, which is simply a pragmatic understanding that a “petitioner,” for
`example a corporate entity, is not itself a skilled searcher of prior art, but
`employs such a person to conduct a diligent prior art search.
`Understanding the ordinary meaning of the statute, we address also
`Knauf’s following argument in footnote 2, page 3, of its Motion to
`Terminate:
`JM’s argument that estoppel should not apply because its lawyers
`had not yet interviewed Mr. Mota at the time of filing IPR2015-
`01453 is misplaced. See Ex. 1003. By its terms, § 315(e)(1) looks
`to whether the petitioner (not its outside counsel) was aware, or
`reasonably should have been aware, of a reference.
`We disagree. As discussed above, a skilled searcher essentially stands in the
`petitioner’s shoes, and Knauf’s Motion to Terminate itself points out that the
`language of section 315(e)(1) encompasses “prior art which a skilled
`searcher conducting a diligent search reasonably could have been expected
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`to discover.’” Mot. to Terminate 3, (citing Praxair Distribution, Inc. v. Ino
`Therapeutics LLC, Case IPR2016-00781, slip op. at 7 (PTAB Aug. 25,
`2016) (Paper 10)).
`We think it important, also, to address Knauf’s argument under
`section 315(e)(1) that Mr. Mota’s possession of the brochures imputes
`knowledge of these documents to Johns Manville, and that, essentially under
`a theory of vicarious liability, Johns Manville “reasonably should have
`known” of these brochures. Mot. to Terminate, 2–3 (citing Kellogg Brown
`& Root Servs., Inc. v. U.S., 728 F.3d 1348, 1369 (Fed. Cir. 2013). This
`argument is not persuasive for at least two reasons. First, regardless of
`whether we view Johns Manville or its employee, Mr. Mota, as possessing
`the documents, the word “reasonably” signifies certain leeway and a
`meaning besides strict liability. Nowhere in its plain meaning and
`legislative history does section 315(e)(1) expressly, or impliedly, consider
`the entire universe of institutional “knowledge” of a petitioner and its
`employees as being strictly estopped. See, e.g., Figueroa v. Sec’y of Health
`& Human Servs., 715 F.3d 1314, 1322 (Fed. Cir. 2013) (“[T]he term left out
`must have been meant to be excluded.” (quoting Chevron U.S.A. Inc. v.
`Echazabal, 536 U.S. 73, 81 (2002))); Espenschied v. MSPB, 804 F.2d 1233,
`1237 (Fed. Cir. 1986)) (“Where Congress explicitly enumerates certain
`exceptions to a general prohibition, additional exceptions are not to be
`implied in the absence of evidence of a contrary legislative intent.” (quoting
`Andrus v. Glover Constr. Co., 446 U.S. 608, 616–617 (1980))). Second,
`without explicit direction from Congress, we are not persuaded that it is
`reasonable for a person, an employee, or even a corporate entity itself, to
`have immediate recollection, at least in a temporal sense, regarding every bit
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`of information, evidence, documents or other corporate materials that they
`may have been aware of at some point in time.
`2. Whether grounds based on prior art documents
`possessed by a Johns Manville employee fall within the
`“reasonably could have raised” language of Section
`315(e)(1)
`We are not persuaded that Johns Manville reasonably could have
`raised the grounds in this proceeding, including the JM 1997 and JM 2000
`brochures, in its first petition in IPR2015-01453. The evidence before us
`persuades us that the skilled searchers employed by Johns Manville
`conducted a reasonably diligent search that did not, initially, discover these
`documents.
`Johns Manville provides a declaration from Laura Mullendore, an
`attorney at the law firm of Kilpatrick Townsend & Stockton LLP, and also
`counsel of record in the related district court proceeding between the parties.
`Ex. 1003 ¶ 1. Ms. Mullendore testifies that she and a colleague, as well as
`Johns Manville’s in-house counsel, interviewed nearly thirty employees
`between early March 2015 and mid-May 2015 in Johns Manville’s Building
`Insulation and Performance Materials divisions, the two divisions allegedly
`responsible for the insulation product accused of infringing the ’670 patent.
`Id. at ¶ 3. They interviewed the employees specifically “regarding their
`knowledge of and possession of document potentially relevant to the issues
`in that [proceeding].” Id. Ms. Mullendore states that Joe Mota was not
`among the personnel interviewed in the initial search because he worked in a
`different division, the OEM division, at Johns Manville. Id. at ¶ 4.
`According to Ms. Mullendore, it came to Johns Manville’s attention,
`sometime in August 2015, that in his duties relating to “product training,
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`sales training and literature development, Mr. Mota had retained personal
`archival copies of JM brochures.” Id. at ¶ 5. In-house counsel for Johns
`Manville, along with Ms. Mullendore, interviewed Mr. Mota on August 31,
`2015, and collected Mr. Mota’s hardcopy files. Id. at ¶ 6. These hard-copy
`files apparently included the JM 1997 and JM 2000 Brochures. Id.
`Knauf argues that “[a] skilled searcher looking for prior art reasonably
`would have investigated historic versions of the accused products and
`interviewed JM personnel associated with those products, especially JM’s
`OEM Group Market Manager, Mr. Mota.” Mot. to Terminate, 4. Knauf,
`however, has presented no evidence of who a “skilled searcher” would be
`nor any evidence that Ms. Mullendore is not a “skilled searcher.” Id.
`Moreover, Knauf has presented little, if any, evidence of what investigative
`tools and techniques would have been used by a skilled searcher searching a
`company the size of James Manville. Nor has Knauf supplied any evidence,
`or even an explanation, detailing how a skilled searcher would have, for
`example, prioritized company divisions, facilities and selected personnel in
`undertaking a diligent search in these or similar circumstances so that any
`and all relevant documents were initially discovered. Id. Indeed, Knauf has
`not provided any evidence that Ms. Mullendore did not investigate historic
`versions of the accused products or that Ms. Mullendore failed to use proper
`investigative skills, techniques, and tools in her search for relevant prior art.
`Cf. International Business Machines Corp. v. Intellectual Ventures II LLC,
`IPR2014-01465, Paper 32 at 5 (Nov. 6, 2015) (“We are persuaded that
`Petitioner reasonably could have raised Estrin 1987 in the earlier proceeding
`because Patent Owner’s evidence sufficiently establishes that a skilled
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`searcher conducting a diligent search would have likely searched the IEEE
`Xplore and uncovered Estrin 1987.”)
`Knauf argues that the search was not diligent, apparently because Mr.
`Mota’s testimony “makes clear that he was the JM employee with the most
`knowledge concerning historic OEM products and related literature.” Mot.
`to Terminate, 4 (citing Ex. 1017 ¶¶ 1–3; Ex. 1030 ¶¶ 1–3; Ex. 2019, 8:2–21,
`10:5–17, 15:17–16:13, 30:18–31:18. Although Mr. Mota does state that in
`the course of approximately thirty years of OEM business experience he has
`“been responsible for product training, sales training, literature development
`and overall business leadership” we are provided no reasoning from Knauf
`as to how this qualifies him as the “JM employee with the most knowledge”
`concerning historic documents. See id. (emphasis added); see also Ex. 1017
`¶¶ 1–3. Mr. Mota certainly had access and input to company marketing
`materials, as did other employees, but Knauf has not pointed to persuasive
`evidence indicating that he was the person most likely in the company to
`maintain such brochures or marketing materials. See Ex. 2019, 11:1–12:2.
`Knauf also does not explain that there was initially any overlooked
`evidentiary corporate trail or common institutional knowledge that Mr. Mota
`maintained these documents. Mr. Mota’s work experience and managerial
`responsibilities at Johns Manville do not, alone, provide sufficient probative
`weight to support a finding that in not initially interviewing him, the
`searchers were somehow unskilled or not diligent in their investigations.
`Knauf fails to provide persuasive evidence supporting the contention
`that Mr. Mota, as an OEM division manager with certain marketing and
`sales duties and responsibilities within the company, would be more
`important, to interview than anyone else, or at least as important to interview
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`as anyone else. In other words, without at least some facts supporting the
`allegation that Mr. Mota was responsible for, or commonly known to
`maintain such historical corporate documents, we cannot determine that it is
`unreasonable that Ms. Mullendore or corporate counsel did not interview
`Mr. Mota until after the filing of the first inter partes review petition.
`It is a simple matter to allege that because the documents were
`eventually found in Mr. Mota’s hard-copy files he was the most important
`employee to interview. This allegation, however, is to an extent hindsight
`on Knauf’s part, and unsupported by sufficiently probative evidence apart
`from the eventual discovery of the brochure hard copies themselves in Mr.
`Mota’s possession. See Mot. to Terminate, 4. Weighing the facts in this
`case, we are not persuaded that Knauf has presented sufficient reasons and
`evidence to determine that the failure to interview Mr. Mota and discover the
`brochures submitted here as Exhibits 1004 and 1005, prior to the filing of
`the first inter partes review by Johns Manville, was unreasonable within the
`meaning of section 315(e)(1). Knauf’s Motion to Terminate is, therefore,
`denied.
`3. Joinder
`With respect to Knauf’s argument that Johns Manville reasonably
`could have raised the grounds in this proceeding, in the earlier IPR2015-
`01453 case by filing a request for joinder, we agree that if Knauf had shown
`sufficiently the searchers to be not diligent or unreasonable in their search,
`then requesting joinder could have been of strategic benefit in evading the
`estoppel provisions of section 315(e)(1). See PO Reply ISO Mot. to
`Terminate, 2. As discussed above, however, we are not persuaded that the
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`search was unreasonable or not diligent, and thus there is no estoppel under
`section 315 (e)(1) to overcome.
`III. OBJECTIONS AND MOTIONS TO EXCLUDE EVIDENCE
`Knauf objects to, and moves to exclude Exhibits 1004, 1005, and
`1010 along with the supporting testimony of Joe Mota (Exhibits 1017,
`1030), Richard Graves (Exhibit 1028), Anne Barker (Exhibit 1018), and
`Christopher Butler (Exhibit 1031). Mot. to Exclude, 1. Specifically, Knauf
`argues that these witnesses “each (i) lack personal knowledge to support
`their testimony that Exhibits 1004, 1005, and 1010 accurately portray
`documents that purportedly existed and were publicly available long before
`2015 and (ii) provided the foregoing testimony based solely on hearsay.” Id.
`Knauf further asserts that Exhibits 1004, 1005, and 1010 are not properly
`authenticated as prior art and contain inadmissible hearsay. Id. at 8.
`A. Whether Exhibits 1004, 1005 and 1010 are Properly Authenticated
`Knauf moves to exclude Exhibits 1004, 1005 and 1010 based on lack
`of authentication and improper hearsay. Id. at 8. Knauf asserts that the
`witnesses that Johns Manville produced in this proceeding in support of
`public accessibility of Exhibits 1004 and 1005, i.e. Mr. Mota and Mr.
`Graves, do not have personal knowledge of the documents being publicly
`distributed. Mot. to Exclude, 8. Knauf argues that the dates on the
`documents upon which Mr. Mota and Mr. Graves rely are hearsay and “are
`not evidence that JM distributed the documents to anyone outside of the
`company. At most, they are evidence the documents were in Mr. Mota’s
`internal JM files as of those dates.” Id. at 9. Knauf asserts that these dates
`are essentially an “uncorroborated archive date” and no public accessibility
`has been shown by the discovery of these documents in Mr. Mota’s hard-
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`copy files. Id. (citing Apple Inc. v. DSS Technology Mgmt., Inc., Case
`IPR2015-00369, slip op. at 6 (PTAB Aug. 12, 2015) (Paper 14)).
`Johns Manville contends that Knauf’s challenge is to the sufficiency
`and weight of the evidence, i.e. whether it qualifies as prior art, not to
`admissibility, and therefore not the proper subject of a motion to exclude.
`Opp. Mot. to Exclude, 3. Johns Manville argues further, to the extent
`admissibility is at issue, that “personal knowledge” is not required for
`authentication purposes. Id. at 4–5 (citing EMC Corp., Case IPR2013-
`00084, slip. op at 30 (PTAB May 15, 2014) (Paper 64)). Johns Manville
`contends that the exhibits may be authenticated by relevant testimony “that
`the evidence is what it is claimed to be,” as Mr. Mota and Mr. Graves have
`done. Id. at 5–6 (citing id. at 5 (citing SAP Am., Inc. v. Arunachalam, Case
`IPR2013-00195, slip op. at 22 (PTAB Sept. 18, 2014) (Paper 60)).
`First, we note that the authentication and hearsay issues as they relate
`to the printed date information on the brochures are, to an extent, intertwined
`with admissibility as well as Knauf’s merits arguments, because the date
`evidence in these documents is relied on by Mr. Mota and Mr. Graves in
`support of both publicly availability and authentication of the documents as
`advertising brochures. We disagree, however, that the dates printed on the
`exhibits are inadmissible hearsay under Fed. R. Evid. 801, 802. See Mot. to
`Exclude 1–5. Exhibits 1004 and 1005 are Johns Manville advertising
`brochures describing certain insulation products and application examples
`that, on their face, appear as promotional material for insulation products
`and reasonably understood to have been offered for sale to the public by
`Johns Manville. See Exs. 1004, 1005 (featuring brochures including specific
`insulation product information and specifications expressly directed to
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`customers as well as exemplary applications for insulation in refrigerators,
`air-handling equipment etc.). The date printed on Exhibit 1004 is “12/97”
`and on Exhibit 1005 is “10/00 (Replaces 12/97).” Exs. 1004, 14, 1005, 10.
`Both Mr. Mota and Mr. Graves consistently indicate that the dates printed on
`the exhibits are indicative of when the advertising brochures would have
`been first printed and shortly thereafter, disseminated to customers. Ex.
`1017 ¶ 2; Ex. 2020, 31:19–40:2. Mr. Mota consistently described that for
`these promotional materials “[d]uring the 1997-2000 time frame, technical,
`marketing, and/or product manuals, brochures, and guides were freely
`distributed within JM and on a non-confidential basis to the public.” Ex.
`1030 ¶ 6, and see Ex. 2019, 21:1–24, 26:4–27:2.
`We determine that the documents are sufficiently authenticated, first,
`because the marketing, company contact and product information expressly
`set out in the brochures, along with the witnesses’ corroborating statements,
`show sufficiently that Exhibits 1004 and 1005 are what they appear to be,
`that is, advertising brochures that were printed and produced for
`dissemination to Johns Manville’s customers and sales personnel for
`unrestricted distribution to the public. Second, we determine that the dates
`on the brochures are not merely “archival” dates in Mr. Mota’s files as
`Knauf contends. See Mot. to Exclude, 4 (citing Apple Inc. v. DSS
`Technology Management, Inc., IPR2015-00369, slip op. at 6 (PTAB August
`12, 2015) (Paper 14)). Mr. Mota and Mr. Graves both explain that it was
`standard practice at Johns Manville to print these dates on the brochures to
`indicate a first printing of the brochure. Ex. 2019, 20:23–21:24; Ex. 2020,
`39:4–40:2. This testimony is corroborated, at least circumstantially, by the
`documents themselves where, for example, Exhibit 1005 states “10/00
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`(Replaces 12/97),” where 12/97 is the date printed on Exhibit 1004 and
`Exhibit 1005.
`We agree with Knauf that hearsay is not admissible under Fed. R.
`Evid. 802. Mot. to Exclude, 2. However, based on the testimony of Mr.
`Mota and Mr. Graves, we find that the dates printed on the brochures were a
`common business practice at James Manville. See Ex. 2019, 20:23–21:24;
`Ex. 2020, 39:4–40:2. These dates, along with the testimony of Mr. Mota
`and Mr. Graves, are probative of the authenticity of the documents
`themselves and their existence and purpose at the relevant time period.
`Knauf has provided no persuasive evidence that either the December 1997
`date or the October 2000 dates as printed on the brochures are
`untrustworthy, or that either Mr. Mota’s or Mr. Graves’s testimony are
`inconsistent with this assertion
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