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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`LIBERTY MUTUAL INSURANCE CO.
`Petitioner
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`v.
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`PROGRESSIVE CASUALTY INSURANCE CO.
`Patent Owner
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`Case CBM2012-00003
`Patent 8,140,358
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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-2134623
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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 CBM2012-00003
`Patent 8,140,358
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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-2134623
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`The undersigned, on behalf of Patent Owner Progressive Casualty Insurance
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`Case CBM2012-00003
`Patent 8,140,358
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`
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`Co. (“Patent Owner”), hereby provides Notice to the Board that the objections
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`made on the record herewith were served on Liberty Mutual Insurance Co.
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`pursuant to 37 C.F.R. § 42.64. See also 37 C.F.R. § 42, Office Patent Trial
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`Practice Guide, part II, § I, 48767 (77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012)).
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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)
`Attorney For Patent Owner
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`August 22, 2013
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`CLI-2134623
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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
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`—————————————
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`Case CBM2012-00003
`Patent 8,140,358
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`—————————————
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`PATENT OWNER’S OBJECTIONS TO
`EVIDENCE PURSUANT TO 37 C.F.R. § 42.64
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`CLI-2134623
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`Pursuant to 37 C.F.R. § 42.64(b)(1), the undersigned, on behalf of Patent
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`Case CBM2012-00003
`Patent 8,140,358
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`
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`Owner Progressive Casualty Insurance Co. (“Patent Owner”), hereby submits the
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`following objections to Exhibit 1032, Exhibit 1033, Exhibit 1034, Exhibit 1035,
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`Exhibit 1036, Exhibit 1037, and Exhibit 1038 submitted with Liberty Mutual
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`Insurance Co.’s (“Liberty” or “Petitioner”) Reply to Patent Owner’s Response
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`(“Reply”). See CBM2012-00003, Paper 39 (and exhibits thereto). Pursuant to 37
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`C.F.R. § 42.62, Patent Owner’s objections below apply the Federal Rules of
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`Evidence (“F.R.E.”).
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`I.
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`OBJECTIONS TO EXHIBIT 1032 AND ANY REFERENCE
`TO/RELIANCE THEREON
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`Patent Owner hereby objects to Exhibit 1032, Rebuttal Declaration of Mary
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`L. O’Neil, dated August 15, 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), 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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`Scope of Response and Petition), and the O’Neil Rebuttal Declaration is
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`unauthorized testimony.
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`CLI-2134623
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`1
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`
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`Petitioner cites the O’Neil Rebuttal Declaration as allegedly rebutting certain
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`Case CBM2012-00003
`Patent 8,140,358
`
`
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`arguments presented by Patent Owner in its Patent Owner Response. However,
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`Petitioner’s Reply improperly mischaracterizes and misrepresents Patent Owner’s
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`arguments in order to provide an artificial basis for its new declaration it calls a
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`“Rebuttal Declaration.” Patent Owner advanced no position that provides a proper
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`basis for the belated submission of new declarations (37 C.F.R. 42.23(b), 42.223;
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`37 C.F.R. 42, Office Patent Trial Practice Guide, part II, § I (77 Fed. Reg. 48,756,
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`48,767 (Aug. 14, 2012))). The statements in the O’Neil Rebuttal Declaration have
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`no relevant bearing on any issue properly raised in this proceeding (F.R.E. 402,
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`403; 37 C.F.R. § 42.61). Rather, the O’Neil Rebuttal Declaration is used by
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`Petitioner to raise new theories and invalidity arguments in an effort to make out a
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`prima facie case of unpatentability of the claims, including disclosure by
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`Nakagawa (Exhibit 1005)1 and challenging the ’358’s priority date, 2 that could and
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`1 Liberty argued as part of its prima facie invalidity case in its Petition that
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`Nakagawa anticipated claim 1 of the ‘358 patent and that Nakagawa in
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`combination with other references rendered obvious the other claims. (See, e.g.,
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`Petition at 17-22). However, O’Neil offered no declaration in support of Liberty’s
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`Petition. Yet she now opines as to Nakagawa in her Rebuttal Declaration at ¶¶ 26
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`CLI-2134623
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`2
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`should have been submitted with the Petitioner’s petition for review. The contents
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`Case CBM2012-00003
`Patent 8,140,358
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`of the O’Neil Rebuttal Declaration are either inapposite or should have been
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`submitted when the Petition was filed, not after the institution of this trial (F.R.E.
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`(continued…)
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`to 28, even though these opinions should have been offered at the time of filing the
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`Petition and are not properly considered rebuttal evidence.
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`2 Liberty argued as part of its prima facie invalidity case in its Petition that
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`“the claims of the ‘358 Patent are not entitled to claim priority to the applications
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`issuing as the parent ‘134, ‘970, ‘386, or ‘598 patents.” (See Petition at 4; see also
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`id. at 14, “claims 1, 16-17 and 19-20 cannot claim priority to any application dated
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`earlier than January 23, 2004 – the filing date of the ‘598 Patent, and claims 2-15
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`and 18 cannot claim priority to any application dated earlier than June 3, 2008 –
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`the filing date of the ‘358 Patent”). However, O’Neil offered no declaration in
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`support of Liberty’s Petition. Yet she now opines in ¶¶ 21 to 25 of her Rebuttal
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`Declaration as to the ‘650 patent application and whether it discloses claim
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`limitations of the ‘358 patent, even though these opinions could and should have
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`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-2134623
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`3
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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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`Case CBM2012-00003
`Patent 8,140,358
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`§ I).
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`Further, O’Neil’s new testimony could have been elicited during direct
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`examination in the first instance (F.R.E. 403; 37 C.F.R. § 42.223; 37 C.F.R. 42,
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`Office Patent Trial Practice Guide, part II, § I). O’Neil’s attempt to now offer this
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`testimony in her Rebuttal Declaration is not rebuttal evidence.3 And by submitting
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`the O’Neil Rebuttal Declaration with its Reply, Liberty has prevented Patent
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`Owner from deposing O’Neil as to the new theories and statements in her Rebuttal
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`Declaration.
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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
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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 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).
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`3 See, e.g., supra at 2-3 n.1 and 3 n.2.
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`CLI-2134623
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`4
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`All the statements contained in the O’Neil Rebuttal Declaration are out of
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`Case CBM2012-00003
`Patent 8,140,358
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`
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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 O’Neil Rebuttal Declaration
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`refers to out of court statements offered for the truth of the matter asserted therein,
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`and they also constitute impermissible hearsay (F.R.E. 801, 802).4 Nor has a
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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
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`specialized knowledge [to] help the trier of fact to understand the evidence or to
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`determine a fact in issue” because she is not sufficiently knowledgeable about the
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`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. (F.R.E.
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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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`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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`4 For example, in ¶ 9, O’Neil refers to Exhibit 1033 as to “all the matters in
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`which [she] was involved, including [her] testimonial experience.”
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`CLI-2134623
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`5
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`II. OBJECTIONS TO EXHIBITS 1033, 1035, 1036, 1037 AND ANY
`REFERENCE TO/RELIANCE THEREON
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`Case CBM2012-00003
`Patent 8,140,358
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`Patent Owner hereby objects to Exhibits 1033, 1035, 1036, and 1037 (“the
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`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 Rossen Declaration nor the Andrews
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`Rebuttal Declaration establish the date that any of the Supplemental Exhibits were
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`published or that they are true and accurate copies as they existed at the time of
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`publication. Consequently, the Supplemental Exhibits have not been properly
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`authenticated and also are not relevant to any issue in this proceeding (F.R.E. 901;
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`F.R.E. 402; 37 C.F.R. § 42.61).
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`Throughout Petitioner’s Reply and the Rebuttal Declarations, the
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`Supplemental Exhibits are variously cited as allegedly rebutting certain arguments
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`presented by Patent Owner in its response. However, Petitioner’s Reply and the
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`Rebuttal Declarations improperly mischaracterize Patent Owner’s arguments and
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`CLI-2134623
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`6
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`distorts the issues raised by Patent Owner to justify a basis (which it otherwise
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`Case CBM2012-00003
`Patent 8,140,358
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`could not) for filing its so-called “rebuttal” evidence. Patent Owner advanced no
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`position that may form a proper basis for the late submission of the Supplemental
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`Exhibits. The new evidence is both prejudicial and has no probative value to any
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`issue properly raised in this proceeding (F.R.E. 402; F.R.E. 403; 37 C.F.R.
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`§ 42.61). Rather, the Supplemental Exhibits are used by Petitioner to present new
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`theories and invalidity arguments in an effort to make out a prima facie case of
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`unpatentability (F.R.E. 403; 37 C.F.R. § 42.23(b); 37 C.F.R. § 42.223; 37 § C.F.R.
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`42, Office Patent Trial Practice Guide, part II, § I). The Supplemental Exhibits are
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`either inapposite or should have been submitted when the petition for this trial was
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`filed, not after it began (F.R.E. 403; 37 C.F.R. § 42.23(b); 37 C.F.R. § 42.223; 37
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`C.F.R. § 42, Office Patent Trial Practice Guide, 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 asserted and are objected to
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`because they constitute impermissible hearsay (F.R.E. 801, 802).5 Nor has a
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`showing been made that a hearsay exception or exclusion applies.
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`5 For example, in ¶ 15 of the Andrews Rebuttal Declaration, Andrews quotes
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`and excerpts from Exhibit 1035; in ¶¶ 22, 25, 30, and 46, Andrews quotes from
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`Exhibit 1036; and in ¶ 46, Andrews refers to text from Exhibit 1037.
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`CLI-2134623
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`7
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`
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`Exhibit 1037, entitled “The Apache Software Foundation ASF History
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`Case CBM2012-00003
`Patent 8,140,358
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`Project – Timeline,”6 is on its face incomplete (e.g., “More information from Rob
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`added here soon”) and bears indicia that it lacks credibility (e.g., citing source
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`information as “so the legend goes”). Therefore, the declaration, and testimony
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`regarding Exhibit 1037 is prejudicial and irrelevant to any issue in this proceeding
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`(F.R.E. 402, 403; 37 C.F.R. § 42.61).
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`III. OBJECTIONS TO EXHIBIT 1034 AND ANY REFERENCE
`TO/RELIANCE THEREON
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`Patent Owner hereby objects to Exhibit 1034, Rebuttal Declaration of Scott
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`Andrews, dated August 15, 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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`Scope of Response and Petition), and the Andrews Rebuttal Declaration is
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`unauthorized testimony.
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`6 See Rossen Declaration, at ¶ 4; Exhibit 1037.
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`CLI-2134623
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`8
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`
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`Petitioner cites the Andrews Rebuttal Declaration as allegedly rebutting
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`Case CBM2012-00003
`Patent 8,140,358
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`
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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). Rather, the Andrews Rebuttal Declaration is used by
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`Petitioner to raise new theories and invalidity arguments in an effort to make out a
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`prima facie case of unpatentability of the claims, including new arguments
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`regarding the disclosure of Nakagawa7 and challenging the ’358’s priority date, 8
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`7 Liberty argued as part of its prima facie invalidity case in its Petition that
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`Nakagawa anticipated claim 1 of the ‘358 patent and that Nakagawa in
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`combination with other references rendered obvious the other claims at issue.
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`(See, e.g., Petition at 17-22.) The Andrews declaration filed with Liberty’s Petition
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`(Exhibit 1025) offered only conclusory statements as to Nakagawa, with less than
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`one page of text addressing it. (See Exhibit 1025, at 17.) Yet in his Rebuttal
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`CLI-2134623
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`9
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`Case CBM2012-00003
`Patent 8,140,358
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`
`(continued…)
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`Declaration, Andrews now opines at length on Nakagawa, offering a 20-page
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`discussion and opinions, which should have been offered at the time of filing the
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`Petition. This is not proper rebuttal evidence. For example, in Exhibit 1025,
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`Andrews cited only ¶ 0069 from Nakagawa as disclosing a “database.” But in his
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`Rebuttal Declaration, he now relies on new portions of Nakagawa as support,
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`including Figure 6. (See, e.g., Exhibit 1034 at ¶ 21, “Nakagawa’s Figure 6 also
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`illustrates that this user data must be stored in a database.”)
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`8 Liberty argued as part of its prima facie invalidity case in its Petition that
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`“the claims of the ‘358 Patent are not entitled to claim priority to the applications
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`issuing as the parent ‘134, ‘970, ‘386, or ‘598 patents.” (See Petition at 4; see also
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`id. at 14, “claims 1, 16-17 and 19-20 cannot claim priority to any application dated
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`earlier than January 23, 2004 – the filing date of the ‘598 Patent, and claims 2-15
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`and 18 cannot claim priority to any application dated earlier than June 3, 2008 –
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`the filing date of the ‘358 Patent”). However, in his Declaration filed with
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`Liberty’s Petition (Exhibit 1025), Andrews offered no opinions as to the lack of
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`support in the ’650 and ’076 applications. Yet he now argues in section IV(D)-(E)
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`of his Rebuttal Declaration that the ’650 and ’076 applications do not provide
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`support for the claims in the ’358 patent. As an example, Liberty argued in its
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`CLI-2134623
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`10
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`that could and should have been submitted with the Petitioner’s petition. The
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`Case CBM2012-00003
`Patent 8,140,358
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`content of the Andrews Rebuttal Declaration and the newly produced exhibits
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`referenced therein are inapposite and should have been submitted when the petition
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`was filed, not after the institution of this trial (F.R.E. 403; 37 C.F.R. § 42.65; 37
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`C.F.R. § 42.223; 37 C.F.R. 42, Office Patent Trial Practice Guide, part II, § I).
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`Further, Andrews’ new testimony could have been elicited during direct
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`examination in the first instance (F.R.E. 403; 37 C.F.R. § 42.223; 37 C.F.R. 42,
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`Office Patent Trial Practice Guide, part II, § I). For example, Andrews testified
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`that he did not opine on priority date in his declaration filed with Liberty’s Petition.
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`(continued…)
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`Petition that “[i]ndependent claim 1’s recitation of a ‘server…configured to
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`generate a rating factor based on the selected vehicle data stored in the database’
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`is an entirely new concept distinct from what those [applications’] written
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`descriptions disclosed.” (See Petition at 4, emphasis added.) Yet, Andrews did not
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`offer this opinion in his Declaration filed with Liberty’s Petition. Rather, he
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`waited until his Rebuttal Declaration to offer this very same opinion that “a
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`POSITA would not clearly conclude that the ‘650 and ‘076 disclosures require that
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`a ‘rating factor’…is calculated at the remote server.” (Andrews Rebuttal
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`Declaration, at ¶ 48, emphasis added).
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`CLI-2134623
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`11
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`(See Andrews’ tr. at 77:13-17, Q: “[I]n Exhibit 1025, you’re not opining on
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`Case CBM2012-00003
`Patent 8,140,358
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`whether or not the ’358 patent is entitled to the benefit of an earlier priority date;
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`am I right?” A: “That’s correct, I am not.”) Yet he now argues in section IV(D)-
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`(E) of his Rebuttal Declaration that the ’650 and ’076 applications do not provide
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`support for the claims in the ’358 patent. Andrew’s attempt to offer new testimony
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`in his Rebuttal Declaration is not rebuttal evidence.9 And by submitting the
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`Andrews Rebuttal Declaration with its Reply, Liberty has prevented Patent Owner
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`from deposing Andrews as to the new theories and statements in his Rebuttal
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`Declaration.
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`The Andrews Rebuttal Declaration was not authorized by the Board. None
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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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`9 See, e.g., supra at 9-10 n.7 and 10 n.8.
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`CLI-2134623
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`12
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`Petitioner apparently presents the Andrews Rebuttal Declaration, and
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`Case CBM2012-00003
`Patent 8,140,358
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`specifically ¶ 15 footnote 2, in an attempt to verify the source, dates and
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`authenticity of Exhibit 1035. However, the Andrews Rebuttal Declaration only
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`establishes that Andrews obtained Exhibit 1035 via the Internet. Andrews fails to
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`provide any relevant statement or personal knowledge regarding the original
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`publication date of the materials submitted as Exhibit 1035 or whether it had been
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`superseded or amended (F.R.E. 402, 602; 37 C.F.R. § 42.61); and he fails to
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`establish any proper basis for concluding that the document is a true and accurate
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`copy as it existed at the time of publication, to the extent it was published prior to
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`August 15, 2013, when Andrews purports to have downloaded it (F.R.E. 901).
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`Therefore, the declaration, and testimony regarding Exhibit 1035, is both
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`prejudicial and irrelevant to any issue in this proceeding (F.R.E. 402; 37 C.F.R. §
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`42.61; F.R.E. 403).
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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,
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`CLI-2134623
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`13
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`
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`802).10 Nor has a showing been made that a hearsay exception or exclusion
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`Case CBM2012-00003
`Patent 8,140,358
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`applies.
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`Additionally, the Andrews Rebuttal Declaration is not relevant because
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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.11 The
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`10 For example, in ¶ 15, Andrews quotes and excerpts from Exhibit 1035; in
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`¶¶ 22, 25, 30, and 46, Andrews quotes from Exhibit 1036; and in ¶ 46, Andrews
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`refers to text from Exhibit 1037.
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`11 For example, Andrews argues in ¶ 46 that “to configure a computer to be a
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`server requires the use of specialized server software such as the well-known
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`Microsoft Server 2000, or the Apache Server Foundation Apache Server first
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`released in 1995.” His only support for this proposition is Exhibit 1037, an after-
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`the-fact, unverified website printout that is incomplete on its face (e.g., “[m]ore
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`information from Rob added here soon”) and bears indicia that it lacks credibility
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`(e.g., citing source information as “so the legend goes”). Andrews also relies on a
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`purported copy of the Microsoft Press Dictionary (see Andrews Rebuttal
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`CLI-2134623
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`14
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`Andrews Rebuttal Declaration also fails to provide sufficient underlying facts or
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`Case CBM2012-00003
`Patent 8,140,358
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`data upon which the statements contained therein could legitimately be based.12
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`(F.R.E. 702; C.F.R. § 42.61; C.F.R. § 42.65; see also F.R.E. 402, 703, 705).
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`Accordingly, permitting any reliance on this purported expert testimony in the
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`Reply or other submissions of Petitioner would be misleading and unfairly
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`prejudicial to Patent Owner (F.R.E. 403).
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`IV. OBJECTIONS TO EXHIBIT 1038 AND ANY REFERENCE
`TO/RELIANCE THEREON
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`Patent Owner hereby objects to Exhibit 1038, Declaration of Jordan M.
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`Rossen (“Rossen 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. 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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`(continued…)
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`Declaration, at ¶ 22, 25, 30, and 46), but then disputes the veracity of this source
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`by arguing that one of its definitions is “incomplete.” (See id. at ¶ 23.)
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`12 See supra at 14-15 n.11.
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`CLI-2134623
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`15
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`(Outside Scope of Response and Petition), and the Rossen Declaration is
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`Case CBM2012-00003
`Patent 8,140,358
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`unauthorized testimony.
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`The Rossen Declaration is not cited in Petitioner’s Reply. Petitioner
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`apparently presents the Rossen Declaration in an attempt to verify the source, dates
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`and authenticity of Exhibits 1036 and 1037. However, the Rossen Declaration
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`only establishes that Rossen obtained Exhibits 1036 and 1037 from various sources
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`via the Internet and library and that he added page numbers and exhibit labels to
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`them. Rossen does not identify the dates on which he obtained Exhibit 1036; he
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`also fails to provide any relevant statement or personal knowledge regarding the
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`original publication date of the materials submitted as Exhibits 1036 and 1037
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`(F.R.E. 402, 602, 901; 37 C.F.R. § 42.61). He fails to establish any proper basis
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`for concluding that the documents are true and accurate copies as they existed at
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`the time of publication, to the extent they were published prior to the date that
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`Rossen obtained them (unspecified for Exhibit 1036 and purportedly August 15,
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`2013 for Exhibit 1037), or that they qualify as prior art. (F.R.E. 402, 901; 37
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`C.F.R. § 42.61). And, he fails to establish that Exhibits 1036 and 1037 are relevant
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`to interpreting of the ’358 patent. (F.R.E. 402, 901; 37 C.F.R. § 42.61). Indeed,
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`Exhibit 1037, entitled “The Apache Software Foundation ASF History Project –
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`CLI-2134623
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`16
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`Timeline,”13 is on its face incomplete (e.g., “[m]ore information from Rob added
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`Case CBM2012-00003
`Patent 8,140,358
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`here soon”) and bears indicia that it lacks credibility (e.g., citing source
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`information as “so the legend goes”). Therefore, the declaration, and testimony
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`regarding the Exhibits 1036 and 1037, are both prejudicial and irrelevant to any
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`issue in this proceeding (F.R.E. 402, 403; 37 C.F.R. § 42.61).
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`The Rossen Declaration is also unauthorized. None of the PTAB Rules or
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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 does not arise from the submission of a substitute
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`claim and is not responsive to a Patent Owner’s claim amendments. Furthermore,
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`the Rossen Declaration seeks to verify the source of documents that are
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`inadmissible supplemental evidence and are not relevant to any issue of this
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`proceeding (F.R.E. 402; 37 C.F.R. §§ 42.23(b), 42.61, 42.223; 37 C.F.R. 42, Office
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`Patent Trial Practice Guide, part II, § I). Consequently, the Rossen Declaration is
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`irrelevant, outside the scope of Patent Owner’s Response, and constitutes
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`impermissible supplemental evidence (F.R.E. 402; 37 C.F.R. §§ 42.23(b), 42.61,
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`42.223; 37 C.F.R. 42, Office Patent Trial Practice Guide, part II, § I).
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`All the statements contained in the Rossen 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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`13 See Rossen Declaration, at ¶ 4; Exhibit 1037.
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`CLI-2134623
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`17
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`
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`impermissible hearsay (F.R.E. 801, 802). Further, the Rossen Declaration refers to
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`Case CBM2012-00003
`Patent 8,140,358
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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).14 Nor has a showing been
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`made that a hearsay exception or exclusion applies.
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`V. CONCLUSION
`For at least these reasons, the Patent Owner objects to Exhibits 1032 through
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`1038 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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`Respectfully submitted,
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`JONES DAY
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`By:
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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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`
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`August 22, 2013
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`14 For example, in ¶ 3, Rossen refers to Exhibit 1036 as being “published by
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`Microsoft Press” and “bearing library identification.”
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`CLI-2134623
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`18
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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
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`OWNER’S OBJECTIONS TO EVIDENCE PURSUANT TO 37 C.F.R. § 42.64
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`were served on August 22, 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
`
`
`
`/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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