By: Thomas Engellenner
`Pepper Hamilton LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02110
`(617) 204-5100 (telephone)
`(617) 204-5150 (facsimile)
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`WAVEMARKET, INC. D/B/A LOCATION LABS
`Petitioner
`
`v.
`
`LOCATIONET SYSTEMS, LTD.
`Patent Owner
`___________________
`
`Case No. IPR2014-00199
`U.S. Patent 6,771,970
`___________________
`
`PATENT OWNER’S OPPOSITION TO PETITIONER’S
`MOTION TO EXCLUDE EVIDENCE
`PURSUANT TO 37 C.F.R. § 42.64
`
`
`
`
`
`

`
`TABLE OF CONTENTS
`
`
`IPR2014-00199
`U.S. Patent 6,771,970
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`Page(s)
`
`INTRODUCTION .......................................................................................... 1
`
`RELEVANT FACTS ...................................................................................... 3
`
`
`
`
`
`
`I.
`
`II.
`
`III. PARAGRAPHS 28 AND 32 OF EXHIBIT 2016 ARE ADMISSIBLE
`EVIDENCE UNDER APPLICABLE LAW AND FRE 702 AND 703 ........ 5
`
`B.
`C.
`
`D.
`
`IV. EXHIBITS 2017-2019 ARE ADMISSIBLE UNDER APPLICABLE
`LAW AND THE FEDERAL RULES OF EVIDENCE ................................. 7
`A. A Preponderance of The Evidence Shows That Exhibits 2017,
`2018, and 2019 Are Authentic ............................................................. 7
`Exhibits 2017, 2018, and 2019 Are Subjects Of Judicial Notice ....... 10
`Exhibits 2017, 2018, and 2019 Are Not Hearsay Because They
`Are Not Offered For The Truth Of The Matter Asserted .................. 12
`Exhibits 2017, 2018, and 2019 Are Also Admissible Because
`They Qualify Under Exceptions to The Hearsay Rule ...................... 12
`1.
`FRE 803(18) – Learned Treatises Exception ........................... 13
`2.
`FRE 803(17) – Commercial Publications Exception ............... 13
`3.
`FRE 803(16) – Ancient Documents Exception ....................... 14
`4.
`FRE 807 – Residual Exception ................................................ 15
`CONCLUSION ............................................................................................. 15
`
`V.
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`i
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`IPR2014-00199
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`TABLE OF AUTHORITIES
`
`
`CASES
`Atofina v. Great Lakes Chem. Corp.,
`441 F.3d 991, 996 (Fed. Cir. 2006) ................................................................... 15
`
`Page(s)
`
`Caveman Foods, LLC v. Lester,
`No. C 1201587 RS, 2013 U.S. Dist. LEXIS 185237
`(N.D. Cal. Feb. 14, 2013) ................................................................................... 10
`
`Foreward Magazine v. Overdrive, Inc.,
`No. 1:10-cv-1144, 2011 U.S. Dist. LEXIS 125373
`(W.D. Mich. Oct. 31, 2011) .................................................................................. 9
`
`Freight Train Adver., LLC v. Chi. Rail Link, LLC,
`No. 11-cv-2803, 2012 U.S. Dist. LEXIS 162330
`(N.D. Ill. Nov. 14, 2012) ............................................................................. 2, 7, 12
`
`In re McLain,
`516 F.3d 201 (5th Cir. 2008) ................................................................................ 8
`
`Krohmer-Burkett v. Hartford Life and Accident Insurance Co.,
`No. 803-cv-873-T-30MAP, 2005 U.S. Dist. LEXIS 35225
`(M.D. Fla. Oct. 14, 2005) ................................................................................... 11
`
`Lorraine v. Markel Am. Ins. Co.,
`241 F.R.D. 534 (D. Md. 2007) ........................................................................... 14
`
`Skylar v. Clough,
`No. 1:06-CV-0627-JOF, 2007 U.S. Dist. LEXIS 49248
`(N.D. Ga. July 6, 2007) ....................................................................................... 10
`
`Taza Sys., LLC v. Taza 21 Co., LLC,
`No. 2:11-cv-0732013, U.S. Dist. LEXIS 130974
`(W.D. Pa. Sept. 13, 2013) ................................................................................... 10
`
`Tyree v. Boston Sci. Corp.,
`No. 2:12-cv-08633, 2014 U.S. Dist. LEXIS 150445
`(S.D. W. Va. Oct. 22, 2014) ................................................................................. 1
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`United States v. Daly,
`842 F.2d 1380 (2d Cir. 1988) ............................................................................... 2
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`United States v. Gagliardi,
`506 F.3d 140 (2d Cir. 2007) ................................................................................. 9
`
`Vitronics Corp. v. Conceptronic,
`90 F.3d 1576 (Fed. Cir. 1996) ............................................................................ 10
`
`STATUTES
`
`35 U.S.C. § 102 ........................................................................................................ 10
`
`OTHER AUTHORITIES
`
`FRE 201 ................................................................................................................... 10
`
`FRE 201(a) ............................................................................................................... 11
`
`FRE 201(b) ............................................................................................................... 12
`
`FRE 702 ................................................................................................................. 2, 5
`
`FRE 703 ............................................................................................................. 1, 2, 5
`
`FRE 801(c)(2) .......................................................................................................... 12
`
`FRE 803(16) ............................................................................................................. 14
`
`FRE 803(17) ....................................................................................................... 13, 14
`
`FRE 803(18) ............................................................................................................. 13
`
`FRE 807 ................................................................................................................... 15
`
`FRE 807(a)(1) .......................................................................................................... 15
`
`FRE 807(a)(2) .......................................................................................................... 15
`
`FRE 807(a)(4) .......................................................................................................... 15
`
`FRE 807(a)(5) .......................................................................................................... 15
`
`FRE 901 ..................................................................................................................... 8
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`FRE 901(a) ................................................................................................................. 7
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`FRE 901(b)(1) ............................................................................................................ 9
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`FRE 901(b)(4) ............................................................................................................ 8
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`Pursuant to the Scheduling Order (Paper 19), Patent Owner LocatioNet
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`IPR2014-00199
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`Systems, Ltd. respectfully opposes Petitioner Wavemarket d/b/a Location Labs’
`
`motion to exclude paragraphs 28 and 32 of the Declaration of Dr. Narayan
`
`Mandayam (Ex. 2016) and Exhibits 2017-2019. See Paper 42 (“Motion”). On
`
`August 28, 2014, Patent Owner timely served detailed responses and supplemental
`
`evidence to Petitioner’s evidentiary objections explaining the reasons why they are
`
`baseless and frivolous under applicable law and the Federal Rules of Evidence
`
`(“FRE”). See Ex. 1022. Petitioner’s motion to exclude evidence should be denied.
`
`I.
`
`INTRODUCTION
`
`Petitioner’s arguments are contrary to black-letter law and the record facts—
`
`namely, the expert opinions set forth in Exhibit 2016, the contents and nature of
`
`Exhibits 2017-2019, and the deposition testimony of Dr. Mandayam. See Ex.
`
`1019. Petitioner’s motion is premised on the legally erroneous contention that
`
`paragraphs 28 and 32 of Dr. Mandayam’s declaration (Exhibit 2016) are
`
`inadmissible because Dr. Mandayam cited to common dictionaries of computer-
`
`related terms (Exhibits 2017-2019) to support his expert opinions contained
`
`therein. Motion at 2–3. Under FRE 703, an expert is entitled to rely on facts or
`
`data—admissible or inadmissible—in forming and supporting his expert opinions.
`
`Tyree v. Boston Sci. Corp., No. 1:12-cv-08633, 2014 U.S. Dist. LEXIS 150445, at
`
`*18 (S.D. W. Va. Oct. 22, 2014) (“[E]xperts can rely on otherwise inadmissible
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`evidence to reach their opinions.”); United States v. Daly, 842 F.2d 1380, 1387 (2d
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`Cir. 1988) (citation omitted) (“[I]f experts in the field reasonably rely on hearsay in
`
`forming their opinions and drawing their inferences, the expert witness may
`
`properly testify to his opinions and inferences based upon such hearsay.”). The
`
`fact that Dr. Mandayam cited to three common dictionary references—Exhibits
`
`2017, 2018, and 2019— in support of his opinions in paragraphs 28 and 32 of
`
`Exhibit 2016 does not and cannot render his opinions inadmissible as a matter of
`
`law. Thus, Dr. Mandayam’s expert opinions in paragraphs 28 and 32 of Exhibit
`
`2016 are admissible—independent of the admissibility of Exhibits 2017-2019.
`
`The evidentiary record also demonstrates that Dr. Mandayam’s expert
`
`opinions set forth in paragraphs 28 and 32 of Exhibit 2016 are proper and
`
`admissible under FRE 702 and 703. Similarly, the contents and nature of Exhibits
`
`2017, 2018, and 2019 render them admissible under applicable law and the Federal
`
`Rules of Evidence. Evidentiary objections to pages from common dictionaries
`
`such as those in Exhibits 2017-2019 do not pose a problem of authentication or
`
`hearsay. See Freight Train Adver., LLC v. Chi. Rail Link, LLC, No. 11-cv-2803,
`
`2012 U.S. Dist. LEXIS 162330, at *5 n.4 (N.D. Ill. Nov. 14, 2012) (“[A] page
`
`from a common dictionary does not pose a problem of hearsay, foundation and
`
`authentication.”). Exhibits 2017-2019 are admissible because they bear copious
`
`indicia of authenticity and are supported by testimonial evidence of personal
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`knowledge, are proper subjects of judicial notice, and are not hearsay. Moreover,
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`even if they are hearsay, they are also admissible because they qualify as
`
`exceptions to hearsay under the Federal Rules of Evidence.
`
`II. RELEVANT FACTS
`On August 11, 2014, Patent Owner filed its Patent Owner’s Response, citing
`
`to and relying upon the Declaration of Dr. Narayan Mandayam in support of the
`
`Patent Owner’s Response. See Paper 35 and Ex. 2016. In his declaration, Dr.
`
`Mandayam proffered his opinions from the perspective of a person of ordinary
`
`skill in the art regarding the ordinary and customary meanings of the disputed
`
`claim terms “map database” and “map engine.” Dr. Mandayam opined that the
`
`ordinary and customary meaning of a “map database” consistent with the
`
`specification of the ’970 Patent is “a collection of map data that is organized so
`
`that it can be easily accessed, searched, managed, and updated.” Ex. 2016 at 13,
`
`¶ 28. In support of his opinion, Dr. Mandayam referenced Exhibits 2017 and
`
`2018—excerpts from common dictionaries defining the term “database”—among
`
`other things. See id.; Exs. 2017 and 2018. Dr. Mandayam also opined that the
`
`ordinary and customary meaning of “map engine” consistent with the specification
`
`of the ’970 Patent is “a program or module for accessing, searching, managing, and
`
`updating the map database.” Ex. 2016 at 16, ¶ 32. In support of his opinion, Dr.
`
`Mandayam referenced Exhibit 2019—an excerpt from a common dictionary
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`defining the term “engine” in conjunction with databases—among other things.
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`See id.; Ex. 2019.
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`On October 23, 2014, Petitioner’s counsel cross-examined Dr. Mandayam
`
`regarding the expert opinions set forth in Exhibit 2016 as well as the supporting
`
`documents Dr. Mandayam referenced in his declaration, including Exhibits 2017,
`
`2018, and 2019. See Ex. 1019 at page 59, line 9 to page 63, line 21. Dr.
`
`Mandayam testified that Exhibits 2017, 2018, and 2019 are “the three dictionary
`
`references that were used as supporting documents of the definition that I laid
`
`down in my declaration about a map database and a map engine, as understood by
`
`someone of ordinary skill[] in the art.” Id. at page 59, lines 10 to 15.
`
`Dr. Mandayam further testified that his proffered definition of the claim
`
`term “map database” is set forth on page 13, paragraph 28 of his declaration—not
`
`Exhibits 2017 and 2018, which were cited as supporting references: “So in my
`
`declaration, I have defined a “map database” on Page 13 of my declaration in
`
`Paragraph 28, and these are two supporting documents or references, sort of
`
`dictionary terms, if you will, computer dictionary terms that describe a database.”
`
`See Ex. 1019 at page 61, line 14 to line 24 (emphasis added). Similarly, Dr.
`
`Mandayam testified that his proffered definition of the claim term “map engine” is
`
`set forth on page 16, paragraph 32 of his declaration—not in Exhibit 2019, which
`
`was cited as a supporting reference. See id. at page 61, line 25 to page 62, line 16.
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`Petitioner’s counsel also asked Dr. Mandayam whether he had “come up
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`with” his definitions of “map database” and “map engine” or whether they were
`
`given to him, and Dr. Mandayam testified that the definitions set forth in his
`
`declaration were his own definitions:
`
`These are terms that I have – I have provided these
`definitions, in terms of – as understood by a person of
`ordinary skill in the art, and what would a database or a
`map database mean to such a person. What would a map
`engine mean to such a person. And this is my
`definition.
`
`See id. at page 62, line 17 to page 63, line 8 (emphasis added). Dr. Mandayam
`
`further testified that he requested Exhibits 2017-2019, as support for the definitions
`
`he provided for claim terms “map database” and “map engine”: “I asked for
`
`supporting documents, and I had said can – can look at some dictionary terms
`
`that support this.” See id. at page 63, line 9 to line 21 (emphasis added).
`
`III. PARAGRAPHS 28 AND 32 OF EXHIBIT 2016 ARE ADMISSIBLE
`EVIDENCE UNDER APPLICABLE LAW AND FRE 702 AND 703
`
`The evidentiary record plainly demonstrates that in paragraphs 28 and 32 of
`
`Exhibit 2016, Dr. Mandayam provided his own opinions from the perspective of a
`
`person of ordinary skill in the art regarding the ordinary and customary meanings
`
`of the disputed claim terms “map database” and “map engine,” respectively. As
`
`Dr. Mandayam testified, and as clearly set forth in paragraphs 28 and 32 of Exhibit
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`2016, a “map database” is “a collection of map data that is organized so that it can
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`be easily accessed, searched, managed, and updated” and a “map engine” is “a
`
`program or module for accessing, searching, managing, and updating the map
`
`database.” See Ex. 2016 at 16, ¶ 32; id. at 13, ¶ 28. Dr. Mandayam also provides
`
`the factual support and bases for his opinions, including citations to intrinsic
`
`evidence (the disclosure of the ’970 Patent and claim 18) and extrinsic evidence
`
`(Exhibits 2017-2019). Id. Thus, Dr. Mandayam’s opinions contained in
`
`paragraphs 28 and 32 of Exhibit 2016 are admissible under FRE 702 and 703.
`
`Petitioner’s attempt to exclude paragraphs 28 and 32 of Dr. Mandayam’s
`
`declaration is meritless. Without pointing to any facts or evidence, Petitioner
`
`conclusorily contends that “[i]n reality, the proffered claim constructions are a
`
`regurgitation of cited ‘definitions’ provided to Dr. Mandayam.” See Paper 42 at 3.
`
`Petitioner’s unsupported attorney argument is misplaced and belied by the
`
`evidentiary record. Petitioner not only fails to explain how Dr. Mandayam’s
`
`opinions are a “regurgitation” of any “cited definitions,” but its contention is also
`
`directly contradicted by Dr. Mandayam’s uncontroverted deposition testimony.
`
`Dr. Mandayam testified that he provided the definitions of “map database” and
`
`“map engine” set for in Exhibit 2016. See Ex. 1019 at page 62, line 17 to page 63,
`
`line 8. And, Dr. Mandayam opined on the meanings of “map database” and “map
`
`engine” before he requested and cited to the supporting evidence of Exhibits 2017-
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`2019. See Ex. 1019 at page 63, line 9 to line 21. Petitioner’s faulty contention
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`actually highlights Petitioner’s belief that, in fact, Exhibits 2017-2019 are
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`consistent with and support Dr. Mandayam’s expert opinions.
`
`IV. EXHIBITS 2017-2019 ARE ADMISSIBLE UNDER APPLICABLE
`LAW AND THE FEDERAL RULES OF EVIDENCE
`
`Exhibits 2017-2019, cited in support of Dr. Mandayam’s opinions set forth
`
`in paragraph 28 and 32 of Exhibit 2016, are also admissible evidence under
`
`applicable law and the Federal Rules of Evidence. Petitioner contends that
`
`Exhibits 2017-2019—pages from common dictionaries—are inadmissible evidence
`
`because they are allegedly “unauthenticated hearsay.” Motion at 2. Petitioner’s
`
`contention directly contradicts federal case law holding that evidentiary objections
`
`to pages from common dictionaries are not proper. See Freight Train Adver., 2012
`
`U.S. Dist. LEXIS 162330, at *5 n.4. (holding that a page from a common
`
`dictionary does not pose a problem of hearsay, foundation and authentication).
`
`Similarly, here, as pages from common dictionaries, Exhibits 2017-2019 are
`
`properly authenticated and admissible under the Federal Rules of Evidence.
`
`A. A Preponderance of The Evidence Shows That Exhibits 2017,
`2018, and 2019 Are Authentic
`
`To be admitted, a document must be shown to be authentic—that the exhibit
`
`is what it purports to be. FRE 901(a). Exhibits 2017, 2018, and 2019 are pages
`
`from common dictionaries that bear copious indicia of authenticity, and Petitioner
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`has failed to proffer any evidence or argument to the contrary. Authenticity may
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`be established based upon “[a]ppearance, contents, substance, internal patterns, or
`
`other distinctive characteristics, taking in conjunction with circumstances.” See
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`FRE 901(b)(4). Each of Exhibits 2017, 2018, and 2019 bears (1) a book title; (2)
`
`an International Standard Book Number (“ISBN”), a unique numeric commercial
`
`book identifier used by an ISBN registration agency; (3) an identification of the
`
`publisher; and (4) a copyright date, all of which indicate the authenticity of
`
`Exhibits 2017, 2018, and 2019.
`
`Exhibit 2017 consists of pages from a book titled “Dictionary of Computer
`
`Words,” bearing ISBN 0-395-90214-2, identifying publisher Houghton Mifflin
`
`Company, and bearing a 1998 copyright date. See Exhibit 2017. Exhibit 2018
`
`consists of pages from a book titled “Personal Computer Dictionary” Second
`
`Edition, compiled by Philip R. Margolis, bearing ISBN 0-679-76424-0, identifying
`
`publisher Random House, and bearing a 1996 copyright date. See Exhibit 2018.
`
`Exhibit 2019 consists of pages from a book titled “Webster’s New World
`
`Dictionary of Computer Terms” Fifth Edition, compiled by Donald Spencer,
`
`bearing ISBN 0-671-89993-7, identifying publisher Macmillan, and bearing a 1994
`
`copyright date. See Exhibit 2019.
`
`Thus, the indicia of authenticity on the face of Exhibits 2017, 2018, and
`
`2019 render them admissible under FRE 901. See In re McLain, 516 F.3d 201, 208
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`(5th Cir. 2008) (holding that authentication “merely requires some evidence” in
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`support (quoting United States v. Jimenez Lopez, 873 F.2d 769, 772 (5th Cir.
`
`1989))); United States v. Gagliardi, 506 F.3d 140, 151 (2d Cir. 2007) (“The bar for
`
`authentication of evidence is not particularly high.”).
`
`Exhibits 2017, 2018, and 2019 are also properly authenticated with the
`
`testimony of a witness with knowledge of their authenticity under FRE 901(b)(1).
`
`Patent Owner provided the Declaration of Yue Li to support the authentication of
`
`Exhibits 2017-2019, pursuant to FRE 901(b)(1). See Ex. 1022, Exhibit A.
`
`Petitioner’s argument that “there is no evidence authenticating Exhibits 2017-2019
`
`as being what they are purported to be” is contrary to the evidentiary record.
`
`Motion at 9. Indeed, the Declaration of Yue Li provides testimony from an
`
`attorney with personal knowledge that Exhibits 2017-2019 and their contents are
`
`what they are claimed to be; therefore, they are properly authenticated. See
`
`Foreward Magazine v. Overdrive, Inc., No. 1:10-cv-1144, 2011 U.S. Dist. LEXIS
`
`125373 at *10 (W.D. Mich. Oct. 31, 2011) (citing United States v. Meienberg, 263
`
`F.3d 1177, 1181 (10th Cir. 2001)) (holding that an affidavit, when viewed in
`
`combination with circumstantial indicia of authenticity is typically sufficient).
`
`Moreover, Petitioner has waived any challenges to the authenticity of
`
`Exhibits 2017-2019. Patent Owner made the originals of the complete dictionaries
`
`identified in Exhibits 2017, 2018, and 2019 available to Petitioner for inspection
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`and copying, but Petitioner chose to do nothing. See Ex. 1022 at 4. Furthermore,
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`Petitioner’s reliance on case law involving the proof necessary to qualify a
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`reference as prior art under 35 U.S.C. § 102 under a clear and convincing burden
`
`standard in challenging the authenticity of Exhibits 2017-2019 is irrelevant and
`
`inapposite. See Motion at 10. Exhibits 2017-2019 are not offered as prior art;
`
`therefore, Petitioner’s challenges to authentication are misplaced.
`
`Exhibits 2017, 2018, and 2019 Are Subjects Of Judicial Notice
`
`B.
`The Board should take judicial notice of the facts set forth in Exhibits 2017,
`
`2018, and 2019 pursuant to FRE 201. Numerous federal courts have held that
`
`dictionary definitions are the proper subjects of judicial notice. See Taza Sys., LLC
`
`v. Taza 21 Co., LLC, No. 2:11-cv-0732013, U.S. Dist. LEXIS 130974, at *27
`
`(W.D. Pa. Sept. 13, 2013) (“We take judicial notice of such dictionary
`
`definitions.”); Skylar v. Clough, No. 1:06-CV-0627-JOF, 2007 U.S. Dist. LEXIS
`
`49248, at *15 (N.D. Ga. July 6, 2007) (“The court may take judicial notice of the
`
`dictionary definitions.”); Caveman Foods, LLC v. Lester, No. C 1201587 RS, 2013
`
`U.S. Dist. LEXIS 185237, at *10 (N.D. Cal. Feb. 14, 2013) (“[a] dictionary
`
`definition is a proper subject of judicial notice”). Indeed, definitions from
`
`dictionaries are facts “generally known within the territorial jurisdiction of the trial
`
`court.” See Vitronics Corp. v. Conceptronic, 90 F.3d 1576, 1584 n.6 (Fed. Cir.
`
`1996) (holding that judges may rely on dictionary definitions when construing
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`claim terms). Courts have likewise taken judicial notice of the definition of terms
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`contained in medical dictionaries. See Krohmer-Burkett v. Hartford Life and
`
`Accident Insurance Co., No. 803-cv-873-T-30MAP, 2005 U.S. Dist. LEXIS
`
`35225, at *9 n.6 (M.D. Fla. Oct. 14, 2005) (taking judicial notice of the Merriam
`
`Webster Medical Dictionary’s website’s definition of “stenosis”).
`
`Petitioner contends that the Board should not take judicial notice of Exhibits
`
`2017-2019 because “the definitions of ‘database’ and ‘engine’ are certainly subject
`
`to reasonable dispute.” Motion at 5. Petitioner may not agree with the definitions
`
`contained in Exhibits 2017-2019, but the inquiry under FRE 201(a) is whether the
`
`“fact noticed is not in reasonable dispute.” Here, the facts noticed are: (1) in
`
`Exhibit 2017, the “Dictionary of Computer Words” defines the term “database” as
`
`“[a]n organized collection of information that can be searched, retrieved, changed,
`
`and sorted using a collection of programs known as a database management
`
`system”; (2) in Exhibit 2018, the “Personal Computer Dictionary” defines the term
`
`“database” as “[a] collection of information organized in such a way that a
`
`computer program can quickly select desired pieces of data”; and (3) in Exhibit
`
`2019, the “Webster’s New World Dictionary of Computer Terms” defines the term
`
`“engine” as “[t]he portion of a program that determines how the program manages
`
`and manipulates data.” Petitioner does not challenge the accuracy of the noticed
`
`facts. These facts certainly “can be accurately and readily determined from
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`sources whose accuracy cannot be reasonably questioned.” FRE 201(b). Thus, the
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`Board should take judicial notice of Exhibits 2017-2019.
`
`C. Exhibits 2017, 2018, and 2019 Are Not Hearsay Because They Are
`Not Offered For The Truth Of The Matter Asserted
`
`As discussed in detail above, Exhibits 2017, 2018, and 2019 are admissible
`
`because they are offered as support for Dr. Mandayam’s definitions of “map
`
`database” and “map engine”—not to prove the truth of the matter asserted. See
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`FRE 801(c)(2). The definitions of the terms “database” and “engine” appearing in
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`Exhibits 2017, 2018, and 2019 are admissible to support the definitions set forth by
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`Dr. Mandayam and show that those terms are “commonly used terms” that are
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`defined in commercial dictionaries of computer terms. See Paper 35 (Patent
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`Owner’s Response) at 10, 13. They are simply offered as evidence of the state of
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`the art and to show the state of mind or belief of those in the art at the relevant
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`time. The copyright dates appearing on each of Exhibits 2017, 2018, and 2019 are
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`admissible to show that each was created or printed and publicly available before
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`the relevant time frame (1999). In fact, each of Exhibits 2017-2019 bears dates
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`that are at least one year prior to 1999.
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`D. Exhibits 2017, 2018, and 2019 Are Also Admissible Because They
`Qualify Under Exceptions to The Hearsay Rule
`Exhibits 2017, 2018, and 2019 do “not pose a problem of hearsay.” Freight
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`Train Adver., 2012 U.S. Dist. LEXIS 162330, at *5 n.4. Indeed, pages from
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`common dictionaries are admissible because they fall under hearsay exceptions.
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`FRE 803(18) – Learned Treatises Exception
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`1.
`Exhibits 2017, 2018, and 2019 are admissible because they fall within the
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`“Learned Treatises” exception pursuant to FRE 803(18). Contrary to Petitioner’s
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`argument that “[m]ere reference to these exhibits by Patent Owner’s expert
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`declaration or deposition testimony does not establish their reliability (Motion at
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`6), the evidentiary record demonstrates that: (1) Dr. Mandayam cited to Exhibits
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`2017-2019 to support his expert opinions set forth in Exhibit 2016 and was cross-
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`examined by Petitioner’s counsel on them and (2) Exhibits 2017-2019 are
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`established to be reliable authorities by Dr. Mandayam’s declaration, Dr.
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`Mandayam’s deposition testimony, and as discussed above, Exhibits 2017-2019
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`are proper subjects of judicial notice. Thus, Exhibits 2017, 2018, and 2019 each
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`qualify under the “Learned Treatises” exception of the hearsay rule.
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`FRE 803(17) – Commercial Publications Exception
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`2.
`Exhibits 2017, 2018, and 2019 are also admissible under the “Commercial
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`Publication” exception. FRE 803(17) provides that “[m]arket quotations, lists,
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`directories, or other compilations that are generally relied on by the public or by
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`persons in particular occupations.” FRE 803(17). Exhibits 2017, 2018, and 2019
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`are commercial publications that are comprised of a list or compilation of
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`definitions of common computer-related terms, including “database” and “engine.”
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`Such commercial dictionaries of computer-related terms are generally relied on by
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`the public or by persons in computer-related occupations, such as Dr. Mandayam.
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`Petitioner argues that Exhibits 2017-2019 do not qualify as “other
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`compilations” because of “[t]he subjectivity of dictionary definitions.” Motion at
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`7. Such an argument misses the point because even compilations of data can vary.
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`Under FRE 803(17), “[t]he basis of trustworthiness is general reliance by the
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`public or by a particular segment of it, and the motivation of the compiler to foster
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`reliance by being accurate.” See Lorraine v. Markel Am. Ins. Co., 241 F.R.D. 534,
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`575 (D. Md. 2007) (citing FRE 803(17) advisory committee’s note). Thus,
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`because common dictionaries such as Exhibit 2017-2019 are generally relied on by
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`the public or by persons in computer-related occupations, they are admissible as
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`exceptions to the hearsay rule under FRE 803(17).
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`FRE 803(16) – Ancient Documents Exception
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`3.
`Exhibit 2019 is also admissible under the “Ancient Documents” exception
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`pursuant to FRE 803(16), which provides that “a statement in a document that is at
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`least 20 years old and whose authenticity is established” is an exception to the
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`hearsay rule. FRE 803(16). Since Exhibit 2019 bears a copyright date of 1994, it
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`satisfies the requirement that it be at least 20 years old. Furthermore, as discussed
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`above in Section IV.A, the record facts and law firmly establish its authenticity;
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`therefore, Exhibit 2019 is admissible under FRE 803(16).
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`FRE 807 – Residual Exception
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`4.
`In addition, Exhibits 2017, 2018, and 2019 are admissible under the
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`“Residual Exception” pursuant to FRE 807. First, Exhibits 2017-2019 have
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`“equivalent circumstantial guarantees of trustworthiness.” FRE 807(a)(1). They
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`are pages from commercial dictionaries of computer-related terms published by
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`reliable and well-known publishers including Houghton Mifflin Company,
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`Random House, and Macmillan, and identified by unique ISBNs. Second, each of
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`Exhibits 2017, 2018, and 2019 is “offered as evidence of material fact.” FRE
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`807(a)(2). They corroborate and support Dr. Mandayam’s expert opinion,
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`specifically his opinions regarding the ordinary and customary meaning of the
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`terms “map database” and “map engine.” Contrary to Petitioner’s argument
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`(Motion at 8–9), dictionaries are more probative regarding the ordinary and
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`customary meaning of terms than any other evidence that can be obtained by
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`reasonable efforts. FRE 807(a)(4); Atofina v. Great Lakes Chem. Corp., 441 F.3d
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`991, 996 (Fed. Cir. 2006) (holding that “the district court properly relied on
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`scientific and technical dictionaries to construe the ordinary and customary
`
`meaning” of a term). Finally, admitting Exhibits 2017, 2018, and 2019 “will best
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`serve the purposes of these rules and the interests of justice.” FRE 807(a)(5).
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`V. CONCLUSION
`For at least the foregoing reasons, Petitioner’s motion should be denied.
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`Dated: January 13, 2015
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`Respectfully submitted,
`By: /Thomas Engellenner/
`Thomas Engellenner, Reg. No. 28,711
`Pepper Hamilton LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02110
`(617) 204-5100 (telephone)
`(617) 204-5150 (facsimile)
`Attorney for Patent Owner
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 13th day of January, 2015, a true and correct
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`copy of the foregoing PATENT OWNER’S OPPOSITION TO PETITIONER’S
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`MOTION TO EXCLUDE EVIDENCE PURSUANT TO 37 C.F.R. § 42.64 was
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`served on the following counsel for Petitioner Wavemarket, Inc. d/b/a Location
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`Labs via email:
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`
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`mark.hogge@dentons.com
`scott.cummings@dentons.com
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`Respectfully submitted,
`By: /Thomas Engellenner/
`Thomas Engellenner, Reg. No. 28,711
`Pepper Hamilton LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02110
`(617) 204-5100 (telephone)
`(617) 204-5150 (facsimile)
`Attorney for Patent Owner
`
`
`
`
`
`
`
`
`
`Mark L. Hogge
`Scott W. Cummings
`Dentons US LLP
`1301 K Street, N.W., Suite 600
`Washington DC 20005
`Tel: (202)408-6400
`Fax: (202)408-6399
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`Dated: January 13, 2015
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