`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________
`
`ZYNGA, INC.
`Petitioner
`
`V.
`
`PERSONALIZED MEDIA COMMUNICATIONS LLC
`Patent Owner
`___________________________
`
`Case No. IPR2013-00164
`U.S. Patent No. 7,797,717
`___________________________
`
`PATENT OWNER OBJECTIONS TO EVIDENCE AND OBJECTION TO
`PETITIONER’S REPLY
`
`
`
`
`
`
`
`
`
`
`
`Pursuant to 37 C.F.R. §42.64, Patent Owner Personalized Media
`
`Communications LLC (“Patent Owner”) hereby notices its objections to the
`
`January 24, 2014 submission by Petitioner of new evidence in its “Petitioner’s
`
`Reply to Patent Owner’s Response,” (the “Reply”). Patent Owner files the
`
`objections to bring the impropriety of the Reply to the attention of the Patent Trial
`
`and Appeal Board, and to preserve Patent Owner’s right to later file a motion to
`
`exclude, strike, or other suitable motion.
`
`Patent Owner objects to the Reply because it relies on and attaches the
`
`following documents: (1) James Bessen and Michael J. Meurer, The Direct Costs
`
`from NPE Disputes, 99 Cornell L. Rev. (forthcoming 2014) (Exhibit 1016); (2)
`
`Alexander M. Bell, An Autopsy on Submarine Patents, Departments of Economics
`
`and Computer Science, Brown University (April 2013) (Exhibit 1018); and (3)
`
`Patent Assertion and U.S. Innovation, Executive Office of the President (June
`
`2013) (Exhibit 1017). Patent Owner objects to the Reply’s reference to these
`
`exhibits on at least the following grounds:
`
` The exhibits are irrelevant (FRE 401);
`
` The exhibits are unduly prejudicial and confuse the issues (FRE 403);
`
` The exhibits exceed the scope allowed for reply evidence under
`
`Section I of the Office Patent Trial Practice Guide, which requires that
`
`reply evidence be responsive to the corresponding opposition and not
`
`
`
`
`
`present new evidence that could have been presented earlier. See 77
`
`Fed. Reg. 48756, 48767; see also 37C.F.R. § 42.23 (requiring that a
`
`reply may only respond to arguments raised in the corresponding
`
`opposition); and
`
` The Reply exceeds the permissible scope of a reply paper under 37
`
`C.F.R. §42.23(b) (“A reply may only respond to arguments raised in
`
`the corresponding opposition or patent owner response.”).
`
`Patent Owner therefore requests that the Patent Trial and Appeal Board
`
`refuse to consider the Reply and the aforementioned exhibits in accordance with
`
`the guidance provided in the Office Patent Trial Practice Guide. Patent Owner
`
`further files this objection out of an abundance of caution to preserve its right to
`
`file, on or before DUE DATE 4 (March 17, 2014), a motion to exclude, and/or to
`
`seek authorization to file a motion to strike, or to take other appropriate action, as
`
`the facts may warrant.
`
`
`
`Dated: January 31, 2014
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`By /Thomas J. Scott, Jr./
`Thomas J. Scott, Jr.
` Registration No.: 27,836
`Stephen T. Schreiner
` Registration No.: 43,097
`GOODWIN PROCTER LLP
`
`2
`
`
`
`
`
`
`
`
`
`
`
`901 New York Avenue, NW
`Washington, DC 20001
`(202) 346-4000
`Attorneys for Patent Owner
`
`3
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`The undersigned hereby certifies that a copy of the:
`
`PATENT OWNER OBJECTIONS TO EVIDENCE AND OBJECTION TO
`
`PETITIONER’S REPLY
`
`filed herewith was served on:
`
`
`David B. Cochran at dcochran@jonesday.com
`and
`Joseph M. Sauer at jmsauer@jonesday.com
`
`
`pursuant to 37 C.F.R. § 42.6(e)(1) and the consent found in Section VI.C of the
`
`Petition (Paper No. 1) and repeated in the Section VI.C of the Supplemental
`
`Petition (Paper No. 4).
`
`
`
`Dated: January 31, 2014
`
`
`
`
`
`By:
`
` /Thomas J. Scott, Jr./
`
`
`
`
`
`
`
`
`
`