`
`Paper No. 36
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`APPLE INC.,
`TWITTER, INC., AND YELP INC.,
`Petitioners,
`
`v.
`
`EVOLUTIONARY INTELLIGENCE, LLC,
`Patent Owner
`___________________
`
`Inter Partes Review No. IPR2014-00086
`Inter Partes Review No. IPR2014-008121
`
`__________________________________________________________________
`
`PETITIONERS’ OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE
`
`
`
`
`
`
`
`
`
`
`
`1 Per the Board’s Order (Paper 16 at 4), Petitioner Apple identifies this as a
`
`consolidated filing on behalf of Petitioners.
`
`
`
`
`
`IPR2014-00086
`IPR2014-00812
`
`I.
`
`Introduction
`
`Patent Owner’s Motion to Exclude is procedurally improper as Patent
`
`Owner never objected to the evidence it seeks to exclude. See Paper No. 34
`
`(“Motion”). Patent Owner’s substantive arguments lack merit, are primarily based
`
`on its mischaracterization of Dr. Houh’s testimony, and fail to raise any cognizable
`
`basis for excluding the evidence. Patent Owner’s motion should be denied.
`
`II.
`
`Patent Owner Failed to Timely Object to Dr. Houh’s Declaration
`
`A motion to exclude is an opportunity for a party to raise evidentiary
`
`objections to the admissibility of evidence submitted during a trial. See IPR2013-
`
`00071, Paper 75 at 4. It “is not an opportunity to file a sur-reply, and also is not a
`
`mechanism to argue that a reply contains new arguments or relies on evidence
`
`necessary to make out a prima facie case.” CBM2012-00002, Paper 66 at 62.
`
`Such a motion “may only raise issues related to the admissibility of evidence (e.g.,
`
`hearsay), not the credibility of witnesses or sufficiency of the evidence.” IPR2013-
`
`00071, Paper 75 at 4; see also 37 C.F.R. § 42.64(c); Trial Practice Guide, 77 Fed.
`
`Reg. 48756, 48767 (Aug. 14, 2012).
`
`The Board’s rules are unequivocal as to the requirements to preserve an
`
`objection to the admissibility of evidence – a party must both timely raise an
`
`objection to the evidence and in that objection “identify the grounds for the
`
`objection with sufficient particularity to allow correction in the form of
`
`
`
`1
`
`
`
`IPR2014-00086
`IPR2014-00812
`
`supplemental evidence.” 37 C.F.R § 42.64(a)-(b). The party also must, in its
`
`motion to exclude, identify where in the record the objection to the evidence was
`
`made. 37 C.F.R. § 42.64(c). As Patent Owner did neither, its motion must be
`
`denied.
`
`Petitioner filed and served a copy of Dr. Houh’s Supplemental Declaration
`
`on Patent Owner’s counsel on October 27, 2014, giving Patent Owner until
`
`November 3, 2014 to raise an objection. 37 C.F.R. § 42.64(b)(1) (“Any objection
`
`to evidence . . . [o]nce trial has been instituted [] must be served within five
`
`business days of service of evidence to which the objection is directed.”). Because
`
`Patent Owner never objected to Dr. Houh’s supplemental declaration, Patent
`
`Owner’s motion to exclude necessarily fails to “preserve any objection.” 37
`
`C.F.R. § 42.64(c). As such, the motion to exclude is improper and must be denied.
`
`III. Patent Owner’s Objections Are Meritless and Should Be Denied
`Even if considered on the merits, Patent Owner’s motion should be denied.
`
`Patent Owner challenges the admissibility of ¶ 29 of Exhibit 1009, raising four
`
`arguments: (a) it is improper rebuttal evidence, (b) it lacks foundation, (c) it is
`
`based on an incorrect claim construction standard, and (d) it is not relevant to the
`
`
`
`2
`
`
`
`IPR2014-00086
`IPR2014-00812
`
`issues before the Board.2 As shown below, none of these arguments have merit.
`
`Paragraph 29 Is Proper Rebuttal Evidence
`
`A.
`Patent Owner argues that ¶ 29 of Ex. 1009 constitutes “new evidence on
`
`reply [and] violates 37 C.F.R. 42.123, which requires supplemental information be
`
`submitted within one month of institution of an IPR.” Motion at 2-3. Patent
`
`Owner is wrong.
`
`First, ¶ 29 of Ex. 1009 directly rebuts Patent Owner’s claim construction
`
`arguments made in its Response to the Petition, which is the very purpose of a
`
`Reply. See Microsoft Corp. v. Surfcast, Inc., IPR2013-00292, Paper 93, at 59 (Oct.
`
`14, 2014) (finding that evidence “directly responsive to [Patent Owner]’s claim
`
`construction arguments” is admissible on reply). In the Institution Decision, the
`
`Board construed “container” as requiring “a logically defined data enclosure.”
`
`Dec. at 9. In its Response, Patent Owner proposed two other constructions for
`
`
`
`2 In its motion, Patent Owner has not specifically identified the relief it seeks. See
`
`Motion at 2-5. To the extent that it is requesting the Board to exclude Dr. Houh’s
`
`entire Supplemental Declaration, that request is improper because Patent Owner’s
`
`complaints relate to a single offending paragraph. Even if ¶ 29 were improper
`
`(which it is not), that would not justify excluding the entire declaration.
`
`
`
`3
`
`
`
`IPR2014-00086
`IPR2014-00812
`
`“container.” Patent Owner asserted that the phrase “logically defined data
`
`enclosure” meant “defined using a software mechanism.” Ex. 2006 at ¶¶ 34-35.
`
`Patent Owner then argued that Gibbs did not disclose a “container” based on a
`
`narrower construction for “container”; namely that the only way a container can
`
`encapsulate other containers is by “includ[ing] the logical description of another
`
`container.” Resp. at 38-40. In ¶ 29, Dr. Houh explains that one of ordinary skill
`
`would have understood a that a “software mechanism” covers a broad range of
`
`software-based techniques. Ex. 1009 at ¶ 29. Dr. Houh explains that even under
`
`Patent Owner’s expert’s construction, the phrase “logically defined data enclosure”
`
`is not as narrow as Patent Owner contends when discussing Gibbs. Dr. Houh’s
`
`testimony directly responds to contentions made by Patent Owner and its expert,
`
`and therefore ¶ 29 is proper rebuttal evidence.
`
`Second, Patent Owner’s argument that ¶ 29 constitutes “new evidence” is
`
`improper in the context of a motion to exclude. The Board has explained that
`
`“[c]hallenging evidence as being improper reply evidence through a motion to
`
`exclude is [] disfavored.” Corning Inc. v. DSM IP Assets B.V., IPR2013-00047,
`
`Paper 84, at 7 n. 3 (May 1, 2014). “While a motion to exclude may raise issues
`
`related to admissibility of evidence,” it is typically “not a mechanism to argue that
`
`a reply contains new arguments or relies on evidence necessary to make out a
`
`prima facie case.” Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.,
`
`
`
`4
`
`
`
`IPR2014-00086
`IPR2014-00812
`
`CBM2012-00002, Paper 66, at 62 (Jan. 23, 2014). Patent Owner’s argument can
`
`therefore be ignored.
`
`Paragraph 29 Has Proper Foundation
`
`B.
`Patent Owner argues that ¶ 29 “lacks foundation” because “Dr. Houh
`
`provides no definitions of [the discussed examples], nor does he provide any
`
`reasons why these things are ‘logical data enclosures.’” Motion at 3. That
`
`argument belies the facts, as Dr. Houh is discussing Patent Owner’s own expert’s
`
`understanding of “‘logically defined’ to mean ‘defined through a software
`
`mechanism’.” Ex. 2006 at ¶ 35; Ex. 1009 at ¶ 29 (“a ‘logically defined data
`
`enclosure’ (or a data enclosure defined by a ‘software mechanism’)”). In ¶ 29, Dr.
`
`Houh explains that a variety of well-known computer science structures can be
`
`considered data enclosures defined by a “software mechanism.” Ex. 1009 at ¶ 29.
`
`Patent Owner argues that Dr. Houh’s opinion has no foundation because he did not
`
`“reference or submit any materials on object-oriented programming in support of
`
`his” identification of these well-known computer science structures. Motion at 4.
`
`Patent Owner notably does not challenge that Dr. Houh has “a background in
`
`object-oriented programming,” Ex. 1010 (Houh Suppl. Dep. Tr.) at 202:12-18, nor
`
`that he has been the architect of large object-oriented programming systems, id. at
`
`222:16-224:9. The Board is competent to consider Dr. Houh’s opinion and the
`
`rationale supporting it, and to assign it appropriate weight. Liberty Mutual Ins. Co.
`
`
`
`5
`
`
`
`IPR2014-00086
`IPR2014-00812
`
`v. Progressive Casualty Ins. Co., CBM2012-00002, Paper 66, at 60-61 (Jan. 23,
`
`2014). Patent Owner’s request therefore should be denied.
`
`C. Dr. Houh Applied The Broadest Reasonable Interpretation
`Patent Owner argues that ¶ 29 is inadmissible because Dr. Houh “admitted
`
`in deposition that he was simply using a layperson’s understanding of nesting or
`
`encapsulation” and therefore “applied an incorrect standard of claim construction
`
`when applying the phrase ‘logically defined data enclosure.’” Motion at 4. This
`
`argument is specious for multiple reasons. First, “nesting” is not a claim term.
`
`Second, Patent Owner’s own counsel had asked Dr. Houh to “explain to [him] as a
`
`layperson” certain technical features just prior to Dr. Houh’s discussion of
`
`“nesting.” Ex. 1010 at 230:22-25. Patent Owner can hardly complain that Dr.
`
`Houh complied. Lastly, Dr. Houh’s brief discussion of the ordinary meaning took
`
`place in the context of his discussion of its meaning to those of ordinary skill in
`
`the art. Specifically, when asked about “nesting,” Dr. Houh explained that
`
`“generally people understand [nesting] as things within things” and that object-
`
`oriented programmers understand “nesting” as “objects within objects.” Ex. 1010
`
`at 240:23-241:11, 241:12-243:5. Patent Owner’s argument relies on a selective
`
`misquotation of Dr. Houh and should be rejected.
`
`D. Gibbs’ Disclosure Is Irrelevant to the Broadest Reasonable
`Construction of “Container”
`
`Patent Owner argues that ¶ 29’s discussion of “execution stacks is
`
`6
`
`
`
`IPR2014-00086
`IPR2014-00812
`
`inadmissible because Dr. Houh admitted that Gibbs did not necessarily require or
`
`disclose an execution stack that operated in the manner he described.” Motion at
`
`4-5. Patent Owner mischaracterizes Dr. Houh’s testimony, and is wrong. Dr.
`
`Houh explained that conventional execution stacks are “logically defined data
`
`enclosures” and that Gibbs discloses conventional systems. Ex. 1010 at 236:12-
`
`237:2, 266:12-17, 266:22-267:22. In the testimony cited by Patent Owner, Dr.
`
`Houh was responding to Patent Owner’s incomplete hypothetical, and Dr. Houh
`
`was explaining that it theoretically would be possible to create a new type of
`
`execution stack that was not a “logically defined data enclosure.” Ex. 1010 at
`
`257:15-259:4 (emphasis added). This question was untethered to the disclosure of
`
`Gibbs, and so was Dr. Houh’s response. Patent Owner again misquotes Dr. Houh
`
`to make an argument unsupported by the deposition transcript. Patent Owner’s
`
`argument should be rejected and the objection denied.
`
`IV. Conclusion
`Based on the reasons provided above, the Board should dismiss Patent
`
`Owner’s motion to exclude.
`
`
`
`Dated: December 12, 2014
`
`
`
`
`
`
`
`7
`
`Respectfully Submitted,
`
`/Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Registration No. 43,401
`
`
`
`IPR2014-00086
`IPR2014-00812
`
`
`Sidley Austin LLP
`1501 K Street NW
`Washington, DC 20005
`jkushan@sidley.com
`Attorney for Petitioner Apple
`
`
`
`
`8
`
`
`
`IPR2014-00086
`IPR2014-00812
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 12th day of December, 2014, a copy of this
`
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude has been served in its
`
`entirety by email on the following counsel of record for Patent Owner and
`
`Petitioners Yelp and Twitter:
`
`Patent Owner:
`Anthony Patek
`Gutride Safier LLP
`835 Douglass Street
`San Francisco, CA 94114
`anthony@gutridesafier.com
`pto@gutridesafier.com
`
`Todd Kennedy
`Gutride Safier LLP
`835 Douglass Street
`San Francisco, CA 94114
`todd@guttridesafier.com
`
`
`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
`
`
`Dated: December 12, 2014
`
`
`
`Respectfully submitted,
`
`/Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Reg. No. 43,401
`Attorney for Petitioner Apple
`
`
`
`1
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
