Filed on behalf of:
`
`Patent Owner SightSound Technologies, LLC
`
`By: David R. Marsh, Ph.D.
`Kristan L. Lansbery, Ph.D.
`ARNOLD & PORTER LLP
`555 12th Street, N.W.
`Washington, DC 20004
`Tel: (202) 942-5068
`Fax: (202) 942-5999
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`APPLE INC.,
`
`Petitioner,
`
`v.
`
`
`
`SIGHTSOUND TECHNOLOGIES, LLC,
`
`Patent Owner.
`_______________
`
`Case CBM2013-00023
`Patent 5,966,440
`
`_______________
`
`PATENT OWNER SIGHTSOUND TECHNOLOGIES, LLC’S MOTION TO
`EXCLUDE EVIDENCE PURSUANT TO 37 C.F.R. § 42.64(c)
`
`
`
`
`
`
`
`Patent Owner SightSound Technologies, LLC
`
`By: David R. Marsh, Ph.D.
`Kristan L. Lansbery, Ph.D.
`ARNOLD & PORTER LLP
`555 12th Street, N.W.
`Washington, DC 20004
`Tel: (202) 942-5068
`Fax: (202) 942-5999
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`APPLE INC.,
`
`Petitioner,
`
`v.
`
`
`
`SIGHTSOUND TECHNOLOGIES, LLC,
`
`Patent Owner.
`_______________
`
`Case CBM2013-00023
`Patent 5,966,440
`
`_______________
`
`PATENT OWNER SIGHTSOUND TECHNOLOGIES, LLC’S MOTION TO
`EXCLUDE EVIDENCE PURSUANT TO 37 C.F.R. § 42.64(c)
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`INTRODUCTION ........................................................................................... 1
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`II.
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`RELEVANT PROCEDURAL HISTORY ...................................................... 1
`
`III. ARGUMENT ................................................................................................... 1
`
`A.
`
`Exhibit 4413 (Declaration of Jeffrey Robbin) ...................................... 1
`
`B.
`
`C.
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`Exhibit 4416 (Declaration of Tom Weyer) ........................................... 3
`
`Exhibits 4410-4411 (U.S. Patent Nos. 4,567,359 and RE32,115) ........ 4
`
`D.
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`Exhibit 4414 (Declaration of Lawrence Kenswil) ................................ 5
`
`E.
`
`F.
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`Exhibit 4420 (Second Declaration of Dr. John P.J. Kelly) .................11
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`Exhibits 4421-4459 (Various U.S. Patents) ........................................15
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`IV. CONCLUSION ..............................................................................................15
`
`
`
`-i-
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`Pursuant to 37 C.F.R. § 42.64(c), Patent Owner SightSound Technologies,
`
`LLC (“Patent Owner”) hereby moves to exclude certain materials relied upon by
`
`Petitioner Apple Inc. (“Petitioner”) in support of its Reply, as set forth herein.1
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`II. RELEVANT PROCEDURAL HISTORY
`
`With its Reply filed on March 21, 2014, Petitioner submitted and relied upon
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`111 new exhibits, including five new fact and expert declarations. On March 28,
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`2014, Patent Owner timely served evidentiary objections to such materials. See
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`Ex. 2372. Pursuant to these objections, the Federal Rules of Evidence (“F.R.E.”)
`
`and 37 C.F.R. §§ 42.61, 42.62, and 42.65, Patent Owner now moves to exclude
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`certain materials.
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`III. ARGUMENT
`
`A. Exhibit 4413 (Declaration of Jeffrey Robbin)2
`
`
`1 This motion focuses on materials relied on in Petitioner’s Reply, as the Board
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`disregards materials or portions thereof not expressly stated in Petitioner’s papers.
`
`See ORDER - Conduct of the Proceedings, April 2, 2014, Paper 61, at 3 (citing 37
`
`C.F.R. § 42.6(a)(3)).
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`2 Mr. Robbin’s deposition transcript was not available as of the time of filing
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`Patent Owner’s Motion to Exclude. Citations will be provided at a later date.
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`
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`-1-
`
`
`
`
`
`Petitioner asserts, through the declaration of its employee Jeffrey Robbin,
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`that the idea to sell music and video files over computer networks was “prevalent
`
`in the industry since the mid-1980s.” Ex. 4413 ¶ 9. As Mr. Robbin shows no
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`personal knowledge in support of this conclusory statement, it is inadmissible. See
`
`F.R.E. 601-602. Mr. Robbin started at Apple Inc. as an intern in 1992 (id. ¶ 3) and
`
`provides no support for a “fact” from the mid-1980s, a time when he admitted at
`
`deposition that he was still in high school and thus had no experience in the
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`“industry.” Mr. Robbin’s views of what was “prevalent” in this industry at the
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`time are irrelevant and should be excluded.3
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`Petitioner also cites Mr. Robbin’s declaration for the contention that the
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`iTunes Music Store (“ITMS”) “embodies lots of inventions, many the subject of
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`Apple’s own patents.” Reply at 10 (citing Ex. 4413 ¶ 7; Exs. 4421-4459). Mr.
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`Robbin provides no facts or data to substantiate this assertion, particularly that
`
`ITMS “embodies” dozens of patents. Mr. Robbin only lists the patents and their
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`general subject matter, without any discussion of their claims, nor charts relating
`
`
`3 This is also an example of Petitioner’s untimely attempt to supplement the record
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`on obviousness, an issue Patent Owner has separately raised with the Board. See
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`Ex. 2371 at 7-16; ORDER - Conduct of the Proceedings, April 2, 2014, Paper 61,
`
`at 2-3.
`
`
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`-2-
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`
`
`
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`the claims to any technical aspects of ITMS. Mr. Robbin does not explain what
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`knowledge or expertise—if any—he has to give opinions about whether Petitioner
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`practices its own patents. Whether deemed lay or expert testimony, his discussion
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`of Petitioner’s patents should be excluded. See F.R.E. 602 (percipient testimony
`
`must reflect personal knowledge), 701-702, 703-705; 37 C.F.R. § 42.65(a)
`
`(“Expert testimony that does not disclose the underlying facts or data on which the
`
`opinion is based is entitled to little or no weight.”). Mr. Robbin’s opinions
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`concerning Petitioner’s patents should be excluded for the independent reason that
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`neither Mr. Robbin nor any other affiant demonstrates personal knowledge of the
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`truth of the data cited in the dozens of patents Petitioner submits with its Reply.
`
`See 37 C.F.R. § 42.61(c) (“A specification or drawing of a United States patent
`
`application or patent is admissible as evidence only to prove what the specification
`
`or drawing describes. If there is data in the specification or a drawing upon which
`
`a party intends to rely to prove the truth of the data, an affidavit by an individual
`
`having first-hand knowledge of how the data was generated must be filed.”).
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`B.
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`Exhibit 4416 (Declaration of Tom Weyer)
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`Petitioner relies on the declaration of former Apple Inc. employee Tom
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`Weyer to assert that it did not use information obtained in a 1999 meeting with
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`Patent Owner. Reply at 15 (citing Ex. 4416 ¶¶ 5-9). Mr. Weyer recalls meeting
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`with a “SightSound entity” where he saw “some documents,” but does “not recall
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`
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`-3-
`
`
`
`
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`discussing any specific patents.” Ex. 4416 ¶¶ 4-6. Mr. Weyer then speculates: “If
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`we had been impressed with the technology offered by the company, Apple would
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`have followed up with additional meetings.” Id. ¶ 7. Mr. Weyer was “not
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`involved in the development of iTunes or [ITMS],” yet believes that “nothing from
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`the early 1999 meeting was communicated to anyone who was involved with the
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`development of iTunes or [ITMS].” Id. ¶ 9. Mr. Weyer admits that he lacks
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`relevant information or personal knowledge regarding what Petitioner did with
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`information provided before or during the 1999 meeting, and instead guesses about
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`what Petitioner “would have” done. At deposition, Mr. Weyer conceded that he
`
`would not have known whether the information was communicated internally or to
`
`whom. Ex. 2374 at 41:7-14. Mr. Weyer’s speculation is irrelevant and any
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`probative value that Petitioner believes it may have is substantially outweighed by
`
`prejudice to Patent Owner. See F.R.E. 402-03, 601-02. The testimony should be
`
`excluded.
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`C. Exhibits 4410-4411 (U.S. Patent Nos. 4,567,359 and RE32,115)
`
`Petitioner identifies two patents to argue that courts have found obviousness
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`“[i]n similar circumstances involving electronic payment.” Reply at 9 (citing Exs.
`
`4410-4411). Petitioner asserts that the patents are similar to claims at issue in this
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`proceeding, but offers no first-hand knowledge to substantiate data in Exhibit 4410
`
`or 4411, rendering these exhibits inadmissible. See 37 C.F.R. § 42.61(c).
`
`
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`-4-
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`
`
`
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`D. Exhibit 4414 (Declaration of Lawrence Kenswil)
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`Petitioner cites the Declaration of Lawrence Kenswil in an attempt to refute
`
`the secondary considerations of non-obviousness set forth in Patent Owner’s
`
`Response and supporting evidence. See Reply at 8-10, 12-14. Mr. Kenswil’s
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`opinion on several issues should be excluded because he lacks the requisite
`
`expertise for his testimony and his declaration lacks “sufficient facts or data” to
`
`support his opinions. See F.R.E. 602-03, 702; Daubert v. Merrell Dow Pharm.,
`
`Inc., 509 U.S. 579, 592 n.10 (1993). Mr. Kenswil proffers opinions on:
`
`(a) Technology prior to 1988 and in the mid-1990s: Paragraphs 51- 80
`
`should be excluded because Mr. Kenswil opines on the state of the art before 1988
`
`and in the mid-1990s, namely what persons of ordinary skill “often discussed and
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`recognized” (see, e.g., Ex. 4414 ¶¶ 51-65), even though by his own admission Mr.
`
`Kenswil is not now and has never been a person of ordinary skill. Ex. 2375 at
`
`49:7-11. Mr. Kenswil offers wide-ranging opinions, often with no citations
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`whatsoever, on (1) bandwidth constraints and transmission time (id. ¶¶ 52, 54, 55,
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`57, 59-63); (2) storage of digital data and memory capacity, including the price of
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`hard drives (id. ¶¶ 54, 57, 61-63); (3) compression and encryption, and the
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`purported superiority of Petitioner’s Fair Play technology (id. ¶¶ 56, 67, 70-71,
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`80); (4) the prevalence of personal computers and telecommunications lines
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`
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`-5-
`
`
`
`
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`capable of data transfer in private homes (id. ¶ 57); and (5) technical problems
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`solved or not solved by the patents (id. ¶¶ 56, 58).
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`Mr. Kenswil holds degrees in theater, communications, and law. Prior to
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`1998, his only professional experience was as a “litigation associate” and “business
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`and legal affairs attorney” for a record company. Id. ¶¶ 6-7.4 He has never been a
`
`person of ordinary skill in the art with respect to the issues relevant to the ‘440
`
`Patent and admitted as much in his deposition. Ex. 2375 at 49:7-11. Mr. Kenswil
`
`lacks the necessary “scientific, technical, or other specialized knowledge [to] help
`
`the trier of fact to understand the evidence or to determine a fact in issue” on these
`
`subjects, and thus his opinions fail to meet the requirements of F.R.E. 702. See
`
`Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356 (Fed. Cir. 2008)
`
`(“[W]here an issue calls for consideration of evidence from the perspective of one
`
`of ordinary skill in the art, it is contradictory to Rule 702 to allow a witness to
`
`testify on the issue who is not qualified as a technical expert in that art.”).
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`(b) Reasons for the commercial success of ITMS: Mr. Kenswil also opines
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`as to reasons for the success of ITMS, asserting that the commercial success of
`
`ITMS is attributable to various factors and features in ITMS other than the claimed
`
`
`4 While Mr. Kenswil’s declaration refers to an attached CV as Exhibit A, no
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`Exhibit A appears to have been submitted.
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`
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`-6-
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`
`
`
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`invention. Reply at 10 (citing Ex. 4414 ¶ 94), 12 (citing Ex. 4414 ¶¶ 32-50), 13
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`(citing Ex. 4414 ¶¶ 66-87, 92-93, 98), 14 (citing Ex. 4414 ¶¶ 51-65). Once again,
`
`Mr. Kenswil lacks the requisite expertise to offer these opinions and thus
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`paragraphs 32-98 should be excluded.
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`Mr. Kenswil conceded at deposition that he is not an expert in advertising,
`
`marketing, sales, or patent law, and does not have expertise in analyzing patent
`
`claims and whether an invention embodies the claims. Ex. 2375 at 38:9-24, 43:8-
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`44:6, 47:16-23. He also admitted during deposition that, while he believes that he
`
`has “a lot of experience in the analysis of consumer behavior with regard to music
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`sales,” it is “not [his] specialty” and “[g]enerally when he needed knowledge about
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`that, [he] would refer to others in [his record company] to answer [his] questions.”
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`Id. at 37:9-20.
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`Moreover, many of Mr. Kenswil’s opinions are conclusory and lack
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`supporting evidence or data, in violation of F.R.E. 602, 702 and 37 C.F.R. § 42.65.
`
`“Once the patentee demonstrates a prima facie nexus, the burden of coming
`
`forward with evidence in rebuttal shifts to the challenger.” Crocs, Inc. v. ITC, 598
`
`F.3d 1294, 1311 (Fed. Cir. 2010). To rebut this presumption, Petitioner had the
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`burden to advance substantiated and verifiable evidence such as survey data—not
`
`merely personal opinion—to explain consumers’ purchasing decisions. See Lutron
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`Elec., Inc. v. Crestron Elec., Inc., No. 2:09-CV-00707, 2013 WL 4881570, at *9-
`
`
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`-7-
`
`
`
`
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`10 (D. Utah Sept. 12, 2013) (finding that experts were not qualified to testify about
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`nexus between patented features and products’ commercial success where
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`statements were based on “personal opinion” and beliefs about what led to success,
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`and not market surveys showing customer demand for the features or other
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`relevant expertise).5
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`Petitioner offers the opinions of a witness who has no knowledge of the best
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`source of evidence as to why customers choose to purchase content from ITMS:
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`Petitioner’s own internal data. Mr. Kenswil testified that he did not ask for any
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`internal surveys or other sales information that would no doubt inform the issue of
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`why consumers purchase content via ITMS. See, e.g., Ex. 2375 at 65:2-20. In lieu
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`of this, Mr. Kenswil offers rank speculation with little or no supporting facts or
`
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`5 Petitioner’s position is belied by statements in other proceedings that a rebuttal
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`witness may not opine on non-patented features of a product where the witness
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`lacks “expertise in marketing or consumer behavior” and hadn’t “done surveys
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`about why consumers” purchased the product. See Apple Inc. v. ITC, No. 2012-
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`1338, Doc. 55 (Reply Brief of Apple), at 14 (Fed. Cir. Nov. 15, 2012) (quotations
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`omitted); see also Ex. 2349 at 52-53 (Apple’s brief in same action conceding that
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`general evidence of “market forces” unrelated to inventiveness shows a nexus, and
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`opponents must overcome a very high burden to rebut the presumption of a nexus).
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`
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`-8-
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`
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`
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`data. See, e.g., Ex. 4414 ¶¶ 67 (no data for opinion that success of ITMS is due to
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`Petitioner’s “experience, its credibility, its established brand name . . . its user-
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`friendly features, the existing iPod and iTunes music management software”), 68
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`(no data for opinion that consumer demand for content has driven the success of
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`ITMS), 92-94 (no data for opinion that success of ITMS was driven by the
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`identified features).6 Elsewhere, Mr. Kenswil relies on hearsay. Specifically, he
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`relies upon out of court statements in Exhibits 4379, 4395-4396, 4398-4399, 4400-
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`4408, 4412, 4417-4418, and 4466 (see Ex. 4414 ¶¶ 32, 63, 65, 72-73, 85, 93), for
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`the truth of matters asserted therein, rendering his testimony and the associated
`
`exhibits inadmissible under F.R.E. 802. Petitioner should not be permitted to
`
`introduce a host of inadmissible evidence through an unqualified “expert” when
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`these are not the types of facts or data typically relied upon by experts to rebut a
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`showing of commercial success.
`
`
`6 At deposition, Mr. Kenswil revealed that his opinions about the reasons for the
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`success of ITMS were based upon conversations and documents never disclosed in
`
`the “materials considered” section of his declaration. Ex. 2375 at 66:13-18. 37
`
`C.F.R. § 42.65(a) makes clear, however, that any facts and data on which an
`
`opinion is based must be disclosed as part of the proffered testimony.
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`
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`-9-
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`
`
`
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`(c) Patent Owner’s and other companies’ business operations: Mr. Kenswil
`
`also offers opinions on Patent Owner’s business operations and the reasons for its
`
`purported failure. Ex. 4414, Section VI, ¶¶ 34-50, 77-79, 82-83. These opinions
`
`are not based upon established expertise, first-hand experience, or percipient
`
`knowledge, rendering them inadmissible under F.R.E. 602, 701-02, and 703-05.
`
`Among other things, Mr. Kenswil frequently cites to the deposition transcripts of
`
`Scott Sander and Arthur Hair in support of his opinions. However, he admitted at
`
`deposition that he did not actually read either deposition. Ex. 2375 at 45:7-14.
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`Mr. Kenswil also offers opinions regarding the failure of other digital download
`
`companies (Ex. 4414 ¶ 32), which are similarly unsupported by expertise or
`
`personal knowledge. The foregoing opinions rest upon inadmissible hearsay in
`
`violation of F.R.E. 802 and should be excluded.
`
`(d) Other improper testimony: Paragraphs 90-92 and 95-96 of Mr.
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`Kenswil’s declaration should also be excluded because—in an apparent attempt to
`
`skirt the page limits for Petitioner’s Reply—Mr. Kenswil recites testimony by
`
`Patent Owner’s expert without providing his own commentary or analysis. These
`
`paragraphs are thus irrelevant and inadmissible. F.R.E. 402-03, 702.
`
`Finally, Mr. Kenswil’s reliance on Exhibit 4306 (see Ex. 4414 ¶ 52 n.28)
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`and any related testimony should be excluded. At deposition, Petitioner’s
`
`counsel—exceeding the scope of cross-examination—sought to elicit testimony
`
`
`
`-10-
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`
`
`
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`from Mr. Kenswil on this basis about what “music companies were aware of . . .
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`from the mid-‘80s, 1980s forward.” Ex. 2375 at 162:16-164:16. Mr. Kenswil
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`admitted that he had no knowledge as to the source of the quotation, rendering it
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`inadmissible hearsay.7 Id. at 166:16-171:9.
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`E.
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`Exhibit 4420 (Second Declaration of Dr. John P.J. Kelly)
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`(a) Dr. Kelly gives conclusory and unsupported opinions concerning ITMS:
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`Petitioner cites the Second Declaration of Dr. John P.J. Kelly to claim that ITMS
`
`“embodies a large number of inventions, many the subject of [Petitioner’s] own
`
`patents.” Reply at 10 (citing Ex. 4420 ¶¶ 67-82; Exs. 4421-4459). Petitioner has
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`not shown that dozens of unrelated patents or the inventions they purportedly
`
`protect are relevant to this proceeding, nor that Petitioner in fact practices these
`
`inventions. Dr. Kelly discloses no facts, data, or analysis, and most significantly
`
`provides no claims charts or comparison of the patent claims with the technical
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`aspects of ITMS, making his opinions unverifiable and inadmissible. See F.R.E.
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`702; 37 C.F.R. § 42.65(a); see also supra Part III.A. Dr. Kelly admitted that he
`
`
`7 Mr. Kenswil’s admission only confirms that large portions of his declaration
`
`serve Petitioner’s untimely and improper attempt to supplement the record on
`
`obviousness, an issue of which the Board has been made aware. See Ex. 2371 at 7-
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`16; ORDER - Conduct of the Proceedings, April 2, 2014, Paper 61, at 2-3.
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`
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`-11-
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`
`
`
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`only looked at “some of the claims in the patents,” he did not analyze a particular
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`version of ITMS, and many of the features described in the patents were not part of
`
`ITMS at its release. Ex. 2376 at 69:25-70:1, 71:16-72:12, 79:11-83:7. Any
`
`minimally probative value these opinions may provide is substantially outweighed
`
`by prejudice due to their vague and misleading nature, rendering such opinions
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`independently inadmissible under F.R.E. 403.
`
`Elsewhere, Petitioner cites Dr. Kelly’s opinions on how ITMS works and
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`whether it practices the claims challenged in this proceeding. Reply at 11 (citing
`
`Ex. 4420 ¶¶ 26-64). Dr. Kelly provides no citation or support at all for opinions
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`concerning: (1) the role played by Akamai Technologies to transfer content from
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`ITMS to purchasers (Ex. 4420 ¶¶ 43-45); (2) how ITMS processes transactions (id.
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`¶¶ 56-58); and (3) playback on iPod classic, iPod nano, and iPod shuffle devices,
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`and if these devices use hard disks (id. ¶¶ 61, 63-64). Dr. Kelly also cites undated
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`screenshots from Petitioner’s website (id. ¶¶ 28-47, 54 (citing Exs. 4383-4387,
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`4390-4392)) and third-party descriptions of how payment is made via ITMS (id. ¶¶
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`38, 40 (citing Exs. 4387-4388)). The foregoing opinions rely on unauthenticated
`
`hearsay, do not reflect personal knowledge, and do not rest on reliable materials
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`(i.e., Petitioners’ own technical documentation and schematics). Dr. Kelly
`
`previously examined these materials, but admitted that he ignored them for
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`purposes of this proceeding. Ex. 2376 at 67:21-68:2. Dr. Kelly also ignored the
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`
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`-12-
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`
`
`
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`report of Dr. Tygar from the underlying district court litigation, which extensively
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`discusses Petitioner’s own information and concludes that ITMS practices the
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`challenged claims. Id. at 68:23-69:9; see also id. at Ex. 1 (Redacted Expert Report
`
`of Dr. J. Douglas Tygar Regarding Infringement). Dr. Kelly admitted that Dr.
`
`Tygar reached a diametrically opposed conclusion. Id. at 143:1-11. Experts must
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`at least consider inconsistent information in order to reach reliable opinions and
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`conclusions; Dr. Kelly admittedly did not. See F.R.E. 702.
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`(b) Dr. Kelly ignores relevant materials concerning CompuSonics: At
`
`deposition, Dr. Kelly admitted that he never reviewed Exhibit 2321, which
`
`contains detailed testimony by CompuSonics’ chief engineer and long-time
`
`employee John Stautner—who, unlike CompuSonics founder David Schwartz,
`
`holds a master’s degree from MIT in computer science—describing the
`
`shortcomings of that company’s products and business plans. Ex. 2376 at 29:1-5,
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`34:18-21. Dr. Kelly was unaware, and had no personal knowledge or information
`
`to dispute, that CompuSonics’ demonstration of “tele-recording” was a tightly
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`scripted experiment controlled entirely by CompuSonics personnel. Id. at 33:2-
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`34:6. Dr. Kelly was also unaware, and unable to dispute, the fact that
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`CompuSonics’ devices were never configured to carry out either a “tele-recording”
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`feature or electronic payment. Id. at 35:19-36:6, 44:17-45:5. Rather, Dr. Kelly
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`credulously relied on Mr. Schwartz’s hyperbolic “futurama” claims and documents
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`
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`-13-
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`
`
`
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`selected by counsel, completely ignoring Mr. Stautner’s relevant, highly probative
`
`testimony about what CompuSonics actually planned or did. Id. at 34:8-21.
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`In light of these many deficiencies, the foregoing opinions and conclusions
`
`proffered by Dr. Kelly are unreliable “expert” testimony or, alternatively, are
`
`hearsay-based lay opinions. Such items are inadmissible under at least F.R.E. 602,
`
`701-703, 801-802, and 901, as well as 37 C.F.R. §§ 42.61(c) and 42.65(a).
`
`Opinions based on a selective and inaccurate representation of the facts are
`
`unreliable and do not meet the standard of F.R.E. 702. See Ashland Hosp. Corp. v.
`
`Affiliated FM Ins. Co., No. 11–16–DLB–EBA, 2013 WL 3213051, at *7 (E.D. Ky.
`
`June 24, 2013) (excluding expert because “[f]ailing to consider . . . relevant facts
`
`violates Rule 702’s requirement that an expert base his opinions on ‘sufficient facts
`
`or data,’”; “fail[ing] to collect all available data” or “selectively disregard[ing]
`
`pieces of data” is grounds for exclusion) (citations and quotations omitted); In re
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`Nellson Nutraceutical, Inc., 356 B.R. 364, 373 (Bkrtcy. D. Del. 2006) (“[I]f the
`
`factual basis of an expert’s opinion is so fundamentally unsupported because the
`
`expert . . . fails to consider relevant facts in reaching a conclusion, the expert’s
`
`opinion can offer no assistance to the trier of fact, and is not admissible on
`
`relevance grounds.”) (collecting cases). Given Dr. Kelly’s admittedly one-sided
`
`and selective review of the evidence, coupled with his lack of first-hand knowledge
`
`
`
`-14-
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`
`
`
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`of CompuSonics’ devices and plans, his opinions are of no assistance to the Board
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`and should be given no weight. See 37 C.F.R. § 42.65.
`
`F.
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`Exhibits 4421-4459 (Various U.S. Patents)
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`Petitioner maintains that ITMS includes inventions reflected in patents first
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`disclosed with Petitioner’s Reply. Reply at 10 (citing Exs. 4421-4459). As set
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`forth above (see supra Sections III.A, III.E), such patents are inadmissible because
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`Petitioner has not provided the requisite affidavit or declaration by an individual
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`having first-hand knowledge of how the data was generated. See 37 C.F.R.
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`§ 42.61(c). In addition, to the extent Petitioner claims that ITMS includes
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`inventions disclosed in such patents, Petitioner provides no testimony or other
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`evidence establishing that these inventions are utilized by ITMS or were utilized
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`by ITMS during the relevant time period. Irrelevant materials such as these are
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`inadmissible under F.R.E. 402. Any minimal probative value in such patents is
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`substantially outweighed by their prejudicial, confusing, and misleading nature,
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`making such materials inadmissible under F.R.E. 403 as well.
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`IV. CONCLUSION
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`For the foregoing reasons, Patent Owner respectfully requests that the
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`foregoing materials or relevant portions thereof be excluded from evidence.
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`-15-
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`Dated: April 4, 2014
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` By:
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`Respectfully submitted,
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`/David R. Marsh/
`David R. Marsh, Ph.D.
`Kristan L. Lansbery, Ph.D.
`ARNOLD & PORTER LLP
`555 12th Street, N.W.
`Washington, DC 20004
`Tel: (202) 942-5068
`Fax: (202) 942-5999
`
`Attorneys for Patent Owner
`SightSound Technologies, LLC
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`-16-
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that a copy of the foregoing PATENT OWNER
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`SIGHTSOUND TECHNOLOGIES, LLC’S MOTION TO EXCLUDE
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`EVIDENCE PURSUANT TO 37 C.F.R. § 42.64(c), Exhibits 2372-2376, and
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`PATENT OWNER’S UPDATED EXHIBIT LIST APRIL 4, 2014 were served
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`on April 4, 2014 to the following Counsel for Petitioner via e-mail, pursuant to the
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`parties’ agreement concerning service:
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`J. Steven Baughman, Lead Counsel
`Ching-Lee Fukuda
`ROPES & GRAY LLP
`Prudential Tower
`800 Boylston Street
`Boston, Massachusetts 02199-3600
`Steven.Baughman@ropesgray.com
`Ching-Lee.Fukuda@ropesgray.com
`ApplePTABServiceSightSound@ropesgray.com
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`Attorneys for Petitioner Apple Inc.
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`/David R. Marsh/
`David R. Marsh (Atty. Reg. No. 41,408)
`ARNOLD & PORTER LLP
`555 12th Street, N.W.
`Washington, D.C. 20004
`Tel: (202) 942-5068
`Fax: (202) 942-5999
`
`-17-
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