`
`
`
`
`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 MOTION TO EXCLUDE EVIDENCE
`PURSUANT TO 37 C.F.R. §§ 42.62 AND 42.64(c)
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`

`

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`
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`I.
`
`II.
`
`TABLE OF CONTENTS
`
`
`IPR2014-00199
`U.S. Patent 6,771,970
`
`Page(s)
`
`INTRODUCTION .......................................................................................... 1
`
`EXHIBIT 1020 IS INADMISSIBLE UNDER THE FEDERAL
`RULES OF EVIDENCE AND 37 C.F.R. § 42.65 ......................................... 2
`
`A.
`
`B.
`
`C.
`
`Exhibit 1020 Does Not Contain Opinions Of A Person Having
`Ordinary Skill In The Art ..................................................................... 2
`
`Exhibit 1020 Contains Conclusory Opinions Without
`Disclosing The Underlying Factual Bases ........................................... 5
`
`Exhibit 1020 Lacks Any Probative Value Because It Offers No
`Actual Expert Testimony ..................................................................... 6
`
`III. CONCLUSION ............................................................................................... 6
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`
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`TABLE OF AUTHORITIES
`
`IPR2014-00199
`U.S. Patent 6,771,970
`
`
`
`CASES
`Daubert v. Merrell Dow Pharms., Inc.,
`509 U.S. 579 (1993) .............................................................................................. 5
`
`Page(s)
`
`Sundance, Inc. v. DeMonte Fabricating Ltd.,
`550 F.3d 1356 (Fed. Cir. 2008) ............................................................................ 4
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.62 ...................................................................................................... 1
`
`37 C.F.R. § 42.64 ................................................................................................... 1, 2
`
`37 C.F.R. § 42.65 ........................................................................................... 1, 2, 5, 7
`
`77 Fed. Reg. 48756 .................................................................................................... 5
`
`Federal Rules of Evidence 402 .............................................................................. 1, 6
`
`Federal Rules of Evidence 403 .............................................................................. 1, 6
`
`Federal Rules of Evidence 702 ...................................................................... 1, 4, 5, 6
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`Federal Rules of Evidence 703. ............................................................................. 1, 6
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`Federal Rules of Evidence 705 .................................................................................. 5
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`
`
`Ex. #
`
`2001
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`2002
`
`2003
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`2004
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`2005
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`2006
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`2007
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`2008
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`2009
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`2010
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`2011
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`IPR2014-00199
`U.S. Patent 6,771,970
`
`EXHIBIT LIST
`
`Description
`
`Pro Hac Vice Motion of Mark Hogge entering an appearance on
`behalf of T-Mobile USA Inc. in Callwave Communications, LLC v. T-
`Mobile USA Inc. and Google Inc., Civil Action No. 12-cv-1703-RGA,
`D.I. 23 (D. Del.)
`Pro Hac Vice Motion of Mark Hogge entering an appearance on
`behalf of Sprint Nextel Corp. in Callwave Communications, LLC v.
`Sprint Nextel Corp., Civil Action No. 12-cv-1702-RGA, D.I. 18 (D.
`Del.)
`A page of Location Labs’ website indicating partnering with T-
`Mobile and Sprint to provide subscription-based, mobile device
`management and location services
` Patent Owner’s First Proposed Discovery Requests to Petitioner in
`Wavemarket, Inc. d/b/a Locations Labs v. Locationet Systems, Ltd.,
`Case No. IPR2014-00199, U.S. Patent 6,771,970
`Sprint’s Answer to Callwave’s Second Amended Complaint in
`Callwave Communications, LLC v. Sprint Nextel Corp. and Google,
`Inc., Civil Action No. 1:12-cv-01702-RGA, D.I. 71 (D. Del.)
`T-Mobile USA Inc.’s Answer to Callwave’s Complaint in Callwave
`Communications, LLC v. T-Mobile USA Inc. and Google, Inc., Civil
`Action No. 1:12-cv-01703-RGA, D.I. 68(D. Del.)
`Defendants’ Opening Brief in Support of Motion To Stay Proceedings
`on the ‘970 Patent Pending Inter Partes Review by the Patent Trial
`and Appeal Board in Civil Action Nos. 12-1701-RGA, 12-1702-RGA,
`12-1703-RGA, 12-1704-RGA AND 12-1788-RGA, (D. Del.)
`Subpoena to Wavemarket, Inc., d/b/a Location Labs in the matter of
`Callwave Communications, LLC v. AT&T Inc., AT&T Mobility, LLC
`and Google, Inc., Case No. 4:14-mc-80112-JSW, D.I. 17-2 (D. Del.)
`April 8, 2014 letter to Leah R. McCoy from Sarah Eskandari, counsel
`for Petitioner with objections and responses to Petitioner’s subpoena
`Wavemarket, Inc., d/b/a Location Labs’ Objections and Responses to
`Plaintiff’s Subpoena in Callwave Communications, LLC v. AT&T
`Mobility, LLC, and Google, Inc., Civil Action No. 1:12-cv-01701-
`RGA (D. Del.)
`April 9, 2014, Hearing Transcript in in Civil Action Nos. 12-1701-
`RGA, 12-1702-RGA, 12-1703-RGA, 12-1704-RGA AND 12-1788-
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`Ex. #
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`2012
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`2013
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`2014
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`2015
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`2016
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`2017
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`2018
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`2019
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`IPR2014-00199
`U.S. Patent 6,771,970
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`Description
`
`RGA, (D. Del.)
`April 17, 2013 email from Edward M. Abbati, Vice President of
`Finance for Petitioner, to Richard Sanders, Chief Executive Officer
`(“CEO”) of Callwave Communications, LLC
`Proposed Protective Order submitted in Civil Action Nos. 12-1701-
`RGA, 12-1702-RGA, 12-1703-RGA, 12-1704-RGA AND 12-1788-
`RGA, (D. Del.)
`AT&T Answer to Callwave’s Second Amended Complaint in
`Callwave Communications, LLC v. AT&T Mobility, LLC, and Google,
`Inc., Civil Action No. 12-cv-01701-RGA (D. Del.)
`Defendants’ Reply Brief In Support of Their Motion to Stay
`Proceedings on the ’970 Patent Pending Inter Partes Review by the
`Patent Trial and Appeal Board in Civil Action Nos. 12-1701-RGA,
`12-1702-RGA, 12-1703-RGA, 12-1704-RGA AND 12-1788-RGA,
`(D. Del.)
`Declaration of Dr. Narayan Mandayam in Support of LocatioNet
`Systems, Ltd.’s Patent Owner Response in Wavemarket, Inc. d/b/a
`Locations Labs v. Locationet Systems, Ltd., Case No. IPR2014-00199,
`U.S. Patent 6,771,970
`Definition of “database,” Dictionary of Computer Words, Houghton
`Mifflin Company (1998), p. 61
`Definition of “database,” Personal Computer Dictionary, Random
`House (2nd ed. 1996), p. 126
`Definition of “engine,” Webster’s New World Dictionary of
`Computer Terms, Macmillan (5th ed. 1994), p. 208
`
`
`NEW EXHIBITS
`
`
`Ex. No.
`2020
`
`2021
`
`Exhibit Description
`Patent Owner’s Evidentiary Objections Pursuant To 37 C.F.R. §
`42.64, served on November 17, 2014 in Wavemarket, Inc. d/b/a
`Locations Labs v. Locationet Systems, Ltd., Case No. IPR2014-00199,
`U.S. Patent 6,771,970
`Supplemental Declaration of Craig Rosenberg, Ph.D. In Support of
`Petitioner’s Reply, served on December 1, 2014 in Wavemarket, Inc.
`d/b/a Locations Labs v. Locationet Systems, Ltd., Case No. IPR2014-
`00199, U.S. Patent 6,771,970
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`I.
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`INTRODUCTION
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`IPR2014-00199
`U.S. Patent 6,771,970
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`Pursuant to 37 C.F.R. §§ 42.62, 42.64(c), and the Scheduling Order (Paper
`
`19), Patent Owner LocatioNet Systems, Ltd. respectfully moves to exclude
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`Petitioner’s Exhibit 1020 submitted with Petitioner’s Reply to Patent Owner’s
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`Response of November 10, 2014 because Exhibit 1020 is inadmissible under
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`Federal Rules of Evidence 402, 403, 702, 703 and 37 C.F.R. § 42.65. The Federal
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`Rules of Evidence (“FRE”) apply to these proceedings according to the provisions
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`of 37 C.F.R. § 42.62(a).
`
`Exhibit 1020, the declaration of Petitioner’s alleged expert witness Craig
`
`Rosenberg, is inadmissible because it fails to assist a trier of fact to understand or
`
`determine a fact in issue, is based upon insufficient facts or information, is not the
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`product of reliable principles and methods, does not reliably apply the principles
`
`and methods to the facts of this case, and/or its probative value is substantially
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`outweighed by the risk of prejudice and/or confusion. See FRE 402, 403, 702, and
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`703.
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`Specifically, Exhibit 1020 should be excluded for the following three
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`reasons: (1) it fails to establish that the opinions contained therein qualify as those
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`of a person having ordinary skill in the art; (2) it expresses conclusory opinions of
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`an alleged expert witness without disclosing the underlying factual basis for such
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`opinions; and (3) Exhibit 1020 lacks any probative value as it offers no actual
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`expert testimony that would assist the Board in understanding the ordinary and
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`IPR2014-00199
`U.S. Patent 6,771,970
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`customary meaning of any of the disputed claim terms.
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`On November 10, 2014, Petitioner filed Petitioner’s Reply To Patent
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`Owner’s Response, accompanied by Exhibit 1020. On November 17, 2014, Patent
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`Owner timely served Patent Owner’s Evidentiary Objections Pursuant To 37
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`C.F.R. § 42.64 regarding Exhibit 1020. See Exhibit 2020. Accordingly, Patent
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`Owner preserved the objections detailed herein in accordance with 37 C.F.R. §
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`42.64. In response to Patent Owner’s objections, on December 1, 2014, Petitioner
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`served a one-and-a-half page Supplemental Declaration of Craig Rosenberg that
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`failed to cure the highlighted deficiencies. See Exhibit 2021. As such, Exhibit
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`1020 should be excluded from the record.
`
`II. EXHIBIT 1020 IS INADMISSIBLE UNDER THE FEDERAL RULES
`OF EVIDENCE AND 37 C.F.R. § 42.65
`A. Exhibit 1020 Does Not Contain Opinions Of A Person Having
`Ordinary Skill In The Art
`
`The opinion testimony set forth in Exhibit 1020 is fatally flawed because it
`
`fails to assist a trier of fact to understand or determine a fact in issue and is based
`
`upon insufficient facts or information. Notably, Dr. Rosenberg has failed to
`
`establish that the opinions contained in Exhibit 1020 qualify as those of a person
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`having ordinary skill in the art. As set forth by Patent Owner’s expert, Dr.
`
`Narayan Mandayam, the qualifications of a person of ordinary skill in the art are:
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`“In the field of the invention claimed in the ‘970 patent, a person of ordinary skill
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`IPR2014-00199
`U.S. Patent 6,771,970
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`in the art has a bachelor of science in computer science, electrical engineering or a
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`comparable degree and at least two years of experience and knowledge in wide
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`area communications systems such as cellular, including system level issues
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`related to active mobile location tracking.” See Ex. 2016 at 5. Dr. Rosenberg does
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`not contest this definition of a person of ordinary skill in the art—and he clearly
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`does not possess such qualifications. See Ex. 1020 at 2–5.
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`In his declaration, Dr. Rosenberg admits that he does not hold a degree in
`
`computer science, electrical engineering or any comparable degree: “I hold
`
`degrees in Industrial Engineering and Human Factors. . . .” Exhibit 1020 at 3. Dr.
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`Rosenberg’s education in industrial engineering and human factors is different
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`from and not comparable to the qualifications required for a person of ordinary
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`skill in the art in the present matter. In response to Patent Owner’s objections, Dr.
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`Rosenberg has offered a Supplemental Declaration asserting that: (1) he has
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`“successfully completed studies in a ‘core’ engineering curriculum” and (2) his
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`prior testimony in other matters has not been excluded. See Exhibit 2021 at 1. But
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`Dr. Rosenberg’s assertions are misplaced. Merely completing “core” engineering
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`coursework does not provide Dr. Rosenberg with the educational credentials that
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`would qualify him as a person of ordinary skill in the art in this matter. And, Dr.
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`Rosenberg’s representation that his testimony has not been excluded in prior
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`matters is inapposite and irrelevant. None of Dr. Rosenberg’s testimony
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`IPR2014-00199
`U.S. Patent 6,771,970
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`establishes that he is a person of ordinary skill in the art.
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`Moreover, Dr. Rosenberg also does not qualify as a person of ordinary skill
`
`in the art under the definition set forth in Petitioner’s Declaration of Scott Hotes,
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`accompanying the Petition. See Ex. 1013 at 6 (“In the field of the alleged
`
`invention of the ‘970 Patent, a person of ordinary skill in the art has a bachelor of
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`science degree in computer science, electrical engineering, physics, mathematics or
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`a comparable degree and at least three years of experience working with client-
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`server systems, networking technologies and applications, data translations
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`systems, and wireless and Internet communications protocols.”). Even under
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`Petitioner’s own definition, Dr. Rosenberg does not possess a degree in computer
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`science, electrical engineering, physics, mathematics, or any comparable degree—
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`and Dr. Rosenberg likewise lacks the requisite three years of relevant work
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`experience. Dr. Rosenberg’s work experience in the area of “user interface design
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`and software architecture” does not constitute work experience in “client-server
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`systems, networking technologies and applications, data translation systems, and
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`wireless and Internet communication protocol.” See Exhibit 1020 at 2–5.
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`Testimony proffered by a witness lacking the relevant technical expertise
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`fails the standard of admissibility under FRE 702. See, Sundance, Inc. v. DeMonte
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`Fabricating Ltd., 550 F.3d 1356, 1358 (Fed. Cir. 2008) (“Indeed, where an issue
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`calls for consideration of evidence from the perspective of one of ordinary skill in
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`IPR2014-00199
`U.S. Patent 6,771,970
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`the art, it is contradictory to Rule 702 to allow a witness to testify on the issue who
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`is not qualified as a technical expert in that art.”).
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`B.
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`Exhibit 1020 Contains Conclusory Opinions Without Disclosing
`The Underlying Factual Bases
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`Exhibit 1020 is not the product of reliable principles and methods and does
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`not reliably apply the principles and methods to the facts of this case. “Affidavits
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`expressing an opinion of an expert must disclose the underlying facts or data upon
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`which the opinion is based.” See Office Patent Trial Practice Guide, 77 Fed. Reg.
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`48756, 48763; FRE 705; 37 C.F.R. § 42.65. The opinions set forth in Exhibit 1020
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`are conclusory and fail to apply any relevant and reliable analysis to the facts of the
`
`case. See Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579, 589 (1993). In
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`many instances throughout his declaration, Dr. Rosenberg does not disclose the
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`underlying facts or basis for his conclusory opinions.
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`For example, in paragraph 18 of Exhibit 1020, Dr. Rosenberg merely
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`concludes that “Elliot’s disclosure of a ‘database’ clearly satisfies the requirements
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`of the database recited in claim 18 of the ‘970 patent” without identifying or
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`explaining what a person of ordinary skill in the art would understand the claim
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`term to mean in the relevant context, and applying such a definition to the facts of
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`this case. See Ex. 1020 at 9. Dr. Rosenberg also fails to provide any explanation
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`of how a person of ordinary skill in the art would understand the claim terms
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`“manipulating” or a “map engine for manipulating said map database.” Rather, Dr.
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`IPR2014-00199
`U.S. Patent 6,771,970
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`Rosenberg simply contends that “an element or component that accesses and/or
`
`obtains files from a database” constitutes “a map engine for manipulating said map
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`database.” See, e.g., id. at 14–16. Dr. Rosenberg’s defective, conclusory opinions
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`are the product of his failure to identify definitions for the disputed claim terms,
`
`apply those definitions to the referenced art, and render a reasoned opinion as to
`
`whether the referenced art discloses the claimed element under the governing legal
`
`standard. Because the opinions set forth in Exhibit 1020 are not a product of
`
`reliable principles and methods, Exhibit 1020 is inadmissible pursuant to FRE 402,
`
`403, 702, and 703.
`
`C. Exhibit 1020 Lacks Any Probative Value Because It Offers No
`Actual Expert Testimony
`
`Exhibit 1020 lacks any probative value because it offers no actual expert
`
`testimony that would assist the Board in understanding the ordinary and customary
`
`meaning of any of the claim terms. Thus, because Dr. Rosenberg lacks the
`
`qualifications of a person of ordinary skill in the art and has failed to apply any
`
`relevant and reliable analysis to the facts of the case, Exhibit 1020 should be
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`excluded in its entirety pursuant to FRE 402, 403, 702, and 703.
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`III. CONCLUSION
`Thus, because Petitioner has proffered nothing more than conclusory
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`declaration testimony (Exhibit 1020) from a non-expert and failed to cure the
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`deficiencies in its evidence, Exhibit 1020 should be excluded from the record as
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`IPR2014-00199
`U.S. Patent 6,771,970
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`inadmissible under the Federal Rules of Evidence and 37 C.F.R. § 42.65.
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`Dated: December 30, 2014
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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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`IPR2014-00199
`U.S. Patent 6,771,970
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`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 30th day of December, 2014, a true and correct
`
`copy of the foregoing Patent Owner’s Motion to Exclude Evidence Pursuant to 37
`
`C.F.R. §§ 42.62 and 42.64(c) was served on the following counsel for Petitioner
`
`Wavemarket, Inc. d/b/a Location Labs via email and Federal Express Mail:
`
`
`
`
`
`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: December 30, 2014
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`mark.hogge@dentons.com
`scott.cummings@dentons.com
`
`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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