throbber
Paper No.
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`SONY CORPORATION
`Petitioner
`
`v.
`
`Patent of YISSUM RESEARCH DEVELOPMENT COMPANY OF THE
`HEBREW UNIVERSITY OF JERUSALEM
`Patent Owner
`___________________
`
`Case IPR2013-00219 (SCM)1
`Patent 7,477,284
`Title: SYSTEM AND METHOD FOR CAPTURING AND VIEWING
`STEREOSCOPIC PANORAMIC IMAGES
`_____________________
`
`
`Before SALLY C. MEDLEY, KARL D. EASTHOM, and
`JAMES B. ARPIN, Administrative Patent Judges.
`
`_____________________
`
`
`PATENT OWNER’S MOTION TO EXCLUDE
`UNDER 37 C.F.R. § 42.64(c)
`
`
`
`
`
`1 The IPR2013-00327 proceeding has been joined with this proceeding.
`
`
`

`
`Patent Owner’s Motion to Exclude
`IPR2013-00219 (Patent 7,477,284)
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ............................................................................................. 2
`
`II. PATENT OWNER TIMELY OBJECTED ....................................................... 2
`
`III. ARGUMENT .................................................................................................... 3
`
`A. Exhibit SONY-1042 Should be Excluded Under FRE §§ 801 and 901 ....... 3
`
`B. Exhibit SONY-1042 Should be Excluded Under 37 CFR § 42.23(b) and
`37 CFR § 42.123 .................................................................................................... 5
`
`C. Passages of exhibit SONY-1043 Should be Excluded Under 37 C.F.R. §
`42.64(a) .................................................................................................................. 7
`
`D. Exhibit SONY-1044 Should be Excluded Under 37 CFR § 42.23(b) and
`37 CFR § 42.123 .................................................................................................... 7
`
`IV. CONCLUSION ..............................................................................................11
`
`CERTIFICATE OF SERVICE ............................................................................14
`
`
`
`
`
`
`
`1
`
`

`
`I.
`
`INTRODUCTION
`
`Patent Owner’s Motion to Exclude
`IPR2013-00219 (Patent 7,477,284)
`
`
`In accordance with 37 C.F.R. § 42.64(c), the Scheduling Order (Paper 17) at
`
`4-5 of September 23, 2013, and the Order (Paper 35) of April 7, 2014, Yissum
`
`Research Development Company of the Hebrew University of Jerusalem (“Patent
`
`Owner”) respectfully moves to exclude exhibits SONY-1042 and 1044, submitted
`
`by Sony Corporation (“Petitioner”). Petitioner’s exhibit SONY-1042 was
`
`introduced during the deposition of Dr. Essa conducted on March 10, 2014, and
`
`Petitioner submitted exhibits SONY-1042 and 1044 for the first time on March 24,
`
`2014, in connection with Petitioner’s Reply (Paper 37).
`
`II.
`
`PATENT OWNER TIMELY OBJECTED
`
`Timely objections were made to SONY-1042 during the deposition of Dr.
`
`Essa as beyond the scope of direct testimony and unauthenticated. See SONY-1043
`
`at 61:20-25. Additionally, Patent Owner timely objected to SONY-1042 as
`
`inadmissible hearsay, unauthenticated, untimely and improper, within five business
`
`days of Petitioner filing the exhibit in connection with Petitioner’s Reply, in
`
`accordance with 37 C.F.R. § 42.64(b)(1) . See YRD-2017 at 2-3. Patent Owner
`
`also timely objected to SONY-1044 as untimely and improper, within five business
`
`days of Petitioner filing the exhibit in connection with Petitioner’s Reply. Id. at 1-
`
`2. Patent Owner now seeks to exclude each of these exhibits and any arguments or
`
`testimony that relies on them.
`
`
`
`2
`
`

`
`Patent Owner’s Motion to Exclude
`IPR2013-00219 (Patent 7,477,284)
`
`
`III. ARGUMENT
`
`
`A. Exhibit SONY-1042 Should be Excluded Under FRE §§ 801 and
`901
`
`Petitioner first introduced SONY-1042, purporting to be an entry of the
`
`Wikipedia web-site related to stereoscopy, in connection with the deposition of
`
`Patent Owner’s witness Dr. Essa, on March 10, 2014. Patent Owner, during the
`
`deposition, timely objected to the admissibility of the evidence as beyond the scope
`
`of direct testimony and as unauthenticated. SONY-1043 at 61:20-25.
`
`Petitioner also submitted the Wikipedia entry (SONY-1042) in connection
`
`with Petitioner’s Reply (Paper 37), filed on March 24, 2014. Petitioner, on pages
`
`12 -13 of Paper 37 cited and relied on pages 12 and 13 of the Wikipedia entry
`
`(SONY-1042) and Dr. Darrell in his second declaration at ¶¶ 15-16 of SONY-1044
`
`cited and relied on pages 11-13 of the Wikipedia entry (SONY-1042). Patent
`
`Owner again timely objected to SONY-1042 and upon its reliance in the present
`
`inter partes review proceeding. Specifically, Patent Owner served Objections to
`
`exhibit SONY-1044 on Petitioner’s counsel by electronic mail, on March 27, 2014,
`
`within five business days of Petitioner’s filing of the exhibit. 37 C.F.R. §
`
`42.64(b)(1). Because the parties had previously agreed to accept service by
`
`electronic mail, the electronic service of the Objection was sufficient. 37 C.F.R. §
`
`42.6(e)(1). In its Objections, Patent Owner objected to the exhibit as hearsay
`
`
`
`3
`
`

`
`Patent Owner’s Motion to Exclude
`IPR2013-00219 (Patent 7,477,284)
`
`
`under Federal Rule of Evidence (“FRE”) 801 (not subject to any hearsay
`
`exceptions) and under FRE 901 as lacking authentication. YRD-2017 at 2-4.
`
`The Board has already found statements in Wikipedia entries to be
`
`inherently untrustworthy. See, e.g., Ex parte Bailey, No. 2010-010310,
`
`Application No. 11,168,650, 2013Pat. App. LEXIS 2470 (Pat. App. Apr. 25, 2013)
`
`(“Wikipedia has limited probative value in view of its dubious reliability. Among
`
`other things, Wikipedia is not peer reviewed, the authors are unknown, and
`
`apparently anyone can contribute.”). And it is well recognized that websites are
`
`not self-authenticating. See e.g. St. Luke’s Contract and Laser Institute v.
`
`Sanderson, No. 8:06-CV-223-T-MSS, 2006 WL 1320242, *2 (M.D. Fla. 2006)
`
`(excluding Internet documents because “web-sites are not self-authenticating.”)
`
`In an attempt to purportedly authenticate the Wikipedia entry (SONY-1042),
`
`Petitioner subsequently served Patent Owner with a declaration of its attorney,
`
`Michael Sander, declaring how he had created the exhibit. See YRD-2018. This
`
`attempt at curing the objections fails because Mr. Sander does not have the
`
`necessary personal knowledge regarding the exhibit. See,e.g., Novak, 2007 U.S.
`
`Dist. LEXIS 21269, *17-18 (“As Novak proffers neither testimony nor sworn
`
`statements attesting to the authenticity of the contested web page exhibits by any
`
`employee of the companies hosting the sites from which plaintiff printed the pages,
`
`
`
`4
`
`

`
`Patent Owner’s Motion to Exclude
`IPR2013-00219 (Patent 7,477,284)
`
`
`such exhibits cannot be authenticated as required under the Rules of Evidence.”)
`
`(citations omitted, emphasis added).
`
`Petitioner also served the declaration of Leonard Barton (YRD-2019),
`
`purportedly to cure the objections. In the declaration, Mr. Barton purported to
`
`describe how he had allegedly captured certain images illustrated at the bottom
`
`page 13 of the Wikipedia entry (SONY-1042), under the heading “A Practical
`
`Example.” Notably, when cross-examined regarding the text Petitioner relied
`
`upon, at pages 11-13 of the Wikipedia entry (SONY-1042) (not including the text
`
`of the “Practical Example” section on page 13), Mr. Burton testified that he “did
`
`not write any of that.” YRD-2020 at page 22 lines 9-20 (emphasis added). As
`
`such, Mr. Barton did not cure the hearsay and authentication objections to exhibit
`
`SONY-1042. Petitioner, thus, failed to meet its burden under FRE §§ 801 and 901.
`
`Accordingly, the Wikipedia entry (SONY-1042) should be excluded and any
`
`arguments in Petitioner’s Reply (Paper 37 at 12-13) or testimony of its expert
`
`declarant (SONY-1044 at ¶¶ 15-16) relying on and promulgating the
`
`unauthenticated hearsay evidence should be stricken from the record.
`
`B.
`Exhibit SONY-1042 Should be Excluded Under 37 CFR § 42.23(b)
`and 37 CFR § 42.123
`
`Patent Owner also objected to the Wikipedia entry (SONY-1042) as
`
`untimely and improper under 37 CFR § 42.23(b) and 37 CFR § 42.123, in
`
`
`
`5
`
`

`
`Patent Owner’s Motion to Exclude
`IPR2013-00219 (Patent 7,477,284)
`
`
`connection with its submission as an exhibit to Petitioner’s Reply. See YRD-2017
`
`at 2. The Office Patent Trial Practice Guide states that “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 patentability or
`
`unpatentability of an original or proposed substitute claim, and new evidence that
`
`could have been presented in a prior filing.” Office Patent Trial Practice Guide,
`
`II.I, 77 Fed. Reg. 48756, 48787 (Aug. 14, 2012) (emphasis added).
`
`Petitioner’s Reply (Paper 37 at 12-13) belatedly presented the Wikipedia
`
`entry (SONY-1042). Petitioner could have presented the exhibit in a prior filing
`
`(i.e., with the Petition or within one month of the date the trial was instituted
`
`pursuant to 37 CFR § 42.123). Petitioner, however, chose not to do so and
`
`provided no explanation as to why the Wikipedia entry (SONY-1042) could not
`
`have been presented in a prior filing. It is further noted that Petitioner’s reliance in
`
`its Reply on SONY-1042 is not responsive to arguments raised for the first time in
`
`Patent Owner’s Response. Indeed, Patent Owner in its Response does not rely on
`
`the Wikipedia entry and makes no arguments based on the Wikipedia entry.
`
`Consequently, Petitioner’s Reply exceeds the scope of the reply permitted by 37
`
`CFR § 42.23(b).
`
`
`
`6
`
`

`
`Patent Owner’s Motion to Exclude
`IPR2013-00219 (Patent 7,477,284)
`
`
`Since Petitioner could have submitted Exhibit SONY-1042 in a prior filing
`
`and its Reply’s reliance on SONY-1042 is not responsive to any arguments raised
`
`by Patent Owner for the first time, the submission of exhibit SONY-1042 is
`
`untimely. Accordingly, exhibit SONY-1042 should be excluded and any
`
`arguments in Petitioner’s Reply (Paper 37 at 12-13) or testimony of its expert
`
`declarant (SONY-1044 at ¶¶ 15-16) relying on the untimely evidence should be
`
`stricken from the record.
`
`C.
`Passages of exhibit SONY-1043 Should be Excluded Under 37
`C.F.R. § 42.64(a)
`
`Passages of Petitioner’s exhibit SONY-1043 at 52:8 – 72:11 include
`
`testimony on issues not addressed in Dr. Essa’s declaration, i.e., relate to the
`
`Wikipedia entry (SONY-1042), and thus fall outside the scope of his direct
`
`testimony. Pursuant to 37 C.F.R. § 42.64(a), during the deposition, Patent Owner
`
`timely objected to the admissibility of the evidence as beyond the scope and
`
`lacking authentication. See SONY-1043 at 53:5-9 and 61:20-25. As discussed
`
`above, Petitioner failed to cure the objections. Therefore, the passages at 52:8 –
`
`72:11 of exhibit SONY-1043 should be excluded.
`
`D. Exhibit SONY-1044 Should be Excluded Under 37 CFR § 42.23(b)
`and 37 CFR § 42.123
`
`Petitioner submitted the second declaration of Dr. Trevor Darrell as exhibit
`
`SONY-1044, in connection with its Reply (Paper 37). Petitioner on pages 12 to 15
`
`
`
`7
`
`

`
`Patent Owner’s Motion to Exclude
`IPR2013-00219 (Patent 7,477,284)
`
`
`of Paper 37 cited and relied on Dr. Darrell’s testimony at ¶¶ 23-24 of SONY-1044
`
`in support of its arguments regarding the Asahi reference (SONY-1010). Patent
`
`Owner objected to SONY-1044, within five business days of Petitioner’s filing of
`
`the exhibit. 37 C.F.R. § 42.64(b)(1). Specifically, Patent Owner objected to
`
`SONY-1044 as untimely and improper under 37 CFR §§ 42.23(b) and 42.123. See
`
`YRD-2017 at 2-3. No supplemental evidence was submitted by Petitioner
`
`pursuant to 37 C.F.R. § 42.64(b)(1).
`
`
`
`The testimony of Dr. Darrell at ¶¶ 23-24 of SONY-1044 is not responsive to
`
`issues raised for the first time by Patent Owner. To the contrary, Dr. Darrell’s
`
`testimony in SONY-1044 supports arguments that were first raised by Petitioner.
`
`Specifically, Petitioner made the term “stereoscopic viewing” as used in the Asahi
`
`reference (SONY-1010) a central issue, by arguing in the Petition that this
`
`disclosure meets claim limitations of the ’284 Patent:
`
`Two of these three panoramic images are capable of providing a
`
`perception of depth when viewed simultaneously by the respective
`
`eyes. Id. ¶¶ 0035 (“stereoscopic viewing is possible using tis forward
`
`image, this nadir view image, and this rearward view image.”)
`
`Paper 3 at 49. Petitioner, however, made the strategic decision to not have its
`
`expert declarant, Dr. Darrell, provide any testimony whatsoever as to what Asahi
`
`means when it uses the term “stereoscopic viewing.” See YRD-2008 at 131-132
`
`
`
`8
`
`

`
`Patent Owner’s Motion to Exclude
`IPR2013-00219 (Patent 7,477,284)
`
`
`(Dr. Darrell testifying that he “was not asked to make any opinions” regarding
`
`Asahi.) This prompted Patent Owner in its Response to note that “Sony elected to
`
`not provide any expert testimony regarding Asahi or the meaning of the terms used
`
`there, but rather relied completely on attorney argument.” Paper 35 at 25
`
`(emphasis in original).
`
`And, Petitioner recognized that the term “stereoscopic viewing,” as allegedly
`
`disclosed in the Asahi reference (SONY-1010), was a central issue at the time of
`
`filing its Petition. This awareness is evidenced by the fact that Petitioner originally
`
`produced an English translation of the Asahi reference (YRD-2012) that did not
`
`include the term “stereoscopic viewing” and subsequently, for the purposes of the
`
`present inter partes review, produced another English translation of the Asahi
`
`reference (SONY-1010) that included the term “stereoscopic viewing.” (Compare
`
`YRD-2012 and SONY-1010 at ¶ [0035].) Petitioner was also aware, in part based
`
`on arguments made by Patent Owner in its Preliminary Response (Paper 12 at 32-
`
`39), that the term “stereoscopic viewing,” as allegedly used in Asahi was at issue.
`
`Petitioner, however, failed to file a supplemental declaration from its expert
`
`declarant, Dr. Darrell, in connection with the Asahi reference (SONY-1010),
`
`within one month of the date the trial was instituted, pursuant to 37 CFR § 42.123.
`
`Moreover, when Patent Owner attempted to cross-examine Dr. Darrell
`
`
`
`9
`
`

`
`regarding the Asahi reference (SONY-1010), in preparing its Response, Petitioner
`
`Patent Owner’s Motion to Exclude
`IPR2013-00219 (Patent 7,477,284)
`
`
`objected as beyond the scope. See Exhibit YRD-2008 at 131 (“Q. Are you familiar
`
`with an Asahi article in this case? MR. HANLEY: Objection, beyond the scope of
`
`the direct.”) And, during the cross-examination, Dr. Darrell made it virtually
`
`impossible for Patent Owner to obtain any meaningful answers regarding the Asahi
`
`reference (SONY-1010), stating that “I haven’t seen this specific document before”
`
`and that “I was not asked to make any opinions, nor have I formed any opinions.”
`
`YRD-2008 at 131-132. As a result, Patent Owner was unable to prepare its
`
`Response in view of the testimony of Petitioner’s expert declarant regarding the
`
`Asahi reference (SONY-1010).
`
`After holding back testimony evidence regarding the Asahi reference
`
`(SONY-1010), Petitioner now appears to be trying to game the system by
`
`introducing and relying on Dr. Darrell’s testimony in its Reply (Paper 37) at 12-15,
`
`to support the argument first raised in the Petition – namely, that the Asahi
`
`reference (SONY-1010) allegedly uses the term “stereoscopic viewing” to describe
`
`stereo images that provide a perception of depth. The Office Patent Trial Practice
`
`Guide counsels against such gaming. See Office Patent Trial Practice Guide II.I,
`
`77 Fed. Reg. 48707, Comments 91-93. Because Dr. Darrell’s testimony in exhibit
`
`SONY-1044, relied on in Petitioners Reply (Paper 37), addresses issues first raised
`
`
`
`10
`
`

`
`Patent Owner’s Motion to Exclude
`IPR2013-00219 (Patent 7,477,284)
`
`
`in the Petition, the testimony is untimely under 37 CFR §§ 42.23(b) and 42.123.
`
`In view of the above, Patent Owner submits that the second declaration of
`
`Dr. Trevor Darrell (SONY-1044 at ¶¶ 23-24) is untimely and Petitioner’s
`
`arguments presented in its Reply (Paper 37 at 12 to 15), which rely on this
`
`untimely testimony, are outside the scope of a proper reply under 37 CFR §
`
`42.23(b) and both should be stricken from the record.
`
`IV. CONCLUSION
`
`For the forgoing reasons, Patent Owner respectfully requests that the Board
`
`grant the instant Motion to Exclude and proceed to exclude exhibits SONY-1042
`
`and SONY-1044 and the identified arguments and testimony that relies on these
`
`exhibits.
`
`
`
`
`
`
`
`
`
`Dated: May 13, 2014
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`/David L. McCombs/
`David L. McCombs
`Registration No. 32,271
`HAYNES AND BOONE, LLP
`
`
`
`
`
`
`
`11
`
`

`
`Patent Owner’s Motion to Exclude
`IPR2013-00219 (Patent 7,477,284)
`
`
`IPR2013-00219
`
`Sony Corp.
`
`v.
`
`Yissum Research Development Company of the Hebrew University of Jerusalem
`
`
`
`Yissum Research Development Company’s Exhibit List
`
`May 13, 2014
`
`
`
`YRD-2001
`
`Affidavit of Mr. William P. Nelson in Support of Motion for Pro
`
`Hac Vice Admission.
`
`YRD-2002
`
`Affidavit of Mr. Robert L. Gerrity in Support of Motion for Pro
`
`Hac Vice Admission.
`
`YRD-2003
`
`Depth Perception Defined,
`
`http://whatis.techtarget.com/definition/stereoscopy-stereoscopic-
`
`imaging
`
`YRD-2004
`
`Declaration of Robert Gerrity In Support of Opposition to
`
`Joinder.
`
`YRD-2005
`
`Declaration of Vered Levy-Ron In Support of Opposition to
`
`Joinder.
`
`YRD-2006
`
`Photogrammetry Defined, Webster’s II New College Dictionary,
`
`Third Edition, 2005, page 849.
`
`YRD-2007
`
`Exemplary Stereoscopic Image.
`
`YRD-2008
`
`Deposition of Dr. Trevor Darrell, November 6, 2013.
`
`YRD-2009
`
`CV of Irfan Essa Ph.D.
`
`YRD-2010
`
`Declaration of Irfan Essa Ph.D.
`
`
`
`12
`
`

`
`Patent Owner’s Motion to Exclude
`IPR2013-00219 (Patent 7,477,284)
`
`
`YRD-2011
`
`3D Images of Digital Elevation Maps.
`
`YRD-2012
`
`Sony’s Original Translation of Asahi.
`
`YRD-2013
`
`Sony’s Original Translation of Kawakita.
`
`YRD-2014
`
`Deposition of Dr. Trevor Darrell, April 15, 2014.
`
`YRD-2015
`
`Hand Drawing of Optical Flow Calculation with Camera
`
`Rotating in the Center of an Axis.
`
`YRD-2016
`
`Hand Drawing of Optical Flow Calculation with Camera
`
`Rotating on an Arm About an Axis.
`
`
`
`Currently Filed
`
`YRD-2017
`
`Patent Owner’s Objection to Evidence
`
`YRD-2018
`
`Declaration of Michael Sander, March 24, 2014.
`
`YRD-2019
`
`Declaration of Leonard Barton, April 5, 2014.
`
`YRD-2020
`
`Deposition of Leonard Barton, April 15, 2014.
`
`
`
`
`
`13
`
`

`
`Patent Owner’s Motion to Exclude
`IPR2013-00219 (Patent 7,477,284)
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`SONY CORPORATION
`Petitioner
`v.
`Patent of YISSUM RESEARCH DEVELOPMENT COMPANY OF THE
`HEBREW UNIVERSITY OF JERUSALEM
`Patent Owner
`___________________
`Case IPR2013-00219 (SCM)2
`Patent 7,477,284
`Title: SYSTEM AND METHOD FOR CAPTURING AND VIEWING
`STEREOSCOPIC PANORAMIC IMAGES
`_____________________
`
`CERTIFICATE OF SERVICE
`The undersigned certifies, in accordance with 37 C.F.R. § 42.205, that service was
`made on the Petitioner as detailed below.
`
`
`Date of service May 13, 2014
`Manner of service Electronic Mail: (Sony-HumanEyes@kenyon.com);
`Walter Hanley (whanley@kenyon.com); and
`Michelle Carniaux (mcarniaux@kenyon.com)
`
`Documents served PATENT OWNER’S MOTION TO EXCLUDE;
`UPDATED EXHIBIT LIST; AND
`EXHIBITS YRD-2017 through YRD-2020
`
`Persons served Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004
`
`
`
`
`/ David L. McCombs /
`David L. McCombs
`Registration No. 32,271
`
`
`
`
`
`
`
`
`
`2 The IPR2013-00327 proceeding has been joined with this proceeding.
`
`
`
`
`14

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