Paper No.____
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`Filed on behalf of:
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`GEP Power Products, Inc.
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`By: Michael T. Griggs, Eric J. Lalor, Sarah M. Wong
`BOYLE FREDRICKSON, S.C.
`840 North Plankinton Avenue
`Milwaukee, Wisconsin 53203
`414-225-9755
`mtg@boylefred.com, ejl@boylefred.com, smw@boylefred.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`-------------------------
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`-------------------------
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`GEP Power Products, Inc.
`Petitioner
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`v.
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`Arctic Cat Inc.
`Patent Owner
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`-------------------------
`
`Case IPR2016-01388
`Patent 7,420,822
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`-------------------------
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`PETITIONER’S REPLY
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`{01112672.DOCX / }
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`1
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`Filed on behalf of:
`
`GEP Power Products, Inc.
`
`By: Michael T. Griggs, Eric J. Lalor, Sarah M. Wong
`BOYLE FREDRICKSON, S.C.
`840 North Plankinton Avenue
`Milwaukee, Wisconsin 53203
`414-225-9755
`mtg@boylefred.com, ejl@boylefred.com, smw@boylefred.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`-------------------------
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`-------------------------
`
`GEP Power Products, Inc.
`Petitioner
`
`v.
`
`Arctic Cat Inc.
`Patent Owner
`
`-------------------------
`
`Case IPR2016-01388
`Patent 7,420,822
`
`-------------------------
`
`PETITIONER’S REPLY
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`{01112672.DOCX / }
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`1
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`As set forth in the Institution Decision, the Board instituted review based
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`upon Grounds B and C (which correspond to Grounds 3 and 4 as presented in the
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`Petition) as follows:
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`B. Anticipation of claims 1, 2, 4, 9 and 10 by Boyd; and
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`C. Obviousness of claims 3, 4 and 6-8 over Boyd and Svette.
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`Claims 1-10 should be found unpatentable under both of these grounds.
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`I.
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`Patent Owner does not substantively dispute Grounds B and C
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`Patent Owner’s only challenge to Grounds B and C is that Boyd does not
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`qualify as prior art under 35 U.S.C. § 102(e). Patent Owner does not substantively
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`dispute Grounds B and C. On the contrary, Petitioner’s primary fact witness,
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`Darrel Janisch, the named inventor of the ‘822 patent, includes a section in his
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`declaration entitled “DOCUMENTARY EVIDENCE THAT THE BOYD
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`PATENT DISCLOSES MY INVENTION,” Janisch Decl. (Ex. 2002), pg. 22. Mr.
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`Janisch then explains that Boyd discloses the invention of the ‘822 patent. See
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`also, Patent Owner Response, pp. 28-36. Accordingly, if the Board finds that
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`Boyd is applicable prior art – which it is – then claims 1-10 should be found
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`unpatentable under Grounds B and C.
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`{01112672.DOCX / }
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`2
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`A. Most of Patent Owner’s evidence relating to diligence
`should be excluded, or at the very least accorded no weight
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`Petitioner is submitting a motion to exclude evidence in accordance with the
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`Scheduling Order because many of Patent Owner’s exhibits have not been properly
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`authenticated and also contain hearsay.
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`However, even if the Board does not exclude the challenged exhibits, Mr.
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`Janisch cannot authenticate Tyco documents for purposes of corroboration. See
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`Microsoft Corp., Petitioner, PATENT 6,724,403, 2014 WL 5337868, at *10 (Oct.
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`14, 2014) (“Inventor testimony is not sufficient to authenticate a document offered
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`to corroborate the inventor’s testimony… A document authenticated by only an
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`inventor does not achieve that purpose because it is not sufficiently independent.”).
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`Since Patent Owner failed to submit any independent testimony from Tyco to
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`authenticate and explain Tyco documents, to the extent the Board considers Tyco
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`documents, they should be accorded no weight.
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`B. Mr. Janisch is not a credible witness and his testimony
`should be accorded no weight
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`Mr. Janisch is an Arctic Cat employee and named inventor of the ‘822
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`patent, in other words, an interested witness. The Federal Circuit has warned that
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`the oral testimony of interested witnesses is unreliable. “[T]here is a very heavy
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`{01112672.DOCX / }
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`3
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`burden to be met by one challenging validity when the only evidence is the oral
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`testimony of interested persons and their friends, particularly as to long-past
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`events.” Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 1371 (Fed.
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`Cir. 1998). This rationale applies equally to defending patentability, as Mr.
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`Janisch is doing here.
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`Further, Mr. Janisch’s deposition testimony is inconsistent with his
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`declaration testimony, rendering him an unreliable witness. In his declaration (Ex.
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`2002), Mr. Janisch states that so-called inventor notes (Ex. 2012) were “[p]repared
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`before April 1, 2002.” Janisch Decl. (Ex. 2002), pp. 5-18. He repeats this
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`allegation in his supplemental declaration (Ex. 2036), stating that “Patent Owner’s
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`Exhibit 2012 is a true and correct copy of notes reflecting my PDM design that
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`existed at least as early as April 2, 2002.” Janisch Supplemental Decl. (Ex. 2036),
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`pg. 3, ¶ 10.
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`When questioned about Exhibit 2012 during his deposition, however, Mr.
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`Janisch stated that he did not know when the inventor notes were created. See
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`Janisch Transcript (Ex. 1008), 41:7-9 (Q: Again, you don’t – Do you know when
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`the notes were made? A: No, I do not.). This inconsistency draws Mr. Janisch’s
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`credibility into question.
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`{01112672.DOCX / }
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`4
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`C. Even if Patent Owner’s evidence is admissible, it does not
`demonstrate diligence
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`When Petitioner identified Boyd as prior art under § 102(e), the burden of
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`production shifted to Patent Owner to come forth with evidence corroborating
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`Patent Owner’s claim that Mr. Janisch invented the subject matter of the ‘822
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`patent before Boyd’s effective priority date of April 1, 2002.
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`Patent Owner relies upon the October 29, 2002 priority date for the
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`application for the ‘822 patent as the date of the patentee’s constructive reduction
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`to practice. Patent Owner does not claim actual reduction to practice before the
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`application filing date. Since Boyd was filed nearly seven months prior to the
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`application for the ‘822 patent, Patent Owner must show that the patentee worked
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`diligently in reducing the invention to practice between April 1, 2002 and October
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`29, 2002.
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`While Petitioner provided the following law in the Petition, it bears
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`repeating here since the diligence issue is dispositive as to Grounds B and C.
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`During the period in which reasonable diligence must be shown, there must be
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`continuous exercise of reasonable diligence. In re McIntosh, 230 F.2d 615, 619
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`(CCPA 1956); see also Burns v. Curtis, 172 F.2d 588, 591 (CCPA 1949) (referring
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`to “reasonably continuous activity”). A party alleging diligence must account for
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`{01112672.DOCX / }
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`5
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`the entire critical period. Griffith v. Kanamuru, 816 F.2d 624, 626 (Fed. Cir.
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`1987); Gould v. Schawlow, 363 F.2d 908, 919 (CCPA 1966). Even a short period
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`of unexplained inactivity is sufficient to defeat a claim of diligence. Morway v.
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`Bondi, 203 F.2d 742, 749 (CCPA 1953); Ireland v. Smith, 97 F.2d 95, 99-100
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`(CCPA 1938). In In re Mulder, 716 F.2d 1542, 1542-46 (Fed. Cir. 1983), for
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`example, the Federal Circuit affirmed a determination of lack of reasonable
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`diligence, where the evidence of record was lacking for a two-day critical period.
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`Likewise, in Rieser v. Williams, 255 F.2d 419, 424 (CCPA 1958), there was
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`no showing of diligence where no activity was shown during the first thirteen days
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`of the critical period. A party alleging diligence must provide corroboration with
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`evidence that is specific both as to facts and dates. Gould, 363 F.2d at 920;
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`Kendall v. Searles, 173 F.2d 986, 993 (CCPA 1949). The rule of reason does not
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`dispense with the need for corroboration of diligence that is specific as to dates and
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`facts. Gould, 363 F.2d at 920; Kendall, 173 F.2d at 993; see also Coleman v.
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`Dines, 754 F.2d 353, 360 (Fed. Cir. 1985).
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`Here, there are numerous gaps in in the diligence timeline, including gaps of
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`28, 18, 34, 51, and 73 days. The Board has found a lack of diligence under
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`circumstances involving gaps of far less magnitude. See, e.g., Microsoft Corp.,
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`{01112672.DOCX / }
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`6
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`Petitioner, PATENT 6,724,403, 2014 WL 5337868, at *12 (Oct. 14, 2014)
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`(finding a lack of diligence where patentee where no activity performed “on June
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`29-30, July 1, July 6-8, August 5-6, August 9-10, August 20, August 23, August
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`25-27, September 6-10, September 15, September 20-21, September 24, September
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`28, October 1, October 11, October 14-15, October 20, and October 27.”).
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`Patent Owner attempts to fill in the gaps in its diligence timeline, relying
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`primarily upon the uncorroborated testimony of Mr. Janisch, an employee of Arctic
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`Cat and an interested witness, which is insufficient to establish diligence. See
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`Microsoft at *8-9 (testimony alone is insufficient to establish corroboration;
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`evidence of independent corroboration is required); see also Medichem, S.A. v.
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`Rolabo, S.L., 437 F.3d 1157, 1170 (Fed. Cir. 2006) (“[t]he requirement of
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`independent knowledge remains key to the corroboration inquiry”).
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`1.
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`The 28-day gap
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`For the first gap of 28 days – between April 1, 2002 and April 29, 2002 –
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`Mr. Janisch asserts two bases for diligence. First, he conclusorily asserts that
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`“further testing was conducted” on the PDM during this 28-day gap. Janisch Decl.
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`(Ex. 2002), pg. 19. While Petitioner and Mr. Janisch refer to two emails that
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`bookend this 28-day gap, they offer no evidence corroborating Mr. Janisch’s
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`{01112672.DOCX / }
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`7
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`assertion that testing occurred during this 28-day gap. Further, assuming arguendo
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`that some testing occurred, there is no evidence of the testing schedule to
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`determine whether testing was conducted in a diligent manner, e.g., whether testing
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`occurred continuously throughout the 28-day period, as would be required to
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`demonstrate diligence. Further, Mr. Janisch confirmed during his deposition that
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`Tyco conducted its testing at a lab in North Carolina, and that he never visited the
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`lab and did not oversee any of Tyco’s testing. Janisch Transcript (Ex. 1008), 46:5-
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`47-15. Thus, he has no personal knowledge of Tyco’s testing and cannot speak to
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`Tyco’s testing activities or schedule.
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`Second, Mr. Janisch asserts that “I continued to work on developing the
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`PDM both internally and with Tyco.” Janisch Decl. (Ex. 2002), pg. 19. However,
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`Petitioner does not offer any independent evidence to corroborate Mr. Janisch’s
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`assertion that he was “developing” the PDM during this 28-day gap. See Microsoft
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`and Medichem. Mr. Janisch points to what purports to be a drawing from Tyco
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`(Ex. 2014), but this drawing (which purports to be dated April 2, 2002), even if
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`accepted as admissible evidence, does not demonstrate diligent development over
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`the course of 28 days.
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`{01112672.DOCX / }
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`8
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`Mr. Janisch’s testimony that he “continued to work on developing the PDM”
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`during the 28 days, without offering any specific details as to what he was doing or
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`any corroborating evidence, falls far short of the evidence required to establish
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`diligence. See Gould, 363 F.2d at 920 (“Gould’s testimony taken as a whole does
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`not set forth adequate facts to support a finding of that continuity of activity which
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`constitutes reasonable diligence. Merely stating that there were no weeks or
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`months that he ‘did not work on the laser’ is not enough, absent supporting facts
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`showing specifically what that ‘work’ consisted of and when it was performed.”).
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`2.
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`The 18-day gap
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`The next gap in the diligence timeline is a gap of 18 days between April 29,
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`2002 and May 17, 2002. Patent Owner again relies upon two emails that bookend
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`this 18-day gap and offers the conclusory, uncorroborated testimony of Mr. Janisch
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`that “Tyco had been diligently testing the PDM” and that “TYCO continued to test
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`and refine various aspects of the PDM at my request at least through May 17,
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`2002.” Janisch Decl. (Ex. 2002), pg. 19. However, Patent Owner offers no
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`independent evidence to corroborate Mr. Janisch’s claim that Tyco was diligently
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`testing the PDM over the 18 days between the emails.
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`{01112672.DOCX / }
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`9
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`Mr. Janisch further asserts that “I continued to work diligently on
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`developing the PDM both internally and with Tyco.” Janisch Decl. (Ex. 2002), pp.
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`19-20. But Patent Owner has not submitted any independent evidence
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`corroborating Mr. Janisch’s claim that he “diligently” developed the PDM between
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`April 29, 2002 and May 17, 2002, or any explanation as to what Mr. Janisch was
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`doing during that time frame. Mr. Janisch’s claim of “diligent” development
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`during this period should be disregarded. See Gould.
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`3.
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`The 34-day gap
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`There is a 34-day gap between May 17, 2002 and June 24, 2002 (again
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`between two bookend emails (Exhibits 2016 and 2017)). Patent Owner has
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`attempted to close the gap by identifying a May 21, 2000 email (Ex. 2018), which
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`splits the gap into a 3-day gap and a 29-day gap. As before, Mr. Janisch
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`conclusorily asserts that “Tyco continued to test and refine aspects of the PDM”
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`during this gap, Janisch Decl. (Ex. 2002), pg. 20, but Patent Owner submits no
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`independent evidence to corroborate this claim. Mr. Janisch similarly asserts that
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`“Tyco and Arctic Cat continued to diligently test and refine aspects of the PDM
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`from May 21, 2002 through June 24, 2002,” Id., but there is no evidence to
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`{01112672.DOCX / }
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`10
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`corroborate Mr. Janisch’s claim of “diligent” testing and development during this
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`period.
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`4.
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`The 51-day gap
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`There is a 51-day gap between June 26, 2002 and August 16, 2002. As
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`before, Patent Owner has attempted to close the gap by submitting an email dated
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`June 26, 2002 (Ex. 2020) that divides the 51-day gap into gaps of one day and 48
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`days. Mr. Janisch repeats his conclusory assertion that “Tyco and Arctic Cat
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`continued to diligently test and refine aspects of the PDM from June 26, 2002
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`through August 16, 2002.” However, Patent Owner fails to provide any
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`independent corroborating evidence detailing the purported testing and
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`development that occurred over those 49 days, let alone evidence indicating that
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`the Arctic Cat and Tyco were working diligently throughout that entire time frame.
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`Thus, Mr. Janisch’s assertion of diligence should be disregarded. See Microsoft
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`and Medichem.
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`5.
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`The 73-day gap
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`There is a 73-day gap between August 16, 2002 and October 28, 2002.
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`Patent Owner attempts to close the gap by pointing to an email dated October 18,
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`2002, which splits the 73-day gap into a 62-day gap and a 9-day gap. With respect
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`{01112672.DOCX / }
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`11
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`to the 62-day gap, Mr. Janisch again asserts that “Tyco diligently performed testing
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`on PDMs.” Janisch Decl. (Ex. 2002), pg. 21. But, there is no independent
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`evidence to corroborate this claim. Mr. Janisch also asserts that “I continued to
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`integrate the PDM design into our vehicle harness design” over the course of those
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`62 days. Id. Similarly, Patent Owner fails to offer any evidence whatsoever to
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`corroborate Mr. Janisch’s claim of diligence, which should be disregarded. See
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`Microsoft and Medichem.
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`D. Even if Petitioner’s evidence of diligence is considered in its
`entirety, Petitioner has not specifically tied its evidence of
`diligence to the claims
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`One requirement of demonstrating diligence is that Patent Owner must
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`specifically tie its proffered evidence of diligence to the claims. Sandisk Corp.
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`Requester, Respondent, APPEAL 2015-001443, 2015 WL 5092840, at *9 (Aug.
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`21, 2015) (rejecting a patent owner’s evidence of diligence because “Patent Owner
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`has not provided persuasive, corroborated evidence of record showing the required
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`diligence for the entire critical period and such evidence was not specifically tied
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`to the claims”).
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`Here, Mr. Janisch’s testimony – which is not corroborated by independent
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`evidence – vaguely refers to “testing” and “developing” the “PDM” over the
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`{01112672.DOCX / }
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`12
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`course of nearly seven months. Neither Patent Owner nor Mr. Janisch identify any
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`evidence suggesting that the purported “testing” and “development” related to the
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`invention as claimed. Accordingly, even if Mr. Janisch’s testimony was
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`sufficiently supported by independent corroborating evidence – which it is not –
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`his general statements as to “testing” and “development” are not tied to the claims
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`and must be accorded no weight.
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`E.
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`Patent Owner has not submitted any evidence
`corroborating Mr. Janisch’s claim of conception
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`Arctic Cat has not submitted any documents showing that the design of the
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`PDM disclosed and claimed in the ‘822 patent originated with Mr. Janisch. There
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`are no design drawings, notebooks, memos, or other documents indicating that Mr.
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`Janisch conceived of the claimed PDM before engaging Tyco to assist with the
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`design.
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`Instead, the earliest dated document is a May 30, 2001 email indicating that
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`the collaborative process between Arctic Cat and Tyco had already begun. See
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`Janisch email (Ex. 2004). There is no record evidence attributing all claimed
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`aspects of the PDM to Mr. Janisch prior Arctic Cat’s engagement of Tyco.
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`Moreover, the record evidence contradicts Mr. Janisch’s conception claim,
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`indicating that Tyco personnel contributed to the development of various aspects of
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`{01112672.DOCX / }
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`13
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`the PDM. For example, Mr. Janisch points to an email chain between himself and
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`Jerry Dawidziuk of Tyco (Ex. 2007) as purported evidence of Mr. Janisch’s
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`conception of the housing, component attachment portion, removable cover,
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`receptacle openings, distribution harness, outer wall, fastener, and component
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`arrangement guide, among other aspects of the design. Janisch Decl. (Ex. 2002),
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`pp. 5-14.
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`However, the emails in the chain indicate that various design aspects did not
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`originate with Mr. Janisch. In the first email in the chain from Mr. Janisch to Mr.
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`Dawidziuk, Mr. Janisch says “[t]hank you for the e-mailed design proposals for the
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`ATV PCM,” Email chain (Ex. 2007), pg. 2, indicating that Tyco contributed to at
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`least some aspects of the design of the PDM. Accordingly, Petitioner’s reliance
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`upon this email chain (Ex. 2007) as evidence of Mr. Janisch’s conception is
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`misplaced.
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`In another example, Mr. Janisch relies upon Tyco design drawings (Exs.
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`2010 and 2011) as evidence of his conception. See Janisch Decl. (Ex. 2002), pp. 5-
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`14. But these Tyco drawings are not evidence that Mr. Janisch created the design
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`of the PDM – on the contrary, the drawings were created by Tyco. Moreover,
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`{01112672.DOCX / }
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`14
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`Patent Owner has submitted no evidence to corroborate Mr. Janisch’s claim that he
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`is solely and entirely responsible for the PDM shown in Tyco’s drawings.
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`Finally, the Boyd patent itself is countervailing evidence to Mr. Janisch’s
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`claim of conception. Tyco’s application for the Boyd patent leads to the inference
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`that Tyco and Mr. Boyd believed that Mr. Boyd conceived of the PDM disclosed
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`and claimed in the Boyd patent, which Mr. Janisch concedes is the same PDM
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`disclosed and claimed in his patent. Indeed, Mr. Boyd was required to submit an
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`oath and declaration swearing that Mr. Boyd was the sole inventor of the subject
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`matter disclosed and claimed in the Boyd patent. This is consistent with the
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`evidence of record, including emails indicating that Tyco was responsible for at
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`least some aspects of the PDM design.
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`F.
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`The declarations of Mr. Christianson and Mr. Kalsnes
`should be accorded no weight
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`Patent Owner has submitted the declarations of two longtime Arctic Cat
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`employees, Del Christianson (Ex. 2003) and Kenneth Kalsnes (Ex. 2034), in an
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`attempt to corroborate Mr. Janisch’s claim of inventorship. Like Mr. Janisch, Mr.
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`Christianson and Mr. Kalsnes are interested witnesses, raising serious questions as
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`to the reliability of their testimony. See Woodland Trust.
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`{01112672.DOCX / }
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`15
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`Further, their testimony regarding Mr. Janisch’s purported development is
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`general and vague, and it is not supported by any specific facts or documentary
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`evidence. Gould, 363 F.2d at 920 (“Gould’s testimony taken as a whole does not
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`set forth adequate facts to support a finding of that continuity of activity which
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`constitutes reasonable diligence. Merely stating that there were no weeks or
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`months that he ‘did not work on the laser’ is not enough, absent supporting facts
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`showing specifically what that ‘work’ consisted of and when it was performed.”).
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`For example, Mr. Kalsnes states that “I observed Darrel and his team
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`diligently work on the PDM [from before April 1, 2002 through October 29,
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`2002],” Kalsnes Decl. (Ex. 2034), pg. 2, ¶ 9, without providing any specific facts
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`or explanations as to what was being done during that seven month period. Mr.
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`Christianson makes an equally vague statement in his declaration. Christianson
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`Decl. (Ex. 2003), pg. 3, ¶ 14.
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`Even if their testimony is considered, it is ambiguous and equivocal. For
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`example, Mr. Christianson testifies that “[i]n the 2000-2001 timeframe, I observed
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`early drawings of Darrel’s PDM showing a housing with a removable cover, cover
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`latch, and matrix of receptacle openings.” Christianson Decl. (Ex. 2003), pg. 3, ¶
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`11. However, Mr. Christianson does not state that Mr. Janisch created the
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`{01112672.DOCX / }
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`16
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`drawings, nor does he specifically identify the drawings to which he refers. The
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`only drawings of record from the 2000-2001 timeframe are those created by Tyco
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`(Ex. 2014). Testimony of this nature, from interested witnesses, does not
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`corroborate Mr. Janisch’s claim of inventorship.
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`G.
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`Patent Owner’s attempt to disqualify Boyd as prior art
`under the “by another” clause of § 102(e) is misplaced
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`Patent Owner argues that Boyd is not prior art because the subject matter
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`disclosed in Boyd is Janisch’s invention. Setting aside the lack of reliable record
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`evidence to support this claim, the “by another” clause is tied to the legal status of
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`the inventive entities listed in the prior art reference and the challenged patent. In
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`re Kaplan, 789 F.2d 1574, 1575 (Fed. Cir. 1986) (noting that “a sole inventor and
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`joint inventors including the sole inventor are separate ‘legal entities,’ a legal
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`proposition from which certain legal consequences flow”).
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`Thus, a challenge to the availability of prior art under § 102(e) based upon
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`the “by another” clause only arises where the prior art and the challenged patent
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`share at least one common inventor. Applied Materials, Inc. v. Gemini Research
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`Corp., 835 F.2d 279, 281 (Fed. Cir. 1987), as modified on reh'g (Mar. 14, 1988)
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`(“Even though an application and a patent have been conceived by different
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`inventive entities, if they share one or more persons as joint inventors, the 35
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`{01112672.DOCX / }
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`17
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`U.S.C. § 102(e) exclusion for a patent granted to “another” is not necessarily
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`satisfied.”) [emphasis added].
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`Here, the legal inventive entity of the Boyd patent is Kenneth Boyd. The
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`legal inventive entity of the ‘822 patent is Darrel Janisch. The “by another” clause
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`of § 102(e) is satisfied because there is no overlap between the legal inventive
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`entities of the two patents.
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`At best, Patent Owner may have an equitable claim regarding the
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`inventorship of the Boyd patent, but even if such a claim does exist, it does not
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`affect the current legal status of the inventive entity of Boyd. An analogous
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`situation arises in patent infringement actions regarding standing to sue, which
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`requires legal title to a patent. Where a plaintiff has only an un-adjudicated
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`equitable claim to patent ownership, that equitable claim is insufficient to establish
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`legal title to the patent, and thus, standing to sue. See Arachnid, Inc. v. Merit
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`Indus., Inc., 939 F.2d 1574, 1578 (Fed. Cir. 1991) (discussing the differences
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`between legal title to a patent and an equitable claim to title, where the former is
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`required for standing to sue for infringement and the latter is insufficient to
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`establish standing).
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`{01112672.DOCX / }
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`18
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`Thus, Mr. Janisch’s un-adjudicated equitable claim that he invented Boyd’s
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`subject matter does not disturb the current legal inventive entity of Boyd. Boyd
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`satisfies the “by another” clause of § 102(e).
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`II. Ground A
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`The other ground upon which the Board instituted review is Ground A:
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`Obviousness of claims 1-10 over Svette and Matsuoka. These claims should be
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`found unpatentable in accordance with Ground A.
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`A. Claim construction of “distribution harness”
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`In the Institution Decision, the Board commented on the term “distribution
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`harness,” stating that “the recited ‘distribution harness’ does not encompass the
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`wires (i.e., the recited ‘conductor cables’) standing alone.” Institution Decision,
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`pg. 7. The Board did not offer any further construction of the term.
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`Patent Owner argues that “distribution harness” should be construed as an
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`“apparatus that holds wires together,” arguing primarily that the limitation
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`“distribution harness” would be rendered superfluous claim language if interpreted
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`as a “bundle of wires” without requiring some additional structure. On the
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`contrary, a “plurality of electrical conductors” (as claimed in independent claims 1,
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`11 and 19) is broader than a “bundle of wires,” which imparts a particular
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`{01112672.DOCX / }
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`19
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`configuration upon the plurality of conductors, i.e., that they are bundled together.
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`Thus, the “wire harness” limitation imparts additional meaning to the claim beyond
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`a “plurality of electrical conductors.” For example, a plurality of conductors that
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`are not bundled together would not constitute a wire harness.
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`The specification supports Petitioner’s proposed construction, explaining
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`that “[t]he distribution harness 260 includes a plurality of electrical conductors
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`262, which optionally can be housed within a sheath 269 to keep the conductors
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`262 in a bundle.” The ‘822 patent (Ex. 1001), 5:18-20 [emphasis added]. Thus,
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`the specification explains that an additional structure, such as a sheath, is an
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`optional feature that may be used to help keep the wires in a bundled configuration.
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`As set forth in the specification, a “distribution harness” is a bundle of wires that
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`does not require an additional “apparatus,” which is consistent with Petitioner’s
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`proposed construction.
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`While Petitioner submits that “distribution harness” should be construed as
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`“a bundle of wires,” it may be a distinction without a difference. Even if Patent
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`Owner’s narrower construction is accepted, Patent Owner’s expert Dr. Ralph
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`Wilhelm admitted that structures for securing wires were known long before the
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`filing of the ‘822 patent:
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`{01112672.DOCX / }
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`20
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`Q Was it also known within the field of this technology to
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`tape wires together in a configuration or when they’re
`
`extending below as we were just talking about with
`
`respect to Svette?
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`[Patent Owner counsel objection to form, foundation and scope]
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`A
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`I – in the roughly 1994 time frame of this patent, this
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`Svette patent, lots of things were known, including cable
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`ties, including cable harnesses of various sorts, including
`
`wiring harnesses of various sorts, so it’s – there’s lots of
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`different options that could be used.
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`Wilhelm Transcript (Ex. 1009), 50:19-51:7.
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`Mr. Janisch did not invent a “distribution harness,” whether construed as a
`
`“bundle of wires” or as an “apparatus that holds wires together.” As described in
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`Boyd and Matsuoka, and as conceded by Dr. Wilhelm, there were many methods
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`and devices for bundling wires in a vehicle prior to the filing of the ‘822 patent.
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`Further, Dr. Wilhelm agreed that a person having ordinary skill in the art would
`
`have been motivated to bundle wires together:
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`{01112672.DOCX / }
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`21
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`Q
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`And would a person having ordinary skill in the art have
`
`understood that using a wire harness can help prevent
`
`fraying and can help organize the wires prior to the ‘822
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`and ‘822 patents?
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`[Patent Owner counsel objection to form, foundation and scope]
`
`A
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`I think irrespective of the timeline of the ‘822 or ‘822
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`patents, you’re talking about very fundamental
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`engineering principles in terms of bundling wires,
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`preventing fraying, lengthening the life – lifespan of the
`
`wires, reducing the likelihood of frayed wires. Those are
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`all good things to do.
`
`Q
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`And a person having ordinary skill in the art would have
`
`understood that before the filing of the application for the
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`‘822 patent, correct?
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`A
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`In general, they would, yes.
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`Wilhelm Transcript (Ex. 1009), 59:4-24. Dr. Wilhelm’s testimony is consistent
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`with the testimony of Petitioner’s expert, Mr. Happ. See Happ Decl. (Ex. 1007), ¶
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`75. A person having ordinary skill in the art would have been motivated to bundle
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`{01112672.DOCX / }
`
`22
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`
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`the wires of Svette together in accordance with the conventional practice as
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`disclosed in Matsuoka.
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`B.
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`Svette and Matsuoka disclose a distribution harness on the
`back side of the wall
`
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`Claim 1 includes a wall “having a front side and a back side.” The wall
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`includes a plurality of receptacle openings that are “positioned to receive electrical
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`components on the front side of the wall.” There is a distribution harness “on the
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`backside of the wall opposite the receptacle openings.” Thus, claim 1 uses the
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`terms “front side” and “back side” to identify where the electrical components and
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`distribution harness respectively interface with the receptacle openings. Claim 5 is
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`broader, simply requiring a distribution harness “opposite” the receptacle openings.
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`The specification does not explicitly identify or define the front side or back
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`side of the wall. However, Figure 3 (below) shows individual wires extending in a
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`vertical direction from the receptacle openings, then bending in a horizontal
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`direction and bundled into a distribution harness. The below configuration
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`presumably shows a distribution harness on the “back side” of the wall.
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`{01112672.DOCX / }
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`23
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`This same configuration is disclosed in Matsuoka. For example, as shown in
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`Fig. 1 of Matsuoka, the wires extend in a vertical direction below the wall, then
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`bend in a horizontal direction and are bundled into a distribution harness.
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`The Petition and Mr. Happ explain that a person having ordinary skill in the
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`art would incorporate the conventional wire harness configuration into Svette.
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`Petition, pp. 24-25; Happ Decl. (Ex. 1006), pg. 21, ¶ 65. Thus, when incorporating
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`the distribution harness configuration into Svette, the wires of Svette – which
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`extend in a vertical direction beneath the wall with the receptacles – would be
`
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`{01112672.DOCX / }
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`24
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`directed in a horizontal direction and bundled as disclosed in Matsuoka, resulting
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`in a distribution harness on the back side of the wall.
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`Further, in the pending district court litigation, Patent Owner has
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`characterized the below configuration as constituting a distribution harness on the
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`back side of a wall. Two separate views are shown below, where the top view
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`includes Patent Owner’s characterization of the PDM. See Patent Owner
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`infringement contentions, Ex. 1010, pp. 9 and 63.
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`{01112672.DOCX / }
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`25
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`There is no meaningful difference between the configuration above and the
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`configuration disclosed in Matsuoka. Moreover, given the design similarities
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`between the above PDM and the Svette PDM, the above configuration is an
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`accurate representation of how a person having ordinary skill in the art would
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`incorporate the Matsuoka distribution harness into the Svette PDM.
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`To the extent Patent Owner’s interpretation of the “back side” limitation of
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`claim 1 or the “opposite” limitation of claim 5 in this proceeding deviate from
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`Patent Owner’s interpretation of those terms when asserting its infringement
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`claims against Petitioner’s device in the district court proceeding, Patent Owner’s
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`argument should be disregarded. When applying Patent Owner’s district court
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`{01112672.DOCX / }
`
`26
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`
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`interpretation, Svette in view of Matsuoka clearly disclose the distribution harness
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`configuration of claims 1 and 5.
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`Preamble relating to a “personal recreational vehicle”
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`C.
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`The Institution Decision rejected Patent Owner’s argument that the preamble
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`of claims 1-4, which recite a “personal recreational vehicle,” are limiting. The
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`Board reasoned that the claim bodies describe structurally complete inventions,
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`and that the preamble merely recited an intended use. Institution Decision, pp. 7-8,
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`citing Catalina Marketing Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809
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`(Fed. Cir. 2002). Patent Owner largely repeats its argument from the Preliminary
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`Response, which should again be rejected by the Board.
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`Patent Owner also points to the testimony of Dr. Wilh
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