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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 CBM2013-00009
`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-2135848
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`
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`The undersigned, on behalf of Patent Owner Progressive Casualty Insurance
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`Case CBM2013-00009
`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 (77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012)).
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`August 23, 2013
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`By:
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`Respectfully submitted,
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`JONES DAY
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`/s/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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`CLI-2135848
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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 CBM2013-00009
`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-2135848
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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 CBM2013-00009
`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 Exhibits 1027, 1028, 1029, 1030, 1031, 1032, 1033, 1034,
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`1035, 1036, 1037, 1038, and 1039 submitted with Liberty Mutual Insurance Co.’s
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`(“Liberty” or “Petitioner”) Reply to Patent Owner’s Response (“Reply”). See
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`CBM2013-00009, Paper No. 27 (and exhibits thereto). Pursuant to 37 C.F.R. §
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`42.62, Patent Owner’s objections below apply the Federal Rules of Evidence
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`(“F.R.E.”).
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`I.
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`OBJECTIONS TO EXHIBIT 1027 AND ANY REFERENCE
`TO/RELIANCE THEREON
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`Patent Owner hereby objects to Exhibit 1027, 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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`CLI-2135848
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`1
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`
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`Petitioner cites the Andrews Rebuttal Declaration as allegedly rebutting
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`Case CBM2013-00009
`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); 37 C.F.R. § 42.223; 37 C.F.R. § 42,
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`Office Patent Trial Practice Guide, part II, § I (77 Fed. Reg. 48,756, 48,767 (Aug.
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`14, 2012))). The statements in the Andrews Rebuttal Declaration have no relevant
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`bearing on any issue properly raised in this proceeding (F.R.E. 402, 403; 37 C.F.R.
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`§ 42.61). Rather, the Andrews Rebuttal Declaration is used by Petitioner to raise
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`new theories and invalidity arguments in an effort to make out a prima facie case
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`of unpatentability of the claims that could and should have been submitted with the
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`Petitioner’s petition.1 The contents of the Andrews Rebuttal Declaration and the
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`1 For example, Andrews argues in ¶ 9 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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`CLI-2135848
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`2
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`newly produced exhibits referenced therein are inapposite and should have been
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`Case CBM2013-00009
`Patent 8,140,358
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`submitted when the petition was filed, not after the institution of this trial. (F.R.E.
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`403; 37 C.F.R. § 42.65; 37 C.F.R. § 42.223; 37 C.F.R. § 42, Office Patent Trial
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`Practice Guide, part II, § I).
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`Further, Andrews’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). Liberty’s attempt to now offer this
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`testimony in the Andrews Rebuttal Declaration is not rebuttal evidence.2 And by
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`submitting the Andrews Rebuttal Declaration with its Reply, Liberty has prevented
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`(continued…)
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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. As another example, Andrews further opines in his Rebuttal Report as to
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`Geostar 10-K (Exhibit 1005) and RDSS (Exhibit 1004), even though Liberty used
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`these references as part of its prima facie case of unpatentability of the claims, and
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`Andrews’ opinions in his Rebuttal Report could and should have been submitted
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`with the Petitioner’s petition.
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`2 See, e.g., supra at 2-3 n.1.
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`CLI-2135848
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`3
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`Patent Owner from deposing Andrews as to the new theories and statements in his
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`Case CBM2013-00009
`Patent 8,140,358
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`Rebuttal 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 the
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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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`Petitioner apparently presents the Andrews Rebuttal Declaration, and
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`specifically ¶ 6, footnote 3, and ¶ 29, in an attempt to verify the source, dates and
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`authenticity of Exhibits 1028 and 1030. However, the Andrews Rebuttal
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`Declaration only establishes that Andrews obtained Exhibits 1028 and 1030 via the
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`Internet. Andrews fails to provide any relevant statement or personal knowledge
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`regarding the original publication date of the materials submitted as Exhibits 1028
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`and 1030 or whether Exhibit 1030 had been superseded or amended (F.R.E. 402,
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`602; 37 C.F.R. § 42.61); and he fails to establish any proper basis for concluding
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`that Exhibits 1028 and 1030 are true and accurate copies as they existed at the time
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`of publication, to the extent they were published prior to when Andrews purports
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`CLI-2135848
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`4
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`to have downloaded them (F.R.E. 901). Therefore, the declaration, and testimony
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`Case CBM2013-00009
`Patent 8,140,358
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`regarding Exhibits 1028 and 1030, are both prejudicial and irrelevant to any issue
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`in this proceeding. (F.R.E. 402; 37 C.F.R. § 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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`802).3 Nor has a showing been made that a hearsay exception or exclusion 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 and
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`never designed any fuzzy logic systems. (F.R.E. 702). The Andrews Rebuttal
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`Declaration also fails to provide sufficient underlying facts or data upon which the
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`3 For example, in ¶ 6, Andrews quotes from Exhibit 1029; and in ¶ 29,
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`Andrews refers to text from Exhibit 1030. As a further example, in ¶ 6, Andrews
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`refers to information that he purportedly learned in “interviewing” engineers.
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`CLI-2135848
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`5
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`statements contained therein could legitimately be based.4 (F.R.E. 702; C.F.R. §
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`Case CBM2013-00009
`Patent 8,140,358
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`42.61; 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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`Petitioner would be misleading and unfairly prejudicial to Patent Owner. (F.R.E.
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`403).
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`II. OBJECTIONS TO EXHIBITS 1028-1030 AND 1032-1039 AND ANY
`REFERENCE TO/RELIANCE THEREON
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`Patent Owner hereby objects to Exhibits 1028-1030 and 1032-1039 (“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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`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-2135848
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`6
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`Confusion, Waste of Time, or Other Reasons), F.R.E. 901 (Authentication), 37
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`Case CBM2013-00009
`Patent 8,140,358
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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 above and below, neither the Rossen Declaration nor the
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`Rebuttal Declarations of Andrews and O’Neil establish the date that any of
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`Exhibits 1028-1030 and 1032-1038 were published or that they are true and
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`accurate copies as they existed at the time of publication. As explained below, the
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`Rossen Declaration claims incorrectly that Rossen downloaded copies of Exhibits
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`1034-1039 on August 26, 2013. Consequently, Exhibits 1028-1030 and 1032-1038
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`have not been properly authenticated and also are not relevant to any issue in this
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`proceeding. (F.R.E. 901, 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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`distort the issues raised by Patent Owner to justify a basis (which it otherwise
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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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`CLI-2135848
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`7
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`issue properly raised in this proceeding. (F.R.E. 402, 403; 37 C.F.R. § 42.61).
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`Case CBM2013-00009
`Patent 8,140,358
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`Rather, the Supplemental Exhibits are used by Petitioner to present new theories
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`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
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`C.F.R. § 42, Office Patent Trial Practice Guide, part II, § I). The Supplemental
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`Exhibits are either inapposite or should have been submitted when the petition for
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`this trial was filed, not after it began. (F.R.E. 403; 37 C.F.R. § 42.23(b); 37 C.F.R.
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`§ 42.223; 37 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 ¶ 6 of the Andrews Rebuttal Declaration, Andrews quotes
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`from Exhibit 1029; and in ¶ 29, Andrews refers to text from Exhibit 1030. As a
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`further example, in ¶ 9 of the O’Neil Rebuttal Declaration, O’Neil refers to text
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`from Exhibit 1032; in ¶¶ 17-18, O’Neil quotes and excerpts from Exhibit 1033; in
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`¶ 35, O’Neil refers to text from Exhibit 1034; in ¶¶ 35 and 42, O’Neil quotes from
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`Exhibit 1035; and in ¶ 35, O’Neil refers to text from Exhibits 1036-1038.
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`CLI-2135848
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`8
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`Exhibits 1029 and 1034 are only excerpts. See Rossen Declaration at ¶ 3
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`Case CBM2013-00009
`Patent 8,140,358
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`(“Chapters 1 and 2 of a book”) and ¶ 4 (“Chapter One”). Liberty has failed to
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`include complete copies. (F.R.E. 106).
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`III. OBJECTIONS TO EXHIBIT 1031 AND ANY REFERENCE
`TO/RELIANCE THEREON
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`Patent Owner hereby objects to Exhibit 1031, Rebuttal Declaration of Mary
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`L. O’Neil, dated August 16, 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. 602 (Lack of Personal Knowledge), F.R.E. 702,
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`703, 705 (Witness Not Qualified to Provide Expert Testimony), 37 C.F.R. § 42.65
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`(Failure to Disclose Underlying Facts or Data), F.R.E. 801, 802 (Impermissible
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`Hearsay), 37 C.F.R. §42.23(b) (Outside Scope of Response and Petition), and the
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`O’Neil Rebuttal Declaration is unauthorized testimony.
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`Petitioner cites the O’Neil Rebuttal Declaration as allegedly rebutting certain
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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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`CLI-2135848
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`9
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`basis for the belated submission of new declarations (37 C.F.R. § 42.23(b); 37
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`Case CBM2013-00009
`Patent 8,140,358
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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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`The statements in the O’Neil Rebuttal Declaration have no relevant bearing on any
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`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 raise new theories
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`and invalidity arguments in an effort to make out a prima facie case of
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`unpatentability of the claims, including disclosure by Kosaka (Exhibit 1003)6 and
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`as to insurance premiums, 7 that could and should have been submitted with the
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`6 Liberty argued as part of its prima facie invalidity case in its Petition that
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`the claims were rendered obvious by RDSS (Exhibit 1004) in view of Kosaka and
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`other references. (See, e.g., Petition at 16-74.) However, O’Neil offered no
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`declaration in support of Liberty’s Petition. Yet she now opines as to Kosaka in
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`her Rebuttal Declaration at ¶¶ 36-43, 46-49, and 54-57, even though these opinions
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`could and should have been offered at the time of filing the Petition and are not
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`properly considered rebuttal evidence.
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`7 Liberty argued as part of its prima facie invalidity case in its Petition as to
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`the disclosure of insurance premiums. (See, e.g., Petition at 18, 20-27, 30, 38, 40,
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`42, 43, and 73-75.) However, O’Neil offered no declaration in support of Liberty’s
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`Petition. Yet she now opines in ¶¶ 17 to 33 of her Rebuttal Declaration as to
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`CLI-2135848
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`10
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`Petitioner’s petition for review. The contents of the O’Neil Rebuttal Declaration
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`Case CBM2013-00009
`Patent 8,140,358
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`are either inapposite or should have been submitted when the Petition was filed,
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`not after the institution of this trial. (F.R.E. 403; 37 C.F.R. § 42.223; 37 C.F.R.
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`§ 42, Office Patent Trial Practice Guide, part II, § 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). Liberty’s attempt to now offer this
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`testimony in the O’Neil Rebuttal Declaration is not rebuttal evidence.8 And by
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`submitting the O’Neil Rebuttal Declaration with its Reply, Liberty has prevented
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`Patent Owner from deposing O’Neil as to the new theories and statements in her
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`Rebuttal 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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`
`(continued…)
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`actuarial classes and insurance premiums, even though these opinions could and
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`should have been offered at the time of filing the Petition and are not properly
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`considered rebuttal evidence.
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`8 See, e.g., supra at 10 n.6 and 10-11 n.7.
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`CLI-2135848
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`11
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`substitute claim or is responsive to a Patent Owner’s claim amendments.
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`Case CBM2013-00009
`Patent 8,140,358
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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.
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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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`Petitioner apparently presents the O’Neil Rebuttal Declaration, and
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`specifically ¶ 17, footnote 1, in an attempt to verify the source, dates and
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`authenticity of Exhibit 1033. However, the O’Neil Rebuttal Declaration only
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`establishes that O’Neil obtained Exhibit 1033 via the Internet. O’Neil does not
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`identify the date on which it was obtained; she also fails to provide any relevant
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`statement or personal knowledge regarding the original publication date of the
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`materials submitted as Exhibit 1033 (F.R.E. 402, 602; 37 C.F.R. § 42.61); and she
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`fails to provide any proper basis for concluding that the document is a true and
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`accurate copy as it existed at the time of publication, to the extent it was published
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`prior to the unspecified date O’Neil obtained it (F.R.E. 901). Therefore, the
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`declaration, and testimony regarding Exhibit 1033, is both prejudicial and
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`irrelevant to any issue in this proceeding. (F.R.E. 402; 37 C.F.R. § 42.61; F.R.E.
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`403).
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`Furthermore, the O’Neil Rebuttal Declaration seeks to verify the source of
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`Exhibit 1033 even though it is inadmissible supplemental evidence and not
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`CLI-2135848
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`12
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`relevant to any issue of this proceeding. (F.R.E. 402; 37 C.F.R. § 42.61; 37 C.F.R.
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`Case CBM2013-00009
`Patent 8,140,358
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`§ 42.23(b); 37 C.F.R. § 42, Office Patent Trial Practice Guide, part II, § I).
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`Consequently, the O’Neil Rebuttal 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
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`Practice Guide, part II, § I).
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`All the statements contained in the O’Neil 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 O’Neil 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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`802).9 Nor has a 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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`9 For example, in ¶ 9, O’Neil refers to Exhibit 1032 as to “all the matters in
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`which [she] was involved, including [her] testimonial experience”; in ¶¶ 17-18,
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`O’Neil quotes and excerpts from Exhibit 1033; in ¶ 35, O’Neil refers to text from
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`Exhibit 1034; in ¶¶ 35 and 42, O’Neil quotes from Exhibit 1035; and in ¶ 35,
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`O’Neil refers to text from Exhibits 1036-1038.
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`CLI-2135848
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`13
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`specialized knowledge [to] help the trier of fact to understand the evidence or to
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`Case CBM2013-00009
`Patent 8,140,358
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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.
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`(F.R.E. 702.) The O’Neil Rebuttal Declaration also fails to provide sufficient
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`underlying facts or data upon which the statements contained therein could
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`legitimately be based. (F.R.E. 702; C.F.R. § 42.61; C.F.R. § 42.65; see also F.R.E.
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`402, 703, 705). Accordingly, permitting any reliance on this purported expert
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`testimony in the Reply or other submissions of Petitioner would be misleading and
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`unfairly prejudicial to Patent Owner. (F.R.E. 403).
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`IV. OBJECTIONS TO EXHIBIT 1040 AND ANY REFERENCE
`TO/RELIANCE THEREON
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`Patent Owner hereby objects to Exhibit 1040, 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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`(Outside Scope of Response and Petition), and the Rossen Declaration is
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`unauthorized testimony.
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`CLI-2135848
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`14
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`The Rossen Declaration is not cited in Petitioner’s Reply. Petitioner
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`Case CBM2013-00009
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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 1029 and 1034-1039. However, for Exhibits 1034-
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`1039, Rossen claims incorrectly that he downloaded copies of each of them on
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`August 26, 2013. This is impossible because Rossen signed the Declaration – and
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`Patent Owner was served with a copy of the Declaration and Exhibits 1034-1039 –
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`a week and a half prior to August 26, 2013. Moreover, the Rossen Declaration
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`only establishes that Rossen obtained Exhibits 1029 and 1034-1039 from various
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`sources via the Internet and library and that he added page numbers and exhibit
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`labels to them. Rossen does not identify the date on which he obtained Exhibit
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`1029; he also fails to provide any relevant statement or personal knowledge
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`regarding the original publication date of the materials submitted as Exhibits 1029
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`and 1034-1038. (F.R.E. 402, 602, 901; 37 C.F.R. § 42.61). He fails to establish
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`any proper basis for concluding that the documents are true and accurate copies as
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`they existed at the time of publication, to the extent they were published prior to
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`the unspecified date that Rossen obtained them, or that they qualify as prior art.
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`(F.R.E. 402, 901; 37 C.F.R. § 42.61). Therefore, the declaration, and testimony
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`regarding the exhibits, are both prejudicial and irrelevant to any issue in this
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`proceeding. (F.R.E. 402, 403; 37 C.F.R. § 42.61).
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`CLI-2135848
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`15
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`The Rossen Declaration is also unauthorized. None of the PTAB rules or
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`Case CBM2013-00009
`Patent 8,140,358
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`
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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 Rossen
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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); 37 C.F.R. § 42.61; 37 C.F.R. § 42.223; 37 C.F.R. § 42,
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`Office Patent Trial Practice Guide, part II, § I). Consequently, the Rossen
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`Declaration is irrelevant, outside the scope of Patent Owner’s Response, and
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`constitutes impermissible supplemental evidence. (F.R.E. 402; 37 C.F.R.
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`§ 42.23(b); 37 C.F.R. § 42.61; 37 C.F.R. § 42.223; 37 C.F.R. § 42, Office Patent
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`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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`impermissible hearsay. (F.R.E. 801, 802). Further, the Rossen Declaration refers
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`to out of court statements offered for the truth of the matter asserted therein, and
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`CLI-2135848
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`16
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`they also constitute impermissible hearsay. (F.R.E. 801, 802).10 Nor has a
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`Case CBM2013-00009
`Patent 8,140,358
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`showing been 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 1027 through
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`1039 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 23, 2013
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`By:
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`Respectfully submitted,
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`JONES DAY
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`/s/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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`10 For example, in ¶¶ 6 and 8, Rossen indicates that he “[a]ppended”
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`printouts to the end of Exhibits 1036 and 1038 that “indicat[e] the date of
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`publication.”
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`CLI-2135848
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`17
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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 23, 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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