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 IPR2014-00199
`Patent 6,771,970
`_____________________
`
`Petitioner’s Reply to Patent Owner's Opposition to Motion to Exclude
`Evidence Pursuant to 37 C.F.R. § 42.64
`
`
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`WAVEMARKET, INC. D/B/A LOCATION LABS
`Petitioner
`
`v.
`
`LOCATIONET SYSTEMS, LTD.
`Patent Owner
`
`_____________________
`
`Case IPR2014-00199
`Patent 6,771,970
`_____________________
`
`Petitioner’s Reply to Patent Owner's Opposition to Motion to Exclude
`Evidence Pursuant to 37 C.F.R. § 42.64
`
`
`
`Case IPR2014-00199
`Patent 6,771,970
`Pursuant to 37 C.F.R. §§ 42.23-24, and the Scheduling Order (Paper No. 19)
`
`Petitioner Wavemarket d/b/a Location Labs respectfully offers the following Reply
`
`to Patent Owner's Opposition to Motion to Exclude Evidence filed January 13,
`
`2015 ("Opp."). The Opp. contains no unambiguous assertions of material facts.
`
`I.
`
`EXHIBITS 2017-2019 ARE UNAUTHENTICATED HEARSAY
`PO admits that Exhibits 2017-2019 ("Exhibits"), and the copyright dates
`
`appearing thereon, are offered to show that the contents of the documents were
`
`"publically available before the relevant time frame" (Opp., p. 12), but
`
`inconsistently argues that they are not offered for the truth of the matter asserted.
`
`PO has offered no evidence that the documents were actually "published" or
`
`otherwise available to the public, and offers no authority for the proposition that
`
`copyright notices are adequate evidence of public availability. As explained in
`
`Petitioner's Motion to Exclude Evidence filed December 30, 2014 ("ME"), neither
`
`the Declaration of Yue Li, nor anything else of record, provides any factual basis
`
`for the claim that the Exhibits were "publicly available before the relevant time
`
`frame."
`
`PO alleges that the Exhibits are admissible as "pages from common
`
`dictionaries." Opp., pp. 2 and 7. The only authority cited for this sweeping
`
`proposition is Freight Train Adver., LLC v. Chi. Rail Link, LLC. This decision
`
`does not appear to have been published as a precedential opinion. Additionally,
`
`- 2 -
`
`
`
`Case IPR2014-00199
`Patent 6,771,970
`the Court qualified its conclusory assertion by stating "regardless, the Court has
`
`not relied upon [the Exhibit] in its analysis." (fn.4, p. 4). A copy of this
`
`unpublished, non-precedential, non-binding opinion is attached as Exhibit 1023.
`
`Furthermore, as Petitioner previously argued, the dictionaries cited by PO are not
`
`"common dictionaries," they are specialized dictionaries. ME, p. 5.
`
`PO argues that the Board should take judicial notice of the dictionary
`
`definitions contained in the Exhibits, yet fails to cite any precedent for doing so in
`
`the context of construing a claim term. The only patent case cited, Vitronics, 90
`
`F.3d 1576, does not involve, or even comment on, taking judicial notice of
`
`dictionary definitions. PO also incorrectly alleges that the "Petitioner does not
`
`challenge the accuracy of the noticed facts." Opp., p.11. Petitioner has made its
`
`disagreement abundantly clear. See, e.g., ME, pp. 5-6.
`
`Contrary to the contentions of the PO, Dr. Mandayam's declaration and
`
`cross-examination testimony do not establish the cited dictionaries as "reliable
`
`authority" to qualify for the learned treatise exception. Dr. Mandayam did not
`
`testify that he personally selected the cited dictionaries, rather was provided with
`
`them, and does not even know who selected them. Exhibit 1019, p. 64, ll. 9-21.
`
`PO cites no authority finding that a dictionary definition qualifies under the learned
`
`treatise exception.
`
`- 3 -
`
`
`
`Case IPR2014-00199
`Patent 6,771,970
`The PO's arguments regarding the "Ancient Documents" exception are
`
`unavailing. Authentication is a prerequisite for this exclusion. However, the
`
`Exhibits are not properly authenticated, ME, p. 8.
`
`First, PO provides no basis for the assertion that the cited dictionaries are
`
`"commonly" or generally relied upon for purposes of the commercial publications
`
`exception. This argument is apparently premised by characterizing the cited
`
`dictionaries as "common" dictionaries, a premise disputed by Petitioner. Second,
`
`PO does not squarely address the fundamental proposition that dictionaries are
`
`simply not "commercial publications" (i.e, compilations of data, lists, directories).
`
`PO cites no authority finding that dictionaries qualify under this exception.
`
`To qualify under the "Ancient Documents" exception, the document must be
`
`one "whose authenticity is established." ME, p. 8. For the reasons previously
`
`explained, the authenticity of Exhibit 2019 has not been established, thus this
`
`Exhibit does not qualify for this exception to the hearsay rule.
`
`Finally, with regard to the residual exception to the hearsay rule, PO argues
`
`that extrinsic evidence is more probative than any other evidence with respect to
`
`the meanings of the disputed terms, citing Atofina v. Great lakes Chem. Corp., 441
`
`F.3d 991, 996 (Fed. Cir. 2006). Atofina in no way supports PO's argument, it
`
`supports Petitioner's position. Id. at 996 ("[o]ur primary focus in determining the
`
`- 4 -
`
`
`
`Case IPR2014-00199
`Patent 6,771,970
`ordinary and customary meaning of a claim limitation is to consider the intrinsic
`
`evidence of record").
`
`II.
`
`THE DECLARATION OF DR. MANDAYAM CANNOT SERVE AS A
`CONDUIT TO THE ADMISSION OF OTHERWISE INADMISSIBLE
`EVIDENCE
`Paragraphs 28 and 32 of the Mandayam Decl. (Exhibit 2016) contain
`
`verbatim quotations of the definitions of "database" and "engine" appearing in the
`
`Exhibits. This is not "opinion" testimony as alleged by PO, thus PO's arguments
`
`are misplaced. It is improper for the Patent Owner to use these paragraphs as a
`
`backdoor to the admission of unauthenticated hearsay (the dictionary definitions
`
`reproduced in paragraphs 28 and 32). Louis Vuitton Malletier v. Dooney &
`
`Bourke, Inc., 525 F. Supp.2d 558, 666 (S.D. N.Y. 2007) (expert testimony cannot
`
`act as a conduit for introduction of hearsay).
`
`III. CONCLUSION
`For at least the reasons noted above and already of record, portions of
`
`Exhibit 2016, and Exhibits 2017-1019, should be excluded from evidence.
`
`Dated: January 20, 2015
`
`Attorneys for Petitioner
`
`Mark L. Hogge, Reg. No. 31, 662
`Email: mark.hogge@dentons.com
`
`Respectfully submitted,
`Dentons US LLP
`
`/Scott W. Cummings/
`By:
`Scott W. Cummings, Reg. No. 41,567
`Email: scott.cummings@dentons.com
`
`- 5 -
`
`
`
`APPENDIX A - UPDATED EXHIBIT LIST
`
`EXHIBIT NO.
`
`DESCRIPTION
`
`Case IPR2014-00199
`Patent 6,771,970
`
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`1008
`1009
`
`1010
`
`1011
`
`1012
`1013
`1014
`
`1015
`
`1016
`
`U.S. Patent No. 6,771,970
`U.S. Provisional Appln. No. 60/157,643
`U.S. Patent No.6,243,039
`U.S. Patent No. 6,321,092
`U.S. Patent No. 6,741,927
`U.S. Patent No. 5,758,313
`U.S. Provisional Appln. No. 60/106,816
`FAA Historical Chronology 1926-1996
`R. L. French & Associates, "A Comparison of IVHS Progress in
`the United States, Europe, and Japan," December 31, 1993.
`R.L. French, "The Evolving Roles of Vehicular Navigation,"
`1987.
`Lawrence N. Labell et al., "Advanced Public Transportation
`Systems: The State of the Art Update '92." April 1992.
`File History of U.S. Patent No. 6,771,970
`Declaration of Scott Hotes, Ph.D.
`Innolux Corp. v. Semiconductor Energy Laboratory Co., Ltd.,
`IPR2013-00028, Paper No. 31
`Apple Inc. v. Achates Reference Publ., Inc., IPR2013-00080,
`Paper No. 18
`Garmin Intl., Inc. et al. v. Cuozzo Speed Tech. LLC, IPR2012-
`00001, Paper No. 26
`
`-A-1 -
`
`
`
`Case IPR2014-00199
`Patent 6,771,970
`
`Broadcom Corp. v. Telefonaftiebolaget LM Ericsson,
`IPR2013-00610, Paper No. 23
`Cardiocom v. Robert Bosch Healthcare Sys., Inc., IPR2013-
`00431, Paper No. 43
`Deposition Transcript, Videotaped Deposition of Dr. Narayan B.
`Mandayam, Ph.D, Thursday, October 23, 2014, Boston, MA
`Declaration of Craig Rosenberg, Ph.D in Support of
`Petitioner's Reply
`Petitioner's Evidentiary Objections Pursuant to 37 C.F.R. § 42.64
`Locationet Systems, Ltd.'s Supplemental Evidence and Response
`to Petitioner's Evidentiary Objections Pursuant to
`37 C.F.R. § 42.64
`Freight Train Adver., LLC v. Chi. Rail Link, LLC, No. 11-cv-
`2803 (N.D. Ill. Nov. 14, 2012)
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`1022
`
`1023
`
`-A-2 -
`
`
`
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
`
`The undersigned hereby certifies that the foregoing Petitioner’s Reply to
`Patent Owner's Opposition to Motion to Exclude Evidence Pursuant to 37
`C.F.R. § 42.64, along with Appendix A - Updated Exhibit List, and Exhibit 1023,
`were served via electronic mail, in their entirety, on Attorneys of record in
`IPR2014-00199.
`
`Thomas Engellenner
`
`Reza Mollaaghababa
`
`Pepper Hamilton LLP
`
`125 High Street
`
`Andy Chan
`
`Pepper Hamilton LLP
`
`333 Twin Dolphin Dr.
`
`Suite 400
`
`19th Floor, High Street Tower
`
`Redwood City, CA 94065
`
`Boston, MA 02110
`
`chana@pepperlaw.com
`
`engellennert@pepperlaw.com
`
`mollaaghababar@pepperlaw.com
`
`Dated: January 20, 2015
`
`By: /Nona Durham/
`Nona Durham
`
`
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