throbber
UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________________________________________________________
`
`SONY CORPORATION
`Petitioner
`
`v.
`
`YISSUM RESEARCH DEVELOPMENT COMPANY OF THE
`HEBREW UNIVERSITY OF JERUSALEM
`Patent Owner
`
`Case No. IPR2013-00219 (SCM)1
`
`
`
`Patent No. 7,477,284
`Issue Date: Jan. 13, 2009
`Title: SYSTEM AND METHOD FOR CAPTURING AND VIEWING
`STEREOSCOPIC PANORAMIC IMAGES
`__________________________________________________________________
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`
`MOTION TO EXCLUDE EVIDENCE
`
`_________________________________________________________________
`
`
`
`1 The IPR2013-00327 proceeding has been joined with this proceeding.
`
`

`

`IPR2013-00219, Inter Partes Review of U.S. Pat. No. 7,477,284
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude Evidence
` Pursuant to the Board’s Scheduling Order, see Paper No. 17, Petitioner Sony
`
`Corporation (“Sony”) submits this opposition to Patent Owner’s Motion to Exclude
`
`(Paper No. 44). Patent Owner seeks exclusion of exhibit Sony-1042 (Wikipedia
`
`article), portions of exhibit Sony-1043 (Transcript of Prof. Essa’s Deposition), and
`
`exhibit Sony-1044 (Second Expert Declaration of Prof. Darrell).
`
`I. The Exhibit Sony-1042 (Wikipedia article) Should Not Be Excluded.
`
`Patent Owner argues that Sony-1042 is inadmissible on grounds of lack of proper
`
`authentication, hearsay, and because it is new evidence that should have been included
`
`with Sony’s Petition. See Patent Owner’s Motion to Exclude (“Motion”), Paper No.
`
`44 at 3-7.
`
`A. Sony-1042 Is Admissible Under FRE § 901.
`
`FED. R. EVID. 901(a) states: “To satisfy the requirement of authenticating or
`
`identifying an item of evidence, the proponent must produce evidence sufficient to
`
`support a finding that the item is what the proponent claims it to be.” One form of
`
`evidence that satisfies the requirement is the testimony of witness with knowledge
`
`that “an item is what it is claimed to be.” FED. R. EVID. 901(b)(1).
`
`Here, Sony claims that Sony-1042 is copy of a Wikipedia article entitled
`
`“Stereoscopy” available on the web through the URL http://en.wikipedia.org/
`
`wiki/Stereoscopy, and that the definition of the term “stereoscopy” on which Patent
`
`Owner relies (YRD-2003) provides a link to the Wikipedia article to “Learn more.”
`
`2
`
`

`

`IPR2013-00219, Inter Partes Review of U.S. Pat. No. 7,477,284
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude Evidence
`
`YRD-2003 at 3. Specifically, YRD-2003 states: “Wikipedia offers a more detailed
`
`explanation of stereoscopy.” Id. (hyperlink in original).
`
`Sony served Sony-1042 on Patent Owner at the deposition of Prof. Essa on March
`
`10, 2014. Prof. Essa testified that he may have reviewed Sony-1042 before, but did
`
`not rely on it preparing his opinions set forth in his Declarations. Sony-1043 at 53:10-
`
`16, 54:15-21. However, Prof. Essa testified that he did rely on YRD-2003 (see Sony-
`
`1043 at 13:19 – 14:1, 48:17-25), and that YRD-2003 links to Sony-1042 for the
`
`purposely of enabling the reader to learn more about stereoscopy. Sony-1043 at
`
`59:14-22; see also YRD-2003 at 3.
`
`After Patent Owner’s counsel objected to Sony-1042 at the deposition on of Prof.
`
`Essa on March 10, 2014 on grounds of lack of authentication (see Sony-1043 at 61:20-
`
`25), Sony served supplemental evidence on Patent Owner in the form of a
`
`Declaration of Michael E. Sander. See YRD-2018. Sony also served the Second
`
`Expert Declaration of Trevor Darrell. See Sony-1044. The Declarations were served
`
`on March 24, 2014, and, therefore, Sony complied with the requirement of 37 C.F.R.
`
`§ 42.64(b)(2) that supplemental evidence be served within ten business days of service
`
`of the objection. Mr. Sander explains how he accessed the Wikipedia page entitled
`
`“Stereoscopy” available at the web page http://en.wikipedia.org/wiki/Stereoscopy,
`
`and using Wikipedia’s history tools, accessed the same page as it appeared on the
`
`Wikipedia web site on June 10, 2013, which itself is available at http://
`
`en.wikipedia.org/w/index.php?title=Stereoscopy&oldid=559166929&printable=yes.
`
`3
`
`

`

`IPR2013-00219, Inter Partes Review of U.S. Pat. No. 7,477,284
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude Evidence
`
`(YRD-2003, which provides the link to Sony-1042, is dated June 13, 2013). Mr.
`
`Sander further explains that after accessing the Wikipedia web page, he created a PDF
`
`copy of it and labeled it Sony-1042. YRD-2018 ¶¶ 1-5. In his Declaration, Prof.
`
`Darrell states that he reviewed the Wikipedia article on the Internet that is linked to
`
`YRD-2003, and found it to be substantively the same as Sony-1042. Sony-1044 ¶ 15.
`
`Mr. Sander is a witness with knowledge under FED. R. EVID. 901(b)(1) since he
`
`actually accessed the Wikipedia web site and created the copy of the Wikipedia article
`
`that is Sony-1042. Prof. Darrell is a witness with knowledge since he likewise
`
`accessed the Wikipedia web site and compared the “Stereoscopy” article he found
`
`there with Sony-1042.
`
`The uncontroverted testimony of these witnesses, and that of Prof. Essa, is more
`
`than sufficient to prove that Sony-1042 “is what it is claimed to be.” FED. R. EVID.
`
`901(b)(1); Rivera v. Inc. Vill. of Farmingdale, 2013 U.S. Dist. LEXIS 181890, *21, *22
`
`(E.D.N.Y. Dec. 31, 2013) (finding the testimony of a witness who personally
`
`downloaded Internet postings sufficient to authenticate them: “The bar for
`
`authentication of the internet postings is not particularly high, i.e., a reasonable
`
`likelihood standard. The testimony of a witness with knowledge that a matter is what
`
`it is claimed to be is sufficient to satisfy this standard. As long as such testimony is
`
`sufficient, these postings should be admitted, notwithstanding that they were
`
`editable.” (quoting U.S. v. Gagliardi, 506 F.3d 140, 151 (2d Cir. 2007) (internal marks
`
`omitted; citing FED. R. EVID. 901(b)(1))); ForeWord Magazine, Inc. v. OverDrive, Inc.,
`
`4
`
`

`

`IPR2013-00219, Inter Partes Review of U.S. Pat. No. 7,477,284
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude Evidence
`
`2011 U.S. Dist. LEXIS 125373, *8-11 (W.D. Mich. Oct. 31, 2011) (finding screen
`
`shots of an Internet site authenticated by a declarant identifying the “screen shots as a
`
`true and accurate copy of the content found on the Internet sites[.] . . . [A]n affidavit
`
`of a witness, when viewed in combination with circumstantial indicia of authenticity
`
`(such as the existence of the URL, date of printing, or other identifying information)
`
`would support a reasonable juror in the belief that the documents are what the
`
`proponent says they are.” (citing United States v. Meienberg, 263 F.3d 1177, 1181 (10th
`
`Cir. 2001) (additional citations omitted)).
`
`The case Patent Owner cites for the proposition that testimony is required from
`
`an employee of the web site host, Novak v. Tucows, Inc., 2007 U.S. Dist. LEXIS 21269
`
`(E.D.N.Y. 2007), does not apply here. In Novak, the proponent offered copies of
`
`web pages that were not obtained directly from the hosting web sites themselves, but
`
`instead were obtained from a third party archive, the Wayback Machine. The court
`
`noted that the Wayback Machine obtained the web pages from yet other third parties,
`
`and that “the authorized owners and managers of the archived web sites play no role
`
`in ensuring that the material posted in the Wayback Machine accurately represents
`
`what was posted on their official websites.” 2007 U.S. Dist. LEXIS 21269 at *17.
`
`Here, in contrast, Mr. Sander and Prof. Darrell went directly to hosting web site to
`
`view and obtain a copy of the Wikipedia article. See Rivera, 2013 U.S. Dist. LEXIS
`
`181890, *22; ForeWord Magazine, Inc., 2011 U.S. Dist. LEXIS 125373, *8-11.
`
`5
`
`

`

`IPR2013-00219, Inter Partes Review of U.S. Pat. No. 7,477,284
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude Evidence
`
`B.
`
`Patent Owner’s Hearsay Objection to Sony-1042 Was Untimely;
`Nevertheless, Sony-1042 Is Admissible Under FRE § 801.
`
`Patent Owner’s hearsay objection to Sony-1042 was not timely made. Sony-1042
`
`was served on Patent Owner at Prof. Essa’s deposition on March 10, 2014. See Sony-
`
`1043 at 52:16-20. Patent Owner was required to object within five business days of
`
`service (i.e., by March 17, 2014). See 37 C.F.R. § 42.64(b)(1). Patent Owner did not
`
`object on hearsay grounds until March 27, 2014, thirteen business days after Sony
`
`served Sony-1042 and even after Sony served supplemental evidence in response to
`
`Patent Owner’s authentication objection (which was timely made). See YRD-2017 at
`
`3, ¶ 3 (Objections); YRD-2018, YRD-2019 (Supplemental Evidence). Patent Owner
`
`argues that it objected on hearsay grounds within five business days after Sony filed
`
`Sony-1042 with Sony’s Reply (on March 24, 2014). However, 37 C.F.R. § 42.64(b)(1)
`
`plainly states that objections must be served within five business days of service of the
`
`evidence. Therefore, Patent Owner’s hearsay objection should be rejected.
`
`Although Patent Owner seeks exclusion of the entirety of Sony-1042 on hearsay
`
`grounds, the hearsay objection that Patent Owner served on March 27, 2014 is
`
`directed to a portion of Sony-1042:
`
`The Reply at 13 relies on statements of Exhibit SONY-1042 in asserting
`that the image reproduced in the Reply was made from images taken
`from 100 feet apart. Patent Owner notes that the relied upon statements
`of Exhibit SONY-1042 are nothing more than hearsay (i.e., out-of-court
`statement offered to prove the truth of the matter asserted).
`
`6
`
`

`

`IPR2013-00219, Inter Partes Review of U.S. Pat. No. 7,477,284
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude Evidence
`
`YRD-2017 at 3, ¶ 3.
`
`Notwithstanding the untimeliness of Patent Owner’s hearsay objection, Sony
`
`responded to it by serving supplemental evidence in the form of a Declaration of
`
`Leonard Barton, the photographer who created the image (the “hyper stereo”
`
`anaglyph) from Sony-1042 that is reproduced in Sony’s Reply. See YRD-2019. (Mr.
`
`Barton’s Declaration was timely served ten business days after Patent Owner’s hearsay
`
`objection was served). Mr. Barton was cross-examined by Patent Owner on April 15,
`
`2014. Mr. Barton testified in his Declaration and on cross-examination as to how he
`
`created the hyper stereo anaglyph, and confirmed that the pair of images that he
`
`recorded and used to create the anaglyph were recorded from camera positions 100
`
`feet apart. YRD-2019 at 2, ¶ 5; YRD-2020 at 15:9-23, 19:15-18. Mr. Barton’s
`
`Declaration and his cross-examination testimony remove any hearsay issue relating to
`
`the anaglyph and the statement in Sony-1042 concerning it to which Patent Owner
`
`directed its hearsay objection.
`
`To the extent that the Board considers Patent Owner’s untimely hearsay objection
`
`to have been directed to the entirety of Sony-1042, Sony submits that Patent Owner
`
`waived any such objection by having offered and relied on YRD-2003, which
`
`provides a definition of “stereoscopy” and links to the Wikipedia article for “a more
`
`detailed explanation of stereoscopy.” YRD-2003 at 3. See Capobianco v. City of New
`
`York, 422 F.3d 47, 55 (2d Cir. 2005) (a party “waive[s] any objections to the
`
`admissibility of [evidence] by offering them themselves.”); Troeger v. Ellenville Cent. Sch.
`
`7
`
`

`

`IPR2013-00219, Inter Partes Review of U.S. Pat. No. 7,477,284
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude Evidence
`Dist., 2012 U.S. Dist. LEXIS 64477, 13-14 (N.D.N.Y May 8, 2012) (same) (quoting
`
`Capobianco, 422 F.3d at 55).
`
`C.
`
`Patent Owner’s Objection That Sony-1042 Was Belatedly
`Presented Is Inappropriate for a Motion to Exclude; Nevertheless,
`the Objection Is Without Merit.
`
`Patent Owner objects to Sony-1042 on the basis that it should have been
`
`presented in Sony’s Petition, or within one month of institution of trial as
`
`supplemental evidence under 37 C.F.R. § 42.123. Motion at 5-7. The Board has ruled
`
`in other inter partes reviews that a motion to exclude is not the proper vehicle for
`
`Patent Owner to argue that a reply exceeds the scope of the Patent Owner’s
`
`Response. See, e.g., IPR2013-00483, No. 11 Notice (P.T.A.B. Feb. 26, 2014) (“[I]f an
`
`issue arises regarding whether a reply argument or evidence in support of a reply
`
`exceeds the scope of a proper reply, the matter should not be addressed in a motion
`
`to exclude evidence.”); IPR2013-00519, No. 9 Order (P.T.A.B. Mar. 5, 2014) (“the
`
`motion to exclude evidence is not provided as a vehicle to contend that any argument
`
`or evidence in support of a reply exceeds the proper scope of a reply.”). In this
`
`proceeding, the Board has expressly stated that “we will determine whether a reply
`
`and evidence are outside the scope of a proper reply and evidence when we review all
`
`of the parties’ submissions and prepare the final written decision.” Order, Paper No.
`
`41, April 7, 2014, at 2.
`
`Nevertheless, Patent Owner’s objection that Sony-1042 should have been
`
`presented earlier lacks merit. Sony-1042 was submitted in response to Prof. Essa’s
`
`8
`
`

`

`IPR2013-00219, Inter Partes Review of U.S. Pat. No. 7,477,284
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude Evidence
`
`reliance on YRD-2003 (which directs the reader to the Wikipedia article to “learn
`
`more” about stereoscopy) and Prof. Essa’s testimony that “for a stereoscopic image
`
`pair to provide a perception of depth, the image pair must (1) be capable of being
`
`stereoscopically fused (i.e., specifically generated from the perspective of human eyes
`
`. . . ).” YRD-2010 at ¶ 28; see also ¶ 59. Sony could not have reasonably assumed in
`
`submitting its Petition that Patent Owner’s expert would make such a glaringly
`
`incorrect technical argument, especially since the ’003 Patent, which the ’284 Patent
`
`claims priority to and incorporates by reference, discloses that stereoscopic image
`
`pairs can be generated with a baseline larger than the human inter-ocular distance for
`
`“exaggerated stereo,” and similarly, with a baseline smaller than the human inter-
`
`ocular distance for “reduced stereo.” See Sony-1002 at 7:17-26, 11:21-26; see also Sony-
`
`1043 (Deposition of Prof. Essa) at 82:11-15, 86:3-11; Sony-1044 (Second Decl. of
`
`Prof. Darrell) at ¶¶ 8-9. Further, a related patent by the same inventor, also
`
`incorporated by reference into the ’284 Patent, describes the concept of increasing
`
`stereoscopic range by increasing the baseline. See U.S. Pat. No. 6,831,677, Sony-1041
`
`at 1:38-41. In light of the foregoing, Petitioner could not have reasonably expected
`
`Prof. Essa to testify that only stereoscopic images recorded from positions separated
`
`by a single distance, the human inter-ocular baseline, could provide a sense of depth.
`
`In rebuttal to Prof. Essa’s testimony, Sony-1042 supports the fact that a
`
`stereoscopic image pairs recorded using baselines other that the human inter-ocular
`
`distance are capable of providing a perception of depth. Within the larger discussion
`
`9
`
`

`

`IPR2013-00219, Inter Partes Review of U.S. Pat. No. 7,477,284
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude Evidence
`
`of “hyper stereo,” Sony-1042 depicts a stereoscopic image that clearly provides a
`
`sense of depth, and which was generated from images recorded 100 feet apart. Sony-
`
`1042 at 11-13. Sony-1042 is singularly targeted at Prof. Essa’s testimony, because
`
`Prof. Essa relied on the definition of “stereoscopy” in YRD-2003, which links the
`
`reader to Sony-1042 article to “learn more.” See YRD-2003 at 3.
`
`Accordingly, Sony-1042 was not presented belatedly and should not be excluded.
`
`II. The Exhibit Sony-1043 (Transcript of Prof. Essa’s Cross-Examination)
`Should Not Be Excluded.
`
`Patent Owner’s objection to the portions of Prof. Essa’s deposition testimony
`
`(Sony-1043) related to Sony-1042 as being beyond the scope of his declaration is
`
`without merit. Prof. Essa relied on YRD-2003 (web page definition of “stereoscopy”)
`
`which links the reader to the Wikipedia article to “learn more.” See YRD-2003 at 3.
`
`Also, Prof. Essa testified in his Declaration that in order for a stereoscopic image pair
`
`to provide a perception of depth, it must be generated in accordance with the
`
`separation of human eyes. See YRD-2010 at ¶¶ 28, 59. The exhibit Sony-1042 is
`
`relevant to that testimony, and is therefore within the scope of Prof. Essa’s
`
`declaration.
`
`III. The Exhibit Sony-1044 (Second Darrell Decl.) Should Not Be Excluded.
`
`Patent Owner seeks exclusion of the entirety of Sony-1044, but argues only about
`
`paragraphs 23-24. Motion at 7-11. Paragraphs 23-24 relate to Prof. Darrell’s opinion
`
`that a person of ordinary skill in the art would have understood the term
`
`10
`
`

`

`IPR2013-00219, Inter Partes Review of U.S. Pat. No. 7,477,284
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude Evidence
`
`“stereoscopic viewing” to refer to human viewing of a display of a stereoscopic image
`
`pair. Patent Owner contends that Prof. Darrell’s testimony pertains to an issue raised
`
`by Sony in the Petition (the meaning of “stereoscopic viewing”) and that his
`
`testimony should have been provided with the Petition. Id. at 10-11. Alternatively,
`
`Patent Owner argues that Prof. Darrell’s testimony should have been provided as a
`
`supplemental declaration after Patent Owner made an argument about the meaning of
`
`“stereoscopic viewing” in its Preliminary Response. Id. at 9.
`
`Sony properly relied on the ordinary meaning of “stereoscopic viewing” in the
`
`Petition, and Patent Owner’s argument in its Preliminary Response that “stereoscopic
`
`viewing” means calculating height was contrary to the ordinary meaning and was
`
`unsupported. See Patent Owner Preliminary Response, Paper No. 13 at 44 (“Asahi
`
`uses the phrase ‘stereoscopic viewing’ to describe the process used to calculate the height
`
`of objects.” (emphasis in original)). The Board relied on the ordinary meaning of
`
`“stereoscopic viewing” in its Decision on Institution: “we are persuaded that Asahi’s
`
`‘stereoscopic viewing’ discloses displaying mosaic images to a person so as to provide
`
`a sense of depth of a scene.’” See Institution Decision, Paper No. 16 at 32. There was
`
`no reason for Petitioner to provide testimony from Prof. Darrell either with the
`
`Petition or after the Board’s Decision that the term “stereoscopic viewing” is used in
`
`Asahi in accordance with its ordinary meaning. However, after Patent Owner offered
`
`Prof. Essa’s testimony contradicting the ordinary meaning (i.e., that person of ordinary
`
`skill in would have understood “stereoscopic viewing” in Asahi to mean calculating
`
`11
`
`

`

`IPR2013-00219, Inter Partes Review of U.S. Pat. No. 7,477,284
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude Evidence
`
`height), it was appropriate for Petitioner to offer the testimony of Prof. Darrell in
`
`reply. Patent Owner had the opportunity to cross-examine Prof. Darrell, and did so
`
`on April 15, 2014.
`
`Patent Owner’s statement regarding YRD-2012, the English translation of the
`
`Asahi produced to Patent Owner in the I.T.C. investigation, is irrelevant because
`
`Patent Owner waived any objection or argument about the accuracy of Sony-1010,
`
`the translation submitted with the Petition.2 Moreover, Patent Owner does not
`
`contend even now that the Sony-1010 is inaccurate or that YRD-2012 is more
`
`accurate than Sony-1010. Moreover, if anything, YRD-2012 refutes Patent Owner
`
`and Prof. Essa’s position that a person of ordinary skill in the art would understand
`
`the phrase “stereoscopic viewing” in Asahi (Sony-1010) to mean “calculating height
`
`of a terrain.” Patent Owner Response, Paper No. 35 at 26, 28-29; Essa Decl., YRD-
`
`2010 at ¶ 55. The corresponding passage in YRD-2012 states that “a 3D image can
`
`be shown to the viewer,” and thus, removes any room for argument that Asahi is referring
`
`to height calculation. YRD-2012 at [0035] (emphasis added).
`
`
`
`2 Petitioner more fully discusses the irrelevancy of YRD-2012 in its Motion to
`
`Exclude, Paper No. 47.
`
`12
`
`

`

`IPR2013-00219, Inter Partes Review of U.S. Pat. No. 7,477,284
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude Evidence
`IV. Conclusion
`
`In view of the forgoing, Petitioner respectfully submits that Patent Owner’s
`
`Motion to Exclude should be denied.
`
`
`Dated: May 28, 2014
`
`
`
`
`
`
`
`_/s/ Walter Hanley__
`Walter Hanley, Lead Counsel, Reg. No 28,720
`whanley@kenyon.com
`Michelle Carniaux, Backup Counsel, Reg. No. 36,098
`mcarniaux@kenyon.com
`KENYON & KENYON LLP
`One Broadway, New York, NY 10004-1007
`
`13
`
`

`

`
`
`
`
`Certificate of Service Under 37 C.F.R. § 42.6(e)(4)
`
`I certify that I caused a true and correct copy of the forgoing to be served via
`
`Electronic Mail on the following:
`
`William Nelson and Robert Gerrity
`Robert.gerrity@tensegritylawgroup.com
`William.nelson@tensegritylawgroup.com
`Tensegrity Law Group LLP
`555 Twin Dolphin Dr., Suite 360
`Redwood Shores, CA 94065
`
`
`David McCombs and David O’Dell
`David.mccombs.ipr@haynesboone.com
`David.odell.ipr@haynesboone.com
`Haynes and Boone, LLP
`2323 Victory Avenue, Suite 700
`Dallas, Texas 75219
`
`
`
`
`
`
`
`Dated: _ May 28, 2014___
`
`
`
`
`
`
`
`
`_/s/ Michael E. Sander __
`Michael E. Sander
`Reg. No. 71,667
`msander@kenyon.com
`KENYON & KENYON LLP
`One Broadway
`New York, NY 10004-1007
`Tel: 212-425-7200
`
`
`
`
`
`

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