`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`
`ASETEK DANMARK A/S,
`Petitioner,
`
`v.
`
`COOLIT SYSTEMS, INC.,
`Patent Owner.
`
`__________________
`
`Case No. IPR2020-00747
`U.S. Patent No. 9,057,567
`__________________
`
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION TO EXCLUDE
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Patent Owner CoolIT Systems, Inc. filed a motion to exclude Petitioner’s
`
`Case IPR2020-00747
`U.S. Patent No. 9,057,567
`
`
`
`
`Exhibit 1028, which is an excerpted transcript of Patent Owner’s expert’s deposition
`
`testimony in the related IPR2020-00825 proceeding (“the 825 Case”). Motion to
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`Exclude, Paper 31. Patent Owner’s argument that the excerpted transcript violates
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`FRE 106 and 37 C.F.R. § 42.53(f)(7) is meritless because the full deposition
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`transcript is available to the parties and the Board in the 825 Case as Petitioner’s
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`Exhibit 1025. Moreover, Petitioner does not believe that any other portion of the
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`expert’s deposition testimony in the 825 Case is relevant to this proceeding.
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`
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`Nevertheless, following Patent Owner’s objection to the filing of an excerpted
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`transcript, Petitioner served the full transcript on Patent Owner as supplemental
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`evidence under 37 C.F.R. § 42.64(b)(2) within ten business days, thus correcting any
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`alleged evidentiary defect in filing an excerpted transcript. Pursuant to well-
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`established PTAB practice, Petitioner is now filing the as-served full transcript
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`concurrently with this Opposition. See, e.g., Gnosis SPA, et al. v. S. Ala. Med. Sci.
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`Found., IPR2013-00116, Paper 29 at 3 (PTAB October 9, 2013) (the Board
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`instructing that the party responding to an evidentiary objection should only serve
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`(not file) supplemental evidence, and to file the supplemental evidence in response
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`to a motion to exclude). The full transcript (Exhibit 1030) filed herewith substitutes
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`the previously filed excerpted transcript (Exhibit 1028). There can be no dispute that
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`the full transcript is admissible, and Patent Owner does not contend otherwise. See
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`1
`
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`
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`Paper 31. Patent Owner’s motion to exclude Exhibit 1028 should therefore be
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`Case IPR2020-00747
`U.S. Patent No. 9,057,567
`
`rejected as moot. See LKQ Corporation v. Clearlamp, LLC, IPR2013-00020, Paper
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`17 at 3 (PTAB Mar. 5, 2013) (“If, upon receiving the supplemental evidence, the
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`opposing party is still of the opinion that the evidence is inadmissible, the opposing
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`party may file a motion to exclude such evidence.”).
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`
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`Patent Owner’s argument that Petitioner should have requested authorization
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`to expunge Exhibit 1028 and substitute it with the full transcript prior to the filing of
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`Patent Owner’s sur-reply is contrary to Rule 42.64(b)(2), which simply requires a
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`party to respond to any objection to evidence by serving supplemental evidence
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`(filing of the supplemental evidence is not required by the Rules). See also Gnosis
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`SPA, IPR2013-00116, Paper 29 at 3. Petitioner thus properly followed the Rule
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`governing responses to objections to evidence.
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`
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`Patent Owner’s remaining argument that it was “deprived [] in its sur-reply of
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`an opportunity to respond with the full deposition transcript available in the record
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`for this proceeding,” Paper 31 at 2, is also meritless because Patent Owner could
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`have cited to the served Exhibit 1030 and asked Petitioner to file Exhibit 1030 in the
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`record (which Petitioner would have done). Moreover, Patent Owner could have,
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`and in fact did, cite to the deposition transcript from the 825 Case in this proceeding.
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`See Sur-Reply (Paper 30) at 5. Accordingly, there can be no purported residual
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`prejudice to Patent Owner stemming from the excerpted deposition transcript.
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`2
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`
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`For the reasons above, Petitioner requests that the Board deny Patent Owner’s
`
`Case IPR2020-00747
`U.S. Patent No. 9,057,567
`
`
`
`Motion to Exclude Petitioner’s Exhibit 1028.
`
`Date: June 7, 2021
`
`Respectfully submitted,
` By: /Arpita Bhattacharyya/
`Arpita Bhattacharyya
`Backup Counsel for Petitioner
`Reg. No. 63,681
`
`
`
`3
`
`
`
`
`
`Case IPR2020-00747
`U.S. Patent No. 9,057,567
`
`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Petitioner’s
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`Opposition to Patent Owner’s Motion to Exclude was served electronically via
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`email on June 7, 2021, in its entirety on the following:
`
`Lloyd L. Pollard II
`Bradley M. Ganz
`GANZ POLLARD LLC
`P.O. Box 2200
`Hillsboro, Oregon 97123
`lloyd@ganzlaw.com
`brad@ganzlaw.com
`docketing@ganzlaw.com
`
`Reuben Chen
`COOLEY LLP
`1299 Pennsylvania Ave. NW, Suite 700
`Washington, DC 20004-2400
`rchen@cooley.com
`
`Patent Owner has consented to service by email.
`
`
`
`
`
`Date: June 7, 2021
`
`
`
`
`
`
`
`By: /William Esper/
`William Esper
`Legal Assistant
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`
`
`
`
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