UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Carl Zeiss SMT GMBH
`Petitioner
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`v.
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`Nikon Corporation
`Patent Owner
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`Case IPR2013-00362
`Patent 7,348,575
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`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Carl Zeiss SMT GMBH
`Petitioner
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`v.
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`Nikon Corporation
`Patent Owner
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`Case IPR2013-00362
`Patent 7,348,575
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`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
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`Case IPR2013-00362
`Petitioner’s Motion to Exclude Evidence
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`TABLE OF CONTENTS
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`Page
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`I. PRECISE RELIEF REQUESTED ....................................................................... 1
`II. BACKGROUND ................................................................................................. 2
`A. The Challenged Exhibits and Related Testimony ......................................... 2
`B. Patent Owner’s Motion for Observation Regarding Second Cross-
`Examination of Richard C. Juergens (Paper No. 30) .................................... 4
`C. Patent Owner’s Second Declaration of Dr. Jose Sasian (Ex. 1054) ............. 5
`III. ARGUMENT .................................................................................................... 6
`A. Relevant Law ................................................................................................. 6
`B. The Challenged Exhibits Were Not Authenticated During the Second
`Cross-Examination of Mr. Juergens .............................................................. 7
`C. The Challenged Exhibits Constitute Inadmissible Hearsay and Therefore
`Must Be Excluded ......................................................................................... 8
`D. The Challenged Exhibits and Second Declaration of Dr. Jose Sasian Are
`Untimely, and Therefore Must be Excluded ............................................... 10
`IV. CONCLUSION ............................................................................................... 11
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`Statutes
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`Case IPR2013-00362
`Petitioner’s Motion to Exclude Evidence
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`TABLE OF AUTHORITIES
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` Page(s)
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`37 C.F.R. § 42.62(a) ............................................................................................... 1, 6
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`37 C.F.R. § 42.64 ................................................................................... 1, 3, 4, 6, 7, 8
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`Federal Rule of Evidence 801 .......................................................................... 8, 9, 10
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`Federal Rule of Evidence 802 .................................................................................... 1
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`Federal Rule of Evidence 803 ................................................................................ 1, 8
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`Federal Rule of Evidence 901 ................................................................................ 1, 7
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`Cases
`Shu-hui Chen v. Herve Bouchard, Patent Interference No. 103,675,
`2003 WL 25287136 (BPAI Aug. 2, 2002) ................................................................. 9
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`I.
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`PRECISE RELIEF REQUESTED
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`Case IPR2013-00362
`Petitioner’s Motion to Exclude Evidence
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`Pursuant to 37 C.F.R. §§ 42.62 and 42.64(c), Petitioner Carl Zeiss SMT GmbH
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`respectfully moves to exclude Exhibits 2036, 2037, 2038, and 2039 offered during the
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`second cross examination of Petitioner’s expert witness Richard C. Juergens (“the
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`Challenged Exhibits”) by Patent Owner Nikon Corporation, as well as those portions
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`of Mr. Juergens’ second cross examination (Exhibit 2040) directed to the Challenged
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`Exhibits. Petitioner moves to exclude these materials (1) for lack of authentication
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`under FRE 901, (2) as inadmissible hearsay under FRE 802, and (3) as untimely.
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`Petitioner further respectfully requests that Patent Owner’s reference to the Challenged
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`Exhibits and associated testimony in its Motion for Observation Regarding Second
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`Cross Examination of Richard C. Juergens (Paper No. 30) be similarly excluded.
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`Finally, Petitioner respectfully requests that the Second Declaration of Dr. Jose Sasian
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`be excluded to the extent Patent Owner relies on it to establish the truth of the
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`matters stated within the Challenged Exhibits, or to cure those deficiencies raised
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`by Petitioner’s counsel during the second cross-examination of Mr. Juergens.
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`Patent Owner should be precluded from using the Challenged Exhibits, and any
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`associated testimony within Exhibit 2040, and Dr. Sasian’s Second Declaration at any
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`hearing, or in any paper such as, without limitation, a brief, motion, or observation on
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`cross-examination. In light of this request, Petitioner asks that the Board disregard
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`1
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`Case IPR2013-00362
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`Petitioner’s Motion to Exclude Evidence
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`sections B.3-B.8, C.4, and D.2 of Patent Owner’s Motion for Observation Regarding
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`Second Cross Examination of Richard C. Juergens (Paper No. 30).
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`II. BACKGROUND
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`A. The Challenged Exhibits and Related Testimony
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`Petitioner seeks exclusion inter alia, of the following Exhibits (collectively, the
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`“Challenged Exhibits”):
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` Exhibit 2036: entitled “Plots of Terasawa Example 2 in Table 2, Fig. 5”
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` Exhibit 2037: entitled “Plots of Lens Design in Exhibit 1042”
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` Exhibit 2038: entitled “Plots of Lens Design in Exhibit 1047”
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` Exhibit 2039: entitled “Plots of Lens Design in Exhibit 1049”
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`Patent Owner Nikon Corporation introduced the Challenged Exhibits during the
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`July 2, 2014 Second Cross Examination of Petitioner’s expert Mr. Richard C.
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`Juergens. On its face, each Challenged Exhibit appears to be a calculation of some
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`kind, without any indication of the person(s) responsible for its creation, or the date(s)
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`on which it was performed. While the documents appear to refer to Zemax optical
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`modeling software, complete details of how the software was used to carry out the
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`calculations and display them are plainly lacking.
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`In an effort to cure these facial deficiencies, at the time each Challenged Exhibit
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`was marked, counsel for Patent Owner made representations as to their contents to Mr.
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`Juergens, without providing any information as to the circumstances behind their
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`2
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`Case IPR2013-00362
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`Petitioner’s Motion to Exclude Evidence
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`creation. (See, e.g. Exhibit 2040, page 74, lines 19-21 (“So this is an analysis of the
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`RMS wavefront error in Terasawa using the table provided by Terasawa.”)
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`In keeping with 37 C.F.R. § 42.64(a), counsel for Petitioner objected to each
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`Challenged Exhibit on the record during this cross-examination, specifically as to
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`these Exhibits’ lack of authentication. These objections are listed here,1 pursuant to 37
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`C.F.R. § 42.64(c), and explained infra. Following introduction of the first Challenged
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`Exhibit, Ex. 2036, Counsel for Petitioner objected as follows:
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`MR. WEFERS: [C]ounsel for Zeis [sic] wants to reiterate its objection to
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`Exhibit 2036 on the basis of lacking foundation, lacking authentication,
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`insofar as it purports to describe some calculations using some optical
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`simulation software, optical design software. We don’t know who did it,
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`how they did it; and we are not, given the current schedule in this
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`proceeding, will not have an opportunity to cross examine whoever it
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`was that did do those calculations.
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`(Ex. 2040 at page 106, line 16 to page 107, line 21). Importantly, notwithstanding
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`1 Ex. 2040, page 74, line 22; page 75, lines 8-9; page 75, line 17; page 76, lines 17-
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`18; page 77, lines 7-8; page 78, lines 15-16; page 106, line 15 – page 108, line 12;
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`page 108, lines 19-21; page 109, line 18; page 110, line 19; page 111, line 4; page
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`113, line 23 – page 114, line 1; page 114, line 18; page 116, line 21; page 117, line
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`21; page 123, lines 6-8.
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`3
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`Case IPR2013-00362
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`Petitioner’s Motion to Exclude Evidence
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`this detailed explanation of Petitioner’s grounds for objection, Patent Owner made no
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`attempt to cure these defects during cross-examination. Patent Owner’s failure to cure
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`runs afoul of 37 C.F.R. § 42.64(a), which states: “Evidence to cure the objection must
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`be provided during the deposition, unless the parties to the deposition stipulate
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`otherwise on the deposition record.”
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`B.
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`Patent Owner’s Motion for Observation Regarding Second Cross-
`Examination of Richard C. Juergens (Paper No. 30)
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`One week after Mr. Juergens’ second cross examination, the Patent Owner filed
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`its Motion for Observation Regarding Second Cross Examination of Richard C.
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`Juergens (Paper No. 30), and served upon Petitioner the Second Declaration of Dr.
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`Jose Sasian (Zeiss Exhibit 1054). The Motion for Observation sought to further
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`characterize each of the Challenged Exhibits as a further representation of the
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`calculations included in Mr. Juergens’ own Supplemental Declaration (Ex. 1036).
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`(See, e.g., Paper No. 30 at ¶B.3 (“Exhibit 2037 show[s] the RMS wavefront error
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`corresponding to Mr. Juergens’ Experiment II”)). Moreover, the Motion for
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`Observation relies on the contents of the Challenged Exhibits to prove the matters
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`asserted by each—that the models described in Mr. Juergens’ Supplemental
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`Declaration would not result in images of usable quality. (See, e.g., Paper No. 30 at
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`¶B.4 (“Mr. Juergens testified that the distortion plot [of Exhibit 2037] shows distortion
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`levels that are approximately 1/3 of a percent [and therefore] shows the resulting
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`image quality of Mr. Juergens’ Experiment II is unusable.”)).
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`Patent Owner’s Second Declaration of Dr. Jose Sasian (Ex. 1054)
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`Case IPR2013-00362
`Petitioner’s Motion to Exclude Evidence
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`C.
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`The Second Declaration of Dr. Jose Sasian (Ex. 1054) attempts to cure certain
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`deficiencies in the Challenged Exhibits identified by Petitioner’s Counsel during the
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`second cross examination of Mr. Juergens (see, e.g., Ex. 2040 at page 106, line 16 to
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`page 107, line 21). For example, in response to Petitioner’s objection that Patent
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`Owner had offered no explanation during the deposition as to who had created the
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`Challenged Exhibits or the circumstances of their creation, Exhibit 1054 identifies Dr.
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`Sasian as the Exhibits’ creator, and details the location, timing, and technical details of
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`their creation. (See, e.g., Ex. 1054 at ¶¶4-5 (“In preparing each of the exhibits
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`described below, I used the professional lens design software Zemax 13 Release 2 SP1
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`Professional from Radiant-Zemax. I prepared the plots in Tuscon, Arizona and in
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`Kohala, Hawaii. On May 31, 2014 and June 22, 2014, I plotted the RMS wavefront
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`error and distortion for the projection optical system labeled as Example 2 and shown
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`in Figure 5 of Terasawa. . . .”).
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`Importantly, Patent Owner’s service of this Second Declaration of Dr. Jose
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`Sasian (Ex. 1054) attempts an end run around the Board’s previous denial of Patent
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`Owner’s authorization to file a supplemental expert declaration. (See Ex. 2040 at page
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`107, lines 2-7, and Ex. 2042, page 5, lines 6-12; page 7, lines 6-20; page 10, lines 12-
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`20). Moreover, the service of this Second Declaration comes well after Petitioner’s
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`May 7, 2014 cross-examination of Dr. Jose Sasian. In light of the Scheduling Orders
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`5
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`Case IPR2013-00362
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`Petitioner’s Motion to Exclude Evidence
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`(Paper Nos. 11, 15, and 26), Petitioner will not have an opportunity to question Dr.
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`Sasian regarding the contents of his Second Declaration. Finally, this Sasian
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`Declaration contradicts the representation made by Patent Owner’s counsel during the
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`second cross-examination of Mr. Juergens that the Challenged Exhibits “are not expert
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`testimony.” (Ex. 2040, page 107, lines 18-19).
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`This Motion to Exclude is intended to serve as Petitioner’s objection to the
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`evidence at issue, and is therefore timely under 37 C.F.R. 42.64(b)(1).
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`III. ARGUMENT
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`Zeiss timely objected to the Challenged Exhibits and the related testimony of
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`the deposition of Richard C. Juergens on July 2, 2014. This Motion serves as
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`Petitioner’s formal objection to the Second Declaration of Dr. Jose Sasian (Ex. 1054).
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`For the reasons detailed below, the evidence at issue should be excluded for at least
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`lack of authentication, as inadmissible hearsay, as untimely, and in light of Petitioner’s
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`inability to cross-examine Dr. Sasian, the creator of the above -mentioned Challenged
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`Exhibits.
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`A. Relevant Law
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`The Federal Rules of Evidence (“FRE”) apply to the current proceedings. 37
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`C.F.R. § 42.62(a).
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`The Challenged Exhibits Were Not Authenticated During the
`Second Cross-Examination of Mr. Juergens
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`Case IPR2013-00362
`Petitioner’s Motion to Exclude Evidence
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`B.
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`Petitioner objects to the Challenged Exhibits as lacking authenticity. FRE
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`901 states: “To satisfy the requirement of authenticating or identifying an item of
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`evidence, the proponent must produce evidence sufficient to support a finding that
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`the item is what the proponent claims it is.” Patent Owner first presented the
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`Challenged Exhibits to Mr. Juergens during his Deposition without any indication
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`that each Exhibit was what Patent Owner purported it to be. As discussed supra,
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`counsel for Petitioner made representations about each Exhibit at the time they
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`were placed before Mr. Juergens (see, e.g. Exhibit 2040, page 74, lines 19-21), but
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`offered no explanation as to who had created the models, or the circumstances of
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`their creation (when they were done, where they were carried out, etc.). Petitioner
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`timely objected, and Patent Owner was on notice of these objections, Petitioner
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`having made them 16 times on the record (see supra at n.1). (See, e.g., Exhibit
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`2040 at page 106, line 16 to page 107, line 21 (“We don’t know who did it, how they
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`did it. . .”)).
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`Despite having been placed on clear notice of the basis for Petitioner’s
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`objections, Patent Owner made no attempt to cure during Mr. Juergens’ deposition
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`as required by 37 C.F.R. § 42.64(a). Patent Owner, recognizing the apparent
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`evidentiary defects associated with the Challenged Exhibits, served Petitioner with
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`a Second Declaration of Dr. Jose Sasian (Ex. 1054) in an effort to fill in the gaps.
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`7
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`Although Dr. Sasian’s Second Declaration attempts to provide the “who, what,
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`Case IPR2013-00362
`Petitioner’s Motion to Exclude Evidence
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`when, and how” that had been lacking during the second cross-examination of Mr.
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`Juergens, it is too little, too late. Pursuant to 37 C.F.R. § 42.64(a), “[e]vidence to
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`cure [an] objection must be provided during the deposition, unless the parties to the
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`deposition stipulate otherwise on the deposition record.” The record of Mr.
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`Juergens’ second cross-examination is lacks any such stipulation. This Declaration
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`is insufficient to now cure the objections timely raised because the information
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`provided is exactly the kind required at or before the time of Mr. Juergens’
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`deposition for proper and timely authentication of evidence.
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`C. The Challenged Exhibits Constitute Inadmissible Hearsay and
`Therefore Must Be Excluded
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`The Challenged Exhibits are inadmissible hearsay under the definition set forth
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`at FRE 801, and do not fall under any exception set forth under FRE 803. Petitioner
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`will not have the opportunity to cross-examine Dr. Sasian as to the creation of these
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`Exhibits, their contents, or as to the veracity of the statements within his Second
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`Declaration (Ex. 1054). Further, Patent Owner’s Motion for Observation Regarding
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`Second Cross Examination of Richard C. Juergens (Paper No. 30) indicates Patent
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`Owner’s intention to offer these Exhibits for the sole purpose of proving the truth of
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`their assertions. FRE 801(c)(2) defines “hearsay” as “a statement that a party offers in
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`evidence to prove the truth of the matter asserted in the statement.” As discussed
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`above, the Challenged Exhibits contain detailed calculations obtained using optical
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`modeling software intended to show that those optical designs set forth in Mr.
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`Case IPR2013-00362
`Petitioner’s Motion to Exclude Evidence
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`Juergens’ own Supplemental Declaration would result in an image of unusable quality.
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`(See, e.g., Paper No. 30 at ¶¶B.4-B.8).
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`Courts have held that test data like those calculations offered by Patent Owner
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`are inadmissible hearsay. See, e.g., Shu-hui Chen v. Herve Bouchard, Patent
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`Interference No. 103,675, 2003 WL 25287136 at *24 (BPAI Aug. 2, 2002) (holding
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`scientific data was inadmissible hearsay).
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`In its Opposition, Patent Owner may rely on the fact that its Motion for
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`Observation (Paper No. 30) cites to Mr. Juergens’ testimony regarding the Challenged
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`Exhibits, and not the underlying Exhibits themselves. This argument is not
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`persuasive, and cannot cure the evidentiary defect associated with these Exhibits. The
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`Motion for Observation strives to couch its discussion of these Exhibits in such a way
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`as to shield them from exclusion as hearsay, but Mr. Juergens’ cited testimony is
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`merely a strawman, a vehicle to deliver the contents of inadmissible Exhibits to the
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`Panel. As discussed infra, this strategy also serves as an end-run around the Panel’s
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`denial of Patent Owner’s request to submit a Supplemental Expert Declaration.
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`FRE 801(d) classifies certain statements as “not hearsay” in cases where the
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`declarant, inter alia, “testifies and is subject to cross-examination about [the] prior
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`statement. . . .” As discussed infra, the timing of Patent Owner’s disclosure of these
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`Challenged Exhibits, coupled with the Scheduling Orders (Paper Nos. 11, 15, and 26),
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`9
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`prevents Petitioner’s cross-examination of Dr. Sasian on the contents of these
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`Case IPR2013-00362
`Petitioner’s Motion to Exclude Evidence
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`Exhibits, and precludes classification of the Exhibits as “not hearsay” under FRE
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`801(d).
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`Accordingly, the Challenged Exhibits constitute inadmissible hearsay because
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`they consist of out-of-court statements that Patent Owner offers to prove the truth of
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`the matter asserted therein—that the optical designs proposed by Mr. Juergens would
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`not result in a usable image.
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`D. The Challenged Exhibits and Second Declaration of Dr. Jose
`Sasian Are Untimely, and Therefore Must be Excluded
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`As discussed throughout this Motion to Exclude, the Challenged Exhibits, as
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`well as the Second Declaration of Dr. Jose Sasian (Ex. 1054) were introduced by
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`Patent Owner well after the time during which Petitioner could have cross-
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`examined Dr. Sasian as to their contents. For at least this reason, the Challenged
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`Exhibits, all associated testimony of Mr. Juergens, and the Second Declaration of
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`Dr. Sasian must be excluded. The Challenged Exhibits seek to poke holes in the
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`optical models proposed by Mr. Juergens in his Supplemental Declaration (Ex.
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`1036). Patent Owner was afforded the opportunity to cross-examine Mr. Juergens
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`as to the creation of his models on July 2, 2014, but would deprive Petitioner of the
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`ability to do the same with regard to the additional calculations by Dr. Sasian. Any
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`result other than exclusion would prejudice Petitioner, and reward Patent Owner for
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`doing precisely what it was previously told it could not do – submitting a second
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`10
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`expert declaration. (See, Ex. 2042, page 5, lines 6-12; page 7, lines 6-20; page 10,
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`Case IPR2013-00362
`Petitioner’s Motion to Exclude Evidence
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`lines 12-20).
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`IV. CONCLUSION
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`For the foregoing reasons, Petitioner respectfully requests that the Challenged
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`Exhibits, those portions of Mr. Juergens’ second cross examination (Exhibit 2040)
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`directed to the Challenged Exhibits, and the Second Declaration of Dr. Jose Sasian be
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`excluded, to the extent Patent Owner relies on the latter to establish the truth of the
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`matters stated within the Challenged Exhibits, or to cure those deficiencies raised
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`by Petitioner’s counsel during the second cross-examination of Mr. Juergens.
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`Further, Petitioner respectfully requests that the Board disregard related sections of
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`Patent Owner’s Motion for Observation Regarding Second Cross Examination of
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`Richard C. Juergens (Paper No. 30), and preclude Patent Owner from using the
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`Challenged Exhibits, any associated testimony within Exhibit 2040, and Dr. Sasian’s
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`Second Declaration at any hearing, or in any paper such as, without limitation, a brief,
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`motion, or additional observation on cross-examination.
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`Dated: July 11, 2014
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`Respectfully submitted,
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`/Marc M. Wefers Reg. No. 56,842/
`Marc Wefers
`Reg. No. 56,842
`Customer Number 26171
`Fish & Richardson P.C.
`Telephone: (612) 337-2508
`Facsimile: (612) 288-9696
`Attorneys for Petitioner
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`CERTIFICATE OF SERVICE
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`Case IPR2013-00362
`Petitioner’s Motion to Exclude Evidence
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on July 11,
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`2014, a complete and entire copy of this Petitioner’s Motion to Exclude Evidence
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`was provided via electronic mail to Patent Owner by serving the correspondence
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`email address of record as follows:
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`John S. Kern
`Robert C. Mattson
`OBLON, SPIVAK, McCLELLAND,
`MAIER &, NEUSTADT, L.L.P.
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`Email: CPdocketKern@oblon.com
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`Email: CPdocketMattson@oblon.com
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`Respectfully submitted,
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`/Christine L. Rogers/
`Christine L. Rogers
`Fish & Richardson P.C.
`60 South Sixth Street
`Suite 3200
`Minneapolis, MN 55402
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`Dated: July 11, 2014
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