UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`Yamaha Corporation of America
`Petitioner
`
`v.
`
`Black Hills Media, LLC
`Patent Owner
`
`
`Patent No. 8,214,873
`Issue Date: July 3, 2012
`Title: METHOD, SYSTEM, AND COMPUTER-READABLE MEDIUM FOR
`EMPLOYING A FIRST DEVICE TO DIRECT A NETWORKED AUDIO
`DEVICE TO RENDER A PLAYLIST
`_______________
`
`Inter Partes Review No. IPR2013-00598
`____________________________________________________________
`
`PETITIONER YAMAHA CORPORATION OF AMERICA’S
`OPPOSITION TO PATENT OWNER’S MOTION TO EXCLUDE
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`
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`IPR2013-00598
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`TABLE OF CONTENTS
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`Page
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`I.
`
`II.
`
`INTRODUCTION .......................................................................................... 1
`
`EXHIBITS 1018 AND 1019 SHOULD NOT BE EXCLUDED ................... 1
`
`A.
`
`B.
`
`The Microsoft Application (Ex. 1018) And Apple Patent (Ex.
`1019) Are Relevant Extrinsic Evidence Submitted In Direct
`Response To Claim Construction Arguments On “Playlist” ............... 2
`
`The Microsoft Application (Ex. 1018) And Apple Patent (Ex.
`1019) Are Not Inadmissible Hearsay ................................................... 4
`
`III. EXHIBIT 1022 SHOULD NOT BE EXCLUDED ........................................ 6
`
`IV. EXHIBIT 1020 SHOULD NOT BE EXCLUDED ........................................ 7
`
`V.
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`PATENT OWNER’S PREJUDICE OBJECTIONS ARE
`MERITLESS ................................................................................................. 11
`
`VI. PATENT OWNER HAS NOT MET ITS BURDEN TO EXCLUDE
`PETITIONER’S RELEVANT REPLY EVIDENCE ON
`“PLAYLIST” ................................................................................................ 13
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`VII. CONCLUSION ............................................................................................. 15
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`IPR2013-00598
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`CASES
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`TABLE OF AUTHORITIES
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`393032805500
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`Page(s)
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`Adobe Systems Inc. v. Level 3 Commc’ns, LLC,
`IPR2014-00153, Paper 18 (P.T.A.B. Sept. 18, 2014) ..........................................13
`Cybor Corp. v. FAS Techs., Inc.,
`138 F.3d 1448 (Fed. Cir. 1998) (en banc).............................................................. 2
`EMC Corp. v. PersonalWeb Techs., LLC,
`IPR2013-00087, Paper 69 (P.T.A.B. May 15, 2014)............................................. 7
`Fresenius Medical Care Holdings, Inc. v. Baxter Int’l, Inc.,
`2006 WL 1330003 (N.D. Cal. May 15, 2006) ....................................................... 5
`Hay & Forage Indus. v. New Holland N. Am., Inc.,
`25 F. Supp. 2d 1170 (D. Kan. 1998) ...................................................................... 5
`Lighting Ballast Control LLC v. Philips Elecs. N. Am. Corp.,
`744 F.3d 1272 (Fed. Cir. 2014) (en banc).............................................................. 2
`Markman v. Westview Instruments, Inc.,
`517 U.S. 370 (1996) ............................................................................................... 2
`Neev v. Abbott Med. Optics, Inc.,
`2012 WL 1066797 (D. Del. Mar. 26, 2012) ......................................................4, 5
`Nichia Corp. v. Emcore Corp.,
`IPR2012-00005, Paper 68 (P.T.A.B. Feb. 11, 2014) ...........................................12
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc)................................................... 3, 4, 11
`Respironics, Inc. v. Zoll Med. Corp.,
`IPR2013-00322, Paper 46 (P.T.A.B. Sept. 17, 2014) ..........................................13
`SAP America, Inc. v. Arunachalam,
`CBM2013-00013, Paper 61 (P.T.A.B. Sept. 18, 2014) .....................................5, 7
`Synthon IP, Inc. v. Pfizer Inc.,
`446 F. Supp. 2d 497 (E.D. Va. 2006) ..................................................................11
`Tate & Lyle Americas LLC v. Cargill, Inc.,
`IPR2014-00084, Paper 12 (P.T.A.B. Apr. 1, 2014) ............................................... 4
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`IPR2013-00598
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`TABLE OF AUTHORITIES
`(continued)
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`393032805500
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`Page
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`Vibrant Media, Inc. v. General Electric Co.,
`IPR2013-00172, Paper 50 (P.T.A.B. July 28, 2014) ...........................................14
`VirtenX, Inc. v. Cisco Systems, Inc.,
`--- F.3d ----, 2014 WL 4548722 (Fed. Cir. Sept. 16, 2014) .................................11
`
`
`Statutes
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`35 U.S.C. § 316(e) ...................................................................................................11
`37 C.F.R. § 42.20(c) .................................................................................................13
`37 C.F.R. § 42.23 .....................................................................................................14
`37 C.F.R. § 42.23(b) ................................................................................................15
`37 C.F.R. § 42.51(b)(iii) ............................................................................................ 9
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`Other Authorities
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`Fed. R. Evid. 403 .....................................................................................................11
`Fed. R. Evid. 613(b) ........................................................................................ 8, 9, 10
`Fed. R. Evid. 801(c) ................................................................................................... 7
`Fed. R. Evid. 803(6) ................................................................................................... 7
`Fed. R. Evid. 803(8) ................................................................................................... 2
`Fed. R. Evid. 803(17) ................................................................................................. 7
`Fed. R. Evid. 806 .....................................................................................................10
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`Petitioner’s Exhibit List for Inter Partes Review of U.S. Patent No. 8,214,873
`
`• PREVIOUSLY FILED EXHIBITS:
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`
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`Exhibit Description
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`Exhibit #
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`U.S. Patent No. 8,214,873 to Weel
`
`Declaration of Dr. V. Michael Bove, Jr.
`
`U.S. Patent App. Pub. US2005/0113946 A9 to Janik
`
`Applicant’s Appeal Brief dated November 8, 2010
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`Office Action dated March 1, 2012
`
`Notice of Allowance dated May 14, 2012
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`U.S. Patent App. Pub. US2002/0068558 A1 to Janik
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`U.S. Patent App. Pub. US2002/0065902 A1 to Janik
`
`U.S. Patent App. Pub. US2002/0040255 A1 to Neoh
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`Cardoza, Take a Look at the Latest Integrated PDA/Cell Phone
`Devices, TECHREPUBLIC, April 8, 2002
`
`U.S. Patent App. Pub. 2003/0045955 A1 to Janik
`
`U.S. Patent App. Pub. US2002/0087996 A1 to Bi et al.
`
`U.S. Pat. No. 6,622,018 to Erekson
`
`Sony Ericsson P800/P802 White Paper (pages 1-14, 24-25, 36, 70-
`72, 87-88, 94, and 112)
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`U.S. Patent No. 6,502,194 to Berman et al.
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`1001
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`1002
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`1003
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
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`1011
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`1012
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`1013
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`1014
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`1015
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`U.S. Patent No. 6,127,941 to Van Ryzin
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`Transcript of July 28, 2014 Deposition of Dr. Gareth Loy (“Loy
`Dep.”)
`U.S. Patent Appl. No. US2004/0267899 (filed by assignee Microsoft
`Corp. on June 27, 2003)
`U.S. Patent No. 6,728,729 (filed by assignee Apple Computer Inc. on
`April 25, 2003)
`Excerpts of May 24, 2011 Declaration of Dr. Gareth Loy filed in
`MonkeyMedia, Inc. v. Apple, Inc., Case No. 1:10cv319 (E.D. Tex.),
`re-filed on July 25, 2014, with discussion of POOSITA in ¶ 27
`U.S. Patent No. 8,230,099 to Weel
`
`Motorola Semiconductor Application Note for “DragonBall™ Power
`Management” (Copyright © 1998 by Motorola, Inc.)
`
`
`• NEWLY FILED EXHIBIT:
`
`
`
`1016
`
`1017
`
`1018
`
`1019
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`1020
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`1021
`
`1022
`
`Exhibit Description
`Declaration of David L. Fehrman in Support of Petitioner Yamaha
`Corporation of America’s Opposition to Patent Owner’s Motion to
`Exclude
`
`
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`Exhibit #
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`1023
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`IPR2013-00598
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`I.
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`INTRODUCTION
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`Petitioner Yamaha Corporation of America provides this Opposition to the
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`September 12, 2014 “Patent Owner’s Motion to Exclude Pursuant to 37 C.F.R.
`
`§ 42.64(c)” (Paper 39; “Motion”). Patent Owner’s Motion should be denied in all
`
`respects. The exhibits in question are relevant and admissible, and were
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`appropriately provided by Petitioner in support of its August 12, 2014 Reply
`
`(Paper 35) in direct response to arguments made in Patent Owner’s June 13, 2014
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`Response (Paper 31). There was nothing improper or untimely about including
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`these exhibits with Petitioner’s Reply, and the Reply Exhibits do not suffer from
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`the evidentiary deficiencies alleged by Patent Owner. As the Board has recognized
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`on numerous occasions, it is well equipped to assess the sufficiency of evidence.
`
`II. EXHIBITS 1018 AND 1019 SHOULD NOT BE EXCLUDED
`Petitioner did not propose a construction for the claim term “playlist” in its
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`original September 18, 2013 Petition, and the Board did not construe this term in
`
`its Institution Decision. As discussed on pages 3-6 of Petitioner’s Reply, Patent
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`Owner proposed in its Response that “playlist” should be accorded a narrow
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`construction of “a list of media items arranged to be played in a sequence” that is
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`not supported by the ‘873 patent. In direct response to Patent Owner’s proposed
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`construction – which relied on dubious extrinsic evidence (including cites to
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`HowStuffWorks (Ex. 2011-H) and Wikipedia (Ex. 2011-J, K, L, M, and N)) –
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`Petitioner submitted extrinsic evidence with its Reply regarding the usage of
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`“playlist” in the industry around the time of the claimed inventions of the ‘873
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`patent. That evidence consisted of, inter alia, a Microsoft patent application
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`(Exhibit 1018) and an issued Apple patent (Exhibit 1019), in which the inventors
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`described a “playlist” in a broader sense than that advocated by Patent Owner.
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`As discussed below, contemporaneous evidence of how the term “playlist”
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`was used in public patent filings by two of the leading companies in the relevant
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`industry is unquestionably relevant extrinsic evidence to the claim construction
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`issue that also shows the state of the art at the time of the claimed invention. These
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`public records are not hearsay, and to the extent they are considered hearsay, they
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`are subject to the “public records exception” of Fed. R. Evid. (“FRE”) 803(8) (or
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`should be admitted notwithstanding any hearsay aspects per recent Board rulings).
`
`A. The Microsoft Application (Ex. 1018) And Apple Patent (Ex.
`1019) Are Relevant Extrinsic Evidence Submitted In Direct
`Response To Claim Construction Arguments On “Playlist”
`As recently reaffirmed by the en banc Federal Circuit, claim construction is
`
`an issue of law. See Lighting Ballast Control LLC v. Philips Elecs. N. Am. Corp.,
`
`744 F.3d 1272, 1276-77 (Fed. Cir. 2014) (en banc); Cybor Corp. v. FAS Techs.,
`
`Inc., 138 F.3d 1448, 1454-55 (Fed. Cir. 1998) (en banc). In fact, claim
`
`construction is a “purely legal issue.” Cybor, 138 F.3d at 1452. See also Markman
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`v. Westview Instruments, Inc., 517 U.S. 370, 391 (1996) (describing claim
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`interpretation as a “purely legal” matter). As a purely legal issue, there are no
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`“factual issues” implicated in ascertaining a claim term’s meaning.
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`As explained in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en
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`banc), different types of evidence may be consulted when construing a claim term
`
`as a matter of law, including “‘extrinsic evidence concerning relevant scientific
`
`principles, the meaning of technical terms, and the state of the art.’” Id. at 1314
`
`(emphasis added) (citation omitted). In this proceeding, Patent Owner is objecting
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`to certain extrinsic evidence proffered by Petitioner that is unquestionably relevant
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`to the construction of the term “playlist.”
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`Petitioner submitted extrinsic evidence regarding “the meaning of technical
`
`terms, and the state of the art” in its Reply in direct response to claim construction
`
`arguments made in Patent Owner’s Response. As recognized by the Board in its
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`September 26, 2014 “Order Denying Authorization for Patent Owner to File
`
`Motion to Strike,” the exhibits “are in support of Petitioner’s Reply and are
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`responsive to the Patent Owner Response.” (Paper 42 at 3.)
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`Of course, the notion that such extrinsic evidence on a purely legal issue
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`would be susceptible to “relevance” or “hearsay” objections is antithetical to the
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`legal process of construing a claim. Again, Patent Owner itself relied upon
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`extrinsic evidence on the claim construction issue (see Exhibit 2011-C through N),
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`but now wants to preclude Petitioner from doing so.
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`The extrinsic evidence submitted by Petitioner is clearly relevant to the
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`construction of “playlist.” The manner of use of the term “playlist” by major
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`players in the relevant industry (i.e., Microsoft and Apple) is certainly germane to
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`this proceeding. Indeed, the Board has considered extrinsic evidence in the form
`
`of other patents to aid in the claim construction process. See Tate & Lyle Americas
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`LLC v. Cargill, Inc., IPR2014-00084, Paper 12 at 7 (P.T.A.B. Apr. 1, 2014).
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`Thus, these exhibits are relevant not only as countervailing evidence to
`
`Patent Owner’s extrinsic evidence – which included materials from both Microsoft
`
`(see Ex. 2011-C, D) and Apple (see Ex. 2011-E) – but also under Phillips as
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`“extrinsic evidence concerning … the meaning of technical terms, and the state of
`
`the art.” 415 F.3d at 1314. See also Neev v. Abbott Med. Optics, Inc., 2012 WL
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`1066797, at *13 (D. Del. Mar. 26, 2012) (“The state of the art at the time of the
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`invention is relevant to claim construction.”).
`
`B.
`
`The Microsoft Application (Ex. 1018) And Apple Patent (Ex.
`1019) Are Not Inadmissible Hearsay
`The above-cited Neev case also dispels the notion that the Microsoft
`
`application and the Apple patent constitute inadmissible hearsay:
`
`Statements in a reference offered for their effect on one of ordinary
`skill in the art are not hearsay. …
`
`… Statements in a patent have legal consequence, and therefore
`comprise legally operative facts which are not hearsay.
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`Neev, 2012 WL 1066797, at *14. Indeed, the Board recently cited Neev in denying
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`a motion to exclude evidence in SAP America, Inc. v. Arunachalam, CBM2013-
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`00013, Paper 61 at 28 (P.T.A.B. Sept. 18, 2014), concluding as follows:
`
`We addressed a similar issue in IPR2013-00194 and IPR2013-00195
`… [where] we determined that, notwithstanding the hearsay aspects of
`the exhibits, we could exercise our discretion to assign appropriate
`weight to the evidence. We reach the same conclusion here and deny
`Petitioner’s Motion to Exclude.
`
`Id. at 29. To the extent that there are any “hearsay aspects” to any of Petitioner’s
`
`objected-to exhibits, Petitioner respectfully submits that the Board should again
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`“exercise [its] discretion to assign appropriate weight to the evidence.”
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`Of course, both the Microsoft application and the Apple patent are public
`
`records filed with the PTO that are subject to the “public records exception” to
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`hearsay under FRE 803(8). See Fresenius Medical Care Holdings, Inc. v. Baxter
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`Int’l, Inc., 2006 WL 1330003, at *3 (N.D. Cal. May 15, 2006) (“courts regularly
`
`consider such [PTO] documents when construing claims”); Hay & Forage Indus.
`
`v. New Holland N. Am., Inc., 25 F. Supp. 2d 1170, 1175 n.2 (D. Kan. 1998).
`
`Any way this issue is viewed, these are relevant documents that are not
`
`inadmissible hearsay. They are either not hearsay in the first instance or subject to
`
`a hearsay exception – and to the extent that there are any hearsay aspects to any of
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`these exhibits, that should go to their weight, not their admissibility.
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`III. EXHIBIT 1022 SHOULD NOT BE EXCLUDED
`The Motorola Application Note (Exhibit 1022) was cited by Petitioner to
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`respond to Patent Owner’s expert’s pronouncements about the supposed
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`incompatibility of the navigator of Bi with the PDA of Erekson:
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`… Dr. Loy’s declarations about the vast differences between the
`computing power of Bi and Erekson are clearly wrong. Bi specifies
`that “[c]ontrol of the navigator 260 rests in the processor 261, which
`is, for example, a Motorola MC68EZ328.” (Bi at [0036].) A 1998
`Motorola Application Note for the DragonBall™ processor (Ex. 1022)
`includes an illustration of “a common MC68EZ328-based PDA
`design” on its cover (see id. at Fig. 1). This shows that the navigator
`260 used in Bi employed a processor that is used in PDAs. The
`bottom line is that Dr. Loy failed to provide any actual evidence to
`substantiate the supposed substantial differences between Erekson’s
`PDA and Bi’s navigator. In fact, it appears that the Bi navigator was
`essentially a form of PDA, as evidenced by a comparison between the
`Motorola drawing (id. at Fig. 1) and FIG. 5 of Bi.
`
`(Petitioner Reply at 13-14.) The Motorola Application Note was submitted in
`
`direct response to Patent Owner’s Response arguments regarding the obvious
`
`combination of the Bi and Erekson references. While Patent Owner denigrates this
`
`as “naked attorney argument,” expert testimony is not required to refute Patent
`
`Owner’s strained arguments. The Patent Owner may disagree with Petitioner
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`about the Motorola Application Note, but that does not render it irrelevant.
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`Under FRE 801(c), the Motorola Application Note is not hearsay because it
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`is being offered for what it describes, as opposed to the truth of the matters
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`asserted. See EMC Corp. v. PersonalWeb Techs., LLC, IPR2013-00087, Paper 69
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`at 42-43 (P.T.A.B. May 15, 2014). Even if it is considered hearsay, the Motorola
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`Application Note should be admissible as a business record under FRE 803(6), or
`
`as part of a “compilation” of materials regarding how the product works that is
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`“generally relied on by the public” under FRE 803(17). Finally, to the extent that
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`there are hearsay aspects to Exhibit 1023 that are not subject to an exception, the
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`Board can again “exercise [its] discretion to assign appropriate weight to the
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`evidence.” SAP America, CBM2013-00013, Paper 61 at 29.
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`IV. EXHIBIT 1020 SHOULD NOT BE EXCLUDED
`Exhibit 1020 is in a different class from Petitioner’s other Reply Exhibits. It
`
`is a declaration that was recently re-filed by Patent Owner’s expert (Dr. Gareth
`
`Loy) in an unrelated patent case. As explained on page 2 of Petitioner’s Reply:
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`One example of the ubiquity of “at least” in this context is in a
`declaration re-submitted by Patent Owner’s expert Dr. Gareth Loy in
`an unrelated litigation on July 25, 2014 (see Ex. 1020) – six weeks
`after his declaration here (“Loy Decl.”; Ex. 2011) – in which he
`opined that a “POOSITA … would have had either … at least 2 years
`of experience in the field” with a bachelor’s degree or “at least 1 year
`of experience in the field” with an advanced degree. (Ex. 1020, ¶ 27.)
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`Petitioner offered Exhibit 1020 to respond to Patent Owner’s Response
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`argument that use of “at least” in defining the “level of ordinary skill” is per se
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`improper, and as further evidence of the ubiquity of the “at least” qualifier in
`
`patent cases. That Patent Owner’s own expert has adopted “at least” terminology
`
`in defining a “POOSITA” in another patent case is clearly relevant.
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`However, Patent Owner seeks to exclude evidence that its own expert has
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`used “at least” language to define the level of ordinary skill in another case under
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`FRE 613(b), which provides:
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`Extrinsic evidence of a witness’s prior inconsistent statement is
`admissible only if the witness is given an opportunity to explain or
`deny the statement and an adverse party is given an opportunity to
`examine the witness about it, or if justice so requires. …
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`Fed. R. Evid. 613(b) (emphasis added). Justice so requires that it be admitted here.
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`Initially, there is some question as to whether Dr. Loy’s declaration is
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`“prior” as it was re-filed with the district court on July 25, 2014, which is after his
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`June 13, 2014 declaration in the instant matter. To the extent that Patent Owner is
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`focusing on the original May 24, 2011 version, that raises another issue.
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`If Dr. Loy’s declaration statement in E.D. Tex. Case No. 1:10cv319 is
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`viewed as “inconsistent” with his declaration in the instant matter – as Patent
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`Owner must contend in order to make its exclusion argument – it was incumbent
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`upon Patent Owner to have brought this inconsistency to Petitioner’s attention:
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`Unless 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.
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`37 C.F.R. § 42.51(b)(iii) (emphasis added.) If Patent Owner had timely complied
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`with its duty under § 42.51(b)(iii) by serving the May 24, 2011 Loy declaration
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`with its June 13, 2014 Response, then Petitioner would have had it in hand before
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`deposing Dr. Loy on July 28, 2014, and could have questioned him about it.
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`It stands to reason that a patent owner should prudently confirm with its own
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`expert that he hasn’t previously taken a position in another patent case at odds with
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`a position that the patent owner is asking him to adopt in the current proceeding.
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`As it stands, Petitioner did not discover the “at least” statement in the Loy
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`declaration until after Dr. Loy’s deposition, while in the process of finalizing
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`Petitioner’s August 12, 2014 Reply. (See Exhibit 1023.)
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`A primary objective behind FRE 613(b) is to substantiate whether the
`
`witness made the statement in question. Here, the statement is a signed
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`declaration submitted under penalty of perjury by Patent Owner’s expert in
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`another patent case. There is no dispute that Dr. Loy made the “at least” statement
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`in his declaration in E.D. Tex. Case No. 1:10cv319 (and Patent Owner tellingly did
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`not make an authentication objection to Exhibit 1020).
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`Assuming, arguendo, that Dr. Loy’s “at least” declaration statement is both
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`“prior” and “inconsistent” such that FRE 613(b) comes into play, Dr. Loy’s “prior
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`inconsistent statement” should still be admissible under the “if justice so requires”
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`prong of FRE 613(b) given the above-described timing of its discovery. But in
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`view of FRE 806, it is not clear that FRE 613(b) even applies to IPR declarants.
`
`The second sentence of FRE 806 specifically exempts out-of-court
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`declarants from the “opportunity to explain or deny” requirement of FRE 613(b):
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`When a hearsay statement … has been admitted in evidence, the
`declarant’s credibility may be attacked, and then supported, by any
`evidence that would be admissible for those purposes if the declarant
`had testified as a witness. The court may admit evidence of the
`declarant’s inconsistent statement or conduct, regardless of when it
`occurred or whether the declarant had an opportunity to explain or
`deny it. …
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`Fed. R. Evid. 806 (emphasis added). Dr. Loy is a declarant in this proceeding, and
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`evidence of this “declarant’s inconsistent statement” may therefore be admitted
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`under FRE 806. Thus, FRE 613(b) does not appear to apply to preclude the
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`admissibility of “prior inconsistent statements” of declarants such as Dr. Loy under
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`FRE 806. And to the extent that FRE 613(b) does apply to IPR declarants, “justice
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`so requires” that Dr. Loy’s declaration statement utilizing “at least” terminology to
`
`define the level of ordinary skill should be admitted to further support Petitioner’s
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`argument that this type of language is ubiquitous in patent cases.
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`IPR2013-00598
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`V.
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`PATENT OWNER’S PREJUDICE OBJECTIONS ARE MERITLESS
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`For each of the contested exhibits, Patent Owner has interposed an objection
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`under FRE 403, which permits the exclusion of “relevant evidence if its probative
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`value is substantially outweighed by a danger of … unfair prejudice” (among other
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`factors). Because Patent Owner cites only “unfair prejudice” and makes
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`essentially the same “prejudice” arguments for each of Petitioner’s exhibits,
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`Petitioner will address Patent Owner’s FRE 403 objections together. The gist of
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`Patent Owner’s complaint is that Petitioner got the last word. But that makes sense
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`because Petitioner bears the burden of proof in an IPR. See 35 U.S.C. § 316(e).
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`Patent Owner presumes that its expert is entitled to scrutinize each piece of
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`evidence, and that evidence can only be submitted through an expert. However,
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`there is no requirement that parties even use experts in an IPR. In fact, on the issue
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`how to construe “playlist,” expert testimony is considered extrinsic evidence,
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`which ranks low in “the hierarchy of claim construction tools, namely the intrinsic
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`evidence … and then, only if necessary, the less objective and reliable extrinsic
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`evidence.” Synthon IP, Inc. v. Pfizer Inc., 446 F. Supp. 2d 497, 505 n.4 (E.D. Va.
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`2006).
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`Expert testimony is “permitted,” but certainly not required for claim
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`construction. See, e.g., VirtenX, Inc. v. Cisco Systems, Inc., --- F.3d ----, 2014 WL
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`4548722, at *3 (Fed. Cir. Sept. 16, 2014) (citing Phillips).
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`Because there is no requirement that experts opine on claim construction,
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`Patent Owner’s “prejudice” argument boils down to not having a chance to
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`respond to Petitioner’s Reply. Again, though, in an IPR proceeding, the petitioner
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`bears the burden. And in establishing the ground rules for IPRs, Congress decided
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`not to provide the patent owner with a sur-reply.
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`As it stands, Patent Owner has effectively gotten the last word by filing the
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`instant Motion, which is rife with what can only be viewed as sur-reply arguments
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`on the ultimate issues. The Board has recognized this to be an “improper” use of
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`this procedural mechanism. See Nichia Corp. v. Emcore Corp., IPR2012-00005,
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`Paper 68 at 61 (P.T.A.B. Feb. 11, 2014) (“While a motion to exclude may raise
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`issues related to admissibility of evidence, it is not an opportunity for submitting
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`new arguments or a sur-reply.”).
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`Patent Owner has manufactured a “sur-reply” via its Motion to Exclude, and
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`will have the “last word” in its reply in support of this Motion. In no way is Patent
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`Owner “prejudiced” by Petitioner’s timely submission of a Reply with exhibits
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`directly responding to arguments made in Patent Owner’s Response.
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`IPR2013-00598
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`VI. PATENT OWNER HAS NOT MET ITS BURDEN TO EXCLUDE
`PETITIONER’S RELEVANT REPLY EVIDENCE ON “PLAYLIST”
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`Of course, the burden of proof to establish entitlement to requested relief is
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`on the moving party. 37 C.F.R. § 42.20(c). Patent Owner has not met its burden
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`of demonstrating why the objected-to exhibits should be subject to the “harsh
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`remedy of exclusion.” Respironics, Inc. v. Zoll Med. Corp., IPR2013-00322, Paper
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`46 at 27 (P.T.A.B. Sept. 17, 2014).
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`Again, this is not a question of admissibility, but rather weight. And the
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`Board can certainly assess the weight of Petitioner’s Reply Exhibits, which largely
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`go to what Patent Owner’s Response has now framed as the heart of this matter,
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`i.e., the proper construction of “playlist.”
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`Whether or not Petitioner raised “playlist” as a term of construction in its
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`original September 19, 2013 Petition is immaterial. Petitioner had every right to
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`respond to Patent Owner’s narrow proposed construction in its Reply. Indeed, as
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`observed by the Board in its just-issued Order denying the Patent Owner
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`authorization to file a motion to strike:
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`Petitioner’s Reply … was its first opportunity to respond to the
`arguments raised in the Patent Owner Response. In that Reply,
`Petitioner responded directly to Patent Owner’s proposed construction
`of “playlist” by proposing an alternative construction.
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`(Paper 42 at 3.) In Adobe Systems Inc. v. Level 3 Commc’ns, LLC, IPR2014-
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`00153, Paper 18 (P.T.A.B. Sept. 18, 2014), the Board made this same point:
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`[A]s long as the Reply is in response to arguments raised in the Patent
`Owner’s response, then it is within the proper scope of a Reply. 37
`C.F.R. § 42.23. … [T]he panel can determine for itself whether the
`Reply raises new issues or evidence that should have been submitted
`with the Petition, and can discount any such arguments accordingly.
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`Id. at 2. Here, as already found by the Board, Petitioner’s Reply, including the
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`small number of Reply Exhibits filed in support, was directly responsive to claim
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`construction arguments and evidence raised by Patent Owner in its Response.
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`Patent Owner’s position that Petitioner should have somehow anticipated
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`Patent Owner’s request to construe “playlist” as well as its Response arguments,
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`and proactively submitted all of its evidence regarding construction of the term
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`back on September 19, 2013, is utterly without merit. Petitioner did not propose a
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`construction for “playlist” in its Petition, just as it did not propose constructions for
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`most terms of the challenged claims.
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`The idea that a petitioner is required to construe every claim term in its
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`petition at the peril of being foreclosed from contesting a patent owner’s
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`constructions on any terms that it does not raise defies logic, as the Board
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`recognized in Vibrant Media, Inc. v. General Electric Co., IPR2013-00172, Paper
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`50 (P.T.A.B. July 28, 2014):
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`[T]he mere fact that the Rebuttal Declaration cites to evidence that
`was not discussed specifically in the Petition is insufficient to
`establish the impropriety of such evidence, much less inadmissibility
`under the Federal Rules of Evidence. The very nature of a reply is to
`respond to the Opposition, which in this case is the Patent Owner
`Response. See 37 C.F.R. § 42.23 (b). The need for relying on
`evidence not previously discussed in the Petition may not exist until a
`certain point has been raised in the Patent Owner Response. Much
`depends on the specific arguments made in the Patent Owner
`Response.
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`Id. at 41 (emphasis added). The need for Petitioner to submit evidence to rebut
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`Patent Owner’s construction of “playlist” only arose after the Response was filed.
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`VII. CONCLUSION
`For the foregoing reasons, Petitioner respectfully requests that the Board
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`deny Patent Owner’s Motion to Exclude Exhibits 1018, 1019, 1020, and 1022.
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`Dated: September 26, 2014
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`By /David L. Fehrman/
`David L. Fehrman, Reg. No.: 28,600
`Mehran Arjomand, Reg. No.: 48,231
`MORRISON & FOERSTER LLP
`707 Wilshire Blvd., Suite 6000
`Los Angeles, California 90017-3543
`(213) 892-5200
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`IPR2013-00598
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`Certificate of Service (37 C.F.R. § 42.6(e)(4))
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`I hereby certify that the attached “Petitioner Yamaha Corporation of
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`America’s Opposition to Patent Owner’s Motion to Exclude” was served on the
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`below date on the Patent Owner via e-mail (by consent) to the following counsel of
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`record for the Patent Owner:
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`Lana Gladstein (gladsteinl@pepperlaw.com)
`Thomas Engellenner (engellennert@pepperlaw.com)
`PEPPER HAMILTON LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02110
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`Theodosios Thomas (ted.thomas@sceneralabs.com)
`BLACK HILLS MEDIA, LLC
`5400 Trinity Road, Suite 303
`Raleigh, NC 27607
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`Christopher Horgan (chris.horgan@concerttechonology.com)
`Concert Technology
`1438 Dahlia Loop
`San Jose, CA 95126
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`Dated: September 26, 2014
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`__/Mehran Arjomand/____
`Mehran Arjomand
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