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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Campbell Soup Company, Campbell Sales Company and
`Trinity Manufacturing, LLC
`Petitioners,
`v.
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`Gamon Plus, Inc.
`Patent Owner
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`Case No. IPR2017-00091
`U.S. Patent No. D621,645
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`PETITIONERS’ RESPONSE TO PATENT OWNER’S
`MOTION TO EXCLUDE PURSUANT TO 37 C.F.R. § 42.64(c)
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`1
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`I.
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`INTRODUCTION
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`Patent Owner’s motion to exclude Exhibits 1018 and 1020, the reply
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`declarations of Petitioners’ experts James Gandy and Steven Visser, essentially
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`restates its challenge to Petitioners’ Reply (Paper No. 33), as Patent Owner
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`demands that the Board exclude the declarations because they purportedly
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`“present[] new claim construction and new prior art arguments not raised in the
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`original Petition for this IPR.” See, e.g., Paper No. 51, at 2.1 However, as
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`Petitioners have shown in their response to Patent Owner’s Identification of
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`Allegedly New Arguments and Citations of Evidence in Reply (Paper No. 48),
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`Petitioners did not submit, in either their Reply or the expert declarations
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`accompanying that Reply, any new claim construction or new prior art arguments.
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`Rather, Petitioners merely responded to arguments raised by Patent Owner with
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`arguments and evidence consistent with those set forth in their Petition. Patent
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`Owner’s motion to exclude the Gandy and Visser reply declarations should
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`therefore be denied for the same reason as its challenge to Petitioners’ Reply.
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`Patent Owner’s challenge to Exhibit 1021, excerpts from the testimony of
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`inventor Terry Johnson, is equally unavailing. The Board is free to consider and
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`1 Patent Owner requested leave to file a motion to strike portions of Petitioners’
`Reply for the same reasons. In its November 9, 2017 Decision (Paper No. 39), the
`Board declined to allow Patent Owner to file a motion to strike, but authorized
`Patent Owner to file a chart citing the portions of Petitioners’ Reply that Patent
`Owner believed to be improper. See Paper Nos. 40 (Patent Owner’s chart) and 48
`(Petitioners’ response thereto).
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`2
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`give appropriate weight to Mr. Johnson’s testimony that he believes his claimed
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`design to be “obvious,” and that he conceived of it and reduced it to practice in just
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`a few days, in the course of considering the obviousness of the patent at issue, U.S.
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`Patent No. D612,645 (the “’645 patent”), under applicable legal standards.
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`II. ARGUMENT
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`The Gandy and Visser Declarations Properly Address Arguments
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`Raised in Patent Owner’s Response.
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`Patent Owner demands that the Board dismiss entirely the two expert
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`declarations that Petitioners submitted with their Reply (Exhibits 1018 and 1020,
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`submitted in support of Paper No. 33). Patent Owner makes no meaningful
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`attempt to identify, in chart form or otherwise, the specific portions of those
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`declarations that purportedly comprise improper new matter or explain the basis
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`for its challenge thereto.
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`To the extent Patent Owner’s challenge to the Gandy and Visser reply
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`declarations is co-extensive with its challenge to Petitioners’ Reply (Paper No. 40),
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`Petitioners refer the Board to their counter-citations in Paper No. 48. As those
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`counter-citations make clear, Petitioners in their Reply (and in the corresponding
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`portions of the reply declarations of Gandy and Visser) have cited no new prior art,
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`no new combinations of prior art and no new grounds for invalidity; rather, they
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`have simply responded to issues raised in Patent Owner’s Response and the
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`Institution Decision. If Patent Owner wishes to address those points further, it may
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`do so during oral argument. Petitioners’ submissions are thus well within the
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`bounds of the Administrative Procedure Act and constitutional due process;
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`indeed, both the Board and the U.S. Court of Appeals for the Federal Circuit have
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`gone considerably further in allowing consideration of evidence adduced during
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`the inter partes review process. See, e.g., Genzyme Therapeutic Prods. Ltd.
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`Partnership v. Biomarine Pharm. Inc., 825 F.3d 1360, 1366-67 (Fed. Cir. 2016)
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`(affirming Board’s final written decision citing prior art combinations that were not
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`specifically cited in the Board’s institution decision, and noting that “the
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`introduction of new evidence in the course of the trial is to be expected in inter
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`partes review trial proceedings and, as long as the opposing party is given notice of
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`the evidence and an opportunity to respond to it, the introduction of such evidence
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`is perfectly permissible under the APA”); Emerson Elec. Co. v. SIPCO, LLC, Case
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`IPR2016-00984 (Paper No. 43), at 46-47 (Oct. 25, 2017) (considering prior art not
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`cited in inter partes petition or institution decision, where doing so was neither a
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`change of theory nor reliance on a ground different from those upon which review
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`was instituted, and where patent owner had the opportunity at oral argument to
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`address the new prior art) (citing Genzyme Therapeutic Products, 825 F.3d at 1367
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`(“The critical question for compliance with the [APA] and due process is whether
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`[Patent Owner] received ‘adequate notice of the issues that would be considered,
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`and ultimately resolved.’”)).2
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`To the extent Patent Owner intends to challenge some other portions of the
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`Visser and Gandy declarations beyond what is referenced in its Paper No. 40, it has
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`not given Petitioners fair notice of the particular challenge being made or the
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`reasons therefor. Petitioners cannot guess at the arguments that Patent Owner
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`might have intended to make but reserve the right to respond further if and when
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`any such arguments are properly made.
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`2 Patent Owner asserts that Mr. Gandy and Prof. Visser have “propound[ed] a new
`[claim] construction[.]” Paper No. 51, at 4-5. That is not true. In his opening
`declaration, Mr. Gandy opined that “I believe the Board should adopt the following
`construction of the ‘645 Patent claim: (1) an access door/label area having a
`symmetrical, convex arcuate surface having a centered apex, extending forward,
`and (2) a cylindrical can located below the access door/label area, as shown in the
`drawing of the ‘645 Patent.” Ex. 1002, at ¶31. Mr. Gandy further opined that
`“[a]ll other portions of the gravity feed dispenser, including the edges and borders
`of the access door/label area and the top and bottom of the cylindrical can are
`disclaimed.” Id. at ¶ 29; see also, e.g., id. at ¶27; Paper No. 2 (Petition), at 19.
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`Mr. Gandy’s reply declaration, and the reply declaration of Prof. Visser, are
`entirely consistent with that construction – they merely clarify that the proposed
`construction should not be read to suggest “any particular curvature or symmetry
`of the label area, or any particular forward/rearward relationship between label
`area and can…[r]ather, any portions of the ‘646 patent drawing that could be
`construed to show curvature and symmetry of a label area, and show a label area
`rearward of the can, are all drawn in broken lines and thus expressly disclaimed.”
`Ex. 1018, at 11 n.1 (emphasis added); Ex. 1020 at 15 n.2. Mr. Gandy’s deposition
`testimony is similarly consistent as, although Mr. Gandy explained why one could
`construe the claimed design with even fewer limitations than he had defined (i.e.,
`the claimed design could be argued not to require a convexly-shaped label area), he
`stood by his opinion that, on balance, a person of ordinary skill would understand
`the label area of the claimed design to be convex. See Ex. 2019, at 60:6-64:2,
`66:18-67:23).
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`B.
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`The Board May Consider the Testimony of the ‘645 Patent
`Inventor.
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`Patent Owner also seeks to exclude the testimony of its own inventor, Terry
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`Johnson, regarding his conception and reduction to practice of the claimed
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`invention (relevant excerpts submitted as Exhibit 1021).3 The Board, however, is
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`free to consider Mr. Johnson’s testimony in that regard – including his testimony
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`that his invention was “obvious” and took him just a few days to conceive and
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`reduce to practice – and to give that testimony whatever weight the Board deems
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`appropriate when assessing the obviousness of the claimed invention under
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`applicable legal standards. See, e.g., Neupak, Inc. v. Ideal Mfg. & Sales Corp., 41
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`Fed.Appx. 435, 440 (Fed. Cir. 2002) (affirming district court’s consideration of
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`inventor testimony where “[t]he inventors’ testimony was relevant to whether the
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`inventions would have been obvious to a person of ordinary skill in the art, and
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`there is no indication that the trial court misunderstood the proper legal standard or
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`gave the inventors’ testimony undue weight”).
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`3 Petitioners need not debate Patent Owner’s characterization of Mr. Johnson’s
`testimony – the transcript speaks for itself.
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`III. CONCLUSION
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`For the foregoing reasons, Petitioners respectfully request that the Board
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`deny Patent Owner’s Motion to Exclude.
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`Dated: December 13, 2017
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`Respectfully submitted,
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`/Gerard M. Donovan/
`Gerard M. Donovan
`Reg. No. 67,771
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`LEAD COUNSEL FOR
`PETITIONERS
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`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on the 13th
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`day of December 2017, a complete and entire copy of this Petitioners’
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`Response to Patent Owner’s Motion to Exclude was provided via the Patent
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`Trial and Appeal Board End to End (PTAB E2E) System as well as delivering
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`a copy via email on the following counsel for Patent Owner at:
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`Andrew Tiajoloff, Esq.
`Tiajoloff & Kelly LLP
`Chrysler Building, 37th Floor
`405 Lexington Avenue
`New York, NY 10174
`atiajoloff@tkiplaw.com
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`/Gerard M. Donovan/
`Gerard M. Donovan
`Reg. No. 67,771
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`LEAD COUNSEL FOR
`PETITIONERS
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`1
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