UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
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`
`
`KYOCERA CORPORATION
`MOTOROLA MOBILITY LLC
`Petitioners
`
`
`
`v.
`
`
`
`SOFTVIEW LLC
`Patent Owner
`
`___________________
`
`CASE IPR2013-00007
`CASE IPR2013-00256
`Patent 7,461,353.
`___________________
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`
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`PATENT OWNER'S NOTICE OF OBJECTIONS TO SUPPLEMENTAL
`EVIDENCE PURSUANT TO 37 C.F.R. § 42.64
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`2904846
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`___________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
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`KYOCERA CORPORATION
`MOTOROLA MOBILITY LLC
`Petitioners
`
`
`
`v.
`
`
`
`SOFTVIEW LLC
`Patent Owner
`
`___________________
`
`CASE IPR2013-00007
`CASE IPR2013-00256
`Patent 7,461,353.
`___________________
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`
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`PATENT OWNER'S NOTICE OF OBJECTIONS TO SUPPLEMENTAL
`EVIDENCE PURSUANT TO 37 C.F.R. § 42.64
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`2904846
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`The undersigned, on behalf of SoftView LLC ("Patent Owner"), hereby
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`provides Notice to the Board that the objections made on the record herewith were
`
`served to Kyocera Corporation ("Kyocera") and Motorola Mobility LLC
`
`("Motorola") (collectively "Petitioners") pursuant to 37 C.F.R. § 42.64. See also
`
`Trial Practice Guide, 77 Fed. Reg. 48756, 48767 (Aug. 14, 2012).
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` Respectfully submitted,
`
`Dated: October 22, 2013
`
`By: /Ben Yorks/
`
`
`
` Ben Yorks
`
`IRELL & MANELLA LLP
`Ben Yorks, Esq.
`PTO Reg. No. 33,609
`Babak Redjaian, Esq.
`PTO Reg. No. 42,096
`840 Newport Center Drive, Suite 400
`Newport Beach, CA 92660
`Telephone: (949) 760-0991
`Fax: (949) 760-5200
`
`Attorneys for Patent Owner
`SoftView LLC
`
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`2904846
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`
`KYOCERA CORPORATION
`MOTOROLA MOBILITY LLC
`Petitioners
`
`
`
`v.
`
`
`
`SOFTVIEW LLC
`Patent Owner
`
`___________________
`
`CASE IPR2013-00007
`CASE IPR2013-00256
`Patent 7,461,353.
`___________________
`
`
`
`PATENT OWNER'S OBJECTIONS TO SUPPLEMENTAL
`EVIDENCE PURSUANT TO 37 C.F.R. § 42.64
`
`
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`2904846
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`I.
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`INTRODUCTION
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`Pursuant to 37 C.F.R. § 42.64(b)(1), the undersigned, on behalf of SoftView
`
`LLC ("Patent Owner"), hereby submits the following objections to Revised Exhibit
`
`PX 1032, new Exhibit PX 1052 ("Supplemental Grimes Reply Declaration"), and
`
`new Exhibit 1053 ("Supplemental Lutz Declaration") all of which were submitted
`
`with Kyocera Corporation's ("Kyocera") and Motorola Mobility LLC's
`
`("Motorola") (collectively "Petitioners") Notice of Filing of Supplemental
`
`Evidence ("Notice") dated October 15, 2013. See IPR2013-00007, Paper No. 35
`
`(and exhibits thereto). Pursuant to 37 C.F.R. § 42.62, certain of Patent Owner’s
`
`objections below apply the Federal Rules of Evidence ("F.R.E.").
`
`II. OBJECTIONS TO EVIDENCE
`A. OBJECTIONS TO EXHIBIT PX 1052 (SUPPLEMENTAL
`REPLY DECLARATION OF JACK D. GRIMES) AND ANY
`REFERENCE TO OR RELIANCE THEREON
`
`Patent Owner hereby objects to Exhibit PX 1052, the Supplemental Reply
`
`Declaration of Jack D. Grimes, Ph.D., dated October 11, 2013 ("Supplemental
`
`Grimes Reply Declaration").
`
`Grounds for objection: 37 C.F.R. § 42.61 (Admissibility of Evidence),
`
`F.R.E. 402 (Relevance), F.R.E. 403 (Excluding Relevant Evidence for Prejudice,
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`Confusion, Waste of Time, or Other Reasons), 37 C.F.R. § 42.223 (Filing of
`
`Supplemental Evidence), F.R.E. 602 (Lack of Personal Knowledge), F.R.E. 702,
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`703 (Impermissible Expert Testimony), F.R.E. 801, 802 (Impermissible Hearsay),
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`37 C.F.R. § 42.23(b) (Outside Scope of Response and Petition), Office Patent Trial
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`Practice Guide, part II, § I (77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012)), 37
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`C.F.R. § 42.104(b) (belated identification of challenge), 37 C.F.R. § 42.64(b)
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`(improper supplementation of evidence), F.R.E. 702, 703 (impermissible expert
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`testimony).
`
`1.
`
`Petitioner's Supplemental Evidence Fails to Correct
`Objections under 37 C.F.R. § 42.64(b)(1)
`
`On September 23, 2013, Petitioners filed their Consolidated Reply to Patent
`
`Owner's Response ("Reply"). With their Reply, Petitioners submitted a ninety (90)
`
`page Declaration by their expert, Dr. Grimes ("Grimes Reply Declaration"). On
`
`September 30, 2013, SoftView filed objections to the evidence submitted by
`
`Petitioners including objections to the Grimes Reply Declaration. See Paper No.
`
`29.1 At the request of SoftView, the Board conducted a conference call with the
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`parties on October 3, 2013 to discuss, among other things, SoftView's request to
`
`file a motion to strike Petitioners' Reply and the Grimes Reply Declaration.
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`During that call, Kyocera's counsel stated that Kyocera would consider, in response
`
`to SoftView's objections, redacting portions of the Grimes Reply Declaration
`
`and/or withdrawing certain exhibits objected to by SoftView.
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`Petitioners did not do so. Instead, on October 15, 2013, Petitioners
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`submitted new and additional evidence, including a fifteen (15) page Supplemental
`
`
`1 SoftView preserves all of its objections to the Grimes Reply Declaration.
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`Reply Declaration by Dr. Grimes, dated October 11, 2013. Not only did
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`Petitioners fail to redact portions of the Grimes Reply Declaration and/or withdraw
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`exhibits to "correct" the evidence objected to by Patent Owner, but they
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`exacerbated the problem by submitting new (and improper) opinions.
`
`The USPTO Rules and Regulations provide that, in response to objections to
`
`evidence formulated "with sufficient particularity to allow correction in the form
`
`of supplemental evidence," the party relying on the evidence may respond to the
`
`objection by filing such corrective supplemental evidence "within ten business
`
`days of service of the objection." 37 C.F.R. § 42.64(b)(1)-(2) (emphasis added).
`
`The Supplemental Grimes Reply Declaration does not provide any
`
`"correction" to the evidence objected to by SoftView. Rather, the Supplemental
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`Grimes Reply Declaration provides new and belated opinions that extend the
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`objectionable content in the Grimes Reply Declaration submitted with Petitioners'
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`Reply. SoftView objects to the entirety of the Grimes Supplemental Reply
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`Declaration based, at least, on the grounds specified herein.
`
`2.
`
`Dr. Grimes Continues to Belatedly Advance Claim
`Construction Positions in Violation of 37 C.F.R. § 42.104
`
`Paragraphs 6-22 of the Supplemental Grimes Reply Declaration continue to
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`provide new and belated claim construction opinions, opinions related to
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`knowledge of one skilled in the art, and opinions regarding Pad++ for the
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`"preserving…" limitation, and should be excluded. These opinions could and
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`should have been made in the original petition. Petitioners' failure to do so violates
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`37 C.F.R. § 42.104(b)(3).
`
`Dr. Grimes cites to the prosecution histories of the '926 and '353 patents to
`
`support his definition of the "preserving …" limitation. Supplemental Grimes
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`Reply Declaration ¶¶ 9-10. But the prosecution history is from 2007-2009 and a
`
`matter of public record. If Petitioners and Dr. Grimes believed that the
`
`"preservation …" limitation was given a special definition in the prosecution
`
`history, the Petitioners should have presented their proposed claim construction in
`
`their petition. Petitioners have provided no credible explanation for why they
`
`failed to do so in the petition, waiting instead for the Reply (and another round of
`
`declarations filed after the Reply).
`
`Finally, it should be further noted that paragraph 15 of the Supplemental
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`Grimes Reply Declaration refers to two exhibits, EX 2071 and 2072, filed by
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`SoftView on October 11, 2013, over two weeks after Petitioners filed their Reply.
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`These opinions are also belated and not proper supplemental evidence.
`
`The Supplemental Grimes Reply Declaration is both outside the scope of
`
`Patent Owner's Response and impermissible supplemental evidence (37 C.F.R. §
`
`42.223; 37 C.F.R. § 42.23(b); 37 C.F.R. § 42.104(b)(3); 37 C.F.R. § 42, Office
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`Patent Trial Practice Guide, part II, § I).
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`3.
`
`Dr. Grimes Never Opined on Zaurus or Obviousness in His
`Original Declarations and He Should be Precluded From
`Doing So Now
`
`No Zaurus Opinions:
`
`SoftView objects to paragraphs 6, 8, 23-29, 31, 34, and 36 of the
`
`Supplemental Grimes Reply Declaration because Dr. Grimes' opinions on Zaurus
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`are new and belated. Dr. Grimes provided no opinions regarding Zaurus in his
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`prior declarations (PX1021 and PX1022) submitted with Petitioners' Petition.
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`Petitioners cannot contest this fact. A mere review of these prior declarations will
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`confirm that fact.
`
`No Obviousness Opinions:
`
`SoftView objects to paragraphs 23-25 and 27-29 of the Supplemental
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`Grimes Reply Declaration because Dr. Grimes' opinions on obviousness are new
`
`and belated. Dr. Grimes provided no opinions regarding obviousness in his prior
`
`declarations (PX1021 and PX1022) submitted with Petitioners' Petition.
`
`Petitioners cannot contest this fact. A mere review of these prior declarations will
`
`confirm that fact.
`
`In order to mask these glaring deficiencies, Dr. Grimes states that "my
`
`opinions regarding the obviousness of combinations of the Zaurus references with
`
`the Bederson references … were submitted in response to Dr. Reinman's
`
`proposition that the Bederson references teach away from implementation of
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`Pad++ on a mobile device, such as the Sharp Zaurus device, and that one of
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`ordinary skill in the art would not have combined the Bederson and Zaurus
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`references." Supplemental Grimes Reply Declaration, ¶ 25. But Petitioners fail to
`
`address the chief issue raised in Patent Owner's objection to the subject of this
`
`testimony. Any and all of Dr. Grimes' opinions on prima facie obviousness of the
`
`claims over art combinations that include the Zaurus reference could have and
`
`should have been submitted with the Petition and not with the Reply or by way of a
`
`Supplemental Declaration after filing of a Reply. Notwithstanding Petitioners' glib
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`declaration that those opinions "were submitted to rebut Dr. Reinman's" opinions,
`
`the rules for these proceedings clearly state that,
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`[A] reply that raises a new issue or belatedly presents evidence
`will not be considered and may be returned. . . . Examples of
`indications that a new issue has been raised in a reply include new
`evidence necessary to make out a prima facie case for the . . .
`unpatentability of an original . . . claim, and new evidence that
`could have been presented in a prior filing.
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012)
`
`(emphasis added). Dr. Grimes' prior declarations accompanying the Petition (PX
`
`1021, PX 1022) make no mention whatsoever of Zaurus or of the obviousness of
`
`its combinations with any other cited art, despite Petitioner raising the issue of
`
`obviousness over combinations with Zaurus in the Petition itself.
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`Petitioners could have introduced Dr. Grimes' opinions regarding Zaurus by
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`means of a declaration accompanying the Petition. Petitioners instead chose to
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`introduce them by means of the Grimes Reply Declaration, plainly violating the
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`clear admonition against "new evidence that could have been presented in a prior
`
`filing." Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14,
`
`2012). The aforementioned paragraphs should be excluded at least under 37
`
`C.F.R. § 42.223; 37 C.F.R. § 42.23(b); 37 C.F.R. § 42, Office Patent Trial Practice
`
`Guide, part II, § I.
`
`4.
`
`Petitioners Belatedly Advances New Invalidity Theories In
`Violation of 37 C.F.R. § 42.23(b)
`
`SoftView objects to paragraphs 30 and 31 of the Supplemental Grimes
`
`Reply Declaration as containing opinions related to new prior art and new
`
`invalidity theories. Dr. Grimes states that the new "State of the Art" Section (¶¶
`
`142-165) in his Reply Declaration (PX 1030) were "intended to rebut Dr.
`
`Reinman's proposition that the Bederson, Hara and Zaurus references do not
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`disclose zoom on a column, image, or paragraphs, or tapping to zoom."
`
`Supplemental Grimes Reply Declaration ¶ 31. This is not a proper form of a reply.
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`If Dr. Grimes wanted to rebut Dr. Reinman's proposition regarding the failure of
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`Bederson, Hara, and Zaurus references to disclose zooming on a column, image or
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`paragraphs, or tapping to zoom, Dr. Grimes could have given his opinions on why
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`Dr. Reinman's analysis was wrong, not cite five brand new references (PX1037-
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`PX1041) and new arguments for obviousness. No doubt, both Petitioners and Dr.
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`Grimes are inviting the Board to rely on these belated references for obviousness
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`purposes. This is highly improper. Dr. Reinman was not given a chance to
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`consider these references and thus could not opine on them. SoftView has no
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`opportunity to respond to these references because Petitioners first raised them in a
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`reply and SoftView's request to file a sur-reply was denied by the Board. Neither
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`Petitioners nor Dr. Grimes has explained why these references could not have been
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`cited in the original Petition. If the Board were to rely on any of these new
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`references, it would improperly deprive SoftView and its expert of notice and an
`
`opportunity to respond.
`
`The Supplemental Grimes Reply Declaration is belated, outside the scope of
`
`Patent Owner's Response and impermissible supplemental evidence, and should be
`
`excluded. 37 C.F.R. § 42.223; 37 C.F.R. § 42.23(b); 37 C.F.R. § 42, Office Patent
`
`Trial Practice Guide, part II, § I; In re Biedermann et al., No. 2013-1080, slip op.
`
`at 15-17 (Fed. Cir. October 18, 2013).
`
`5.
`
`Other Belated Evidence
`
`SoftView objects to paragraphs 32-37 of the Supplemental Grimes Reply
`
`Declaration. Dr. Grimes claims that his belated opinions in the Grimes Reply
`
`Declaration were all rebuttal to Dr. Reinman's opinions or provide background
`
`information. Under Dr. Grimes' view, any evidence characterized as "rebuttal"
`
`would be allowable. That is false. These paragraphs should be excluded. 37
`
`C.F.R. § 42.223; 37 C.F.R. § 42.23(b); 37 C.F.R. § 42; Office Patent Trial Practice
`
`Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012).
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`B. OBJECTIONS TO EXHIBIT PX 1053 (SUPPLEMENTAL
`DECLARATION OF RICHARD J. LUTZ) AND ANY
`REFERENCE TO OR RELIANCE THEREON
`
`Patent Owner hereby objects to Exhibit PX 1053, Supplemental Declaration
`
`of Richard J. Lutz, Ph.D., dated October 11, 2013 ("Supplemental Lutz
`
`Declaration").
`
`Grounds for objection: 37 C.F.R. § 42.64 (Correction in the Form of
`
`Supplemental Evidence), F.R.E. 402 (Relevance), F.R.E. 403 (Excluding Relevant
`
`Evidence for Prejudice, Confusion, Waste of Time, or Other Reasons), 37 C.F.R. §
`
`42.223 (Filing of Supplemental Evidence), F.R.E. 602 (Lack of Personal
`
`Knowledge), F.R.E. 702, 703 (Impermissible Expert Testimony), F.R.E. 801, 802
`
`(Impermissible Hearsay).
`
`On September 30, 2013, Patent Owner filed its Reply Objections addressing
`
`transgressions of IPR rules and procedure arising from Petitioners' Reply dated
`
`September 23, 2013, and the accompanying Declaration of Richard J. Lutz, Ph.D.
`
`dated September 17, 2013 ("Lutz Declaration"). See IPR2013-00007, Paper No.
`
`29 (and exhibits thereto).
`
`The USPTO Rules and Regulations provide that, in response to objections to
`
`evidence formulated "with sufficient particularity to allow correction in the form
`
`of supplemental evidence," the party relying on the evidence may respond to the
`
`objection by filing such corrective supplemental evidence "within ten business
`
`days of service of the objection." 37 C.F.R. § 42.64(b)(1)-(2) (emphasis added).
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`But rather than pursuing "correction in the form of supplemental evidence,"
`
`(37 C.F.R. § 42.64(b)(1)), however, Petitioners merely extend the objectionable
`
`content presented in the Lutz Declaration by means of the Supplemental Lutz
`
`Declaration.
`
`In particular, Petitioners' expert reiterates the same objectionable opinions
`
`and draws generic and thinly supported legal conclusions about the propriety of his
`
`own testimony (e.g., Supplemental Lutz Declaration, ¶¶ 5, 7). In fact, much of the
`
`Supplemental Lutz Declaration constitutes attorney argument and legal
`
`conclusions in the guise of factual expert opinion testimony and is improper
`
`testimony not based on personal knowledge. F.R.E. 602. The arguments of
`
`counsel cannot take the place of evidence in the record (In re Schulze, 346 F.2d
`
`600, 602 (C.C.P.A. 1965)), and Petitioners' attempt to facilitate that by dressing
`
`those arguments as expert opinion, however thinly supported, should not be
`
`permitted.
`
`C. OBJECTIONS TO REVISED EXHIBIT PX 1032 AND ANY
`REFERENCE TO/RELIANCE THEREON
`
`Patent Owner hereby objects to Revised Exhibit PX 1032, deposition
`
`testimony of Pad++ developer Mr. Bederson regarding features and functionality
`
`of the Pad++ system ("the Bederson Testimony").
`
`Grounds for objection: 37 C.F.R. § 42.61 (Admissibility of Evidence),
`
`F.R.E. 402 (Relevance), F.R.E. 403 (Excluding Relevant Evidence for Prejudice,
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`Confusion, Waste of Time, or Other Reasons), 35 U.S.C. § 311 (testimony not
`
`patents or printed publications), 37 C.F.R. § 42.223 (Filing of Supplemental
`
`Evidence).
`
`Petitioners cite, by way of the Grimes Reply Declaration (¶¶ 123-128), to the
`
`deposition testimony of Dr. Bederson, developer of the Pad++ zoomable user
`
`interface. These citations are plainly intended to fill in the gaps of the Pad++
`
`references themselves. Id. However, Bederson's deposition testimony cannot
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`substitute for the disclosures of the actual references written by Bederson (PX
`
`1006) that Petitioners have alleged qualify as prior art to the claims at issue.
`
`Krippelz v. Ford Motor Co., 667 F.3d 1261, 1269 (Fed. Cir. 2012) ("[T]he
`
`opinions of [Mr. Krippelz's expert] are not a substitute for the actual [prior art]
`
`disclosure"). Bederson's testimony is not patents or printed publications.
`
`Bederson's present testimony cannot substitute or supplement the actual disclosures
`
`of past references alleged to be prior art, and its introduction for that purpose is
`
`inapposite. Accordingly, the Bederson Testimony is irrelevant in this context
`
`(F.R.E. 402), can serve only to prejudice the Patent Owner and confuse the issue of
`
`invalidity (F.R.E. 403), and should be excluded.
`
`III. CONCLUSION
`For at least these reasons, the Patent Owner objects to Revised Exhibit PX
`
`1032 and Exhibits PX 1052-1053, and objects to the citations to those Exhibit by
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`Petitioners.
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` Respectfully submitted,
`
`Dated: October 22, 2013
`
`By: /Ben Yorks/
`
`
`
` Ben Yorks
`
`IRELL & MANELLA LLP
`Ben Yorks, Esq.
`PTO Reg. No. 33,609
`Babak Redjaian, Esq.
`PTO Reg. No. 42,096
`840 Newport Center Drive, Suite 400
`Newport Beach, CA 92660
`Telephone: (949) 760-0991
`Fax: (949) 760-5200
`
`Attorneys for Patent Owner
`SoftView LLC
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`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6, the undersigned certifies that on October 22,
`
`2013, a copy of the foregoing document "PATENT OWNER'S OBJECTIONS
`TO SUPPLEMENTAL EVIDENCE PURSUANT TO 37 C.F.R. § 42.64" was
`served by electronic mail, as agreed to by the parties, upon the following:
`
`
`Richard P. Bauer (richard.bauer@kattenlaw.com)
`Michael Tomsa (michael.tomsa@kattenlaw.com)
`Eric C. Cohen (eric.cohen@kattenlaw.com)
`Katten Muchin Rosenman LLP
`2900 K Street NW – Suite 200
`Washington, DC 20007-5118
`(202) 625-3500 (tel)
`(202) 298-7570 (fax)
`
`
`Counsel for Kyocera Corporation.
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`
`
`John C. Alemanni (jalemanni@kilpatricktownsend.com)
`Candice C. Decaire (CDecaire@kilpatricktownsend.com)
`David A. Reed (DaReed@kilpatricktownsend.com)
`KILPATRICK TOWNSEND & STOCKTON LLP
`1001 West Fourth Street
`Winston-Salem, NC 27101-2400
`(336) 607-7311 (tel)
`(336) 734-2621 (fax)
`
`
`Counsel for Motorola Mobility LLC.
`
`
`
`
`
`
`
`
`
`
`
`
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`/Babak Redjaian/
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`
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`2904846
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