`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`APPLE, INC., EVENTBRITE INC., STARWOOD HOTELS & RESORTS
`WORLDWIDE, INC., EXPEDIA, INC., FANDANGO, LLC,
`HOTELS.COM, L.P., HOTEL TONIGHT, INC., HOTWIRE, INC.,
`KAYAK SOFTWARE CORP., OPENTABLE, INC., ORBITZ, LLC, PAPA
`JOHN’S USA, INC., STUBHUB, INC., TICKETMASTER, LLC, LIVE
`NATION ENTERTAINMENT, INC., TRAVELOCITY.COM LP,
`WANDERSPOT LLC, AGILYSYS, INC., DOMINO’S PIZZA, INC.,
`DOMINO’S PIZZA, LLC, HILTON RESORTS CORPORATION,
`HILTON WORLDWIDE, INC., HILTON INTERNATIONAL CO., MOBO
`SYSTEMS, INC., PIZZA HUT OF AMERICA, INC., PIZZA HUT, INC.,
`and USABLENET, INC.,
`Petitioner
`
`v.
`
`AMERANTH, INC.
`Patent Owner
`
`____________
`
`Case CBM2015-000821
`Patent No. 6,871,325
`____________
`
`
`PATENT OWNER’S MOTION TO EXCLUDE
`PURSUANT TO 37 C.F.R. § 42.64(c)
`
`
`
`
`
`1 CBM2015-00097 has been consolidated with this proceeding.
`
`
`
`TABLE OF CONTENTS
`
`CBM2015-00082
`
`
`I.
`
`II.
`
`Introduction………………………………………...............................................1
`
`Certain Paragraphs Of Exhibit 1070 Should Be Excluded Because They
`Are Not Cited To In Petitioner's Reply Brief And Are Therefore Irrelevant.
`The Paragraphs Are Also Improper Under 37 C.F.R. § 42.6(a)(3)……………..2
`
`
`III. Exhibits 1071-1073 Should Be Excluded On The Grounds That They
`Are Unauthenticated And Inadmissible Hearsay………………………………..5
`
`A. Apple’s Webpage Exhibits Should Be Excluded Because They
`Have Not Been Authenticated…………………………………………………...5
`
`B. Apple’s Webpage Exhibits Should Be Excluded Because They
`Are Inadmissible Hearsay………………………………………………………..7
`
`
`
`IV. Exhibits 1078 And 1079 Should Be Excluded Because They Are Irrelevant
`And Are Improper Attempts At Joinder…………………………………………8
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`V.
`
`
`
`
`
`
`
`
`
`
`
`
`A. Exhibits 1078 and 1079 Are Irrelevant Because Apple Does
`Not Cite To Them In The Reply Brief…………………………………………..8
`
`B. Exhibits 1078 and 1079 Should Be Excluded Because
`They Are Improper Attempts At Joinder………………………………………..9
`
`Exhibits 1080, 1081 And 1082 Should Be Excluded Because They Are
`Irrelevant, Unauthenticated And Constitute Inadmissible Hearsay……………10
`
`A. Exhibits 1080, 1081 And 1082 Should Be Excluded Because
`They Are Not Even Cited To In The Reply Brief And Are Therefore
`Irrelevant……………………………………………………………………….10
`
`B. Exhibits 1080, 1081 And 1082 Should Be Excluded
`Because They Are Not Authenticated…………………………………………11
`
`C. Exhibits 1080, 1081 And 1082 Should Be Excluded Because
`They Are Inadmissible Hearsay……………………………………………….12
`
`
`
`VI. Conclusion……………………………………………………………………..13
`
`
`
`
`-i-
`
`
`
`TABLE OF AUTHORITIES
`
`CBM2015-00082
`
`
`Page
`
`Cases
`
`Cisco Systems, Inc. v. C-Cation Technologies, LLC,
`IPR2014-00454, Paper 12……………………………………………………………..5
`
`Conopco, Inc. dba Unilever v. The Procter & Gamble Company,
`IPR2013-00510, Paper 9…………………………………………………………….4, 5
`
`DeSilva v. DiLeonardi,
`181 F.3d 865, (7th Cir. 1999)……………………………………………………….3, 4
`
`Hilgraeve, Inc. v. Symantec Corp.,
`271 F. Supp. 2d 964 (E.D. Mich. 2003)……………………………………….7, 12, 13
`
`Juniper Networks, Inc. v. Brixham Solutions, Ltd.,
`IPR2014-00425, Paper 16……………………………………………………………..5
`
`Standard Innovation Corp. v. Lelo, Inc.,
`IPR2014-00148, Paper 41……………………………………………………..6, 11, 12
`
`United States v. Harrington,
`923 F.2d 1371, 1374 (9th Cir. 1991)………………………………………………5, 11
`
`United States v. Hernandez-Herrera,
`952 F.2d 342, 343 (10th Cir. 1991)………………………………………………..5, 11
`
`U.S. v. Tank,
`200 F.3d 627, 630 (9th Cir. 2000)…………………………………………………5, 11
`
`Statutes and Rules
`
`FRE 401…………………………………………………………………….2, 8, 10, 13
`
`FRE 402…………………………………………………………………….2, 8, 10, 13
`
`FRE 403…………………………………………………………………….3, 8, 10, 13
`
`
`
`
`-ii-
`
`
`
`CBM2015-00082
`
`
`FRE 802………………………………………………………………………7, 12, 13
`
`FRE 803……………………………………………………………………………..13
`
`FRE 804……………………………………………………………………………..13
`
`FRE 901………………………………………………………………………6, 11, 12
`
`FRE 901(a)………………………………………………………………………..5, 11
`
`FRE 902…………………………………………………………………………...7, 12
`
`37 C.F.R. § 42.23(b)…………………………………………………………………..3
`
`37 C.F.R. § 42.6(a)(3)…………………………………………………………1, 2, 4, 5
`
`37 C.F.R. § 42.62(a)…………………………………………………………………...2
`
`37 C.F.R. § 42.64(a)…………………………………………………………………...1
`
`
`
`-iii-
`
`
`
`
`
`
`
`TABLE OF EXHIBITS
`
`CBM2015-00082
`
`
`Exhibits Previously Filed by Petitioner and Patent Owner’s Grounds for
`Exclusion:
`
`
`
`
`
`Exhibit No.
`
`Patent Owner’s Grounds for Exclusion:
`
`1070
`
`Paragraphs 1-4, 18, 19, 22-24, 33, 37, 38, 41-51, 55, 60-
`
`63, 65, 67-70, 78-93 and 95 are irrelevant and improper
`
`1071
`
`1072
`
`1073
`
`1078
`
`1079
`
`1080
`
`1081
`
`1082
`
`under 37 C.F.R. § 42.6(a)(3).
`
`Unauthenticated and hearsay.
`
`Unauthenticated and hearsay.
`
`Unauthenticated and hearsay.
`
`Irrelevant and improper attempt at joinder.
`
`Irrelevant and improper attempt at joinder.
`
`Irrelevant, unauthenticated and hearsay.
`
`Irrelevant, unauthenticated and hearsay.
`
`Irrelevant, unauthenticated and hearsay.
`
`-iv-
`
`
`
`
`I.
`
`INTRODUCTION.
`
`CBM2015-00082
`
`Pursuant to 37 C.F.R. § 42.64(a), the Patent Owner, Ameranth, Inc.
`
`(“Patent Owner” or “Ameranth”) hereby moves to exclude paragraphs 1-4, 18, 19,
`
`22-24, 33, 37, 38, 41-51, 55, 60-63, 65, 67-70, 78-93 and 95 of Exhibit 1070, and
`
`Exhibits 1071, 1072, 1073, 1078, 1079, 1080, 1081 and 1082. The Exhibits
`
`which are the subject of this Motion were submitted by Apple, Inc. (“Petitioner”
`
`or “Apple”) in support of Petitioner’s Reply Brief (Paper 26). On March 30,
`
`2016, Patent Owner timely served and filed objections to the Exhibits (Paper 28),
`
`among others.
`
`
`
`The Exhibits discussed herein should be excluded on the grounds that they
`
`are irrelevant, improper under 37 C.F.R. § 42.6(a)(3), an improper attempt at
`
`joinder, unauthenticated and/or inadmissible hearsay. The exhibits submitted by
`
`Petitioner with its Reply Brief includes numerous exhibits that are not even cited
`
`to in the Reply Brief (and are therefore irrelevant), various unauthenticated
`
`webpages and other documents and several exhibits that constitute inadmissible
`
`hearsay.
`
`In particular, paragraphs 1-4, 18, 19, 22-24, 33, 37, 38, 41-51, 55, 60-63, 65,
`
`67-70, 78-93 and 95 of Exhibit 1070, which is the 95-paragraph-long supplemental
`
`reply declaration of Don Turnbull, Ph.D., should be excluded on the grounds that
`
`they are irrelevant and improper under 37 C.F.R. § 42.6(a)(3). Exhibits 1071,
`
`1072 and 1073 should be excluded on the grounds that they are unauthenticated
`-1-
`
`
`
`
`
`
`and inadmissible hearsay. Exhibits 1078 and 1079 should be excluded on the
`
`CBM2015-00082
`
`grounds that they are irrelevant and improper attempts at joinder. Exhibits 1080,
`
`1081 and 1082 should be excluded on the grounds that they are irrelevant,
`
`unauthenticated and inadmissible hearsay.
`
`II.
`
`CERTAIN PARAGRAPHS OF EXHIBIT 1070 SHOULD BE
`
`EXCLUDED BECAUSE THEY ARE NOT CITED TO IN PETITIONER’S
`
`REPLY BRIEF AND ARE THEREFORE IRRELEVANT. THE
`
`PARAGRAPHS ARE ALSO IMPROPER UNDER 37 C.F.R. § 42.6(a)(3).
`
`Apple submitted 15 new exhibits with its Reply Brief, but does not discuss or
`
`even cite to several of these new exhibits in its Reply Brief. Similarly, paragraphs 1-4,
`
`18, 19, 22-24, 33, 37, 38, 41-51, 55, 60-63, 65, 67-70, 78-93 and 95 of Exhibit 1070,
`
`which is the 95-paragraph-long supplemental reply declaration of Dr. Turnbull,
`
`are not discussed or even cited to in the Reply Brief.
`
`However, Petitioner has the burden of establishing the relevance of evidence it
`
`submitted and, under the Federal Rules of Evidence,2 proffered evidence that does not
`
`tend to establish a fact or issue of consequence to the determination of an action is not
`
`relevant and should not be admitted. See Federal Rules of Evidence (“FRE”) 401-402.
`
`Here, because Apple failed to discuss or even cite to the paragraphs of the
`
`
`2 The Federal Rules of Evidence apply to these proceedings according to the provisions
`
`of 37 C.F.R. § 42.62(a).
`
`
`
`-2-
`
`
`
`
`supplemental reply declaration (Exhibit 1070) identified above in its Reply Brief,
`
`CBM2015-00082
`
`Apple has made no showing as to the relevance of those portions of Dr. Turnbull’s
`
`supplemental declaration.3 Further, because Petitioner has not cited to paragraphs 1-4,
`
`18, 19, 22-24, 33, 37, 38, 41-51, 55, 60-63, 65, 67-70, 78-93 and 95 of the declaration
`
`at all in the Reply Brief, Petitioner has not established any probative value of the
`
`evidence, and those paragraphs should be excluded under FRE 403. FRE 403
`
`Apparently, Petitioner’s plan was to submit numerous new exhibits with its
`
`Reply Brief including the 95-paragraph-long supplemental expert reply declaration
`
`without providing any argument or explanation as to the relevance of dozens of the
`
`exhibits or dozens of paragraphs of the Dr. Turnbull declaration in its Reply Brief, but
`
`hope that the Board would sort through the exhibits and lengthy declaration and
`
`determine their relevance for Apple. But, if Petitioner believes the evidence to be
`
`relevant, Petitioner should have included any discussion or argument pertaining to the
`
`evidence it wanted to make in its Reply Brief. See 37 C.F.R. § 42.23(b) (providing in
`
`part that “[a]ll arguments for the relief requested in a motion must be made in the
`
`motion.”). As the Court noted in DeSilva v. DiLeonardi, 181 F.3d 865, (7th Cir.
`
`
`3 Apple itself asserted a similar objection to some of Ameranth’s evidence in
`
`Apple’s Objections to Patent Owner’s Evidence in Patent Owner Response. ( See
`
`Paper 19 objecting to several Ameranth exhibits on relevance grounds
`
`“particularly because [they are] not cited in Patent Owner’s Response.”)
`
`
`
`-3-
`
`
`
`
`1999), “[a] brief must make all arguments accessible to the judges, rather than ask
`
`CBM2015-00082
`
`them to play archeologist with the record.” DeSilva v. DiLeonardi, 181 F.3d 865,
`
`866-67 (7th Cir. 1999).
`
` Undoubtedly, Petitioner will attempt to argue that the evidence is relevant in its
`
`opposition to this Motion or in response to Ameranth’s Objections to Evidence.
`
`However, such a belated argument will be insufficient to cure the defect of failing to
`
`meet Petitioner’s burden and include any discussion concerning, or even cite to, the
`
`evidence in its Reply Brief.
`
`Moreover, paragraphs 1-4, 18, 19, 22-24, 33, 37, 38, 41-51, 55, 60-63, 65, 67-
`
`70, 78-93 and 95 of Dr. Turnbull’s supplemental reply declaration (Exhibit 1070) are
`
`not only irrelevant because they are not even cited, but they are also improper for the
`
`additional reason that they violate 37 C.F.R. § 42.6(a)(3). Under 37 C.F.R. §
`
`42.6(a)(3), “[a]rguments must not be incorporated by reference from one document
`
`into another document.” Apple completely fails to discuss or even cite to any of the
`
`identified paragraphs of Dr. Turnbull’s declaration. Presumably, Apple is attempting
`
`to improperly incorporate the uncited paragraphs into its Reply Brief, although it failed
`
`to even “reference” them.
`
`Therefore, paragraphs 1-4, 18, 19, 22-24, 33, 37, 38, 41-51, 55, 60-63, 65, 67-
`
`70, 78-93 and 95 of Exhibit 1070 should be excluded or, in the alternative, should not
`
`be considered by the Board. See Conopco, Inc. dba Unilever v. The Procter & Gamble
`
`Company, IPR2013-00510, Paper 9, pgs 8 – 9 (declining to consider information
`-4-
`
`
`
`
`
`
`presented in a supporting declaration, but not discussed in a petition); Juniper
`
`CBM2015-00082
`
`Networks, Inc. v. Brixham Solutions, Ltd., IPR2014-00425, Paper 16, at Footnote 1
`
`(citing 37 C.F.R. § 42.6(a)(3) and not considering any of petitioner’s arguments made
`
`solely on the basis of incorporation by reference from a lengthy declaration); Cisco
`
`Systems, Inc. v. C-Cation Technologies, LLC, IPR2014-00454, Paper 12, pgs 7 – 10
`
`(not considering arguments that were not made in the petition, but were instead
`
`incorporated by reference to cited paragraphs and claim charts of a declaration).
`
`III.
`
`EXHIBITS 1071-1073 SHOULD BE EXCLUDED ON THE
`
`GROUNDS THAT THEY ARE UNAUTHENTICATED AND INADMISSIBLE
`
`HEARSAY.
`
`A. Apple’s Webpage Exhibits Should Be Excluded Because They Have Not
`
`Been Authenticated.
`
`The Federal Rules of Evidence require all evidence be authenticated before it
`
`can be admitted into evidence. See FRE 901(a); U.S. v. Tank, 200 F.3d 627, 630 (9th
`
`Cir. 2000) (“The foundational ‘requirement of authentication or identification as a
`
`condition precedent to admissibility is satisfied by evidence sufficient to support a
`
`finding that the matter in question is what its proponent claims.’ Fed. R.Evid.
`
`901(a).”); see also United States v. Harrington, 923 F.2d 1371, 1374 (9th Cir. 1991);
`
`United States v. Hernandez-Herrera, 952 F.2d 342, 343 (10th Cir. 1991) (exhibits are
`
`irrelevant unless their proponent fulfills the authentication requirement).
`
`Authentication acts as a condition precedent to admissibility, and the purpose of the
`-5-
`
`
`
`
`
`
`requirement is to filter untrustworthy evidence. As a proponent of the evidence,
`
`CBM2015-00082
`
`Petitioner bears the burden of establishing that the proffered evidence meets the
`
`requirements of FRE 901. However, as discussed below, Exhibits 1071, 1072 and
`
`1073 have not been authenticated and are inadmissible.
`
`Exhibits 1071, 1072 and 1073 appear to be webpages downloaded from the
`
`websites Economywatch.com, Besthospitalitydegrees.com and blogs.msdn.com,
`
`respectively. Apple cites to the exhibits to support its argument that exchanged
`
`data related to travel is “hospitality” data under a BRI construction. (Paper 2 6,
`
`pgs 8, 14.) But Apple provides no other evidence and no authentication that the
`
`information on the webpages are accurate. See Standard Innovation Corp. v. Lelo, Inc.,
`
`IPR2014-00148, Paper 41 (PTAB Apr. 23, 2015) at 10-11 (“When offering a printout
`
`of a webpage into evidence to prove the website’s contents, the proponent of the
`
`evidence must authenticate the information from the website itself, not merely the
`
`printout.”) (citations omitted). It is not that Ameranth questions whether the pages
`
`were downloaded from Economywatch.com, Besthospitalitydegrees.com and
`
`blogs.msdn.com, but Petitioner has not provided evidence or testimony from any
`
`witness regarding the websites or how reliable or accurate the contents of the
`
`webpages are, or any witness having personal knowledge of the webpages.
`
`Moreover, in addition to failing to provide an authenticating witness for the
`
`exhibits, Petitioner has failed to point to any characteristics of the exhibits to support
`
`and establish their authenticity pursuant to FRE 901. And the documents in the above-
`-6-
`
`
`
`
`
`
`discussed exhibits are not “self-authenticating,” so each requires authentication. FRE
`
`CBM2015-00082
`
`902. Therefore, the Exhibits should be excluded or, in the alternative, should not be
`
`considered by the Board.
`
`B. Apple’s Webpage Exhibits Should Be Excluded Because They Are
`
`Inadmissible Hearsay.
`
`In addition to the grounds discussed above, Exhibits 1071, 1072 and 1073
`
`should also be excluded on the grounds that they constitute inadmissible hearsay. See
`
`FRE 802. Petitioner offers the information in the exhibits to prove the truth of the
`
`matters being asserted.
`
`As discussed above, Apple cites to Exhibits 1071, 1072 and 1073 (which
`
`appear to be webpages downloaded from websites Economywatch.com,
`
`Besthospitalitydegrees.com and blogs.msdn.com, respectively) to support its
`
`argument that exchanged data related to travel is “hospitality” data under a BRI
`
`construction. (Paper 26, pgs 8, 14.) . Thus, the exhibits are plainly being used to
`
`prove the truth of the matter asserted, i.e., that the webpages accurately describe what
`
`“hospitality” data is. See Hilgraeve, Inc. v. Symantec Corp., 271 F. Supp. 2d 964 (E.D.
`
`Mich. 2003) at 974 (“Plaintiff correctly notes that the dates imprinted on these
`
`documents are hearsay when offered to prove the truth of the matter asserted….”).
`
`Further, Petitioner has identified no hearsay exceptions in proffering this
`
`evidence. Indeed, no known hearsay exceptions are applicable. FRE 802-804. As
`
`such, Exhibits 1071, 1072 and 1073 constitute inadmissible hearsay and, in addition
`-7-
`
`
`
`
`
`
`to the deficiencies discussed above, should be excluded for this reason as well.
`
`CBM2015-00082
`
`IV.
`
`EXHIBITS 1078 AND 1079 SHOULD BE EXCLUDED BECAUSE
`
`THEY ARE IRRELEVANT AND ARE IMPROPER ATTEMPTS AT
`
`JOINDER.
`
`A. Exhibits 1078 and 1079 Are Irrelevant Because Apple Does Not Cite To
`
`Them In The Reply Brief.
`
`Exhibit 1078 is described by Petitioner in its Table of Exhibits as
`
`“CBM2015-00091, Paper 9 (Sept. 14, 2015) – Institution Decision”, and Exhibit
`
`1079 is described as “CBM2015-00099, Paper 9 (Sept. 14, 2015) – Institution
`
`Decision.” However, as with the paragraphs of Dr. Turnbull’s supplemental reply
`
`declaration identified above, Apple does not discuss or even cite to Exhibits 1078
`
`and 1079 in the Reply Brief. Accordingly, for the same reasons and under the same
`
`authorities discussed above with respect to the uncited paragraphs of Dr. Turnbull’s
`
`supplemental reply declaration, Exhibits 1078 and 1079 should be excluded because
`
`Apple has failed to make any showing as to the exhibits’ relevance. FRE 401-402.
`
`Further, because Petitioner has not cited to the exhibits at all in the Reply Brief,
`
`Petitioner has not established any probative value of the evidence, and the identified
`
`paragraphs and exhibits should be excluded under FRE 403. FRE 403. Any argument
`
`by Petitioner in opposition to this Motion or in response to Ameranth’s Objections to
`
`Evidence will be insufficient to cure the defect of failing to meet Petitioner’s burden
`
`and include any discussion concerning, or even cite to, the evidence in its Reply Brief.
`-8-
`
`
`
`
`
`
`
`B. Exhibits 1078 and 1079 Should Be Excluded Because They Are Improper
`
`CBM2015-00082
`
`Attempts At Joinder.
`
`While Exhibits 1078 and 1079, which are Institution Decisions in separate CBM
`
`proceedings, are not even cited to by Petitioner in its Reply Brief, presumably
`
`Petitioner includes the exhibits in hopes the Board will apply decisions made in the
`
`separate CBM proceedings to the instant CBM proceeding. However, the inclusion of
`
`these institution decisions from the parallel, but not joined, Starbucks petition against
`
`the same patent is an unauthorized attempt to effectively achieve ‘joinder’ with these
`
`petitions, when such joinder has not been requested in accordance with the AIA rules.
`
`Petitioner has already sought ‘joinder’ with these Starbucks petitions in the
`
`proceedings of yet another petition of its own, and those proceedings are independent
`
`as well and, therefore, the inclusion of these institution decisions as an exhibit with the
`
`Reply Brief is improper for this additional reason.
`
`Accordingly, Exhibits 1078 and 1079 should be excluded or, in the alternative,
`
`should not be considered by the Board.
`
`-9-
`
`/ / /
`
`/ / /
`
`
`
`
`
`
`
`
`V.
`
`EXHIBITS 1080, 1081 AND 1082 SHOULD BE EXCLUDED
`
`CBM2015-00082
`
`BECAUSE THEY ARE IRRELEVANT, UNAUTHENTICATED AND
`
`CONSTITUTE INADMISSIBLE HEARSAY.
`
`A. Exhibits 1080, 1081 And 1082 Should Be Excluded Because They Are Not
`
`Even Cited To In The Reply Brief And Are Therefore Irrelevant.
`
`Exhibit 1080 is described by Petitioner in its Table of Exhibits as “Hal
`
`Berghel, ‘The New Push for Push Technology,’ Networker Volume 2.3 (June
`
`1998)”, Exhibit 1081 is described as “Michael M. Tso, et al., ‘Always On, Always
`
`Connected Mobile Computing,’ IEEE International Conference on Universal Personal
`
`Communications Record (1996)” and Exhibit 1082 is described as “‘The
`
`Computerworld Honors Program: Honoring Those Who Use Information Technology
`
`to Benefit Society.’” However, as with the paragraphs of Dr. Turnbull’s
`
`supplemental reply declaration identified above and Exhibits 1078 and 1079,
`
`Apple does not discuss or even cite to Exhibits 1080, 1081 or 1082 in the Reply
`
`Brief. Accordingly, for the same reasons and under the same authorities discussed
`
`above with respect to the uncited Dr. Turnbull declaration paragraphs and Exhibits
`
`1078 and 1079, Exhibits 1080, 1081 or 1082 should be excluded because Apple has
`
`failed to make any showing as to the exhibits’ relevance. FRE 401-402.
`
`Further, because Petitioner has not cited to the exhibits at all in the Reply Brief,
`
`Petitioner has not established any probative value of the evidence, and the identified
`
`paragraphs and exhibits should be excluded under FRE 403. FRE 403. Any argument
`-10-
`
`
`
`
`
`
`by Petitioner in opposition to this Motion or in response to Ameranth’s Objections to
`
`CBM2015-00082
`
`Evidence will be insufficient to cure the defect of failing to meet Petitioner’s burden
`
`and include any discussion concerning, or even cite to, the evidence in its Reply Brief.
`
`B. Exhibits 1080, 1081 And 1082 Should Be Excluded Because They Are Not
`
`Authenticated.
`
`Additionally, under the authorities discussed above with respect to Exhibits
`
`1071-1073, Exhibits 1080, 1081 or 1082 should be excluded because they are
`
`unauthenticated. See FRE 901(a); U.S. v. Tank, 200 F.3d 627, 630 (9th Cir. 2000);
`
`United States v. Harrington, 923 F.2d 1371, 1374 (9th Cir. 1991); United States v.
`
`Hernandez-Herrera, 952 F.2d 342, 343 (10th Cir. 1991). As a proponent of the
`
`evidence, Petitioner bears the burden of establishing that the proffered evidence meets
`
`the requirements of FRE 901. However, Petitioner has failed to meet its burden.
`
`Exhibits 1080, 1081 or 1082 appear to be a pamphlet, an “IEEE
`
`International Conference on Universal Personal Communications Record”
`
`document and a webpage regarding “The Computerworld Honors Program” .
`
`While Apple does not cite to the exhibits in its Reply Brief, they are briefly cited
`
`in the Dr. Turnbull supplemental reply declaration (Exhibit 1070). Apple
`
`apparently uses the exhibits to, for example, support an argument that certain
`
`“push technology” was available at a certain timeframe. (See, e.g., Exh. 1070 ¶
`
`76.) But Apple provides no other evidence and no authentication that the information
`
`in the documents are accurate. See Standard Innovation Corp. v. Lelo, Inc., IPR2014-
`-11-
`
`
`
`
`
`
`00148, Paper 41 (PTAB Apr. 23, 2015) at 10-11 (“When offering a printout of a
`
`CBM2015-00082
`
`webpage into evidence to prove the website’s contents, the proponent of the evidence
`
`must authenticate the information from the website itself, not merely the printout.”)
`
`(citations omitted). As with other exhibits discussed above, Petitioner has not provided
`
`evidence or testimony from any witness regarding the documents or how reliable or
`
`accurate the contents of the documents are, or any witness having personal knowledge
`
`of the documents.
`
`Moreover, in addition to failing to provide an authenticating witness for the
`
`exhibits, Petitioner has failed to point to any characteristics of the exhibits to support
`
`and establish their authenticity pursuant to FRE 901. And the documents in the above-
`
`discussed exhibits are not “self-authenticating,” so each requires authentication. FRE
`
`902. Therefore, the Exhibits should be excluded or, in the alternative, should not be
`
`considered by the Board.
`
`C. Exhibits 1080, 1081 And 1082 Should Be Excluded Because They Are
`
`Inadmissible Hearsay.
`
`In addition to the grounds discussed above, Exhibits 1080, 1081 and 1082
`
`should also be excluded on the grounds that they constitute inadmissible hearsay. See
`
`FRE 802. As with Exhibits 1071, 1072 and 1073 discussed above, Petitioner offers
`
`the information in the exhibits to prove the truth of the matters being asserted.
`
`Apple cites to Exhibits 1080, 1081 and 1082 (which appear to be a pamphlet,
`
`an “IEEE International Conference on Universal Personal Communications
`-12-
`
`
`
`
`
`
`Record” document and a webpage regarding “The Computerworld Honors
`
`CBM2015-00082
`
`Program”) to presumably support various arguments, although, as discussed
`
`above, the exhibits are not cited in the Reply Brief. For example, Apple
`
`apparently uses Exhibit 1081 to support an argument that certain “push
`
`technology” was available at a certain timeframe. (See, e.g., Exh. 1070 ¶ 76.)
`
`Thus, the exhibits are being used to prove the truth of the matter asserted. See
`
`Hilgraeve, Inc. v. Symantec Corp., 271 F. Supp. 2d 964 (E.D. Mich. 2003) at 974
`
`(“Plaintiff correctly notes that the dates imprinted on these documents are hearsay
`
`when offered to prove the truth of the matter asserted….”).
`
`Further, Petitioner has identified no hearsay exceptions in proffering this
`
`evidence. Indeed, no known hearsay exceptions are applicable. FRE 802-804. As
`
`such, Exhibits 1080, 1081 and 1082 constitute inadmissible hearsay and, in addition
`
`to the deficiencies discussed above, should be excluded for this reason as well.
`
`VI.
`
`CONCLUSION.
`
`For the reasons discussed above, paragraphs 1-4, 18, 19, 22-24, 33, 37, 38, 41-
`
`51, 55, 60-63, 65, 67-70, 78-93 and 95 of Exhibit 1070 should be excluded on the
`
`grounds that they are irrelevant under FRE 401-403 and improper under 37 C.F.R.
`
`§ 42.6(a)(3). Exhibits 1071, 1072 and 1073 should be excluded on the grounds that
`
`they are unauthenticated and inadmissible hearsay. Exhibits 1078 and 1079 should
`
`be excluded on the grounds that they are irrelevant under FRE 401-403 and
`
`improper attempts at joinder. And Exhibits 1080, 1081 and 1082 should be
`-13-
`
`
`
`
`
`
`excluded on the grounds that they are irrelevant, unauthenticated and inadmissibl e
`
`CBM2015-00082
`
`hearsay.
`
`April 8, 2016 Respectfully Submitted,
`
`/John W. Osborne/
`John W. Osborne
`Lead Counsel for Patent Owner
`USPTO Reg. No. 36,231
`OSBORNE LAW LLC
`33 Habitat Lane
`Cortlandt Manor, NY 10567
`josborne@osborneipl.com
`Tel.: 914-714-5936
`Fax: 914-734-7333
`
`Michael D. Fabiano
`Back-up Counsel for Patent Owner
`USPTO Reg. No. 44,675
`FABIANO LAW FIRM, P.C.
`12526 High Bluff Drive, Suite 300
`San Diego, CA 92130
`mdfabiano@fabianolawfirm.com
`Tel.: 619-742-9631
`
`
`
`
`
`
`
`-14-
`
`
`
`CBM2015-00082
`
`
`CERTIFICATE OF SERVICE
`
` I
`
` certify that, in accordance with 37 C.F.R. §42.6, a true and correct copy of
`
`the foregoing was served on April 8, 2016 by causing said documents to be delivered
`
`via electronic mail, per agreement of the parties, to counsel for Petitioner at the
`
`
`Robert C. Williams
`DLA Piper LLP (US)
`401 B Street Suite 1700
`San Diego, CA 92101
`robert.williams@dlapiper.com
`
`
`Gilbert A. Greene
`NORTON ROSE FULBRIGHT
`98 San Jacinto Boulevard, Suite 1100
`Austin, TX 78701
`bert.greene@nortonrosefulbright.com
`
`following addresses:
`
`
`
`
`James M. Heintz
`DLA Piper LLP (US)
`11911 Freedom Drive, Suite 300
`Reston, VA 20190-5602
`jim.heintz@dlapiper.com
`
`
`Richard S. Zembek
`NORTON ROSE FULBRIGHT
`1301 McKinney, Suite 5100
`Houston, TX 77010
`richard.zembek@nortonrosefulbright.com
`
`
`
`
`
`
`
`
` April 8, 2016
`
`
`
`
`
`
`
`/Ethan M. Watts/
`
`
`
`
`-15-