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 OPPOSITION TO MOTION TO EXCLUDE
`
`1 The IPR2013—00327 proceeding has been joined with this proceeding.
`
`
`
`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 OPPOSITION TO MOTION TO EXCLUDE
`
`1 The IPR2013—00327 proceeding has been joined with this proceeding.
`
`
`
`Patent Owner’s Opposition to Motion to Exclude
`IPR2013—0021 9 (Patent 7,477,284)
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ............................................................................................ 1
`
`II. STATEMENT OF MATERIAL FACTS IN DISPUTE ..................................... 1
`
`III. STATEMENT OF RELIEF REQUESTED ....................................................... 1
`
`IV. REASONS WHY PETITIONER’S MOTION TO EXCLUDE SHOULD BE
`
`DENIED ................................................................................................................ l
`
`A. Exhibits YRD—2012 and YRD—2013 are Relevant to the Issues in the
`
`Present Proceeding and Petitioner Failed to Serve This Evidence as
`Required by Applicable Rules .................................................................... l
`
`B. Exhibits YRD—2012 and YRD—2013 Were Properly Introduced to
`Address Issues Raised by Petitioner ........................................................... 7
`
`C. The Motion is an Attempt to Exclude Evidence that is Necessary in the
`Interest—of—Justice ........................................................................................ 9
`
`V. CONCLUSION .............................................................................................. 10
`
`CERTIFICATE OF SERVICE ......................................................................... 11
`
`ii
`
`
`
`Patent Owner’s Opposition to Motion to Exclude
`IPR2013—0021 9 (Patent 7,477,284)
`
`I.
`
`INTRODUCTION
`
`In accordance with 37 CPR. § 42.23 and the Scheduling Order (Paper 17) at
`
`4-5 of September 23, 2013, Yissum Research Development Company of the
`
`Hebrew University of Jerusalem (“Patent Owner”) submits this Opposition in
`
`response to Sony Corporation’s (“Petitioner”) Motion to Exclude (Paper 47), filed on
`
`May 14, 2014.
`
`II.
`
`STATEMENT OF MATERIAL FACTS IN DISPUTE
`
`Petitioner did not submit a statement of material facts in its Motion to Exclude.
`
`Accordingly, Patent Owner neither denies nor admits any facts.
`
`III.
`
`STATEMENT OF RELIEF REQUESTED
`
`Patent Owner requests that Petitioner’s Motion to Exclude be denied.
`
`IV. REASONS WHY PETITIONER’S MOTION TO EXCLUDE SHOULD
`
`BE DENIED
`
`A.
`
`Exhibits YRD-2012 and YRD-2013 are Relevant to the Issues in
`
`the Present Proceeding and Petitioner Failed to Serve This Evidence as
`Required by Applicable Rules
`
`Petitioner in its Motion (Paper 47 at 3) asserts that exhibits YRD—2012 and
`
`YRD—2013, original translations of Kawakita and Asahi produced by Petitioner in
`
`previous litigation, are irrelevant and that Patent Owner waived its objections. These
`
`assertions fail as discussed below.
`
`Contrary to Petitioners assertion, exhibits YRD—2012 and YRD—2013 are
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`directly relevant to issues in the present inter partes review proceeding. These
`
`exhibits are the original translations of Kawakita and Asahi that were produced by
`
`1
`
`
`
`Patent Owner’s Opposition to Motion to Exclude
`IPR2013—0021 9 (Patent 7,477,284)
`
`Petitioner Sony in previous litigation, and which are materially different than the
`
`translations of these references, i.e., SONY—1004 and SONY—1010, submitted in the
`
`present inter partes review proceeding. Compare YRD—20 12 to SONY—1 010 and
`
`YRD—2013 to SONY—2003. The original translations are also inconsistent with
`
`positions advanced by Petitioner. See 6. g. , Patent Owner’s Motion for Observation,
`
`Paper 43 at 11 2 and W 4—5. Therefore, exhibits YRD—2013 and YRD—2012 are
`
`relevant to issues in the present proceeding.
`
`Petitioner’s second assertion — that Patent Owner waived its objections — is a
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`red herring, designed to detract from evidence of Petitioner’s failure to comply with
`
`applicable rules in the present inter partes review proceeding. Pursuant to 37
`
`CPR. § 42.51(b)(1)(iii) “[u]nless previously served, a party must serve relevant
`
`information that is inconsistent with a position advanced by the party during the
`
`proceeding concurrent with the filing of the documents or things that contains the
`
`inconsistency.” In the present case, Petitioner was fully aware of the inconsistencies
`
`between the translations of these references, since Petitioner is the one that
`
`specifically sought out, obtained, and relied upon the different translations of
`
`Kawakita (SONY—1004) and Asahi (SONY—1010) in its Petition. In doing so,
`
`however, Petitioner failed to serve Patent Owner’s counsel with the inconsistent
`
`original translations of Kawakita and Asahi, in the present proceeding, as required by
`
`37 C.F.R. § 42.51(b)(1)(iii).
`
`
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`Patent Owner’s Opposition to Motion to Exclude
`IPR2013—0021 9 (Patent 7,477,284)
`
`Rather than explaining why it failed to comply with applicable rules, Petitioner
`
`in its Motion attempts to excuse itself by arguing that these documents were produced
`
`during previous litigation. See Paper 47 at 4—5. But this does not excuse Petitioner
`
`from serving Patent Owner’s counsel with the inconsistent evidence in the present
`
`inter gartes review proceeding. See C.F.R. § 42.51(b)(1)(iii) “a party must serve
`
`relevant information that is inconsistent
`
`concurrent with the filing.”; see also 37
`
`
`C.F.R. §§ 42.6(e) (3) noting that “[i]f a party is represented by counsel of record in the
`
`proceeding, service must be on counsel.” If Petitioner had properly served Patent
`
`Owner’s counsel as required by the rules, such service would have been reflected in
`
`Petitioner’s exhibit list. See 37 C.F.R. §§ 42.63(e) noting that “[e]ach party must
`
`maintain an exhibit list with the exhibit number and a brief description of each exhibit.
`
`If the exhibit is not filed the exhibit list should note that fact.” Petitioner’s exhibit list
`
`does not note that these translations were served. Given that Petitioner had “a duty of
`
`candor and good faith to the Office” under 37 C.F.R. §§ 42.11, Petitioner should have
`
`put Patent Owner’s counsel and the Board on notice that it had obtained different
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`translations specifically for the purposes of the present proceeding. It failed to do so.
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`Therefore, Petitioner is not excused from failing to comply with applicable rules.
`
`Petitioner in its Motion also fails to provide any explanation as to why it was
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`necessary to change its position and obtain different translations of Kawakita and
`
`Asahi for the purposes of the present inter partes review proceeding. The Trial
`
`
`
`Practice Guide 11.1, 77 Fed. Reg. 48640, Comment 128 (Aug. 14, 2012), makes clear
`
`Patent Owner’s Opposition to Motion to Exclude
`1PR2013—0021 9 (Patent 7,477,284)
`
`that a party seeking to take inconsistent action should “provide the Office with an
`
`explanation for the change.”
`
`Here, the only apparent justification that Petitioner proffers in its Motion for
`
`obtaining different translations, is that the original Kawakita translation (YRD—2013)
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`is of the “paper only” while the second Kawakita translation (SONY—1004) filed with
`
`the Petitioner, “is a certified English translation of the entire booklet.” Paper 47 at 2.
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`However, this purported explanation is insufficient since the original Kawakita
`
`translation (YRD—2013) is also a certified translation and only the Kawakita paper is
`
`at issue in the present proceeding — not the entire booklet. Also, Petitioner provides
`
`no explanation whatsoever as to why it was necessary to obtain a second translation of
`
`Asahi (SONY—1010). One can only speculate, but it appears that Petitioner obtained
`
`the second translation in an attempt to make Asahi seem more closely related to the
`
`subject matter of the ’003 Patent by having it include new terms such as “stereoscopic
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`viewing.” Compare SONY—1010 and YRD—2012 at 11 [0035].
`
`Patent Owner additionally notes that Petitioner’s argument in its Motion
`
`(Paper 47 at 5) that “Patent Owner also had the opportunity to cross—examine the
`
`translators” is unpersuasive in view of the reason underlying the promulgation of 37
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`CPR. § 42.51(b)(1)(iii). The Trial Practice Guide 11.1, 77 Fed. Reg. 48640,
`
`Comment 124, addressed this very issue and recognized that “[w]hile a patent
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`
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`Patent Owner’s Opposition to Motion to Exclude
`IPR2013—0021 9 (Patent 7,477,284)
`
`owner could obtain evidence of a petitioner’s contrary [information] through
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`additional discovery once the trial is instituted, the Office believes that the better
`
`course of action is to have the petitioner provide any inconsistent |information|
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`earlier in the process, such that the patent owner could potentially address the
`
`inconsistency in its preliminary patent owner response.” The Trial Practice Guide
`
`at Comment 122 filrther states that “[t]he information sought by the final rule
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`[C.F.R. § 42.51(b)(1)(iii)] typically is sought through discovery, which risks
`
`significant delay on the proceeding and increased burdens on both parties. To avoid
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`these issues, and to reduce costs and ensure the integrity and timeliness of the
`
`proceeding, the production of the targeted information is made routine.”
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`Further, and contrary to Petitioner’s contention in its Motion, Patent Owner
`
`did n_ot “choose to spring YRD—2012 and YRD—2013 on Prof Darrell at his second
`
`deposition.” Paper 47 at 5. Indeed, Patent Owner did not have any choice in the
`
`matter at all. Patent Owner’s counsel discovered the differences in the translations
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`(which were not identified by Petitioner) well after filing its Patent Owner’s
`
`Response, just before Dr. Darrell’s second deposition. Contrary to Petitioners
`
`contention, if Patent Owner could have chosen, it would have chosen to be served
`
`the inconsistent original translations of Kawakita and Asahi by Petitioner, as
`
`required by applicable inter parte review rules. And, if Petitioner would have
`
`provided Dr. Darrell with all of the evidence in its possession there would have been
`
`
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`nothing to allegedly “spring” on him.
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`Patent Owner’s Opposition to Motion to Exclude
`1PR2013—0021 9 (Patent 7,477,284)
`
`Further still, had Petitioner actually followed the rules and properly served
`
`Patent Owners counsel in the present inter partes review proceeding, Patent Owner
`
`would have had reason to question the accuracy of the translations of Kawakita
`
`(SONY—1004) and Asahi (SONY—1010) submitted with the Petition and develop a
`
`complete record on this issue. A complete record would have answered important
`
`questions, such as “why were the original translations not sufficient?” “how many
`
`other translations did Petitioner actually obtain and now is failing to disclose?”
`
`“what do these other translations say?” “what guidance, if any, was given to the
`
`translators regarding which terms to use?” Once it was realized that the accuracy
`
`of Petitioner’s proffered translations is questionable, Patent Owner would have
`
`obtained its own translations. In short, this record would have been complete and
`
`aided Patent Owner in its case.
`
`But Petitioner failed to comply and consequently unfairly prejudiced Patent
`
`Owner. This notion of fairness is the very reason that 37 C.F.R. § 42.51(b)(1)(iii)
`
`was promulgated. In that regard, Trial Practice Guide 11.1, 77 Fed. Reg. 48640
`
`(Aug. 14, 2012), Comment 124, states that “the Office believes that it is necessag
`
`in the interest of justice that a party provide its opponent with information
`
`inconsistent with a position the party has taken.” Patent Owner submits that
`
`Petitioner is not prejudiced by the submission of the original translations of
`
`
`
`Kawakita and Asahi, since Petitioner has been aware of and in possession of these
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`Patent Owner’s Opposition to Motion to Exclude
`IPR2013—0021 9 (Patent 7,477,284)
`
`translations all along. Thus, Petitioner’s arguments are unpersuasive in view of the
`
`clear requirement and purpose of 37 C.F.R. § 42.51(b)(1)(iii).
`
`Therefore, because Petitioner’s Motion is merely an attempt to exclude
`
`evidence of its failure to comply with applicable rules, and not to exclude evidence
`
`that is in admissible under the Federal Rules of Evidence, it should be denied.
`
`Exhibits YRD-2012 and YRD-2013 Were Properly Introduced to
`B.
`Address Issues Raised by Petitioner
`
`Petitioner in its Motion further argues that exhibits YRD—20 12 and YRD—2013
`
`are outside the scope of Dr. Darrell’s direct testimony. Paper 47 at 6. But this
`
`argument fails since exhibits YRD—2012 and YRD—2013 were introduced in response
`
`to issues raised by Petitioner.
`
`The translation of Kawakita (SONY—1004) submitted with the Petition uses the
`
`relative terms “faithful” and “faithfully” to describe the disclosed process. There has
`
`been much back—and—forth between the parties as to whether Kawakita’s process is
`
`indeed a “faithful” image reproduction. Dr. Darrell’s declaration relied heavily on the
`
`relative terms “faithful” and “faithfully” as used in the this translation of Kawakita
`
`(SONY—1004). See 6. g. SONY—1044 111} 20—22. During his deposition, Dr. Darrell
`
`expanded on his declaration, testifying that he put “significant weight” on these
`
`relative terms because “it was clearly used in the disclosure.” YRD—2014 page 63
`
`lines 4—10. As it turns out, Petitioner’s original translation of Kawakita (that was
`
`7
`
`
`
`Patent Owner’s Opposition to Motion to Exclude
`IPR2013—0021 9 (Patent 7,477,284)
`
`n_ot filed with the Petition) does not use these relative terms. In particular, the
`
`original Kawakita translation, submitted by Patent Owner as exhibit YRD—2013,
`
`demonstrates that the relative terms “faithful” and “faithfully” were n_ot “clearly used
`
`in the disclosure” of Kawakita. Thus, YRD—2013 is response to issues raised by
`
`Petitioner.
`
`The situation with Asahi is even worse. The translation of Asahi (SONY—
`
`1010) provided in the Petition uses the term “stereoscopic image” to describe the
`
`disclosed process. There has also been a significant amount of back—and—forth
`
`between the parties as to whether Asahi’s process is directed to stereoscopic images.
`
`Dr. Darrell in his declaration relied heavily on the term “stereoscopic viewing” as
`
`used in the second translation of Asahi (SONY—1010) at paragraph [0035] in
`
`reaching his conclusions. See e.g., SONY—1044 at 11 23. Notably, this was the first
`
`time that Dr. Darrell provided any testimony regarding Asahi in general and
`
`specifically regarding paragraph [0035]. During his deposition, Dr. Darrell fiirther
`
`testified that a 3D image map is different than a stereoscopic image. See YRD—
`
`2014 on page 84 line 16 to page 85 line 120. As it turns out, Petitioner’s original
`
`translation of Asahi (that was n_ot filed with the Petition) does not use the term
`
`
`“stereoscopic image” at all. The original Asahi translation, submitted by Patent
`
`Owner as exhibit YRD—2012, demonstrates that Asahi actually used the term “3D
`
`Image” and did not use the term “stereoscopic viewing,” and is therefore responsive to
`
`
`
`issues raised by Petitioner.
`
`Patent Owner’s Opposition to Motion to Exclude
`1PR2013—0021 9 (Patent 7,477,284)
`
`Accordingly, because exhibits YRD—2012 and YRD—2013 directly address
`
`issues raised by Petitioner, its Motion should be denied.
`
`C.
`
`The Motion is an Attempt to Exclude Evidence that is Necessary in
`the Interest-of—Justice
`
`Patent Owner additionally notes that the evidence sought to be excluded by
`
`Petitioner is the exact type of evidence the Board anticipates will be part of an inter
`
`partes review to allow for a fair proceeding. See Office Patent Trial Practice
`
`Guide 11.1, 77 Fed. Reg. 48640 (Aug. 14, 2012), Comment 124, stating that “the
`
`Office believes that it is necessag in the interest of justice that a party provide its
`
`opponent with information inconsistent with a position the party has taken.” See
`
`also 35 U.S.C. §316(a)(5). As discussed above, Petitioner took positions that are
`
`inconsistent with the original translations of Kawakita and Asahi, i.e., YRD—2012
`
`and YRD—2013, which it had previously produced in litigation. And, in doing so,
`
`Petitioner failed to properly serve Patent Owner’s counsel in the present proceeding
`
`with the inconsistent evidence, contrary to 37 C.F.R. § 42.51(b)(1)(iii). Petitioner
`
`cannot now sweep this inconsistent evidence under the rug with its Motion to
`
`Exclude.
`
`Rather than rewarding Petitioner for failing to comply with applicable rules
`
`by granting its Motion, the Board should take this teaching opportunity to
`
`
`
`Patent Owner’s Opposition to Motion to Exclude
`IPR2013-00219 (Patent 7,477,284)
`mm
`
`Fed. Reg. 48640 (Aug. 14, 2012), Comment 123, notes that 37 C.F.R. §
`
`42.51(b)(1)(iii) “would be policed during the proceeding... 35 U.S.C.
`
`§3 l6(a)(6). . .require[s] that the Office promulgate rules the prescribe sanctions for
`
`abuse of discovery. Section 42.12(a)(5) provides that the Board may impose
`
`sanctions against a party for abuse of discovery.”
`
`Therefore, because Petitioner’s Motion is an attempt to exclude evidence
`
`that should be of record in the interest-of—justice, the Motion should be denied.
`
`V.
`
`CONCLUSION
`
`For the foregoing reasons, Petitioner’s Motion to Exclude should be denied.
`
`Dated: May 27, 2014
`
`fltfully submitted,
`AL ”Q;
`
`David L. McCombs
`
`Registration No. 32,271
`HAYNES AND BOONE, LLP
`
`Telephone: 214/651-5533
`Attorney Docket No.: 50519.3
`
`This is especially true for situations such as this, with one party (Petitioner-
`
`Sony) with significant resources (such as would be needed for obtaining multiple
`
`translations of a reference) and the other party (Patent Owner) with very limited
`
`I‘CSOUI‘CCS.
`
`10
`
`
`
`Patent Owner’s Opposition to 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)3
`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 CPR. § 42.205, that
`
`service was made on the Petitioner as detailed below.
`
`Date ofservice May 27, 2014
`Manner ofservice Electronic Mail: (Sony-HumanEyeS@kenyon.corn);
`Walter Hanley (whanley@kenyon.com); and
`Michelle Carniaux (Incarniaux@kenyon.com)
`
`Documents served PATENT OWNER’S OPPOSITION TO MOTION TO
`
`EXCLUDE
`
`Persons served Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004
`
`QTAL! 5w, \
`
`David L. McCombs
`
`Registration No. 32,271
`
`3 The IPR2013-00327 proceeding has been joined with this proceeding.
`
`11
`
`
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