Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 37
`Entered: June 7, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`XILINX, INC.,
`Petitioner,
`
`v.
`
`GODO KAISHA IP BRIDGE 1,
`Patent Owner.
`____________
`
`Case IPR2017-00842
`Patent 7,728,439 B2
`____________
`
`
`
`Before JENNIFER MEYER CHAGNON, SHEILA F. MCSHANE, and
`MELISSA A. HAAPALA, Administrative Patent Judges.
`
`CHAGNON, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Petitioner’s Motion to Exclude Evidence
`37 C.F.R. § 42.64(c)
`
`
`
`

`

`IPR2017-00842
`Patent 7,728,439 B2
`
`
`Xilinx, Inc. (“Petitioner”) moves to exclude from evidence certain
`exhibits filed by Godo Kaisha IP Bridge 1 (“Patent Owner”). Paper 17
`(“Mot.”). Patent Owner filed an Opposition (Paper 22, “Opp.”), and
`Petitioner filed a Reply thereto (Paper 24, “Reply”). For the following
`reasons, Petitioner’s motion is denied.1
`Pursuant to our Rules, a motion to exclude evidence must be filed to
`preserve any previously-made objections to evidence. 37 C.F.R. § 42.64(c).
`The motion must identify where in the record the objections were made, and
`must explain the objections. Id. Petitioner did not file any objections to
`evidence in this proceeding, nor did Petitioner point to any such objections
`in its motion to exclude. See Opp. 1, 3; Tr.2 57:10. This alone is sufficient
`reason to deny Petitioner’s motion.
`Petitioner moves to exclude Exhibit 2011, which is the Declaration of
`Patent Owner’s expert Robert Darveaux, Ph.D. Mot. 1. According to
`Petitioner, “the cross-examination testimony of Patent Owner’s expert,
`Dr. Darveaux, establishes a complete lack of candor and credibility that
`justifies excluding his testimony in its entirety.” Id. In particular, Petitioner
`contends that Dr. Darveaux “failed to determine or disclose his definition of
`a key claim term necessary for evaluating the prior art.” Id. at 2. The
`
`1 Petitioner makes brief mention of sanctions in a citation in its Motion.
`See Mot. 8 n.4. Patent Owner argues that Petitioner’s “request for sanctions
`[should be] denied.” See Opp. 12–14. As confirmed in Petitioner’s Reply,
`however, Petitioner is not seeking sanctions. Reply 5. Further, we did not
`authorize any motion for sanctions. See 37 C.F.R. § 42.20(b) (“A motion
`will not be entered without Board authorization.”). For clarity, we confirm
`that no motion for sanctions is under consideration in this proceeding.
`2 An Oral Hearing was held on May 3, 2018. A transcript of the Oral
`Hearing has been entered into the record. Paper 34 (“Tr.”).
`
`2
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`

`

`IPR2017-00842
`Patent 7,728,439 B2
`
`specific term at issue is the term “equal to,” recited in challenged
`independent claims 1 and 7 of U.S. Patent No. 7,728,439. See id. at 2–13;
`Tr. 29:4–17; Ex. 1001, 13:57–14:11, 14:34–54.
`Patent Owner argues that “it was not Dr. Darveaux’s burden to [offer
`an express construction of ‘equal to’],” but rather, “[i]f the issues in this trial
`require an understanding of . . . a claim interpretation beyond what is
`presented in the Petition, that evidences Petitioner’s failure to meet its
`burden.” Opp. 5–6. Patent Owner further argues that Dr. Darveaux
`“understood the claims adequately to address the issues raised in the
`Petition,” and, in particular, “[i]t was not necessary for Dr. Darveaux to
`define ‘equal to’ to explain why [Petitioner’s proposed] modification [to
`Hirose] would not have been a matter of routine experimentation and
`optimization.” Id. at 9; see also Tr. 58:3–6 (Patent Owner’s counsel arguing
`that “[b]ecause the difference [between Hirose and the claims] was stark
`enough, the question of exactly where to draw the line on equal didn’t come
`up.”); id. at 47:1–11 (Patent Owner’s counsel arguing, “everybody had a
`working understanding of what the term [(i.e., ‘equal’) was. They had a
`working understanding that what was in Hirose was far enough apart that we
`didn’t need to worry about whether or not there was a precise definition of
`‘equal.’ And everybody had a working understanding that you would have
`to get it closer together right, to make it equal. And it just didn’t come up
`exactly precisely how you would define it.”).
`Notably, Petitioner also does not propose a construction for the term
`“equal to” in this proceeding. See Opp. 9; Tr. 20:9–21:6 (Petitioner’s
`counsel indicating, “[t]here is no definition, I guess, necessarily on the
`record for ‘equal.’ What we know, or what we put forth in our petition, is
`
`3
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`

`

`IPR2017-00842
`Patent 7,728,439 B2
`
`that equal is narrower than matched. . . . And so once Hirose’s matched
`is -- you know, once Hirose teaches matched, from there you can, you can
`optimize to whatever the appropriate definition of equal is.” (emphases
`added)), 46:17–21 (Patent Owner’s counsel, in response to the question
`“What does ‘equal’ . . . mean?”, indicating, “[s]o that’s an issue that hasn’t
`been raised in the proceeding and nobody has answered it and you asked the
`same question to petitioner. They didn’t answer it.”). Upon review of the
`parties’ arguments, we are not persuaded that Dr. Darveaux’s hesitation to
`provide an express definition of the term “equal to” during his
`cross-examination is reason sufficient to exclude his testimony in its
`entirety.
`Petitioner also argues that “Dr. Darveaux failed to utilize the proper
`standard for the [person of ordinary skill in the art (‘POSITA’)] in
`evaluating the prior art.” Mot. 13. Specifically, Petitioner asserts that
`Dr. Darveaux “fail[ed] to recognize a POSITA is understood to be aware of
`the entirety of the relevant prior art at the time of the alleged invention.” Id.;
`see also id. at 13–15 (Petitioner’s arguments in this regard). In support,
`Petitioner cites, for example, to the following excerpt from Dr. Darveaux’s
`cross-examination testimony:
`Q [Mr. Slater]: “And you did not assume that the
`[POSITA] would be aware of every patent in the relevant field
`in your analysis, correct?”
`A [[Dr.] Darveaux]: “Correct.”
`Mot. 13–14 (quoting Ex. 1011, 28:11–14 (emphasis Petitioner’s)). We agree
`with Patent Owner, however, that Petitioner’s citations to Dr. Darveaux’s
`testimony are taken out of context. See, e.g., Tr. 58:9–59:9.
`
`4
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`

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`IPR2017-00842
`Patent 7,728,439 B2
`
`
`In any event, Petitioner’s arguments in its Motion to Exclude
`generally are directed to the weight to be given to Dr. Darveaux’s testimony,
`rather than to the admissibility thereof. See Mot. 1 (“Dr. Darveaux’s
`outright and repeated refusal to answer questions regarding the dispositive
`issues in this proceeding – including the very issues upon which he opined in
`his Declaration – warrants the exclusion of Dr. Darveaux’s testimony or,
`alternatively, the determination that his testimony is entitled to no
`evidentiary weight.” (emphasis added)); Opp. 2 (“Petitioner’s Motion to
`Exclude fails to cite even a single Federal Rule of Evidence or regulation
`rendering the Darveaux Declaration inadmissible.”)3. “A motion to exclude
`must explain why the evidence is not admissible (e.g., relevance or hearsay)
`but may not be used to challenge the sufficiency of the evidence to prove a
`particular fact.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`48,767 (Aug. 14, 2012). In deciding the merits of the substantive challenges
`in any Final Written Decision in this proceeding, the Board is capable of
`according the appropriate weight to Dr. Darveaux’s testimony.
`Accordingly, it is:
`ORDERED that Petitioner’s Motion to Exclude (Paper 17) is denied.
`
`
`
`
`3 We recognize that Petitioner cites to Federal Rule of Evidence 702 in its
`Reply (see, e.g., Reply 1–3). However, arguments necessary to support a
`motion must be made in the motion itself. See 37 C.F.R. § 42.24(b)
`(“All arguments for the relief requested in a motion must be made in the
`motion. A reply may only respond to arguments raised in the corresponding
`opposition, patent owner preliminary response, or patent owner response.”).
`
`5
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`

`

`IPR2017-00842
`Patent 7,728,439 B2
`
`PETITIONER:
`Steven H. Slater
`Roger C. Knapp
`John D. Koetter
`SLATER MATSIL, LLP
`sslater@slatermatsil.com
`rknapp@slatermatsil.com
`jkoetter@slatermatsil.com
`
`PATENT OWNER:
`Edmund J. Walsh
`Gerald B. Hrycyszyn
`Richard F. Giunta
`Elisabeth H. Hunt
`WOLF, GREENFIELD & SACKS, P.C.
`EWalsh-PTAB@wolfgreenfield.com
`GHrycyszyn-PTAB@wolfgreenfield.com
`RGiunta-PTAB@wolfgreenfield.com
`EHunt-PTAB@wolfgreenfield.com
`
`
`6
`
`