Trials@uspto.gov Paper 111
`571-272-7822 Entered: May 5, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`CAMPBELL SOUP COMPANY, CAMPBELL SALES COMPANY, and
`TRINITY MANUFACTURING, LLC,
`Petitioner,
`
`v.
`
`GAMON PLUS, INC.,
`Patent Owner.
`____________
`
`IPR2017-00091 (Patent D621,645 S)
` IPR2017-00094 (Patent D612,646 S)1
`____________
`
`
`
`Before GRACE KARAFFA OBERMANN, BART A. GERSTENBLITH,
`and ROBERT L. KINDER, Administrative Patent Judges.
`
`KINDER, Administrative Patent Judge.
`
`
`DECISION
`Denying Motions to Exclude
`37 C.F.R. §§ 42.64(c), 42.61(a)
`
`
`
`
`
`1 We exercise our discretion to issue one Order in each of these proceedings.
`The parties may not use this caption style.
`
`
`571-272-7822 Entered: May 5, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`CAMPBELL SOUP COMPANY, CAMPBELL SALES COMPANY, and
`TRINITY MANUFACTURING, LLC,
`Petitioner,
`
`v.
`
`GAMON PLUS, INC.,
`Patent Owner.
`____________
`
`IPR2017-00091 (Patent D621,645 S)
` IPR2017-00094 (Patent D612,646 S)1
`____________
`
`
`
`Before GRACE KARAFFA OBERMANN, BART A. GERSTENBLITH,
`and ROBERT L. KINDER, Administrative Patent Judges.
`
`KINDER, Administrative Patent Judge.
`
`
`DECISION
`Denying Motions to Exclude
`37 C.F.R. §§ 42.64(c), 42.61(a)
`
`
`
`
`
`1 We exercise our discretion to issue one Order in each of these proceedings.
`The parties may not use this caption style.
`
`
`
`IPR2017-00091 (Patent D621,645 S)
`IPR2017-00094 (Patent D612,646 S)
`
`
`BACKGROUND
`I.
`Campbell Soup Company, Campbell Sales Company, and Trinity
`Manufacturing, LLC (collectively, “Petitioner”) filed motions to exclude
`pursuant to 37 C.F.R. §§ 42.64(c) and 42.61(a) and the Federal Rules of
`Evidence (“Fed. R. Evi.”). IPR2017-00091, Paper 104; IPR2017-00094,
`Paper 104. Gamon Plus, Inc. (“Patent Owner”) filed an opposition.
`IPR2017-00091, Paper 106; IPR2017-00094, Paper 106. Petitioner filed a
`reply. IPR2017-00091, Paper 107; IPR2017-00094, Paper 107.
`Patent Owner filed a motion to exclude in each proceeding pursuant to
`37 C.F.R. § 42.64(c) and the Fed. R. Evi. IPR2017-00091, Paper 102;
`IPR2017-00094, Paper 102. Petitioner filed an opposition. IPR2017-00091,
`Paper 105; IPR2017-00094, Paper 105. Patent Owner filed a reply.
`IPR2017-00091, Paper 108; IPR2017-00094, Paper 108.
`Because the motions, oppositions, and replies are nearly identical in
`each proceeding, we discuss and cite to the papers in IPR2017-00091. We
`address each motion in turn below.
`
`
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
`II.
`Petitioner moves pursuant to Fed. R. Evi. 701 and 702 and 37 C.F.R.
`§§ 42.64(c) and 42.61(a) to exclude Patent Owner’s annotated figures (the
`“Challenged Figures”) offered in Patent Owner’s Response. Paper 104, 1.
`Specifically, Petitioner timely objected (Paper 96) and later preserved these
`objections through its Motion to Exclude challenging seven annotated
`figures in Patent Owner’s Response. See Paper 104, 2–3. According to
`Petitioner, the Challenged Figures are annotations made by Patent Owner’s
`counsel on not-to-scale drawings in U.S. Patent No. D621,645 S (“the ’645
`
`
`
`2
`
`
`
`IPR2017-00091 (Patent D621,645 S)
`IPR2017-00094 (Patent D612,646 S)
`
`patent”) and various prior art references, and the drawings and annotations
`are relied upon “as evidentiary support for Patent Owner’s arguments
`regarding purported specific dimensions and proportionality of the ’645
`patent’s claimed design and various prior art designs.” Id. at 1–2.
`Petitioner argues that annotations accompanying the figures are
`improper expert testimony under Fed. R. Evi. 702. Id. at 2. For example,
`Petitioner contends “Patent Owner has offered the annotations as expert
`evidence regarding the largest article that can be loaded/dispensed” in Linz,2
`the reference asserted in these proceedings. Id. Similarly, Petitioner argues
`that Patent Owner has offered the annotations as expert evidence regarding
`location of an article within a dispenser. Id. Petitioner also contends the
`Challenged Figures offer improper expert testimony “regarding
`proportionality and spatial relationships/orientation,” “exposed can surface,”
`“label positioning,” and “lateral inserts and exposed can surface.” Id. at 2–3.
`Petitioner contends separately that the annotations are speculative and
`should be excluded under Fed. R. Evi. “701 and 702 because Patent Owner
`relies on the comparative scaling of two separate figures, to reach qualitative
`conclusions regarding the ‘largest possible diameter’ of a can.” Id. at 2.
`Similarly, Petitioner argues that “Patent Owner relies on the comparative
`scaling of two separate figures, to reach qualitative conclusions regarding
`the relative ‘esthetic presentation.’” Id.
`Patent Owner responds that “the diagrams that Petitioners seek to
`strike are not opinion testimony, but attorney argument and presentation of
`evidence of record.” Paper 106, 1. Further Patent Owner contends that the
`
`
`2 U.S. Patent No. D405,622.
`
`
`
`3
`
`
`
`IPR2017-00091 (Patent D621,645 S)
`IPR2017-00094 (Patent D612,646 S)
`
`figures and annotations in its brief are based on deposition testimony of
`record and not “additional evidence, just a presentation of evidence already
`of record.” Id. at 4.
`In its Reply, Petitioner seems to agree with Patent Owner that the
`annotated figures are not evidence per se, but instead attorney argument.
`Paper 107, 1. Petitioner notes that
`Patent Owner now concedes that the Challenged Figures
`are mere attorney argument. (Paper 106, at 2, 10.) Patent Owner
`insists, however, that the Challenged Figures are attorney
`argument directed to underlying evidence. (Id. at 11.) They are
`not. Rather, the Challenged Figures are attorney argument
`directed only to underlying attorney argument.
`Paper 107, 1. The disagreement between the parties seems to be whether the
`Challenged Figures represent improper attorney argument, or proper
`attorney argument based on cross-examination and the evidence of record.
`See Paper 106, 1–4.
`
`Regardless of the answer to this issue, we do not believe a motion to
`exclude is the proper vehicle for deciding the answer. A motion to exclude
`typically is concerned with excluding evidence, not argument. Here, there
`seems to be no dispute that Petitioner is seeking to exclude attorney
`argument. We can weigh such attorney argument based on numerous
`factors, including whether it lacks adequate foundation, presents improper
`expert testimony, or is speculative. For example, based on the parties’
`arguments and the identified evidence of record, we can determine whether
`the Patent Owner’s argument are based upon cross examination testimony of
`Petitioner’s expert witness.
`Additionally, we can determine whether the attorney argument
`accurately conveys a summary of admissible evidence already of record.
`
`
`
`4
`
`
`
`IPR2017-00091 (Patent D621,645 S)
`IPR2017-00094 (Patent D612,646 S)
`
`Notably, Petitioner admitted in its Petition that an ordinary observer would
`be capable of determining the dimensions and positioning of the
`hypothetical Linz can. See Pet. 27–29 (Paper 2); see also Cook Grp. Inc. v.
`Boston Scientific Scimed, Inc., No. 2019-1370, slip op. at 17 (Fed. Cir.
`Apr. 30, 2020) (holding that “an admission in a preliminary patent owner
`response, just like an admission in any other context, is evidence
`appropriately considered by a factfinder”). Specifically, Petitioner admitted
`in its Petition that an ordinary observer, who is not an expert, would find the
`challenged design claim “is substantially identical to the design disclosed by
`Linz.” Pet. 27–28. Petitioner admitted that an ordinary observer would be
`able to place “a cylindrical can (which is inherently disclosed by Linz)” into
`“Linz in its can receiving area below the access door / label area.” Id. at 28.
`Petitioner, further, included the figure below as something an ordinary
`observer would be able to create or determine without expert involvement:
`
`
`Petitioner’s annotated Figure 1 of Linz (Pet. 28) adding a hypothetical blue
`can that Linz does not describe.
`
`
`
`5
`
`
`
`IPR2017-00091 (Patent D621,645 S)
`IPR2017-00094 (Patent D612,646 S)
`
`
`Based on Petitioner’s prior admissions, we do not agree with
`Petitioner that determining proper position, dimensions, or size of the can in
`Linz requires expert testimony or that Patent Owner’s attorney arguments
`are purely “speculative.” Because Petitioner has admitted that the location,
`size, and orientation of the cylindrical object in Linz readily would be
`apparent to the ordinary observer, Petitioner has, in effect, admitted that
`expert analysis is not needed to determine these attributes. Thus, we do not
`believe that Patent Owner’s arguments and the Challenged Figures should be
`excluded based on the entirety of the record before us.
`
`We also are mindful of our mandate on remand from the Federal
`Circuit. The evidence cited by the Federal Circuit as determinative proof
`that “the design of Linz [is] for dispensing cans and that a can would be used
`in the system,” were citations to admissions made by Patent Owner’s
`counsel during oral argument. Campbell Soup Co. v. Gamon Plus, Inc., 939
`F.3d 1335, 1341 (Fed. Cir. 2019) (noting the parties only “dispute the
`dimensions of a can that would be used in Linz in comparison with that in
`the claimed designs” and quoting five statements of Patent Owner’s counsel
`for support). These admissions relied upon by the Federal Circuit include
`specific arguments made by Patent Owner’s counsel as to the “size,”
`“position,” and “the shape and the height and width” of the hypothetical can
`in Linz. Id. (quoting various portions of the Federal Circuit’s transcript).
`The Federal Circuit did not make any finding that counsel’s
`arguments were improper expert testimony or speculative. To the contrary,
`the Federal Circuit relied upon those arguments to reach its decision – “the
`design of Linz [is] for dispensing cans and that a can would be used in the
`system.” Id. Thus, in addition to the reasons set forth above, we decline to
`
`
`
`6
`
`
`
`IPR2017-00091 (Patent D621,645 S)
`IPR2017-00094 (Patent D612,646 S)
`
`strike arguments made by Patent Owner’s counsel already presented to, and
`relied upon by, the Federal Circuit in rendering its decision.
`The weight of Patent Owner’s arguments will be evaluated based on
`the issues raised by Petitioner, including these Motions to Exclude. See
`Corning, Inc. v. DSM IP Assets B.V., IPR2013-00053, Paper 66 at 19 (PTAB
`May 1, 2014) (quoting Donnelly Garment Co. v. NLRB, 123 F.2d 215, 224
`(8th Cir. 1941) (“One who is capable of ruling accurately upon the
`admissibility of evidence is equally capable of sifting it accurately after it
`has been received.”)).
`
`Accordingly, for the reasons explained above, Petitioner’s Motion to
`Exclude the Challenged Figures is denied.
`
`
`III. PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
`Gamon moves pursuant to 37 C.F.R. § 42.64 to exclude the
`Declarations of James Gandy (Ex. 1002, 1018) and Steven Visser
`(Ex. 1020). Paper 102, 1. Patent Owner bases its motion on Mr. Gandy’s
`prior involvement with Linz in his role as a primary patent examiner with
`the USPTO. Patent Owner asserts that Mr. Gandy’s testimony is
`inadmissible because its probative value is substantially outweighed by the
`risk of confusing the issues and unfair prejudice pursuant to Fed. R. Evi.
`403. Id. Also, Patent Owner contends that the expert testimony is not “the
`product of reliable principles and methods” under Fed. R. Evi. 702. Id.
`Patent Owner also alleges violation of several regulations, including
`37 C.F.R. § 104.23(a)(1), 15 C.F.R. § 15.16, and 37 C.F.R. § 11.111. Id. at
`2.
`
`
`
`7
`
`
`
`IPR2017-00091 (Patent D621,645 S)
`IPR2017-00094 (Patent D612,646 S)
`
`Petitioner responds that Mr. Gandy submitted his opening declaration
`
`on October 14, 2016 (Ex.1002), and the Board instituted trial on March 30,
`2017 (Paper 12), but “Patent Owner did not object to Mr. Gandy’s
`declaration within ten business days of that institution decision as required
`by the rules.” Paper 105, 2 (citing 37 C.F.R. § 42.64). Petitioner next points
`out that on October 13, 2017, Mr. Gandy submitted a second declaration and
`Mr. Visser submitted his declaration (Exs. 1018, 2020), but Patent Owner’s
`objections (Paper 34) did not include any objection based on Mr. Gandy’s
`role as an examiner on Linz. Paper 105, 2. Thereafter, on November 9,
`2017, counsel for Patent Owner confirmed, during Mr. Gandy’s deposition,
`that Mr. Gandy was the primary examiner on Linz. Ex. 2019, 11:20–12:11.
`Also, Mr. Gandy is listed on the face of Linz as “Primary Examiner.”3
`Ex. 1008, code (56).
`The Board confirmed with Patent Owner’s counsel at the oral hearing
`(on January 2, 2018) that Patent Owner had not raised the issue of Mr.
`Gandy’s role as an examiner on Linz. See Paper 80, 26:4–28:14, 26:25–27:2
`(Board: “you haven’t made any motions for disqualification – have you?”
`Counsel for Patent Owner: “No.”).
`
`Despite Patent Owner’s knowledge of Mr. Gandy’s role as an
`examiner listed on Linz, Patent Owner did not object to Mr. Gandy’s
`testimony on that basis at any point during the trial. We issued a Final
`Written Decision on March 29, 2018. Papers 81, 84. Our Final Decision
`
`
`3 Patent Owner’s contention that “Petitioners initially concealed
`Mr. Gandy’s role as the Primary Examiner of Linz” is not credible
`considering Mr. Gandy is listed on the face of Linz. Paper 108, 1; Ex. 1008,
`code (56).
`
`
`
`8
`
`
`
`IPR2017-00091 (Patent D621,645 S)
`IPR2017-00094 (Patent D612,646 S)
`
`was appealed to the Federal Circuit. Paper 85. Patent Owner did not object
`to Mr. Gandy’s testimony on appeal. The Federal Circuit issued a decision
`and remanded, as noted and cited above.
`Despite not raising an objection to Mr. Gandy’s testimony on this
`basis in the three-and-a-half years since Mr. Gandy’s first declaration, Patent
`Owner argues, for the first time, that Mr. Gandy’s testimony should be
`excluded in Patent Owner’s March 27, 2020 Motion to Exclude. Paper 102.
`The issue is raised too late.
`As Petitioner notes, pursuant to 37 C.F.R. § 42.64, “[a]ny objection to
`evidence submitted during a preliminary proceeding must be filed within
`ten business days of the institution of the trial” or “five business days of
`service of evidence to which the objection is directed.” Id. (emphasis
`added). Likewise, Patent Owner did not seek permission after Mr. Gandy’s
`deposition to exclude him as a witness or to exclude his testimony. Because
`Patent Owner chose not to timely object to Mr. Gandy’s appearance or
`testimony on the basis of his prior involvement as an examiner on Linz, we
`find that Patent Owner waived its objection during trial and, further,
`identifies no persuasive basis for raising it for the first time after appeal to
`the Federal Circuit.4
`On that point, Patent Owner cites to several regulations and contends
`that “[t]he prohibitions of Examiner testimony are not subject to waiver.”
`Paper 108, 3–5. Patent Owner does not cite to any instance, however, where
`
`
`4 In a “Motions for Observations” filed November 22, 2017 (Paper 50),
`Patent Owner identified Mr. Gandy as the primary examiner of Linz, but
`noted only this prior involvement “may have given him suggestions of its
`[Linz] interpretation.” Paper 50, 1.
`
`
`
`9
`
`
`
`IPR2017-00091 (Patent D621,645 S)
`IPR2017-00094 (Patent D612,646 S)
`
`the Board excluded testimony under similar circumstances (for example,
`after a trial and appeal) based on these regulations. To be clear, Mr. Gandy
`was not involved with the prosecution of the subject patents challenged in
`these proceedings (Patents D621,645 S and D621,646 S). Instead, his
`involvement was with Linz (Ex. 1008), which Petitioner asserts as an
`invalidating prior art reference. The regulations cited by Patent Owner
`concern Office “employees” and “Office information, subjects, or
`activities.” See 37 C.F.R. § 104.23. Patent Owner does not explain
`adequately how these provisions apply under the circumstances at hand.5
`Accordingly, we decline to exclude the three declarations that are the subject
`of Patent Owner’s Motion to Exclude.
`Accordingly, for the reasons explained above, Patent Owner’s Motion
`to Exclude is denied.
`
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner’s Motions to Exclude (IPR2017-00091,
`Paper 104; IPR2017-00094, Paper 104) are denied; and
`FURTHER ORDERED that Patent Owner’s Motions to Exclude
`(IPR2017-00091, Paper 102; IPR2017-00094, Paper 102) are denied.
`
`
`
`
`5 We offer no opinion as to whether any ethical rules of conduct before the
`Office were violated.
`
`
`
`10
`
`
`
`IPR2017-00091 (Patent D621,645 S)
`IPR2017-00094 (Patent D612,646 S)
`
`For PETITIONER Campbell Soup Company and Campbell Sales Company:
`
`Steven E. Jedlinski
`Tracy Zurzolo Quinn
`Holland & Knight LLP
`steven.jedlinski@hklaw.com
`tracy.quinn@hklaw.com
`
`For PETITIONER Trinity Manufacturing, LLC:
`
`Martin B. Pavane
`Darren Mogil
`Cozen O’Connor
`mpavane@cozen.com
`dmogil@cozen.com
`
`Ira Jay Levy
`Goodwin Procter LLP
`ILevy@goodwinlaw.com
`
`
`For PATENT OWNER:
`
`
`Andrew L. Tiajoloff
`Edward P. Kelly
`TIAJOLOFF & KELLY LLP
`atiajoloff@tkiplaw.com
`ekelly@tkiplaw.com
`
`
`
`
`
`
`11
`
`
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