UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`Northern Stamping, Inc.,
`Petitioner,
`
`v.
`
`Horizon Global Americas Inc.,
`Patent Owner.
`_________________________
`
`IPR2021-01411
`U.S. Patent No. 10,589,585
`____________________
`
`PATENT OWNER’S OPPOSITION TO
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
`____________________
`
`
`
`
`
`{10776441:4 }
`
`
`
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`Northern Stamping, Inc.,
`Petitioner,
`
`v.
`
`Horizon Global Americas Inc.,
`Patent Owner.
`_________________________
`
`IPR2021-01411
`U.S. Patent No. 10,589,585
`____________________
`
`PATENT OWNER’S OPPOSITION TO
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
`____________________
`
`
`
`
`
`{10776441:4 }
`
`
`
`
`
`
`TABLE OF AUTHORITIES .................................................................................... ii
`
`TABLE OF CONTENTS
`
`UPDATED EXHIBIT LIST ..................................................................................... iv
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`THE PRIOR INVENTION EVIDENCE IS ADMISSIBLE. .......................... 1
`
`A. The Board Must Consider this Evidence under the Rule of Reason. ...... 2
`
`B. Petitioner’s Own Critiques of the Conception and Diligence
`Evidence are Meritless, and Go to Weight of the Evidence. .................. 3
`
`III.
`
`PETITIONER’S ARGUMENTS TO EXCLUDE EVIDENCE
`RELEVANT TO GROUNDS 1 & 2 ARE MERITLESS. .............................. 9
`
`IV. PETITIONER WAIVED CERTAIN OBJECTIONS. .................................. 13
`
`V.
`
`CONCLUSION .............................................................................................. 15
`
`
`
`{10776441:4 }
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Apple Inc. v. Achates Reference Publishing, Inc.,
`IPR2013-80, Paper 90 at 49 (PTAB Jun. 2, 2014) ............................................. 14
`Arctic Cat Inc. v. Bombardier Recreational Prod. Inc.,
`876 F.3d 1350 (Fed. Cir. 2017) .......................................................................... 10
`Arctic Cat Inc. v. GEP Power Prod., Inc.,
`919 F.3d 1320 (Fed. Cir. 2019) ............................................................................ 3
`ATI Techs. ULC v. Iancu,
`920 F.3d 1362 (Fed. Cir. 2019) ........................................................................ 3, 4
`B/E Aerospace, Inc. v. Mag Aerospace Indus., LLC,
`No. IPR2014-01511, 2016 WL 1082741, (P.T.A.B. Mar. 18, 2016) ................. 13
`Corp. v. Techs.,
`No. IPR2013-00086, 2014 WL 2090665 (PTAB May 15, 2014) ........................ 8
`E.I. du Pont De Nemours & Co. v. Unifrax I LLC,
`921 F.3d 1060 (Fed. Cir. 2019) ............................................................................ 4
`Fox Factory, Inc. v. Sram, LLC,
`No. IPR2016-01876, 2018 WL 1633754 (PTAB Apr. 2, 2018) .......................... 8
`Mahurkar v. C.R. Bard, Inc.,
`79 F.3d 1572 (Fed. Cir. 1996) .......................................................................... 2, 4
`NFC Tech., LLC v. Matal,
`871 F.3d 1367 (Fed. Cir. 2017) ............................................................................ 2
`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011) ............................................................................ 2
`Perfect Surgical Techniques, Inc. v. Olympus Am., Inc.,
`841 F.3d 1004 (Fed. Cir. 2016) ............................................................................ 3
`
`{10776441:4 }
`
`ii
`
`
`
`Price v. Symsek,
`988 F.2d 1187 (Fed. Cir. 1993) .................................................................... 2, 3, 4
`Other Authorities
`37 C.F.R. § 42.64(b)(1) ............................................................................................ 13
`Fed. R. Evid. 401 ..................................................................................................... 14
`Fed. R. Evid. 403 ..................................................................................................... 14
`Fed. R. Evid. 901 ................................................................................................... 6, 8
`PTAB Trial Practice Guide (Nov. 2019) ................................................................... 6
`
`
`
`
`
`{10776441:4 }
`
`iii
`
`
`
`UPDATED EXHIBIT LIST
`
`Description
`Amended Complaint, Case No. 20-cv-310, N.D. Ohio
`Graco Children's Prod. Inc. v. Kolcraft Enterprises, Inc.,
`IPR2016-00810, Paper 1 (Petition)
`Kurk Declaration in support of Pro Hac Vice Motion
`Walstrom Declaration
`Walstrom CV
`Filing Receipt and Originally Filed Application for U.S.
`Application No. 12/609,062
`Stanifer Declaration
`Morrison Declaration
`Guthard Declaration
`Reproduced Challenged Claims
`Becker Deposition Transcript, May 6, 2022
`B&W 2021 Catalog
`Cequent Towing Products, Kit Mounting, 031209
`B&W 2021 Catalog (color version)
`114699_021209.PDF
`gooseneck fixture.PDF
`114699_Production_Integrated Puck.PDF
`114294_X7_040809.PDF
`114700_040809.PDF
`114699_X2_041709.PDF
`114699_Welding Only_051809.PDF
`00928113rX1_052209.PDF
`114705rX4_052209.PDF
`114704rX4_052209.PDF
`114703rX4_052209.PDF
`114702rX4_052209.PDF
`115330 REV A_052209.PDF
`114708 REV A_052209.PDF
`114699rX13_060809.PDF
`BC34-5L028-AA.PDF
`114708 REV D_061109.PDF
`115330 REV R_062509.PDF
`114708 REV S_062509.PDF
`114703RX19_071609.PDF
`
`Exhibit
`2001
`2002
`
`2003
`2004
`2005
`2006
`
`2007
`2008
`2009
`2010
`2011
`2012
`2013
`2014
`2015
`2016
`2017
`2018
`2019
`2020
`2021
`2022
`2023
`2024
`2025
`2026
`2027
`2028
`2029
`2030
`2031
`2032
`2033
`2034
`
`{10776441:4 }
`
`iv
`
`
`
`Description
`Exhibit
`114699rX15_062409.PDF
`2035
`BC34-5L029-BA_rX9_071609.PDF
`2036
`BC34-5L029-BA REV A_TO FORD_072009.PDF
`2037
`BC34-5L028-AA REV A_TO FORD_072009.PDF
`2038
`BC34-5L028-BA REV A_TO FORD_072009.PDF
`2039
`114699 Dunnage Proposal.PDF
`2040
`114702rX22_072709.PDF
`2041
`114703rX22_072709.PDF
`2042
`114704rX22_072709.PDF
`2043
`114705rX22_072709.PDF
`2044
`114699rA_080509.PDF
`2045
`BC34-5L029-BA_Dimensional Proposal_091709.PDF
`2046
`BC34-5L029-BA REV D_092509.PDF
`2047
`114699 REV D_100209.PDF
`2048
`38260 REV X1_101409.PDF
`2049
`114699 REV H_101709.PDF
`2050
`BC34-5L029-BA REV G_102009.PDF
`2051
`114699 REV J_110209.PDF
`2052
`38260 REV A_111909.PDF
`2053
`Testing Summary 070109.PPTX
`2054
`Test Report dated March 27, 2009
`2055
`Design Review
`2056
`Emails October 2009
`2057
`Emails April 2009
`2058
`Email May 2009
`2059
`2064 chart
`2060
`Gantt chart
`2061
`2021 Annual Report
`2062
`Chevy fifth wheel/gooseneck
`2063
`CAD files modified during critical period
`2064
`Becker Deposition Transcript, September 23, 2022
`2065
`2066 (New) Kurk Email Serving Supplemental Evidence, June 16, 2022
`2067 (New) Kurk Declaration, June 16, 2022
`
`
`
`
`{10776441:4 }
`
`v
`
`
`
`I.
`
`INTRODUCTION
`
`Patent Owner Horizon Global Americas, Inc. (“Horizon”) submits this
`
`Opposition to Petitioner’s Motion to Exclude Evidence (Paper 39 (“Motion” or
`
`“Mot.”)). The Board should deny Petitioner’s motion outright because Petitioner’s
`
`arguments are quintessential credibility challenges that simply go to the weight that
`
`the Board should give that evidence—not admissibility.
`
`II. THE PRIOR INVENTION EVIDENCE IS ADMISSIBLE.
`In its Response and Surreply, Patent Owner defended against Petitioner’s
`
`Ground 3 (anticipation based on Withers) by asserting that Patent Owner conceived
`
`of the subject matter of Claims 16-20 prior to Withers, and was diligent in
`
`constructively reducing them to practice by filing the utility application.
`
`Petitioner now moves to exclude the following evidence pertaining to prior
`
`conception and diligence:
`
`• Ex. 2004 ¶¶92-94 (Walstrom testimony re diligence) [Mot. 5-6];
`
`• Ex. 2007 (Stanifer testimony) [Mot. 8-11];
`
`• Ex. 2008 (Morrison testimony) [Mot. 8-11];
`
`• Ex. 2011 at 83:15-88:4 (Becker testimony) [Mot 11-12];
`
`• Ex. 2013 (CAD drawing) [Mot. 11-12]; and
`
`• Ex. 2064 (file listing) [Mot. 15].
`
`{10776441:4 }
`
`
`
`
`
`The Board should reject Petitioner’s arguments for two independent reasons: (A) the
`
`Board must consider all of this evidence of prior invention as a whole under the Rule
`
`of Reason; and (B) Petitioner’s critiques of each piece of evidence, while incorrect,
`
`are classic weight of the evidence and not admissibility arguments.
`
`A. The Board Must Consider this Evidence under the Rule of
`Reason.
`
`The Board is required to consider all of the proffered evidence under the Rule
`
`of Reason when evaluating prior inventorship. More specifically, “[a]n evaluation
`
`of all pertinent evidence must be made so that a sound determination of the
`
`credibility of the inventor’s story may be reached.” Mahurkar v. C.R. Bard, Inc., 79
`
`F.3d 1572 (Fed. Cir. 1996) (citation omitted); see also In re NTP, Inc., 654 F.3d
`
`1279, 1294 (Fed. Cir. 2011) (“Board considered every piece of allegedly
`
`corroborative evidence.”). The evidence must be “considered as a whole, not
`
`individually.” NFC Tech., LLC v. Matal, 871 F.3d 1367, 1372 (Fed. Cir. 2017)
`
`(citing Price v. Symsek, 988 F.2d 1187, 1196 (Fed. Cir. 1993)).
`
`Here, Petitioner’s motion does not even mention the Rule of Reason standard.
`
`It is inviting legal error by asking the Board to exclude evidence from its priority of
`
`invention analysis. The Board should decline to do so.
`
`{10776441:4 }
`
`2
`
`
`
`B.
`
`Petitioner’s Own Critiques of the Conception and Diligence
`Evidence are Meritless, and Go to Weight of the Evidence.
`
`As noted above, Petitioner complained about the admissibility of six pieces of
`
`evidence that relate to conception or diligence. The Board should reject Petitioner’s
`
`arguments for several reasons.
`
`First, the Board should reject Petitioner’s arguments because each piece of
`
`individual evidence is precisely the type of evidence that the Board and courts have
`
`properly considered when evaluating priority of invention.
`
`Mr. Walstrom’s testimony about diligence (Ex. 2004 ¶¶92-94) is “[b]ased on
`
`his time in the industry” and what “a POSITA would” conclude based on a review
`
`of Exhibits 2012-2064. See Ex. 2004 ¶93. This is entirely proper testimony. Price,
`
`988 F.2d at 1195-96 (“evidence as to what the drawing would mean to one of skill
`
`in the art may assist the board in evaluating the drawing”).1 For this same reason,
`
`
`1 Moreover, as explained in Patent Owner’s Surreply, diligence is not limited to
`
`patent prosecution activity; rather, the Board should consider a variety of activity,
`
`including commercialization activity. (See Paper 34, Surreply at 22-24 (relying on
`
`cases such as ATI Techs. ULC v. Iancu, 920 F.3d 1362, 1370 (Fed. Cir. 2019),
`
`Perfect Surgical Techniques, Inc. v. Olympus Am., Inc., 841 F.3d 1004, 1007-08
`
`(Fed. Cir. 2016), and Arctic Cat Inc. v. GEP Power Prod., Inc., 919 F.3d 1320,
`
`{10776441:4 }
`
`3
`
`
`
`Mr. Becker’s testimony (Ex. 2011 at 83:15-88:4) about what a CAD drawing (Ex.
`
`2013) shows to a POSITA is entirely proper.
`
`Likewise, the CAD drawing itself that shows the purported invention in
`
`March 2009 is admissible, self-corroborating evidence that the Board must consider.
`
`Mahurkar, 79 F.3d at 1577–78 (“This court does not require corroboration where a
`
`party seeks to prove conception through the use of physical exhibits.”); Price, 988
`
`F.2d at 1195 (“‘corroboration’ is not necessary to establish what a physical exhibit
`
`before the board includes”).
`
`Inventor Stanifer’s testimony (Ex. 2007) and non-inventor Morrison’s
`
`corroborating testimony (Ex. 2008) about the invention are required to be
`
`considered. E.I. du Pont De Nemours & Co. v. Unifrax I LLC, 921 F.3d 1060, 1075-
`
`76 (Fed. Cir. 2019).
`
`Finally, Ex. 2064—a metadata file listing authenticated by Horizon’s
`
`custodian of records (Ex. 2009 ¶17) shows file names and last modified dates is the
`
`same evidence the Federal Circuit considered as establishing diligence when it
`
`reversed the Board in ATI Techs. Notably, the Federal Circuit ruled that evidence
`
`
`1331–32 (Fed. Cir. 2019), and distinguishing Petitioner’s cases that were based on
`
`incorrect (and severely outdated) legal standards).)
`
`{10776441:4 }
`
`4
`
`
`
`was proper even though it was proffered by an inventor; here this evidence was
`
`proffered and corroborated by a non-inventor witness.
`
`Second, the Board should reject Petitioner’s individual arguments because
`
`they are not factually accurate, misstate the record, or omit key facts. For example,
`
`Petitioner’s argument that Mr. Walstrom’s testimony is somehow unreliable or
`
`biased because he worked at Horizon (Mot. 4-6) is meritless. Mr. Walstrom currently
`
`consults for Horizon’s competitor (Ex. 1026, at 80:17). Moreover, when he was at
`
`Horizon, he worked on the trailer side of the business (not the towing side), the
`
`underbed hitch system was neither within his purview nor his responsibility, and he
`
`never actually worked with the inventors. (Ex. 1026, at 22:14-24:12.)2
`
`Petitioner’s request that the Board should exclude inventor Stanifer and non-
`
`inventor Morrison because their declarations contained a few typos and may have
`
`had help putting their declaration testimony on paper by their attorneys (Mot. at 8-
`
`11) exhalts form over substance. For starters, these are not admissibility issues, as it
`
`is common for lawyers to help witnesses with putting together declarations, and non-
`
`
`2 To the contrary, Mr. Becker’s has no industry experience related to towing/trailer
`
`products as opposed to general testing of powertrain components and personally
`
`owning or driving vehicles with hitch mounting systems. (Ex. 1007 ¶¶8-10.)
`
`{10776441:4 }
`
`5
`
`
`
`substantive typographical errors are not a basis for excluding evidence.3 More
`
`importantly, Petitioner does not complain about the substance of any of their
`
`testimony and had a full and fair opportunity to cross-examine these witnesses on
`
`substance. (Ex. 1024; Ex. 1027.) And the witnesses stood by their testimony and
`
`maintained the accuracy of it. (Ex. 1024, at 9:11-23; Ex. 1027, at 7:5-7, 28:7-12.)
`
`Mr. Morrison even described the typo in his middle initial as a communication error.
`
`(Ex. 1027, at 28:7-12.) Thus, this substantive testimony is reliable and has no
`
`authentication issues under FRE 901 (testimony is what it claims to be).
`
`Petitioner’s complaints about its expert, Mr. Becker, being questioned about
`
`Ex. 2013 (see Ex. 2011 at 83:15-88:4) because it was outside the scope of his
`
`declaration are meritless. As explained above, testimony about what a drawing
`
`means to a POSITA is to be considered when evaluating priority of invention.4
`
`
`3 To the extent that the Board is required to exclude declaration testimony because
`
`an attorney helped draft it, then the Board would be required to exclude Mr. Becker’s
`
`declarations here. (Ex. 1028 ¶5; Ex. 2065, 9:23-10:20.)
`
`4 The fact that Petitioner states its counsel objected 50 times with outside the scope
`
`shows how disruptive counsel was during the deposition. Counsel continuously
`
`lodged speaking objections and instructed the witness to not answer questions that
`
`had nothing to do with privilege. See PTAB Trial Practice Guide (Nov. 2019),
`
`{10776441:4 }
`
`6
`
`
`
`Moreover, there is nothing prejudicial about Mr. Becker, an alleged expert qualified
`
`to opine on what certain prior art means to a POSITA, being asked questions about
`
`what a drawing in March 2009 would mean or show to a POSITA. In fact, his entire
`
`opinion was essentially just that based on purported prior art that may not even be
`
`prior art. Notably, the only complaint Petitioner appears to have is that it does not
`
`like the fact that its expert essentially underscored that conception occurred by
`
`March/April 2009 (before Withers). Likewise, the CAD drawing itself (also
`
`authenticated and submitted as Ex. 2020, and later submitted in native form) is
`
`entirely proper for the reasons stated above (and Petitioner only complains that Mr.
`
`Becker was asked about the document; i.e., it never complains about the document
`
`itself being admitted).
`
`
`pp.128-129 (“Objections should be limited to a single word or term” and “Counsel
`
`may instruct a witness not to answer only when necessary to preserve a
`
`privilege…”). Indeed, minutes into the deposition, Horizon asked Becker questions
`
`about Figure 4 of the’585 Patent—the figure that pertains to Claims 16-20 that he
`
`opines are invalid—and counsel instructed Mr. Becker to not answer any questions.
`
`(Ex. 2011, at 12:15-16:15.) This disruption continued, for example, sometimes with
`
`two attorneys tag-teaming objections. (Ex. 2011, at 84:10-85:85:4.) Thus,
`
`Petitioner’s arguments based on the number of improper objections proves nothing.
`
`{10776441:4 }
`
`7
`
`
`
`Finally, Mr. Guthard (Horizon’s custodian of records) properly authenticated
`
`Ex. 2064. (See Ex. 2009 ¶17.) He explained exactly what the document purported to
`
`show (list of files, including CAD files, from Horizon’s storage archives that had
`
`been last modified in the months prior to Withers) and that is all that is required.
`
`Corp. v. Techs., No. IPR2013-00086, 2014 WL 2090665, at *15 (PTAB May 15,
`
`2014) (“Rule of Evidence 901(a) states that the authentication requirement is
`
`satisfied if the proponent presents evidence sufficient to support a finding that the
`
`item is what the proponent claims it is.”). Fox Factory, Inc. v. Sram, LLC, No.
`
`IPR2016-01876, 2018 WL 1633754, at *24 (PTAB Apr. 2, 2018) (citation omitted)
`
`(“Authenticity is, therefore, not an especially high hurdle for a party to overcome.”).
`
`Moreover, as Petitioner casually mentions (Mot. at 15), Horizon actually
`
`provided Petitioner with all these files in native format. (See Ex 2067 (Kurk
`
`Declaration explaining to Petitioner exactly how it can verify file names, metadata
`
`last modified dates, and the contents of all exhibits and all documents referenced in
`
`Ex. 2064); Ex. 2066 (email timely serving supplemental evidence in response to
`
`Petitioner’s objections to all documents on the basis of authentication and
`
`requirements of original).) Thus, Petitioner received a full ESI document production
`
`{10776441:4 }
`
`8
`
`
`
`of all exhibits and documents referenced in these proceedings.5 Notably, Petitioner
`
`has not objected to, or attempted to discredit, the substance of any of these
`
`documents or last modified dates. As such, Petitioner’s alleged authentication issue
`
`is a red herring. Not only is Ex. 2064 authenticated properly, all of the underlying
`
`documents were properly authenticated and are in Petitioner’s possession.
`
`In sum, to the extent the Board believes there is any merit to any of Petitioner’s
`
`arguments (there are not), then those arguments simply go to the weight. Indeed,
`
`Petitioner’s arguments all hinge on credibility and reliability, and for each of those
`
`arguments, there are several other independent pieces of duplicate evidence that
`
`render the evidence reliable and credible. In fact, the substance of no evidence was
`
`called into question here by Petitioner.
`
`III. PETITIONER’S ARGUMENTS TO EXCLUDE EVIDENCE
`RELEVANT TO GROUNDS 1 & 2 ARE MERITLESS.
`
`As for Petitioner’s Grounds 1 & 2, Petitioner essentially asks the Board to
`
`exclude two pieces of evidence:
`
`• Mr. Walstrom’s testimony related to secondary considerations (Ex.
`
`2004 ¶¶123-128) [Mot. at 3-4]; and
`
`
`5 Horizon would be happy to supply the Board with the same ESI production if it
`
`would be helpful to the Board.
`
`{10776441:4 }
`
`9
`
`
`
`• Mr. Walstrom’s testimony related to B&W’s brochure (Ex. 2004 ¶¶67-
`
`68, 97-108), as well as printouts of the brochure (Ex. 2012; Ex. 2014)
`
`[Mot. at 7-8, 13-14].
`
`Neither have merit.
`
`
`
`First, Petitioner misses the mark on its argument to exclude Mr. Walstrom’s
`
`testimony related to secondary considerations. There is no evidentiary basis to
`
`exclude this testimony. Indeed, what Petitioner is actually arguing is that it does not
`
`believe that the evidence proffered by Horizon/Mr. Walstrom is sufficient for
`
`Horizon to win on this issue. But that is not the test on a motion to exclude.
`
`Moreover, while a discreet issue, secondary considerations is simply one factor for
`
`the Board to consider when making its overall obviousness determination. Arctic
`
`Cat Inc. v. Bombardier Recreational Prod. Inc., 876 F.3d 1350, 1365 (Fed. Cir.
`
`2017). Moreover, Mr. Walstrom can certainly speak to issues that he would fully
`
`appreciate based on his industry experience. (Ex. 1026, 50:6-51:17.) Thus, there is
`
`no legal basis for the Board to exclude Mr. Walstrom’s testimony as opposed to
`
`simply consider it for what the Board believes that evidence shows in the course of
`
`its obviousness analysis.6
`
`
`6 As explained above, there is no merit to Petitioner’s argument that this testimony
`
`should be excluded because of alleged bias or that Mr. Walstrom is an improper fact
`
`{10776441:4 }
`
`10
`
`
`
`Moreover, Petitioner is simply wrong that there is no nexus here. Horizon
`
`detailed in its briefs and supporting evidence when swearing behind Withers
`
`precisely how the commercial hitch it invented/developed for Ford satisfies Claims
`
`16-20. Indeed, all evidence has been consistent that the hitch system claimed in
`
`Claims 16-20 is what Horizon invented/developed for Ford and supplied to it for the
`
`next decade plus. Horizon need not do more to establish a nexus. And, again, this is
`
`an issue of proof, not exclusion.
`
`
`
`Second, the Board should fully consider Mr. Walstrom’s testimony related to
`
`B&W’s brochure/commercial product, and the brochure itself. Petitioner’s reason in
`
`seeking exclusion is apparent—its only real motivation to combine or enhance
`
`Works was based on the purported need to be able to accommodate both a fifth-
`
`wheel and gooseneck type hitch—and Works (both because of what was disclosed
`
`in Works itself and what a POSITA would understand/know at the time of Works)
`
`could already accommodate both hitches. But simply not liking the evidence is not
`
`
`witness. Even so, to the extent Mr. Walstrom was a fact witness (he is not) as
`
`opposed to an expert witness with industry experience, then that evidence would still
`
`be properly considered and given the appropriate weight (especially in light of the
`
`fact that Mr. Walstrom fully disclosed all information to Petitioner and Petitioner
`
`fully cross-examined him).
`
`{10776441:4 }
`
`11
`
`
`
`a basis for exclusion. And just because the evidence is not favorable does not make
`
`it prejudicial.
`
`
`
`Simply put, there is no reason to exclude this evidence. For starters,
`
`Petitioner’s arguments are misleading. Neither Horizon nor Mr. Walstrom is
`
`attempting to swap Withers as prior art for the brochure as Petitioner insinuates. Mr.
`
`Walstrom was clear: based on his reading of Works, and a POSITA’s knowledge of
`
`the industry during the relevant time period, a POSITA would understand that the
`
`hitch mounting system as disclosed in Works would teach a system capable of
`
`accommodating fifth-wheel type hitches and gooseneck type hitches. Indeed, Mr.
`
`Walstrom expressly explained that a “POSITA working in this field would be well
`
`aware of the products on the market” and that “the underbed itch system described
`
`in Works is still being sold after-market” and that Fig. 2 of Works is nearly identical
`
`to that in the brochure. (Ex. 2004 ¶¶100-101.) Mr. Walstrom also explained that a
`
`POSITA would understand that Works itself teaches this. (Ex. 2004 ¶99 (citing Ex.
`
`1009, 1:26-41, 2:33-43).) And this is all consistent with Mr. Becker’s definition of
`
`a POSITA. (Ex. 1007 ¶17.)
`
`Notably, Petitioner’s expert—one without specific industry experience related
`
`to towing products—conceded that he now understood Works could accommodate
`
`{10776441:4 }
`
`12
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`
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`both types of hitches. (Ex. 64:18-65:19.)7 Whether Petitioner agrees with this or not,
`
`this
`
`is not an evidence exclusion
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`issue.
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`Indeed, while Petitioner’s
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`mischaracterization of the evidence and conclusory argument are simply wrong, its
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`arguments go to weight and not admissibility. B/E Aerospace, Inc. v. Mag Aerospace
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`Indus., LLC, No. IPR2014-01511, 2016 WL 1082741, at *4 (P.T.A.B. Mar. 18,
`
`2016) (“the policy considerations for excluding expert testimony [in federal courts]
`
`are less compelling in bench proceedings such as inter partes reviews than in jury
`
`trials.”).The Board needs to evaluate this evidence, and any other competing
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`evidence, and arrive at its obviousness determination.
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`In sum, Petitioner has not proffered a valid reason to exclude any of the
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`aforementioned evidence.
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`IV. PETITIONER WAIVED CERTAIN OBJECTIONS.
`To properly object to evidence, Petitioner “must identify the grounds of the
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`objection with sufficient particularity to allow correction in the form of
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`supplemental evidence.” 37 C.F.R. § 42.64(b)(1). Sufficient particularity requires
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`more than listing Federal Rules with general objections. B/E Aerospace, Inc. v. Mag
`
`
`7 The witnesses agree that were a limited set of players in the trailer hitch market.
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`(Ex. 1007 ¶10; Ex. 2004 ¶¶38-40; Ex. 2011, 23:19-24:4, 55:10-24; Ex. 1026, 50:6-
`
`51:17.)
`
`{10776441:4 }
`
`13
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`
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`Aerospace Indus., LLC, IPR2014-01511, Paper 104, at 7-11, (PTAB Mar. 18, 2016)
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`(party failed to object with sufficient particularity by making boilerplate objections).
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`The sufficient particularity requirement prevents denying the party offering evidence
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`from having a fair opportunity to correct any alleged issues during the limited discovery
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`of an IPR trial. See Apple Inc. v. Achates Reference Publishing, Inc., IPR2013-80, Paper
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`90 at 49 (PTAB Jun. 2, 2014).
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`Here, Petitioner’s objections were not in compliance with these rules.
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`Petitioner submitted its original Objections on June 2, 2022. (Paper 22.) However,
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`Petitioner raises several arguments here in its Motion for the first time, and thus
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`Petitioner’s objections are waived. In particular, Petitioner never objected to
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`Exhibits 2007 or 2008 based on FRE 401 or 403. (Paper 22, at p.4.) Likewise,
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`Petitioner never objected to Mr. Walstrom’s testimony related to secondary
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`considerations. (Paper 22, at p.3.) Moreover, the remainder of Petitioner’s objections
`
`were vague and generally not adequate to put Horizon on notice of what was actually
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`objectionable and give Horizon the chance to correct. (See, e.g., Paper 22, at p.5
`
`(generally objecting to Becker’s entire transcript under FRE 401-403 as outside the
`
`scope); Paper 2004, at pp.2-3 (generally objecting to Walstrom’s entire
`
`declaration).) Petitioner, thus, failed to timely and adequately object to Horizon’s
`
`evidence.
`
`{10776441:4 }
`
`14
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`
`
`V. CONCLUSION
`Based on the foregoing reasons, the Board should deny Petitioner’s Motion
`
`to Exclude Evidence.
`
`Dated: November 8, 2022
`
`
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`
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`
`
`Respectfully submitted,
`
`
`
`/s/ David B. Cupar
`David B. Cupar (47,510)
`Matthew J. Cavanagh (65,109)
`MCDONALD HOPKINS LLC
`600 Superior Avenue, East, Ste. 2100
`Cleveland, Ohio 44114
`t 216.348.5400 │ f 216.348.5474
`dcupar@mcdonaldhopkins.com
`mcavanagh@mcdonaldhopkins.com
`
`Nicholas A. Kurk (pro hac vice)
`MCDONALD HOPKINS LLC
`300 N. LaSalle St., Ste. 1400
`Chicago, Illinois 60654
`t 312.642.6738 │ f 312.280.8232
`nkurk@mcdonaldhopkins.com
`
`Attorneys for Patent Owner
`
`{10776441:4 }
`
`15
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`
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that this Surreply was served to lead and
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`back-up counsel for Petitioner by e-mail on November 8, 2022, as follows:
`
`Scott D. Barnett sbarnett@honigman.com
`
`Ron N. Sklar rsklar@honigman.com
`
`Dennis Abdelnour dabdelnour@honigman.com
`
`David J. Thomas gthomas@honigman.com
`
`
`Dated: November 8, 2022
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`
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`
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`Respectfully submitted,
`
`
`
`/s/ David B. Cupar
`David B. Cupar (Reg. No. 47,510)
`MCDONALD HOPKINS LLC
`
`Counsel for Patent Owner
`
`
`
`{10776441:4 }
`
`
`
`
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