IPR2017-00864
`Patent Owner’s Motion to Exclude
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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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`Delphi Technologies, Inc.,
`Petitioner
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`v.
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`Microchip Technology Inc.,
`Patent Owner.
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`U.S. Patent No. 7,523,243
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`Case No. IPR2017-00864
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`PATENT OWNER’S MOTION TO EXCLUDE
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`Patent Owner’s Motion to Exclude
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`Delphi Technologies, Inc.,
`Petitioner
`
`v.
`
`Microchip Technology Inc.,
`Patent Owner.
`
`
`
`U.S. Patent No. 7,523,243
`
`
`Case No. IPR2017-00864
`
`
`
`
`
`PATENT OWNER’S MOTION TO EXCLUDE
`
`
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`IPR2017-00864
`Patent Owner’s Motion to Exclude
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`Patent Owner moves pursuant to 37 CFR 42.64(c) and Paper 48 to exclude (1)
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`Petitioner’s Sur-Reply (Paper 42) and (2) expert declaration (Exhibit 1053).
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`I.
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`A reply that raises a new issue or that belatedly presents new evidence
`should be excluded, along with its exhibits.
`Petitioner’s Sur-Reply, along with Exhibit 1053, raises new issues or
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`introduces new evidence and should therefore be excluded pursuant to 37 CFR
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`42.23(b) (“A reply may only respond to arguments raised in the corresponding
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`opposition or patent owner response”). The Trial Practice Guide explains that “[a]
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`reply that raises a new issue or belatedly presents evidence will not be considered
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`and may be returned. The Board will not attempt to sort proper from improper
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`portions of the reply.” 77 Fed. Reg. at 48,767 (Aug. 14, 2012).
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`Regarding Ground 1 (Furukawa), the Board twice found Petitioner did not
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`argue inherent anticipation. See ID (Paper 12) at 23 (“Petitioner has not presented
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`any argument that the recited concurrent connections would have been inherent.”);
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`Order (Paper 18) at 5 (“The Petition also does not argue that Furukawa inherently
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`discloses alternating accessing the function block without re-enumerating or re-
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`configuring.”). In its Post-SAS Supplemental Reply, Petitioner again did not argue
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`inherency: “Furukawa explicitly describes . . . hosts concurrently connected to a
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`single USB device and alternating access to the USB device without requiring re-
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`configuring or re-enumeration . . . .” Paper 38 at 9 (emphasis added).
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`1
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`IPR2017-00864
`Patent Owner’s Motion to Exclude
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`Petitioner’s supplemental expert declaration (Exhibit 1053) and Sur-Reply
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`(Paper 42) presents—for the first time—an inherency argument. While not explained
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`in its Sur-Reply, Petitioner’s expert declaration uses inherency language such as: “it
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`necessarily flows from the description in Furukawa . . .” (Exhibit 1053 ¶ 7) and “a
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`POSITA could not understand Furukawa to describe . . .” (id. ¶ 23).1 This is
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`quintessential inherency language. See Continental Can Co. USA v. Monstanto Co.,
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`948 F.2d 1264, 1268 (Fed. Cir. 1991) (“[Inherency] evidence must make clear that
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`the missing descriptive matter is necessarily present in the thing described in the
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`reference, and that it would be so recognized by persons of ordinary skill.”).
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`Petitioner clearly regrets not presenting inherency evidence and now seeks to add
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`this evidence at the eleventh hour. This significantly prejudices Patent Owner.2
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`Because the Sur-Reply and Exhibit 1053 present improper inherency evidence
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`and arguments (including at least ¶¶ 5–10, 13, and 22–23 of Exhibit 1053 and all
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`portions of the Sur-Reply that incorporate those paragraphs), the Board should
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`exclude both the Sur-Reply and Exhibit 1053 in their entirety. See 77 Fed. Reg. at
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`48,767 (“Board will not attempt to sort proper from improper portions.”); 37 CFR
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`42.23(b) (outside scope of response and petition). This new evidence is also in
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`1
`Although Petitioner stated at the Hearing it was not making an inherency argument,
`Petitioner argued the missing features were necessarily disclosed by Furukawa.
`2
`Patent Owner sought permission to file a responsive paper and additional evidence to
`rebut Petitioner’s improper evidence. That request was denied. See Order (Paper 47) at 2–3.
`2
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`IPR2017-00864
`Patent Owner’s Motion to Exclude
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`violation of, and should be excluded in light of, 37 CFR 42.104(b)(4) (invalidity
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`theories must be presented in Petition) and 37 CFR 42.223 (supplemental evidence
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`requires a showing that it could not have been obtained earlier).
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`II. The Sur-Reply exceeds the 5-page limit (improper incorporation).
`Petitioner’s Sur-Reply and the entirety of the Supplemental Garney
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`Declaration (Exhibit 1053) should be excluded because they exceed the 5-page limit
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`authorized by the Board. See Order (Paper 36). The Sur-Reply’s incorporation of the
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`9-page Garney declaration without providing an explanation of its contents in the
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`Sur-Reply itself is an attempt to evade the 5-page limit through improper
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`incorporation by reference. See, e.g., 37 CFR 42.6(a)(3) (prohibiting incorporation
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`by reference); IPR2017-00864, ID at 37–38 (Paper 12) (“To the extent that
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`arguments are found only in the Declaration of Mr. Garney, we agree with Patent
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`Owner that those arguments are incorporated improperly and we decline to consider
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`them.” (citation omitted)). For example, page 2 of the Sur-Reply incorporates ¶¶ 10-
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`21 (4 pages) of Exhibit 1053 with no explanation. Other sentences citing to Exhibit
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`1053 are conclusory and rely on the explanation in the declaration itself that is not
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`explained in the Sur-Reply. See Sur-Reply at 2, 3, 4, 5.
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`III. CONCLUSION
`For the above reasons, The Board should exclude Petitioner’s Sur-Reply
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`(Paper 42) and the Supplemental Garney Declaration (Exhibit 1053).
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`3
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`Dated: June 29, 2018
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`IPR2017-00864
`Patent Owner’s Motion to Exclude
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`
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`Respectfully submitted,
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`/s/ Brian C. Banner
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`Bruce W. Slayden II (Reg. No. 33,790)
`bslayden@sgbfirm.com
`Brian C. Banner (pro hac vice)
`bbanner@sgbfirm.com
`R. William Beard, Jr. (Reg. No. 39,903)
`wbeard@sgbfirm.com
`Truman H. Fenton (Reg. No. 64,766)
`tfenton@sgbfirm.com
`Jerry F. Suva (Reg. No. 67,902)
`jsuva@sgbfirm.com
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`SLAYDEN GRUBERT BEARD PLLC
`401 Congress Avenue, Suite 1650
`Austin, TX 78701
`t: 512.402.3550
`f: 512.402.6865
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`4
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`IPR2017-00864
`Patent Owner’s Motion to Exclude
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies the above-captioned PATENT OWNER’S
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`MOTION TO EXCLUDE was served in its entirety on June 29, 2018, upon the
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`following parties by sending a copy via email to the following email addresses:
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`Scott A. McKeown
`ROPES & GRAY LLP
`T +1 202 508 4740 | M +1 571 395 6662
`2099 Pennsylvania Avenue, N.W.
`Washington, DC 20006-6807
`Scott.McKeown@ropesgray.com
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`Respectfully submitted,
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`/s/ Brian C. Banner
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`Bruce W. Slayden II (Reg. No. 33,790)
`bslayden@sgbfirm.com
`Brian C. Banner (pro hac vice)
`bbanner@sgbfirm.com
`R. William Beard, Jr. (Reg. No. 39,903)
`wbeard@sgbfirm.com
`Truman H. Fenton (Reg. No. 64,766)
`tfenton@sgbfirm.com
`Jerry F. Suva (Reg. No. 67,902)
`jsuva@sgbfirm.com
`
`SLAYDEN GRUBERT BEARD PLLC
`401 Congress Avenue, Suite 1650
`Austin, TX 78701
`t: 512.402.3550
`f: 512.402.6865
`
`5
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