B/E Aerospace, Inc. v. Mag Aerospace Industries, LLC
| Decision Date | 18 March 2016 |
| Docket Number | IPR2014-01511 |
| Parties | B/E AEROSPACE, INC., Petitioner, v. MAG AEROSPACE INDUSTRIES, LLC, Patent Owner. Patent 6, 536, 054 B2 |
| Court | Patent Trial and Appeal Board |
Before JAMESON LEE, JOSIAH C. COCKS, and PHILLIP J. KAUFFMAN Administrative Patent Judges.
FINAL WRITTEN DECISION 35 U.S.C. § 318(A) AND 37 C.F.R. § 42.73
KAUFFMAN, Administrative Patent Judge.
Petitioner, B/E Aerospace, Inc., filed a corrected Petition (Paper 24, "Pet.") to institute an inter partes review of claims 1, 4-7, 9, 10, 12-15, and 17 of U.S. Patent No. 6, 536, 054 B2 (Ex. 1001, "the '054 patent"). Patent Owner, MAG Aerospace Industries, LLC, filed a timely Preliminary Response ).
In the March 26, 2015, Decision to Institute (Paper 26, "Inst. Dec."), we instituted trial on claims 1, 4-7, 9, 10, 12-15, and 17 on the following grounds:
Subsequently, Patent Owner filed a corrected Patent Owner Response (Paper 46, "PO Resp."), and Petitioner filed a Reply (Paper 67, "Pet. Reply").[5]
Patent Owner did not file a motion to amend.
Patent Owner filed a motion for observation on cross-examination of Dr. Dershowitz and a corrected motion for observation on cross-examination of Mr. Hallmark. Papers 81, 86. Petitioner filed a response to each. Papers 91, 92. This information was factored into our Decision.
Oral hearing was held on Thursday, November 19, 2015, and a transcript of the oral hearing is included in the record.[6] Paper 99 ("Tr").
For the reasons that follow, we determine that Petitioner has shown by a preponderance of the evidence that claims 1, 4-7, 9, 10, 12-15, and 17 of the '054 patent are unpatentable.
Patent Owner asserted the '054 patent against Petitioner in MAG Aerospace Industries Inc. v. B/E Aerospace Inc., Case No. 2:13-cv-06089-SJO-FFM (CD. Cal). Pet. 1; Paper 5, 1.
The parties in the case at hand are involved in two other inter partes proceedings: IPR2014-01510 (challenging U.S. Patent 6, 353, 942 B1, "the '942 patent"), and IPR2014-01513 (challenging U.S. Patent 6, 536, 055 B2, "the '055 patent").[7] The '055 patent (application No. 10/061, 681) is a continuation of the application that became the '942 patent (application No. 09/713, 892). IPR2014-01513, Ex. 1001, (63). The'054 patent contains similar subject matter, but is not in a continuity chain leading to either the '942 patent or the '055 patent. Ex. 1001, (63).
Before addressing claim construction and patentability we provide additional procedural details, and resolve a Motion to Exclude Evidence by each party.
On May 5, 2015, Petitioner submitted a motion to submit supplemental information ("the proffered evidence") under 37 C.F.R. § 42.123(a), along with a motion to seal these exhibits. Papers 32, 33. Patent Owner submitted an opposition to each motion. Papers 34, 35. We denied Petitioner's Motion to Submit Supplemental Information because Petitioner did not explain how the proffered information relates to any claim subject to a ground of unpatentability for which trial was instituted.[8]
On October 2, 2015, at Petitioner's request, a conference call was held regarding the proffered information denied entry as supplemental information. During that call, Petitioner asserted that the proffered evidence demonstrates prior inconsistent statements by several of Patent Owner's witnesses in the proceeding at hand, and for that reason Patent Owner must serve the proffered evidence as routine discovery. See Paper 61 (order), 63 (transcript). We directed the parties to attempt in good faith to determine what, if any, portion of the proffered evidence demonstrated inconsistencies as alleged. Paper 61, 4.
The parties were unable to reach agreement, and the Board conducted a second call on the matter. See Paper 64 (order), Paper 65 (transcript). We determined that such an order is not a matter of discovery because Petitioner already had the proffered evidence from the related litigation. Paper 64, 4. For this, and a variety of other reasons, the Board denied Petitioner's request. Id. Petitioner did not file a timely request for reconsideration. See 37 C.F.R. § 42.71(d)(1).
The proffered evidence was later filed with Petitioner's Reply. Patent Owner's Motion to exclude that information is discussed below.
Petitioner moves to exclude: (1) the unpatentability OPINIONs of Patent Owner's declarant, Mr. Anderson (Ex. 2021), and (2) "certain statements" in Patent Owner's opposition papers.[9] Paper 77, 2-3. Patent Owner filed an Opposition to the Motion (Paper 89), and Petitioner filed a Reply to the Opposition (Paper 93). For the reasons that follow, Petitioner's motion is denied.
The Anderson Declaration was filed with Patent Owner's Response on July 13, 2015.
Petitioner identifies the following items or actions as including objections:
Items (1)-(3) do not properly include objections because they were not timely filed by Petitioner.[12] See 37 C.F.R. §42.64(b)(1).
The fourth item, Paper 48, was timely served.[13] See Paper 48, 24; PO Resp. 54. In Paper 48, Petitioner objected to Exhibits 2019-2043, 2048-2053, and 2055, and included "general objections" applicable to all of these Exhibits. Paper 48, 1-2. With regard to the Anderson Declaration (Ex. 2021) in particular, Petitioner lists the rules and Federal Rules of Evidence that are the grounds for the objection, and states:
This exhibit is irrelevant, cumulative, and/or prejudicial to the issues on which IPR is progressing. This exhibit does not present underlying facts or evidence. This exhibit reflects statements made without personal knowledge. This exhibit reflects opinions for which the factual bases for those opinions have not been disclosed, and for which the expert used unreliable analysis and methods. See also the discussion of objections based on these rules in Section II.A above [the "general objections"], incorporated herein by reference.
Id. at 4; see also Paper 93, 1 (repeating this assertion).
Petitioner's "general objections" apply to the exhibits as a whole without identifying a particular portion of an exhibit, and in fact, leave it to the reader as to whether an objection applies to a particular exhibit. See, e.g., Paper 48, 1-2 ("Petitioner objects to each and every exhibit that. . ."). We agree with Patent Owner's characterization that Petitioner submitted boilerplate objections. Paper 89, 1. Further, Petitioner's Motion is not based on an asserted objection. For example, Petitioner's Motion argues that Mr. Anderson's OPINIONs are irrelevant because they are based upon an incorrect claim construction, but Petitioner did not object on that basis. See Paper 77, 3; Paper 48, 4. Petitioner's objections did not identify the grounds for the objection with sufficient particularity to allow Patent Owner to correct in the form of supplemental evidence. 37 C.F.R. §42.64(b)(1); see also Paper 89, 1-5 (Patent Owner arguing Petitioner did not object with sufficient particularity).
Petitioner contends the objections have sufficient particularity. See Paper 93, 1-2 (citing Hayward Indus., Inc. v. Pentair Water Pool and Spa, Inc., Case IPR2013-00287 (PTAB Dec. 17, 2013) (Paper 15) (non-precedential). This citation is not persuasive because in Hayward no motions were filed and no determination was made so that the Board's comment was an observation and not a ruling. Id.
The lack of an effective objection is sufficient basis to deny Petitioner's Motion. See 37 C.F.R. §§ 42.20(c), 42.22, 42.64(c). Despite this deficiency, we consider the merits of Petitioner's Motion.
Petitioner contends that Mr. Anderson's opinions are based on an incorrect claim construction, and for that reason are irrelevant under Federal Rules of Evidence (FREs) 401 and 403. Paper 77, 4-7; Paper 93, 2-4. We take this as an assertion that the evidence is inadmissible under FRE 402.
Our decision does not involve a jury. For that reason Petitioner's citation to a jury case excluding improper claim construction is not persuasive. See, e.g., Paper 77, 4 (citing Liquid Dynamics Corp. v. Vaughan Co., Inc., 449 F.3d 1209, 1224 n.2 (Fed. Cir. 2006)). Further, Petitioner's citation to a district court case that excluded an improper claim construction from consideration on infringement is also unpersuasive. See id. (citing Chicago Mercantile Exch., Inc. v. Tech. Research Grp., LLC, 782 F.Supp.2d 667, 673 (N.D. Ill. 2011)). In Chicago Mercantile, the court held that an expert's testimony based on an improper claim construction would not be relevant at trial. Id. Here, in contrast, we construe the claims as part of this final decision. See Paper 89, 5-7 (correctly noting both that the Board's claim construction in an institution decision is preliminary, and unlike most district court cases, the Board's final decision addresses claim construction and patentability). Consequently, evidence regarding claim construction, such as the Anderson Declaration, remains relevant.
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