`Tel: 571-272-7822
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`Paper 61
`Entered: April 2, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.
`Petitioner
`
`v.
`
`SIGHTSOUND TECHNOLOGIES, LLC
`Patent Owner
`____________
`
`Case CBM2013-00020 (Patent 5,191,573)
`Case CBM2013-00023 (Patent 5,966,440)1
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`
`
`
`
`
`Before MICHAEL P. TIERNEY, JUSTIN T. ARBES, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
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`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`1 This Order addresses issues pertaining to both cases. Therefore, we
`exercise our discretion to issue one Order to be filed in each case. The
`parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`
`
`
`Case CBM2013-00020 (Patent 5,191,573)
`Case CBM2013-00023 (Patent 5,966,440)
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`
`
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`March 31, 2014 Conference Call
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`A conference call in the above proceedings was held on March 31,
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`2014, among respective counsel for Petitioner and Patent Owner, and Judges
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`Tierney, Arbes, and Braden.2 The following issues were discussed.
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`First, we advised the parties that their March 24, 2014 email request to
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`modify DUE DATES 4-6 in the Scheduling Orders in the instant
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`proceedings was granted, and a Revised Scheduling Order in each
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`proceeding would be entered. DUE DATE 7 (oral argument, scheduled for
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`May 6, 2014) will not be changed in the Revised Scheduling Orders.
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`Second, Patent Owner sought authorization to file a motion to strike
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`Petitioner’s reply and evidence filed in support of the reply in each
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`proceeding. Patent Owner argued that Petitioner’s replies contain improper
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`new argument that is not responsive to the arguments made in Patent
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`Owner’s responses. See 37 C.F.R. § 42.23(b) (a reply “may only respond to
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`arguments raised in the corresponding . . . patent owner response”); Rules of
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`Practice for Trials Before the Patent Trial and Appeal Board and Judicial
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`Review of Patent Trial and Appeal Board Decisions; Final Rule, 77 Fed.
`
`Reg. 48,612, 48,620 (Aug. 14, 2012) (“Oppositions and replies may rely
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`upon appropriate evidence to support the positions asserted. Reply
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`evidence, however, must be responsive and not merely new evidence that
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`could have been presented earlier to support the movant’s motion.”). As an
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`example, Patent Owner cited page 9 of Petitioner’s reply in Case
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`CBM2013-00020 (Paper 51), where Petitioner argued that “[d]uring
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`reexamination, a cited 1986 reference predicted the ability to purchase and
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`2 A court reporter, retained by Patent Owner, was present on the call. Patent
`Owner shall file the transcript of the call as an exhibit in each proceeding.
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`
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`2
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`
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`Case CBM2013-00020 (Patent 5,191,573)
`Case CBM2013-00023 (Patent 5,966,440)
`
`receive a digital album at home over phone lines.” Petitioner argued that its
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`
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`statements on pages 8-9 of the reply properly respond to Patent Owner’s
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`assertions regarding digital media and electronic sales, and a person of
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`ordinary skill in the art’s alleged knowledge of those features. We took the
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`matter under advisement.
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`After reviewing Patent Owner’s response and Petitioner’s reply in
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`each proceeding, we are not persuaded that a motion to strike is warranted
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`under the circumstances. As explained during the call, in the absence of
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`special circumstance, the Board will determine whether a reply and
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`supporting evidence contain material exceeding the proper scope when the
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`Board reviews all of the pertinent papers and prepares the final written
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`decision. The Board may exclude all or portions of Petitioner’s replies and
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`newly submitted evidence, or decline to consider any improper argument
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`and related evidence, at that time. Additional briefing on the issue is not
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`necessary.
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`Third, Patent Owner sought authorization to file a motion to strike
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`certain portions of the declarations of Lawrence Kenswil filed by Petitioner
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`with its reply in each proceeding. See CBM2013-00020, Ex. 4256;
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`CBM2013-00023, Ex. 4414. Patent Owner argued that the declarations
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`contain improper attorney argument. We advised the parties that their
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`papers (petition, response, and reply) must set forth fully the parties’
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`positions, and may not incorporate by reference any arguments made in
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`other papers. See 37 C.F.R. § 42.6(a)(3). The Board will determine what
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`arguments are made or not made when it reviews the entire record at the end
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`of the proceedings, and no additional briefing on the matter is necessary.
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`3
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`
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`Case CBM2013-00020 (Patent 5,191,573)
`Case CBM2013-00023 (Patent 5,966,440)
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`
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`Fourth, we addressed an issue regarding the parties’ pending joint
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`motion to seal in each proceeding. See CBM2013-00020, Paper 54;
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`CBM2013-00023, Paper 48. Specifically, the parties were reminded that
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`there is a strong public policy in favor of making information filed in a
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`covered business method patent review open to the public, especially
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`because the proceeding determines the patentability of claims in an issued
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`patent and, therefore, affects the rights of the public. See Office Patent Trial
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`Practice Guide, 77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012). The default
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`rule is that all papers filed in a covered business method patent review are
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`open and available for access by the public; only “confidential information”
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`may be protected from disclosure upon a showing of good cause. See
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`35 U.S.C. §§ 326(a)(1), 326(a)(7); 37 C.F.R. §§ 42.14, 42.54(a). In these
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`proceedings, for example, the public has a strong interest in knowing what
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`evidence Patent Owner is relying on to prove secondary considerations of
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`nonobviousness, and what evidence Petitioner is relying on to counter those
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`assertions. The parties are referred to Garmin Int’l, Inc. v. Cuozzo Speed
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`Techs. LLC, IPR2012-00001, Paper 37 (Apr. 5, 2013), and St. Jude Med.,
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`Cardiology Div., Inc. v. Volcano Corp., IPR2013-00258, Paper 28 (Aug. 12,
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`2013), for guidance on motions to seal in similar circumstances.
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`During the call, we encouraged the parties to submit redacted
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`documents that contain the information necessary for the parties to make
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`their arguments, such that the Board could refer to those materials in its final
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`written decisions if necessary, rather than making the documents available to
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`the public in their entirety. Should the parties determine that they are able to
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`do so, the parties should notify the Board as soon as possible. The joint
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`motions to seal will be decided in a forthcoming decision.
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`4
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`
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`Case CBM2013-00020 (Patent 5,191,573)
`Case CBM2013-00023 (Patent 5,966,440)
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`
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`Fifth, Patent Owner argued that Petitioner should be required to
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`produce the infringement expert report of J. Douglas Tygar from the related
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`litigation between the parties as routine discovery because the report
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`contains “relevant information that is inconsistent with a position advanced
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`by” Petitioner pursuant to 37 C.F.R. § 42.51(b)(1)(iii). According to Patent
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`Owner, the report asserts that Petitioner practices the claimed inventions,
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`which is contrary to Petitioner’s argument in its replies that Petitioner’s
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`system is not coextensive with the claims. Petitioner responded that the
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`report is not inconsistent because the issue of infringement is different from
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`the issue of whether the system and claims are coextensive, and producing
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`the report would create confidentiality issues due to the highly confidential
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`source code cited in the report. See CBM2013-00020, Paper 40;
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`CBM2013-00023, Paper 36 (denying Patent Owner’s motion for additional
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`discovery of the report).
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`As explained during the call, the parties should continue their
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`discussions on the issue and attempt to reach a resolution. For instance, the
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`parties should determine whether it would be feasible to produce a redacted
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`version of the report, containing only the portions directed to the claim
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`limitations argued by Petitioner in its replies. If the parties are unable to
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`resolve the issue, they may request another conference call. Further, to the
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`extent the parties believe additional protections are necessary beyond those
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`provided for in the default protective order, the parties may file another
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`motion to seal with a proposed protective order.
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`5
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`
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`Case CBM2013-00020 (Patent 5,191,573)
`Case CBM2013-00023 (Patent 5,966,440)
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`
`
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`Motions to File Corrected Exhibits
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`In Case CBM2013-00020, Patent Owner filed a motion (Paper 50)
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`seeking authorization to file corrected versions of Exhibits 2110, 2117,
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`2125, 2147, and 2153, the original versions of which contain “small portions
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`of illegible and omitted text.” In Case CBM2013-00023, Patent Owner filed
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`a similar motion (Paper 47) regarding Exhibits 2310, 2317, and 2347.
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`Petitioner does not oppose the motions. Patent Owner’s motions will be
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`granted and Patent Owner may file the corrected versions.
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`In Case CBM2013-00020, Petitioner filed a motion (Paper 62)
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`seeking authorization to file corrected versions of Exhibits 4255 and 4258,
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`which were numbered incorrectly. Petitioner filed replacement versions of
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`the exhibits with its motion, and Patent Owner does not oppose the motion.
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`Petitioner’s motion will be granted as well.
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`
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`Supplemental Evidence
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`Patent Owner filed, in addition to serving, the following exhibits as
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`supplemental evidence in the instant proceedings:
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`Case
`
`Date Filed
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`Exhibits
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`CBM2013-00020
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`January 24, 2014
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`2154-2162
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`CBM2013-00020
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`February 18, 2014
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`2163-2169
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`CBM2013-00023
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`January 24, 2014
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`2354-2363
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`CBM2013-00023
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`February 18, 2014
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`2364-2370
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`Pursuant to 37 C.F.R. § 42.64(b)(2), “[t]he party relying on evidence to
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`which an objection is timely served may respond to the objection by serving
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`supplemental evidence within ten business days of service of the objection”
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`(emphasis added). The exhibits filed as supplemental evidence will be
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`6
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`
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`Case CBM2013-00020 (Patent 5,191,573)
`Case CBM2013-00023 (Patent 5,966,440)
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`expunged. To the extent the parties are unable to resolve their objections to
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`
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`evidence in this proceeding, either party may file a motion to exclude by
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`DUE DATE 4 in the Scheduling Order, and the opposing party may cite in
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`its opposition any supplemental evidence it served in response to the
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`objection. See 37 C.F.R. § 42.64(c).
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`
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`In consideration of the foregoing, it is hereby:
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`ORDERED that Patent Owner’s motion to file corrected exhibits in
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`Case CBM2013-00020 (Paper 50) is granted. Patent Owner shall file
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`corrected versions of Exhibits 2110, 2117, 2125, 2147, and 2153 by April 7,
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`2014, after which the original versions will be expunged;
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`FURTHER ORDERED that Patent Owner’s motion to file corrected
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`exhibits in Case CBM2013-00023 (Paper 47) is granted. Patent Owner shall
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`file corrected versions of Exhibits 2310, 2317, and 2347 by April 7, 2014,
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`after which the original versions will be expunged;
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`FURTHER ORDERED that Petitioner’s motion to file corrected
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`exhibits in Case CBM2013-00020 (Paper 62) is granted. The versions of
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`Exhibits 4255 and 4258 in Case CBM2013-00020 filed on April 1, 2014 are
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`entered, and the versions filed on March 21, 2014 are expunged from the
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`record of the proceeding; and
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`FURTHERED ORDERED that Exhibits 2154-2169 in Case
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`CBM2013-00020, and Exhibits 2354-2370 in Case CBM2013-00023, are
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`expunged from the record of the respective proceeding.
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`7
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`Case CBM2013-00020 (Patent 5,191,573)
`Case CBM2013-00023 (Patent 5,966,440)
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`PETITIONER:
`
`J. Steven Baughman
`Ching-Lee Fukuda
`ROPES & GRAY LLP
`steven.baughman@ropesgray.com
`ching-lee.fukuda@ropesgray.com
`
`
`
`PATENT OWNER:
`
`David R. Marsh
`Kristan L. Lansbery
`ARNOLD & PORTER LLP
`david.marsh@aporter.com
`kristan.lansbery@aporter.com
`
`
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`8