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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
`
`v.
`
`PROGRESSIVE CASUALTY INSURANCE CO.
`Patent Owner
`
`—————————————
`
`Case CBM2012-00003
`Patent 8,140,358
`
`—————————————
`
`PATENT OWNER’S NOTICE OF OBJECTIONS TO EVIDENCE
`PURSUANT TO 37 C.F.R. § 42.64
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`CLI-2147741v1
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`
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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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`Co. (“Patent Owner”), hereby provides Notice to the Board that the objections
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`made on the record herewith were served to Liberty Mutual Insurance Co. pursuant
`
`to 37 C.F.R. § 42.64. See also 37 C.F.R. 42, Office Patent Trial Practice Guide,
`
`part II, § I (77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012)).
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`October 3, 2013
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`By:
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`Respectfully submitted,
`
`JONES DAY
`
`/s/Calvin P. Griffith
`Calvin P. Griffith
`Registration No. 34,831
`JONES DAY
`901 Lakeside Avenue
`Cleveland, Ohio 44114-1190
`(216) 586-3939
`
`Attorney For Patent Owner
`Progressive Casualty Insurance Co.
`
`CLI-2147741v1
`
`1
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`—————————————
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`—————————————
`
`LIBERTY MUTUAL INSURANCE CO.
`Petitioner
`
`v.
`
`PROGRESSIVE CASUALTY INSURANCE CO.
`Patent Owner
`
`—————————————
`
`Case CBM2012-00003
`Patent 8,140,358
`
`—————————————
`
`PATENT OWNER’S OBJECTIONS TO
`EVIDENCE PURSUANT TO 37 C.F.R. § 42.64
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`CLI-2147741v1
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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 CBM2012-00003
`Patent 8,140,358
`
`
`
`Owner Progressive Casualty Insurance Co. (“Patent Owner”), hereby submits the
`
`following objections to Exhibits 1042-1044 filed on September 26, 2013 by
`
`Liberty Mutual Insurance Co. (“Liberty” or “Petitioner”) in response to Patent
`
`Owner’s Objections to Evidence, filed September 12, 2013. Pursuant to 37 C.F.R.
`
`§ 42.62, Patent Owner’s objections below apply the Federal Rules of Evidence
`
`(“F.R.E.”).
`
`I.
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`PATENT OWNER MAINTAINS ITS PRIOR OBJECTIONS
`
`Patent Owner maintains all objections it previously set forth, including its
`
`objections filed on August 22, 2013 (Paper No. 40) and September 12, 2013 (Paper
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`No. 47).
`
`II. EXHIBITS 1042-1044 GO BEYOND EVIDENCE PERMITTED
`UNDER 37 C.F.R. § 42.64(B)(2)
`
`37 C.F.R. § 42.64(b)(2) provides that a “party relying on evidence to which
`
`an objection is timely served may respond to the objection by serving supplemental
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`evidence within ten business days of service of the objection.” Patent Owner
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`objects to Exhibits 1042-1044 because they go beyond, and are not proper
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`supplemental evidence pursuant to, 37 C.F.R. § 42.64(b)(2).
`
`CLI-2147741v1
`
`1
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`
`
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`III. OBJECTIONS TO EXHIBIT 1042 AND ANY REFERENCE
`TO/RELIANCE THEREON
`
`Case CBM2012-00003
`Patent 8,140,358
`
`Patent Owner hereby objects to Exhibit 1042, Declaration of Scott Andrews,
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`dated September 26, 2013 (“Andrews Fourth 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), 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 Andrews Fourth Declaration is
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`unauthorized testimony.
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`Patent Owner advanced no position that provides a proper basis for the
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`belated submission of the Andrews Fourth Declaration or the exhibits referenced
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`therein, i.e., Exhibits 1034, 1037, 1038, 1040, and 1043. (37 C.F.R. § 42.23(b); 37
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`C.F.R. § 42.223; 37 C.F.R. 42, Office Patent Trial Practice Guide, part II, § I (77
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`Fed. Reg. 48,756, 48,787 (Aug. 14, 2012)). The statements in the Andrews Fourth
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`Declaration have no relevant bearing on any issue properly raised in this
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`proceeding or argued by Patent Owner. (F.R.E. 402, 403; 37 C.F.R. § 42.61).
`
`Rather, the Andrews Fourth Declaration is an attempt to raise new theories to
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`CLI-2147741v1
`
`2
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`support invalidity arguments in an effort to establish a prima facie case of
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`Case CBM2012-00003
`Patent 8,140,358
`
`unpatentability of the claims that should have been submitted with the Petitioner’s
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`petition. The content of the Andrews Fourth Declaration and Exhibits 1034, 1037,
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`1038, 1040, and 1043 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;
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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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`Further, Andrews’ new testimony could have been elicited during direct
`
`examination in the first instance. (Id.) Andrews’s attempt to now offer testimony
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`in his Fourth Declaration is not rebuttal evidence and must not be allowed to
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`remedy any deficiency with any previously improperly filed Andrews Declaration.
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`The Andrews Fourth 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, especially
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`in light of the prejudice to Patent Owner because there is no opportunity to respond
`
`to or rebut new declarations submitted at this stage. Consequently, the Andrews
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`Fourth Declaration is both outside the scope of the Patent Owner’s Response and
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`impermissible supplemental evidence. (37 C.F.R. § 42.223; 37 C.F.R. § 42.23(b);
`
`37 C.F.R. 42, Office Patent Trial Practice Guide, part II, § I).
`
`CLI-2147741v1
`
`3
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`
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`Petitioner apparently presents the Andrews Fourth Declaration, and
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`Case CBM2012-00003
`Patent 8,140,358
`
`
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`specifically ¶ 2, in an attempt to verify the source, dates and/or authenticity of
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`Exhibits 1037 and 1043. Andrews claims that he “and other experts” “would
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`reasonably rely on” the Apache website “as a source of accurate information
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`related to the history of the Apache Server,” but he does not confirm whether or
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`not the information was accurate, on what basis he believed he could “reasonably
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`rely” on information on the website, how he is purportedly familiar with other
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`individuals’ belief as to this information, who are the supposed “experts” to which
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`he refers and on what basis he believes they are experts, and what information he
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`referred to as “related to the history of the Apache Server,” and whether the
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`purported “related” information is the same as what he is now attempting to rely on
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`for the purposes of this case. (Andrews Fourth Declaration, at ¶ 2). Andrews also
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`claims that he “ha[s] visited and consulted this website[,]” but he does not indicate
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`when those visits and consultations occurred, what information he accessed, and
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`whether he confirmed that that information was accurate or false. (Id.) Andrews
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`also quotes Exhibit 1043 as to the purported Apache Software Foundation’s legal
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`status, without any allegation as to the veracity of that information. (See id.)
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`Andrews has failed to provide any relevant statement or personal knowledge
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`regarding the original publication date of the materials submitted as Exhibits 1037
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`and 1043 (F.R.E. 402, 602; 37 C.F.R. § 42.61); and he failed to provide any proper
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`CLI-2147741v1
`
`4
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`basis for concluding that the they are true and accurate copies as they existed at the
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`Case CBM2012-00003
`Patent 8,140,358
`
`time of publication, to the extent they were published prior to when he purportedly
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`downloaded or accessed them (F.R.E. 901). Therefore, the declaration and
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`testimony regarding Exhibits 1037 and 1043 are both prejudicial and irrelevant to
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`any issue in this proceeding. (F.R.E. 402; 37 C.F.R. § 42.61; F.R.E. 403).
`
`Furthermore, the Andrews Fourth Declaration seeks to verify the source of
`
`Exhibits 1037 and 1043 even though they are inadmissible supplemental evidence
`
`and not relevant to any issue of this proceeding. (F.R.E. 402; 37 C.F.R. § 42.61;
`
`37 C.F.R. § 42.23(b); 37 C.F.R. 42, Office Patent Trial Practice Guide, part II, § I).
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`Consequently, the Andrews Fourth Declaration is irrelevant, outside the scope of
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`Patent Owner’s Response, and constitutes impermissible supplemental evidence.
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`(37 C.F.R. § 42.223; 37 C.F.R. § 42.23(b); 37 C.F.R. § 42, Office Patent Trial
`
`Practice Guide, part II, § I).
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`All the statements contained in the Andrews Fourth Declaration are out of
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`court statements offered for the truth of the matter asserted therein and constitute
`
`impermissible hearsay. (F.R.E. 801, 802). Further, the Andrews Fourth
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`Declaration refers to out of court statements offered for the truth of the matter
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`CLI-2147741v1
`
`5
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`asserted therein, and they also constitute impermissible hearsay. (Id.) 1 Nor has a
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`Case CBM2012-00003
`Patent 8,140,358
`
`showing been made that a hearsay exception or exclusion applies.
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`Additionally, the Andrews Fourth 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
`
`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 his opinions in his declaration. (F.R.E.
`
`702; 37 C.F.R. § 42.61; 37 C.F.R. § 42.65; see also F.R.E. 402, 703, 705).
`
`Accordingly, permitting any reliance on this purported expert testimony in
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`submissions of Petitioner would be misleading and unfairly prejudicial to Patent
`
`Owner. (F.R.E. 403).
`
`IV. OBJECTIONS TO EXHIBIT 1043 AND ANY REFERENCE
`TO/RELIANCE THEREON
`
`Patent Owner hereby objects to Exhibit 1043.
`
`Grounds for objection: 37 C.F.R. § 42.61 (Admissibility of Evidence),
`
`F.R.E. 402 (Relevance), F.R.E. 403 (Excluding Relevant Evidence for Prejudice,
`
`Confusion, Waste of Time, or Other Reasons), F.R.E. 901 (Authentication), 37
`
`C.F.R. § 42.223 (Filing of Supplemental Evidence), F.R.E. 801, 802
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`1 For example, in ¶ 2, Andrews refers to his prior Declaration and he quotes
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`Exhibit 1043 as to the purported Apache Software Foundation’s legal status.
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`CLI-2147741v1
`
`6
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`(Impermissible Hearsay), 37 C.F.R. § 42.23(b) (Outside Scope of Response and
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`Case CBM2012-00003
`Patent 8,140,358
`
`Petition), and F.R.E. 106 (Remainder of Writing).
`
`Neither any Rossen Declarations nor any Andrews Declarations establish the
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`date that Exhibit 1043 was published or that it is a true and accurate copy as it
`
`existed at the time of publication. Consequently, Exhibit 1043 has not been
`
`properly authenticated and also is not relevant to any issue in this proceeding.
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`(F.R.E. 901, 402; 37 C.F.R. § 42.61).
`
`Throughout Petitioner’s Reply and prior Andrews Declarations, the Apache
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`website is variously cited as allegedly rebutting certain arguments presented by
`
`Patent Owner in its response. However, Petitioner’s Reply and the prior Andrews
`
`declarations improperly mischaracterize Patent Owner’s arguments and distort the
`
`issues raised by Patent Owner to justify a basis (which it otherwise could not) for
`
`filing its so-called “rebuttal” evidence. Patent Owner advanced no position that
`
`may form a proper basis for the late submission of Exhibit 1043. The new
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`evidence is both prejudicial and has no probative value to any issue properly raised
`
`in this proceeding. (F.R.E. 402, 403; 37 C.F.R. § 42.61). Rather, Exhibit 1043 is
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`used by Petitioner to present new theories and invalidity arguments in an effort 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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`CLI-2147741v1
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`7
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`Exhibit 1043 is either inapposite or should have been submitted when the petition
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`Case CBM2012-00003
`Patent 8,140,358
`
`for this trial was filed, not after it began. (Id.)
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`Additionally, the statements contained in Exhibit 1043 are out of court
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`statements offered for the truth of the matter asserted and are objected to because
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`they constitute impermissible hearsay. (F.R.E. 801, 802).2 Nor has a showing
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`been made that a hearsay exception or exclusion applies.
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`Exhibit 1043, entitled “The Apache Software Foundation,” bears indicia that
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`it lacks credibility (e.g., that it does not indicate when it was begun and only
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`references an incorporation date of 1999 and indicates that it operates “The Apache
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`Way”). Therefore, the declaration, and testimony regarding Exhibit 1043 is
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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).
`
`V. OBJECTIONS TO EXHIBIT 1044 AND ANY REFERENCE
`TO/RELIANCE THEREON
`
`Patent Owner hereby objects to Exhibit 1044, Declaration of Jordan M.
`
`Rossen (“Rossen Second Declaration”), an attorney in the office of Petitioner’s
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`counsel, dated September 26, 2013.
`
`
`2 For example, in ¶ 2 of the Andrews Fourth Declaration, Andrews quotes
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`from Exhibit 1043.
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`CLI-2147741v1
`
`8
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`
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`Grounds for objection: 37 C.F.R. § 42.61 (Admissibility of Evidence),
`
`Case CBM2012-00003
`Patent 8,140,358
`
`
`
`F.R.E. 402 (Relevance), F.R.E. 403 (Excluding Relevant Evidence for Prejudice,
`
`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
`
`Not Qualified to Provide Expert Testimony), F.R.E. 602 (Lack of Personal
`
`Knowledge), F.R.E. 801, 802 (Impermissible Hearsay), 37 C.F.R. § 42.23(b)
`
`(Outside Scope of Response and Petition), and the Rossen Second Declaration is
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`unauthorized testimony.
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`Petitioner apparently presents the Rossen Second Declaration in an attempt
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`to verify the source, date and/or authenticity of Exhibit 1043. However, Rossen
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`simply claims that Exhibit 1043 is a true and correct copy of a “printout” that he
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`obtained on September 18, 2013. (Rossen Second Declaration, at ¶ 3). The
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`Rossen Second Declaration also fails to provide any relevant statement or personal
`
`knowledge regarding the original publication dates of Exhibit 1043 or that the
`
`statements in it are accurate. (F.R.E. 402, 602, 901; 37 C.F.R. § 42.61). He fails
`
`to establish any proper basis for concluding that Exhibit 1043 is a true and accurate
`
`copy as it existed at the time of publication. (F.R.E. 402, 901; 37 C.F.R. § 42.61).
`
`Therefore, the declaration and testimony regarding Exhibit 1043 are both
`
`prejudicial and irrelevant to any issue in this proceeding. (F.R.E. 402, 403; 37
`
`C.F.R. § 42.61).
`
`CLI-2147741v1
`
`9
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`
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`The Rossen Second Declaration is also unauthorized. None of the PTAB
`
`Case CBM2012-00003
`Patent 8,140,358
`
`
`
`rules or regulations authorizes filing a new declaration as to new exhibits in
`
`conjunction with a Petitioner Reply that do not arise from the submission of a
`
`substitute claim or is responsive to a Patent Owner’s claim amendments, especially
`
`in light of the prejudice to Patent Owner because there is no opportunity to respond
`
`to or rebut new declarations submitted at this stage. Furthermore, the Rossen
`
`Second Declaration seeks to verify the source of a document that is inadmissible
`
`supplemental evidence and not relevant to any issue of this proceeding. (F.R.E.
`
`402; 37 C.F.R. § 42.23(b); 37 C.F.R. § 42.61; 37 C.F.R. § 42.223; 37 C.F.R. 42,
`
`Office Patent Trial Practice Guide, part II, § I). Consequently, the Rossen Second
`
`Declaration is irrelevant, outside the scope of Patent Owner’s Response, and
`
`constitutes impermissible supplemental evidence. (Id.)
`
`All the statements contained in the Rossen Second 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 Rossen Second Declaration
`
`refers to out of court statements offered for the truth of the matter asserted therein,
`
`and they also constitute impermissible hearsay. (Id.) Nor has a showing been
`
`made that a hearsay exception or exclusion applies.
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`VI. CONCLUSION
`For at least these reasons, the Patent Owner objects to Exhibits 1042-1044.
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`CLI-2147741v1
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`10
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`Case CBM2012-00003
`Patent 8,140,358
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`October 3, 2013
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`By:
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`Respectfully submitted,
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`JONES DAY
`
`/s/Calvin P. Griffith
`Calvin P. Griffith
`Registration No. 34,831
`JONES DAY
`901 Lakeside Avenue
`Cleveland, Ohio 44114-1190
`(216) 586-3939
`
`Attorney For Patent Owner
`Progressive Casualty Insurance Co.
`
`CLI-2147741v1
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`11
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`
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`CERTIFICATE OF SERVICE
`
`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 October 3, 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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`
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`
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`/s/ John V. Biernacki
`John V. Biernacki
`Registration No. 40,511
`JONES DAY
`901 Lakeside Avenue
`Cleveland, Ohio 44114-1190
`
`Attorney For Patent Owner
`Progressive Casualty Insurance Co.
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`
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`
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