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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`—————————————
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`—————————————
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`LIBERTY MUTUAL INSURANCE CO.
`Petitioner
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`v.
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`PROGRESSIVE CASUALTY INSURANCE CO.
`Patent Owner
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`—————————————
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`Case CBM2012-00002
`Patent 6,064,970
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`—————————————
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`PATENT OWNER’S NOTICE OF OBJECTIONS TO EVIDENCE
`PURSUANT TO 37 C.F.R. § 42.64
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`CLI-2132833
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`
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`The undersigned, on behalf of Patent Owner Progressive Casualty Insurance
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`Case CBM2012-00002
`Patent 6,064,970
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`
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`Co. (“Progressive” or “Patent Owner”), hereby provides Notice to the Board that
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`the objections made on the record herewith were served to Liberty Mutual
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`Insurance Co. pursuant to 37 C.F.R. § 42.64. See also 37 C.F.R. § 42, Office
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`Patent Trial Practice Guide, part II, § I.
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`August 13, 2013
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`By:
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`Respectfully submitted,
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`JONES DAY
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`/Calvin P. Griffith/
`Calvin P. Griffith
`Registration No. 34,831
`JONES DAY
`North Point
`901 Lakeside Avenue
`Cleveland, Ohio 44114-1190
`(216) 586-3939
`(216) 579-0212 (Fax)
`Attorneys For Patent Owner
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`CLI-2132833
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`1
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`—————————————
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`—————————————
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`LIBERTY MUTUAL INSURANCE CO.
`Petitioner
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`v.
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`PROGRESSIVE CASUALTY INSURANCE CO.
`Patent Owner
`
`—————————————
`
`Case CBM2012-00002
`Patent 6,064,970
`
`—————————————
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`PATENT OWNER’S OBJECTIONS TO
`EVIDENCE PURSUANT TO 37 C.F.R. § 42.64
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`CLI-2132833
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`
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`Pursuant to 37 C.F.R. § 42.64(b)(1), the undersigned, on behalf of Patent
`
`Case CBM2012-00002
`Patent 6,064,970
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`
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`Owner Progressive Casualty Insurance Co. (“Progressive” or “Patent Owner”),
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`hereby submits the following objections to Exhibit 1019, Exhibit 1020, Exhibit
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`1021, Exhibit 1022, Exhibit 1023, Exhibit 1024, Exhibit 1025, Exhibit 1026,
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`Exhibit 1027, Exhibit 1028, Exhibit 1029, and Exhibit 1030 attached to Liberty
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`Mutual Insurance Co.’s (“Liberty” or “Petitioner”) Reply to Patent Owner’s
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`Response (“Reply”). See CBM2012-00002, Paper 33 (and exhibits thereto).
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`Pursuant to 37 C.F.R. § 42.62, Patent Owner’s objections below apply the Federal
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`Rules of Evidence (“F.R.E.”).
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`I.
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`OBJECTIONS TO EXHIBIT 1019 AND ANY REFERENCE
`TO/RELIANCE THEREON
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`Patent Owner hereby objects to Exhibit 1019, Rebuttal Declaration of Scott
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`Andrews, dated August 6, 2013 (“Andrews Rebuttal Declaration”).
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`Grounds for objection: 37 C.F.R. § 42.61 (Admissibility of Evidence),
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`F.R.E. 402 (Relevance), F.R.E. 403 (Excluding Relevant Evidence for Prejudice,
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`Confusion, Waste of Time, or Other Reasons), 37 C.F.R. § 42.223 (Filing of
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`Supplemental Evidence), F.R.E. 702, 703, 705 (Witness Not Qualified to Provide
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`Expert Testimony), 37 C.F.R. § 42.65 (Failure to Disclose Underlying Facts or
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`Data), F.R.E. 801, 802 (Impermissible Hearsay), 37 C.F.R. §42.23(b) (Outside
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`CLI-2132833
`
`1
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`
`
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`Scope of Response and Petition), and the Andrews Rebuttal Declaration is
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`Case CBM2012-00002
`Patent 6,064,970
`
`unauthorized testimony.
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`Petitioner cites the Andrews Rebuttal Declaration as allegedly rebutting
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`certain arguments presented by Patent Owner in its Patent Owner Response.
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`However, Petitioner’s Reply improperly mischaracterizes and misrepresents Patent
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`Owner’s arguments in order to provide an artificial basis (which it otherwise could
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`not) for its new declaration it calls a “Rebuttal Declaration.” Patent Owner
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`advanced no position that provides a proper basis for the belated submission of
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`new declarations (37 C.F.R. 42.23(b), 42.223; 37 C.F.R. 42, Office Patent Trial
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`Practice Guide, part II, § I). The statements in the Andrews Rebuttal Declaration
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`have no relevant bearing on any issue properly raised in this proceeding (F.R.E.
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`402, 403; 37 C.F.R. § 42.61).1 Rather, the Andrews Rebuttal Declaration is used
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`by Petitioner to present new prior art (to the extent any of the documents
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`referenced therein constitute prior art) and raise new theories to support its
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`invalidity arguments in order to make out a prima facie case of unpatentability of
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`the claims that could only have been submitted with the Petitioner’s petition for
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`1 Paragraph 8 in Exhibit 1019 is also irrelevant because Petitioner’s Reply
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`includes no citation to that paragraph.
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`CLI-2132833
`
`2
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`
`
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`review.2 The content of the Andrews Rebuttal Declaration and the newly produced
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`Case CBM2012-00002
`Patent 6,064,970
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`exhibits referenced therein are either inapplicable or should have been submitted
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`when the petition for review was filed, not after the institution of this trial (F.R.E.
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`403; 37 C.F.R. § 42.223; 37 C.F.R. 42, Office Patent Trial Practice Guide, part II,
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`§ I).
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`Further, Andrews’ new testimony could have been elicited during direct
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`examination in the first instance, or re-direct examination (F.R.E. 403; 37 C.F.R.
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`§ 42.223; 37 C.F.R. 42, Office Patent Trial Practice Guide, part II, § I). For
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`example, ¶ 7 relates to Andrew’s cross-examination testimony about his
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`understanding of Kosaka and errors in his original declaration. Any such alleged
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`clarification should have been obtained during direct examination or re-direct
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`2 For example, Andrews argues in ¶ 10 that “Kosaka explicitly discloses that
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`fuzzy logic need not be used at all” and that “[a] person of ordinary skill in the art
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`would understand that Kosaka teaches implementing its system using either fuzzy
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`logic or standard crisp logic[.]” (Emphasis in original). However, Liberty’s use of
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`Kosaka in its Petition is based entirely on Kosaka’s reliance on fuzzy logic.
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`Andrews’ new reading of Kosaka should have been part of Liberty’s prima facie
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`case, should have been in its Petition, and is not properly considered rebuttal
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`evidence.
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`CLI-2132833
`
`3
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`
`
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`examination. As the Patent Trial and Appeal Board (“PTAB”) recently opined, a
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`Case CBM2012-00002
`Patent 6,064,970
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`party attempting “to change the substantive testimony of a witness, must contact
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`the Board and obtain prior authorization before doing so.” See Garmin Int’l Inc. v.
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`Cuozzo Speed Techs. LLC, IPR2012-00001 (JL), Paper No. 50 (July 18, 2013), at 2
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`(addressing errata sheets). And that party should expect the request will be
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`rejected: “We take this opportunity to state that unless unopposed by the other
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`party, a request to make a material change to the substance of cross examination
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`testimony is unlikely to be successful no matter when the request is made.” Id. at
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`4. Indeed, the Board explained the prejudice that would result if a party were
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`allowed to later change its cross-examination testimony, especially after the
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`opposing party has relied on that testimony (as Progressive has done in its
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`Response):
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`The Board further notes that cross examination of a live witness has
`important value in obtaining the dynamic and contemporaneous response of
`the witness and does not have the characteristic of an interrogatory to be
`answered at home after thorough study over a long period of time. Also,
`particularly if the opposing party has filed a paper identifying the
`deficiencies in the original testimony, it would be unfair to permit a party
`to attempt to cure those deficiencies by changing or adding to the original
`testimony, thus nullifying the challenges and circumventing procedure.
`Id. at 3 (emphasis added).
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`CLI-2132833
`
`4
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`
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`The Andrews Rebuttal Declaration was not authorized by the Board. None
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`Case CBM2012-00002
`Patent 6,064,970
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`
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`of the PTAB Rules or regulations authorizes filing new testimonial evidence in
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`conjunction with a Petitioner reply that does not arise from the submission of a
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`substitute claim or is responsive to a Patent Owner’s claim amendments.
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`Consequently, the Andrews Rebuttal Declaration is both outside the scope of
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`Patent Owner’s Response and impermissible supplemental evidence (37 C.F.R.
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`§ 42.223; 37 C.F.R. § 42.23(b); 37 § C.F.R. 42, Office Patent Trial Practice Guide,
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`part II, § I).
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`All the statements contained in the Andrews Rebuttal Declaration are out of
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`court statements offered for the truth of the matter asserted therein and constitute
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`impermissible hearsay (F.R.E. 801, 802). Further, the Andrews Rebuttal
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`Declaration refers to out of court statements offered for the truth of the matter
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`asserted therein, and they also constitute impermissible hearsay (F.R.E. 801, 802).3
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`Nor has a showing been made that a hearsay exception or exclusion applies.
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`3 For example, in ¶ 6, Andrews refers to information that he purportedly
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`“learned in interviewing and hiring many engineers throughout [his] career,” as
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`well as documentary statements – not personal knowledge – that “fuzzy logic has
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`finally been accepted as an emerging technology since the late 1980s.”
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`CLI-2132833
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`5
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`Additionally, the Andrews Rebuttal Declaration is not relevant because
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`Case CBM2012-00002
`Patent 6,064,970
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`
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`Andrews is not qualified to testify and lacks the necessary “scientific, technical, or
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`other specialized knowledge [to] help the trier of fact to understand the evidence or
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`to determine a fact in issue” because he is not sufficiently knowledgeable about the
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`subject matter on which he has offered opinions in his rebuttal declaration and
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`never designed any fuzzy logic systems. The Andrews Rebuttal Declaration also
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`fails to provide sufficient underlying facts or data upon which the statements
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`contained therein could legitimately be based.4 (F.R.E. 702; C.F.R. § 42.61;
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`C.F.R. § 42.65; see also F.R.E. 402, 703, 705). Accordingly, permitting any
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`reliance on this purported expert testimony in the Reply or other submissions of
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`4 For example, Andrews argues in ¶ 6 that “[f]uzzy logic was well
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`established and fairly common by 1996” based on: (i) a reference to an article,
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`“Wang, L., Adaptive Fuzzy System and Control – Design and Stability Analysis,”
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`without any discussion of the substance of that article or providing a copy;
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`(ii) Andrews’ purported work with engineers, who were only “generally of the
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`same level of skill as [he] set forth as a typical POSITA;” and (iii) information that
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`Andrews purportedly “learned in interviewing and hiring many engineers
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`throughout [his] career[.]” Andrews also admits in ¶ 6 that his understanding as to
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`the training of the engineers to which he referred was only “[a]s far as I know[.]”
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`CLI-2132833
`
`6
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`
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`Petitioner would be misleading and unfairly prejudicial to Patent Owner (F.R.E.
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`Case CBM2012-00002
`Patent 6,064,970
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`403).
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`II. OBJECTIONS TO EXHIBITS 1020, 1021, 1023, 1024, 1025, 1026, 1027,
`1028, AND 1029 AND ANY REFERENCE TO/RELIANCE THEREON
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`Patent Owner hereby objects to Exhibits 1020, 1021, 1023, 1024, 1025,
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`1026, 1027, 1028, and 1029 (“the Supplemental Exhibits”).
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`Grounds for objection: 37 C.F.R. § 42.61 (Admissibility of Evidence),
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`F.R.E. 402 (Relevance), F.R.E. 403 (Excluding Relevant Evidence for Prejudice,
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`Confusion, Waste of Time, or Other Reasons), FRE 901 (Authentication), 37
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`C.F.R. § 42.223 (Filing of Supplemental Evidence), F.R.E. 801, 802
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`(Impermissible Hearsay), 37 C.F.R. § 42.23(b) (Outside Scope of Response and
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`Petition), and F.R.E 106 (Remainder of Writing).
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`As explained below, neither the Stark Declaration nor the O’Neil Rebuttal
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`Declaration establish the date that any of the Supplemental Exhibits were
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`published, that they are true and accurate copies as they existed at the time of
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`publication, or even the date they were obtained. Consequently, the Supplemental
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`Exhibits have not been properly authenticated and also are not relevant to any issue
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`in this proceeding (F.R.E. 901; F.R.E. 402; 37 § C.F.R. § 42.61).
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`Throughout its Reply, Petitioner variously cites Supplemental Exhibits as
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`allegedly rebutting certain arguments presented by Patent Owner in its response.
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`CLI-2132833
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`7
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`
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`However, Petitioner’s Reply improperly mischaracterizes Patent Owner’s
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`Case CBM2012-00002
`Patent 6,064,970
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`arguments and distorts the issues raised by Patent Owner to justify a basis (which it
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`otherwise could not) for filing its so-called “rebuttal” evidence. Patent Owner
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`advanced no position that may form a proper basis for the late submission of the
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`Supplemental Exhibits. The new evidence is both prejudicial and has no probative
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`value to any issue properly raised in this proceeding (F.R.E. 402; F.R.E. 403; 37
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`C.F.R. § 42.61). Rather, the Supplemental Exhibits are used by Petitioner to
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`present new prior art (to the extent any of the Supplemental Exhibits constitute
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`prior art) and new theories to support its invalidity arguments in order to attempt to
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`make out a prima facie case of unpatentability (F.R.E. 403; 37 C.F.R. § 42.23(b);
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`37 C.F.R. § 42.223; 37 § C.F.R. 42, Office Patent Trial Practice Guide, part II, § I).
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`The Supplemental Exhibits are either inapplicable or should have been submitted
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`when the petition for this trial was filed, not after it began (F.R.E. 403; 37 C.F.R. §
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`42.23(b); 37 C.F.R. § 42.223; 37 C.F.R. § 42, Office Patent Trial Practice Guide,
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`part II, § I).
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`Additionally, the statements contained in the Supplemental Exhibits are out
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`of court statements offered for the truth of the matter asserted5 and are objected to
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`5 For example, in ¶¶ 6-7 of the O’Neil Rebuttal Declaration, O’Neil relies on
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`new Exhibit 1023 to support her opinions as to how statements in the Risk
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`CLI-2132833
`
`8
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`
`
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`because they constitute impermissible hearsay (F.R.E. 801, 802). Nor has a
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`Case CBM2012-00002
`Patent 6,064,970
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`showing been made that a hearsay exception or exclusion applies.
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`Exhibits 1021 and 1024 are only excerpts. See Declaration of Darrell W.
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`Stark at ¶ 4 (“Chapters 1 and 2 of a book”) and ¶ 5 (“Chapter One”). Liberty has
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`failed to include complete copies (F.R.E. 106).
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`III. OBJECTIONS TO EXHIBIT 1022 AND ANY REFERENCE
`TO/RELIANCE THEREON
`
`Patent Owner hereby objects to Exhibit 1022, Rebuttal Declaration of Mary
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`O’Neil, dated August 6, 2013 (“O’Neil Rebuttal Declaration”).
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`Grounds for objection: 37 C.F.R. § 42.61 (Admissibility of Evidence),
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`F.R.E. 402 (Relevance), F.R.E. 403 (Excluding Relevant Evidence for Prejudice,
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`Confusion, Waste of Time, or Other Reasons), F.R.E. 901 (Authentication), 37
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`C.F.R. § 42.223 (Filing of Supplemental Evidence), F.R.E. 702, 703, 705 (Witness
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`Not Qualified to Provide Expert Testimony), F.R.E. 602 (Lack of Personal
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`Knowledge), 37 C.F.R. § 42.65 (Failure to Disclose Underlying Facts or Data),
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`
`(continued…)
`
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`Classification Statement of Principles should be interpreted, and in ¶ 6 of the
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`Andrews Rebuttal Declaration, Andrews relies on Exhibits 1020 and 1021 as
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`purporting to demonstrate that “[f]uzzy logic was well established and fairly
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`common by 1996” and that “fuzzy logic was also the subject of general study[.]”
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`CLI-2132833
`
`9
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`
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`F.R.E. 801, 802 (Impermissible Hearsay), 37 C.F.R. §42.23(b) (Outside Scope of
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`Case CBM2012-00002
`Patent 6,064,970
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`Response and Petition), and the O’Neil Rebuttal Declaration is unauthorized
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`testimony.
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`Petitioner cites Exhibit 1022 as allegedly rebutting certain arguments
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`presented by Patent Owner in its Patent Owner Response. However, Petitioner’s
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`Reply improperly mischaracterizes and misrepresents Patent Owner’s arguments in
`
`order to provide an artificial basis (which it otherwise could not) for its new
`
`declaration it calls a “Rebuttal Declaration.” Patent Owner advanced no position
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`that provides a proper basis for the belated submission of new declarations (37
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`C.F.R. § 42.23(b), 37 C.F.R. § 42.223; 37 C.F.R. § 42, Office Patent Trial Practice
`
`Guide, part II, § I). The statements in the O’Neil Rebuttal Declaration have no
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`relevant bearing on any issue properly raised in this proceeding (F.R.E. 402, 403;
`
`37 C.F.R. § 42.61). Rather, the O’Neil Rebuttal Declaration is used by Petitioner
`
`to present new prior art (to the extent any of the documents referenced therein,
`
`including Exhibits 1023-1028, constitute prior art), and raise new theories to
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`support its invalidity arguments in order to make out a prima facie case of
`
`unpatentability of the claims that could have been made out in the Petitioner’s
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`CLI-2132833
`
`10
`
`
`
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`petition for review.6 The content of the O’Neil Rebuttal Declaration and the newly
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`Case CBM2012-00002
`Patent 6,064,970
`
`produced exhibits referenced therein are either inapplicable or should have been
`
`submitted when the petition for review was filed, not after the institution of this
`
`trial (F.R.E. 403; 37 C.F.R. § 42.223; 37 C.F.R. 42, Office Patent Trial Practice
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`Guide, part II, § I).
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`Further, O’Neil’s new testimony could have been elicited during direct
`
`examination in the first instance, or re-direct examination (F.R.E. 403; 37 C.F.R.
`
`
`6 For example, O’Neil argues in ¶ 28 that “Kosaka explicitly states that
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`fuzzy logic need not be used[.]” (Emphasis in original). However, Liberty’s use
`
`of Kosaka in its Petition is based entirely on Kosaka’s reliance on fuzzy logic.
`
`O’Neil’s new reading of Kosaka should have been part of Liberty’s prima facie
`
`case, should have been in its Petition, and is not properly considered rebuttal
`
`evidence. Similarly, O’Neil offered no opinions as to the Herrod reference
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`(Exhibit 1007) in her Declaration filed with Liberty’s Petition, even though Liberty
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`applied Herrod as part of its prima facie arguments for invalidity in its Petition.
`
`O’Neil attempts to now offer arguments concerning Herrod in her Rebuttal
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`Declaration (see, e.g., ¶¶ 27-29, 37, 43, 47, 49, 51, 53, 54, and 56), but they should
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`have been offered at the time of filing the Petition and are not properly considered
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`rebuttal evidence.
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`CLI-2132833
`
`11
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`
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`§ 42.223; 37 § C.F.R. 42, Office Patent Trial Practice Guide, part II, § I). For
`
`Case CBM2012-00002
`Patent 6,064,970
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`example, O’Neil offered no opinions as to the Herrod reference (Exhibit 1007) in
`
`her Declaration filed with Liberty’s Petition, even though Liberty applied Herrod
`
`as part of its prima facie arguments for invalidity in its Petition. O’Neil’s attempt
`
`to belatedly add testimony concerning Herrod in her Rebuttal Declaration (see,
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`e.g., ¶¶ 27-29, 37, 43, 47, 49, 51, 53, 54, and 56) is not rebuttal evidence.
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`The O’Neil Rebuttal Declaration was not authorized by the Board. None of
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`the PTAB Rules or regulations authorizes filing new testimonial evidence in
`
`conjunction with a Petitioner reply that does not arise from the submission of a
`
`substitute claim or is responsive to a Patent Owner’s claim amendments.
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`Consequently, the O’Neil Rebuttal Declaration is both outside the scope of Patent
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`Owner’s Response and impermissible supplemental evidence (37 C.F.R. § 42.223;
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`37 C.F.R. § 42.23(b); 37 C.F.R. § 42, Office Patent Trial Practice Guide, part II,
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`§ I).
`
`Petitioner apparently presents the O’Neil Rebuttal Declaration, and
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`specifically ¶ 6 footnote 1, in an attempt to verify the source, dates and authenticity
`
`of Exhibit 1023. However, the O’Neil Rebuttal Declaration only establishes that
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`O’Neil obtained Exhibit 1023 via the Internet. O’Neil does not identify the date on
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`which it was obtained; she also fails to provide any relevant statement or personal
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`knowledge regarding the original publication date of the materials submitted as
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`CLI-2132833
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`12
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`
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`Exhibit 1023 (F.R.E. 402, 602; 37 C.F.R. § 42.61); and she fails to provide any
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`Case CBM2012-00002
`Patent 6,064,970
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`proper basis for concluding that the document is a true and accurate copy as it
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`existed at the time of publication, to the extent it was published prior to the
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`unspecified date O’Neil obtained it (F.R.E. 901). Therefore, the declaration, and
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`testimony regarding Exhibit 1023, is both prejudicial and irrelevant to any issue in
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`this proceeding (F.R.E. 402; 37 C.F.R. § 42.61; F.R.E. 403).
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`Furthermore, the O’Neil Rebuttal Declaration seeks to verify the source of
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`Exhibit 1023 even though it is inadmissible supplemental evidence and not
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`relevant to any issue of this proceeding (F.R.E. 402; 37 C.F.R. §§ 42.61, 42.23(b);
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`37 C.F.R. 42, Office Patent Trial Practice Guide, part II, § I). Consequently, the
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`O’Neil Rebuttal Declaration is irrelevant, outside the scope of Patent Owner’s
`
`Response, and constitutes impermissible supplemental evidence (37 C.F.R.
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`§§ 42.223, 42.23(b); 37 § C.F.R. 42, Office Patent Trial Practice Guide, part II,
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`§ I).
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`All the statements contained in the O’Neil Rebuttal Declaration are out of
`
`court statements offered for the truth of the matter asserted therein and constitute
`
`impermissible hearsay (F.R.E. 801, 802). Further, the O’Neil Rebuttal Declaration
`
`refers to out of court statements offered for the truth of the matter asserted therein,
`
`CLI-2132833
`
`13
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`
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`and they also constitute impermissible hearsay (F.R.E. 801, 802).7 Nor has a
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`Case CBM2012-00002
`Patent 6,064,970
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`showing been made that a hearsay exception or exclusion applies.
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`Additionally, the O’Neil Rebuttal Declaration is not relevant because O’Neil
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`is not qualified to testify and lacks the necessary “scientific, technical, or other
`
`specialized knowledge [to] help the trier of fact to understand the evidence or to
`
`determine a fact in issue” because she is not sufficiently knowledgeable about the
`
`subject matter on which she has offered opinions in her rebuttal declaration. The
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`O’Neil Rebuttal Declaration also fails to provide sufficient underlying facts or data
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`upon which the statements contained therein could legitimately be based.8 (F.R.E.
`
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`7 For example, in ¶ 24 and footnotes 5-9, O’Neil refers Exhibits 1024-1028,
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`and material referenced therein, and various “download pages” as purportedly
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`“confirm[ing] that the [fuzzy logic] methodology was well known and applications
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`to classification rating and underwriting were well-documented,” as well as
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`establishing the “date[s]” for those articles.
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`8 For example, O’Neil argues in ¶ 24 that fuzzy logic “methodology was
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`well known and applications to classification rating and underwriting were well-
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`documented” based on an article’s “extensive list of references” and another
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`article’s “extensive bibliography” without any discussion of the substance of those
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`CLI-2132833
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`14
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`702; C.F.R. § 42.61; C.F.R. § 42.65; see also F.R.E. 402, 703, 705). Accordingly,
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`Case CBM2012-00002
`Patent 6,064,970
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`permitting any reliance on this purported expert testimony in the Reply or other
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`submissions of Petitioner would be misleading and unfairly prejudicial to Patent
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`Owner (F.R.E. 403).
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`IV. OBJECTIONS TO EXHIBIT 1030 AND ANY REFERENCE
`TO/RELIANCE THEREON
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`Patent Owner hereby objects to Exhibit 1030, Declaration of Darrell W.
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`Stark (“Stark Declaration”), an attorney in the office of Petitioner’s counsel.
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`Grounds for objection: 37 C.F.R. § 42.61 (Admissibility of Evidence),
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`F.R.E. 402 (Relevance), F.R.E. 403 (Excluding Relevant Evidence for Prejudice,
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`Confusion, Waste of Time, or Other Reasons), F.R.E. 901 (Authentication), 37
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`C.F.R. § 42.223 (Filing of Supplemental Evidence), F.R.E. 702, 703, 705 (Witness
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`Not Qualified to Provide Expert Testimony), F.R.E. 602 (Lack of Personal
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`Knowledge), F.R.E. 801, 802 (Impermissible Hearsay), 37 C.F.R. §42.23(b)
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`(Outside Scope of Response and Petition), and the Stark Declaration is
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`unauthorized testimony.
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`(continued…)
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`references or bibliography materials or specific details as to what is disclosed in
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`her other cited Exhibits.
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`CLI-2132833
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`15
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`The Stark Declaration is not cited in Petitioner’s Reply. Petitioner
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`Case CBM2012-00002
`Patent 6,064,970
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`
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`apparently presents the Stark Declaration in an attempt to verify the source, dates
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`and authenticity of Exhibits 1020-1021 and Exhibits 1024-1029. However, the
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`Stark Declaration only establishes that Stark obtained Exhibits 1020-1021 and
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`Exhibits 1024-1029 from various sources via the Internet and library and that he
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`added page numbers and exhibit labels to them. Stark does not identify the dates
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`on which they were obtained; he also fails to provide any relevant statement or
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`personal knowledge regarding the original publication date of the materials
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`submitted as Exhibits 1020-1021 and Exhibits 1024-1029 (F.R.E. 402, 602, 901;
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`37 C.F.R. § 42.61). He fails to establish any proper basis for concluding that the
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`documents are true and accurate copies as they existed at the time of publication, to
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`the extent they were published prior to the unspecified date that Mr. Stark obtained
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`them, or that they qualify as prior art. (F.R.E. 402, 901; 37 C.F.R. § 42.61). And,
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`he fails to establish that a purported printout of Progressive’s “Privacy Statement”
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`is relevant to interpretation of the ’970 patent.9 (F.R.E. 402, 901; 37 C.F.R. §
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`42.61). Therefore, the declaration, and testimony regarding the exhibits, are both
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`prejudicial and irrelevant to any issue in this proceeding (F.R.E. 402, 403; 37
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`C.F.R. § 42.61).
`
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`9 See Stark Declaration, at ¶ 10; Exhibit 1029.
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`CLI-2132833
`
`16
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`
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`The Stark Declaration is also unauthorized. None of the PTAB Rules or
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`Case CBM2012-00002
`Patent 6,064,970
`
`
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`regulations authorizes filing a new declaration as to new exhibits in conjunction
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`with a Petitioner Reply that do not arise from the submission of a substitute claim
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`or is responsive to a Patent Owner’s claim amendments. Furthermore, the Stark
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`Declaration seeks to verify the source of documents that are inadmissible
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`supplemental evidence and are not relevant to any issue of this proceeding (F.R.E.
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`402; 37 C.F.R. §§ 42.23(b), 42.61, 42.223; 37 C.F.R. 42, Office Patent Trial
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`Practice Guide, part II, § I). Consequently, the Stark Declaration is irrelevant,
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`outside the scope of Patent Owner’s Response, and constitutes impermissible
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`supplemental evidence (F.R.E. 402; 37 C.F.R. §§ 42.23(b), 42.61, 42.223; 37
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`C.F.R. 42, Office Patent Trial Practice Guide, part II, § I).
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`All the statements contained in the Stark Declaration are out of court
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`statements offered for the truth of the matter asserted therein and constitute
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`impermissible hearsay (F.R.E. 801, 802). Further, the Stark Declaration refers to
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`out of court statements offered for the truth of the matter asserted therein, and they
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`also constitute impermissible hearsay (F.R.E. 801, 802).10 Nor has a showing been
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`made that a hearsay exception or exclusion applies.
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`10 For example, in ¶¶ 7 and 9, Stark indicates that he “[a]ppended” printouts
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`to the end of Exhibits 1026 and 1028 that “indicat[e] the date of publication.”
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`CLI-2132833
`
`17
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`
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`V. CONCLUSION
`For at least these reasons, the Patent Owner objects to Exhibits 1019 through
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`Case CBM2012-00002
`Patent 6,064,970
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`1030 attached to the Petitioner’s Reply to the Patent Owner Response and to the
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`citations to those Exhibits in Petitioner’s Reply and in the Andrews and O’Neil
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`Rebuttal Declarations.
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`August 13, 2013
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`By:
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`Respectfully submitted,
`
`JONES DAY
`
`/Calvin P. Griffith/
`Calvin P. Griffith
`Registration No. 34,831
`JONES DAY
`North Point
`901 Lakeside Avenue
`Cleveland, Ohio 44114-1190
`(216) 586-3939
`(216) 579-0212 (Fax)
`Attorneys For Patent Owner
`
`CLI-2132833
`
`18
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`
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`CERTIFICATE OF SERVICE
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`I certify that a copy of the foregoing PATENT OWNER’S NOTICE OF
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`OBJECTIONS TO EVIDENCE PURSUANT TO 37 C.F.R. § 42.64 and PATENT
`
`OWNER’S OBJECTIONS TO EVIDENCE PURSUANT TO 37 C.F.R. § 42.64
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`were served on August 13, 2013 by causing them to be sent by email to counsel for
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`the Petitioner at the following email addresses:
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`Steven.baughman@ropesgray.com
`Nicole.jantzi@ropesgray.com
`James.myers@ropesgray.com
`LibertyMutualPTABService@ropesgray.com
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`
`
`
`
`/s/ John V. Biernacki
`John V. Biernacki
`Registration No. 40,511
`JONES DAY
`North Point
`901 Lakeside Avenue
`Cleveland, Ohio 44114-1190
`Attorney For Patent Owner
`
`
`
`
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