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`Paper No. 36
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
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`APPLE INC.,
`TWITTER, INC., AND YELP INC.,
`Petitioners,
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`v.
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`EVOLUTIONARY INTELLIGENCE, LLC,
`Patent Owner
`___________________
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`Inter Partes Review No. IPR2014-00086
`Inter Partes Review No. IPR2014-008121
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`__________________________________________________________________
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`PETITIONERS’ OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE
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`1 Per the Board’s Order (Paper 16 at 4), Petitioner Apple identifies this as a
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`consolidated filing on behalf of Petitioners.
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`I.
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`Introduction
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`Patent Owner’s Motion to Exclude is procedurally improper as Patent
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`Owner never objected to the evidence it seeks to exclude. See Paper No. 34
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`(“Motion”). Patent Owner’s substantive arguments lack merit, are primarily based
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`on its mischaracterization of Dr. Houh’s testimony, and fail to raise any cognizable
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`basis for excluding the evidence. Patent Owner’s motion should be denied.
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`II.
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`Patent Owner Failed to Timely Object to Dr. Houh’s Declaration
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`A motion to exclude is an opportunity for a party to raise evidentiary
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`objections to the admissibility of evidence submitted during a trial. See IPR2013-
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`00071, Paper 75 at 4. It “is not an opportunity to file a sur-reply, and also is not a
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`mechanism to argue that a reply contains new arguments or relies on evidence
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`necessary to make out a prima facie case.” CBM2012-00002, Paper 66 at 62.
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`Such a motion “may only raise issues related to the admissibility of evidence (e.g.,
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`hearsay), not the credibility of witnesses or sufficiency of the evidence.” IPR2013-
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`00071, Paper 75 at 4; see also 37 C.F.R. § 42.64(c); Trial Practice Guide, 77 Fed.
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`Reg. 48756, 48767 (Aug. 14, 2012).
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`The Board’s rules are unequivocal as to the requirements to preserve an
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`objection to the admissibility of evidence – a party must both timely raise an
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`objection to the evidence and in that objection “identify the grounds for the
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`objection with sufficient particularity to allow correction in the form of
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`supplemental evidence.” 37 C.F.R § 42.64(a)-(b). The party also must, in its
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`motion to exclude, identify where in the record the objection to the evidence was
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`made. 37 C.F.R. § 42.64(c). As Patent Owner did neither, its motion must be
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`denied.
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`Petitioner filed and served a copy of Dr. Houh’s Supplemental Declaration
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`on Patent Owner’s counsel on October 27, 2014, giving Patent Owner until
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`November 3, 2014 to raise an objection. 37 C.F.R. § 42.64(b)(1) (“Any objection
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`to evidence . . . [o]nce trial has been instituted [] must be served within five
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`business days of service of evidence to which the objection is directed.”). Because
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`Patent Owner never objected to Dr. Houh’s supplemental declaration, Patent
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`Owner’s motion to exclude necessarily fails to “preserve any objection.” 37
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`C.F.R. § 42.64(c). As such, the motion to exclude is improper and must be denied.
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`III. Patent Owner’s Objections Are Meritless and Should Be Denied
`Even if considered on the merits, Patent Owner’s motion should be denied.
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`Patent Owner challenges the admissibility of ¶ 29 of Exhibit 1009, raising four
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`arguments: (a) it is improper rebuttal evidence, (b) it lacks foundation, (c) it is
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`based on an incorrect claim construction standard, and (d) it is not relevant to the
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`issues before the Board.2 As shown below, none of these arguments have merit.
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`Paragraph 29 Is Proper Rebuttal Evidence
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`A.
`Patent Owner argues that ¶ 29 of Ex. 1009 constitutes “new evidence on
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`reply [and] violates 37 C.F.R. 42.123, which requires supplemental information be
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`submitted within one month of institution of an IPR.” Motion at 2-3. Patent
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`Owner is wrong.
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`First, ¶ 29 of Ex. 1009 directly rebuts Patent Owner’s claim construction
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`arguments made in its Response to the Petition, which is the very purpose of a
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`Reply. See Microsoft Corp. v. Surfcast, Inc., IPR2013-00292, Paper 93, at 59 (Oct.
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`14, 2014) (finding that evidence “directly responsive to [Patent Owner]’s claim
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`construction arguments” is admissible on reply). In the Institution Decision, the
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`Board construed “container” as requiring “a logically defined data enclosure.”
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`Dec. at 9. In its Response, Patent Owner proposed two other constructions for
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`2 In its motion, Patent Owner has not specifically identified the relief it seeks. See
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`Motion at 2-5. To the extent that it is requesting the Board to exclude Dr. Houh’s
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`entire Supplemental Declaration, that request is improper because Patent Owner’s
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`complaints relate to a single offending paragraph. Even if ¶ 29 were improper
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`(which it is not), that would not justify excluding the entire declaration.
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`“container.” Patent Owner asserted that the phrase “logically defined data
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`enclosure” meant “defined using a software mechanism.” Ex. 2006 at ¶¶ 34-35.
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`Patent Owner then argued that Gibbs did not disclose a “container” based on a
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`narrower construction for “container”; namely that the only way a container can
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`encapsulate other containers is by “includ[ing] the logical description of another
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`container.” Resp. at 38-40. In ¶ 29, Dr. Houh explains that one of ordinary skill
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`would have understood a that a “software mechanism” covers a broad range of
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`software-based techniques. Ex. 1009 at ¶ 29. Dr. Houh explains that even under
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`Patent Owner’s expert’s construction, the phrase “logically defined data enclosure”
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`is not as narrow as Patent Owner contends when discussing Gibbs. Dr. Houh’s
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`testimony directly responds to contentions made by Patent Owner and its expert,
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`and therefore ¶ 29 is proper rebuttal evidence.
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`Second, Patent Owner’s argument that ¶ 29 constitutes “new evidence” is
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`improper in the context of a motion to exclude. The Board has explained that
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`“[c]hallenging evidence as being improper reply evidence through a motion to
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`exclude is [] disfavored.” Corning Inc. v. DSM IP Assets B.V., IPR2013-00047,
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`Paper 84, at 7 n. 3 (May 1, 2014). “While a motion to exclude may raise issues
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`related to admissibility of evidence,” it is typically “not a mechanism to argue that
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`a reply contains new arguments or relies on evidence necessary to make out a
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`prima facie case.” Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.,
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`CBM2012-00002, Paper 66, at 62 (Jan. 23, 2014). Patent Owner’s argument can
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`therefore be ignored.
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`Paragraph 29 Has Proper Foundation
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`B.
`Patent Owner argues that ¶ 29 “lacks foundation” because “Dr. Houh
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`provides no definitions of [the discussed examples], nor does he provide any
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`reasons why these things are ‘logical data enclosures.’” Motion at 3. That
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`argument belies the facts, as Dr. Houh is discussing Patent Owner’s own expert’s
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`understanding of “‘logically defined’ to mean ‘defined through a software
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`mechanism’.” Ex. 2006 at ¶ 35; Ex. 1009 at ¶ 29 (“a ‘logically defined data
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`enclosure’ (or a data enclosure defined by a ‘software mechanism’)”). In ¶ 29, Dr.
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`Houh explains that a variety of well-known computer science structures can be
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`considered data enclosures defined by a “software mechanism.” Ex. 1009 at ¶ 29.
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`Patent Owner argues that Dr. Houh’s opinion has no foundation because he did not
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`“reference or submit any materials on object-oriented programming in support of
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`his” identification of these well-known computer science structures. Motion at 4.
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`Patent Owner notably does not challenge that Dr. Houh has “a background in
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`object-oriented programming,” Ex. 1010 (Houh Suppl. Dep. Tr.) at 202:12-18, nor
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`that he has been the architect of large object-oriented programming systems, id. at
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`222:16-224:9. The Board is competent to consider Dr. Houh’s opinion and the
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`rationale supporting it, and to assign it appropriate weight. Liberty Mutual Ins. Co.
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`v. Progressive Casualty Ins. Co., CBM2012-00002, Paper 66, at 60-61 (Jan. 23,
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`2014). Patent Owner’s request therefore should be denied.
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`C. Dr. Houh Applied The Broadest Reasonable Interpretation
`Patent Owner argues that ¶ 29 is inadmissible because Dr. Houh “admitted
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`in deposition that he was simply using a layperson’s understanding of nesting or
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`encapsulation” and therefore “applied an incorrect standard of claim construction
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`when applying the phrase ‘logically defined data enclosure.’” Motion at 4. This
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`argument is specious for multiple reasons. First, “nesting” is not a claim term.
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`Second, Patent Owner’s own counsel had asked Dr. Houh to “explain to [him] as a
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`layperson” certain technical features just prior to Dr. Houh’s discussion of
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`“nesting.” Ex. 1010 at 230:22-25. Patent Owner can hardly complain that Dr.
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`Houh complied. Lastly, Dr. Houh’s brief discussion of the ordinary meaning took
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`place in the context of his discussion of its meaning to those of ordinary skill in
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`the art. Specifically, when asked about “nesting,” Dr. Houh explained that
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`“generally people understand [nesting] as things within things” and that object-
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`oriented programmers understand “nesting” as “objects within objects.” Ex. 1010
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`at 240:23-241:11, 241:12-243:5. Patent Owner’s argument relies on a selective
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`misquotation of Dr. Houh and should be rejected.
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`D. Gibbs’ Disclosure Is Irrelevant to the Broadest Reasonable
`Construction of “Container”
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`Patent Owner argues that ¶ 29’s discussion of “execution stacks is
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`inadmissible because Dr. Houh admitted that Gibbs did not necessarily require or
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`disclose an execution stack that operated in the manner he described.” Motion at
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`4-5. Patent Owner mischaracterizes Dr. Houh’s testimony, and is wrong. Dr.
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`Houh explained that conventional execution stacks are “logically defined data
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`enclosures” and that Gibbs discloses conventional systems. Ex. 1010 at 236:12-
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`237:2, 266:12-17, 266:22-267:22. In the testimony cited by Patent Owner, Dr.
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`Houh was responding to Patent Owner’s incomplete hypothetical, and Dr. Houh
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`was explaining that it theoretically would be possible to create a new type of
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`execution stack that was not a “logically defined data enclosure.” Ex. 1010 at
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`257:15-259:4 (emphasis added). This question was untethered to the disclosure of
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`Gibbs, and so was Dr. Houh’s response. Patent Owner again misquotes Dr. Houh
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`to make an argument unsupported by the deposition transcript. Patent Owner’s
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`argument should be rejected and the objection denied.
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`IV. Conclusion
`Based on the reasons provided above, the Board should dismiss Patent
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`Owner’s motion to exclude.
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`Dated: December 12, 2014
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`7
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`Respectfully Submitted,
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`/Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Registration No. 43,401
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`IPR2014-00086
`IPR2014-00812
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`Sidley Austin LLP
`1501 K Street NW
`Washington, DC 20005
`jkushan@sidley.com
`Attorney for Petitioner Apple
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 12th day of December, 2014, a copy of this
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`Petitioner’s Opposition to Patent Owner’s Motion to Exclude has been served in its
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`entirety by email on the following counsel of record for Patent Owner and
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`Petitioners Yelp and Twitter:
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`Patent Owner:
`Anthony Patek
`Gutride Safier LLP
`835 Douglass Street
`San Francisco, CA 94114
`anthony@gutridesafier.com
`pto@gutridesafier.com
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`Todd Kennedy
`Gutride Safier LLP
`835 Douglass Street
`San Francisco, CA 94114
`todd@guttridesafier.com
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`Petitioners Yelp and Twitter
`Vaibhav P. Kadaba
`Kilpatrick Townsend & Stockton LLP
`1100 Peachtree Street NE, Suite 2800
`Atlanta, GA 30309-4528
`wkadaba@kilpatricktownsend.com
`rartuz@kilpatricktownsend.com
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`Dated: December 12, 2014
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`Respectfully submitted,
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`/Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Reg. No. 43,401
`Attorney for Petitioner Apple
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