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 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 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. § 42.64(c), and the Scheduling Order (Paper No. 19)
`
`Petitioner Wavemarket d/b/a Location Labs respectfully moves to exclude portions
`
`of Exhibit 2016, as well as Exhibits 2017-2019 in their entirety, all proffered
`
`with the Patent Owner's Response of August 11, 2014. The Federal Rules of
`
`Evidence (FRE) apply to these proceedings according to the provisions of 37
`
`C.F.R. §42.62(a), and these rules form the basis of the objections contained herein.
`
`These objections set forth herein were previously raised by service on counsel for
`
`Patent Owner on August 15, 2015 ("Petitioner's Evidentiary Objections Pursuant to
`
`37 C.F.R. § 42.64"; Exhibit 1021 submitted herewith).
`
`I.
`
`OBJECTIONS TO EXHIBIT 2016 - DECLARATION OF DR.
`MANDAYAM
`Paragraphs 28 and 32 of the Declaration of Patent Owner's Expert Dr.
`
`Madayam ("Mandayam Decl."; Exhibit 2016) should be excluded because they
`
`serve as an improper conduit to the admission of unauthenticated hearsay. This
`
`objection was timely made by Petitioner. See, Exhibit 1021, p. 4. These
`
`paragraphs contain quotations of cherry-picked dictionary definitions contained in
`
`Exhibits 2017-2019. These Exhibits are unauthenticated hearsay for the reasons
`
`explained fully below. It is improper for the Patent Owner to use these paragraphs
`
`of the Mandayam Decl. as a backdoor to the admission of unauthenticated hearsay.
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`- 2 -
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`Case IPR2014-00199
`Patent 6,771,970
`Paragraphs 28 and 32 of the Mandayam Decl. proffer a claim construction
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`that is alleged to be "consistent with" the specification of the '970 patent.
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`However, instead of basing its claim construction on the plain language of the
`
`claim, consistent with the specification, the Patent Owner seeks to improperly
`
`import limitations into the claims from cherry-picked extrinsic dictionary
`
`definitions. In reality, the proffered claim constructions are a regurgitation of cited
`
`"definitions" provided to Dr. Mandayam. Moreover, the documents are cited for
`
`the proposition that the contents thereof were known to those of ordinary skill in
`
`the art as of the date of invention associated with the '970 patent. FRE 703 is not
`
`intended to serve as a backdoor to the admission of otherwise inadmissible hearsay
`
`evidence. 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); 7 Ann. Patent Digest § 44:44 (improper for an expert to testify as to
`
`inadmissible facts as a back door approach of getting inadmissible evidence before
`
`the trier of fact). Thus, paragraphs 28 and 32 are properly excluded from the
`
`Patent Owner's evidence pursuant to at least FRE 802.
`
`II.
`
`EXHIBITS 2017-2019
`Exhibits 2017, 2018 and 2019, purported to be specialized dictionary
`
`definitions of "database" and "engine," constitute impermissible hearsay that does
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`Case IPR2014-00199
`Patent 6,771,970
`not fall within any know exception, have not been adequately authenticated, and
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`thus are inadmissible pursuant to at least FRE 901 and 802. These objection were
`
`presented by Petitioner in a timely fashion. See, Exhibit 1021, pp. 2-3.
`
`Copyright dates and other date information appearing on each of these
`
`Exhibits are hearsay because that information is being offered to prove the truth of
`
`the matter being asserted; namely, that the contents of the documents were publicly
`
`available, or at least represents the views of a person having ordinary skill in the
`
`art, as of those dates. Hilgraeve, Inc. v. Symatec Corporation, 271 F.Supp.2d
`
`964, 974 (E.D. Mich. 2003) ("[p]laintiff correctly notes that the dates imprinted on
`
`these documents are hearsay when offered to prove the truth of the matter
`
`asserted"). Also, the definitions of "database" and "engine" appearing in the
`
`Exhibits are hearsay because they are being offered for the truth of the matter
`
`being asserted, as evidenced by the adoption of a claim construction position for
`
`these terms that relies heavily on the cited dictionary definitions. Exhibit 2016, ¶¶
`
`28 and 32.
`
`Contrary to the Patent Owner's claims, no known hearsay exceptions are
`
`believed to be applicable. The Patent Owner contends that evidentiary objections
`
`to pages from "common dictionaries" are not objectionable for hearsay or lack of
`
`authentication. See, "LOCATIONET SYSTEMS, LTD.'S SUPPLEMENTAL
`
`EVIDENCE AND RESPONSE TO PETITIONER'S EVIDENTIARY
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`- 4 -
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`Case IPR2014-00199
`Patent 6,771,970
`OBJECTIONS PURSUANT TO 37 C.F.R. § 42.64," Exhibit 1022, pp. 2-4.
`
`However, despite the lack of adequate cited authority for such a sweeping
`
`statement, Exhibits 2017-2019 are not taken from common dictionaries. Instead,
`
`they are taken from less commonly cited specialized dictionaries. The authority
`
`cited by Patent Owner is inapplicable.
`
`The Patent Owner urges the Board to take judicial notice of the definitions
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`of "database" and "engine" pursuant to FRE 201. Exhibit 1022, pp. 4-5.
`
`However, the fundamental requirement for taking judicial notice is that the fact
`
`noticed "is not subject to reasonable dispute." FRE 201(a). The definitions of
`
`"database" and "engine" are certainly subject to reasonable dispute. Different
`
`dictionaries often define the same term in different ways, raising a dispute as to the
`
`most appropriate definition. This fact is proven by the Patent Owner' own
`
`evidence. Exhibits 2017 and 2018 contain two different definitions of the term
`
`"database" appearing in two different dictionaries. This highlights the subjective
`
`nature of dictionary definitions. Also, the issue is the interpretation of "map
`
`database" and "map engine for manipulating said map database" in the context of
`
`claim 18 of the '970 patent. Dictionary definitions are not drafted in the context of
`
`how the terms are used in any particular patent. The Federal Circuit has noted
`
`these shortcomings. Phillips v. AWH Corp., 415 F.3d 1303, 1322 (Fed. Cir, 2005)
`
`("Moreover, different dictionaries can contain somewhat different definitions for
`
`- 5 -
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`Case IPR2014-00199
`Patent 6,771,970
`the same words. A claim should not rise and fall based upon the preferences of a
`
`particular dictionary editor, or the court's independent decision, uninformed by the
`
`specification, to rely on one dictionary rather than another. Finally, the authors of
`
`dictionaries or treatises may simplify ideas to communicate them most effectively
`
`to the public and may choose a meaning that is not pertinent to the understanding
`
`of the particular claim language . . . The resulting definitions therefore do not
`
`necessarily reflect the inventor's goal of distinctly setting forth his invention as a
`
`person of ordinary skill in that particular art would understand it."). Notably, none
`
`of the authority cited by the Patent Owner involves taking judicial notice of a
`
`dictionary definition for purposes of construing a term appearing in a claim of a
`
`patent.
`
`The Patent Owner further contends that Exhibits 2017-2019 are admissible
`
`under the learned treatise exception to the hearsay rule (FRE 803(18)). However,
`
`this exception requires that the evidence be "established as a reliable authority by
`
`the testimony or admission of the witness or by other expert testimony or by
`
`judicial notice." Mere reference to these exhibits by Patent Owner's expert
`
`declaration or deposition testimony does not establish their reliability. Moreover,
`
`even if these dictionary definitions qualify under this exception, FRE 803(18)
`
`explicitly rejects the use of the documents as exhibits: "[i]f admitted, the statement
`
`may be read into evidence but not received as an exhibit." Id.
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`- 6 -
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`Case IPR2014-00199
`Patent 6,771,970
`The Patent Owner asserts that Exhibits 2017-2019 are admissible under the
`
`"commercial publication" exception of FRE 803(17), without citing any authority
`
`for the proposition that a dictionary is appropriate for admission under this rule.
`
`Documents appropriate for consideration under this section are defined as:
`
`"[m]arket quotations, lists, directories, or other compilations." However,
`
`dictionaries are not market quotations, lists or directories, and they are not "other
`
`compilations." Unlike a compilation of data, a dictionary is a collection of
`
`subjectively worded "definitions" reflecting the author's or editor's view of the
`
`meaning of certain word or phrases. The subjectivity of dictionary definitions is
`
`easily demonstrated by the Patent Owner's own Exhibits 2017 and 2018,
`
`containing two distinctly different definitions of the same term "database" from
`
`two different dictionaries. Thus, dictionaries are not exempted from the hearsay
`
`rule. In addition, the proponent of the evidence must establish that the document
`
`"are generally relied on by the public or by persons in particular occupations." The
`
`fact that Patent Owner's expert may have relied upon these particular dictionaries is
`
`inadequate to meet the threshold showing. In fact, there are numerous possible
`
`dictionaries that the Patent Owner's expert could have relied upon. It has not been
`
`asserted that the cited dictionaries (three different ones) are more reliable that any
`
`of the many other possible dictionaries that could have been cited. The fact the
`
`Patent Owner's expert cites to three different sources to define just two terms is
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`- 7 -
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`Case IPR2014-00199
`Patent 6,771,970
`evidence that these dictionaries were not cited because of their reliability, but
`
`rather cherry-picked to improperly attempt to import the desired limitations into
`
`the claim 18 of the '970 patent.
`
`The Patent Owner additionally argues that Exhibit 2019 is admissible under
`
`the "Ancient Documents" exception of FRE 803(16). To qualify under this
`
`exception, the document must be one "whose authenticity is established." FRE
`
`803(16). For the reasons explained below, the authenticity of Exhibit 2019 has not
`
`been established, thus the Exhibit does not qualify for this exception to the hearsay
`
`rule.
`
`The Patent Owner additionally alleges that these exhibits are admissible
`
`under the "residual exception" to the hearsay rule, FRE 807. One of the
`
`requirements for admission under this exception is that the evidence sought to be
`
`admitted "is more probative on the point for which it is offered than any other
`
`evidence that the proponent can obtain through reasonable efforts." FRE 807.
`
`Exhibits 2017-2019 are cited in support of the meaning of claim terms of claim 18
`
`of the '970 patent. However, the case law is clear that such extrinsic evidence is
`
`less probative of the meaning of claim terms than the claim language itself or the
`
`specification and prosecution history. Phillips v. AWH Corp., 415 F.3d 1301,
`
`1317-18 (Fed. Cir. 2005) (en banc) (extrinsic evidence is "less reliable that the
`
`patent and its prosecution history in determining how to read claim terms"; and
`
`- 8 -
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`
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`Case IPR2014-00199
`Patent 6,771,970
`expert testimony that is inconsistent with the claims themselves and the
`
`specification will be significantly discounted). Therefore, Exhibits 2017-1019 are
`
`not appropriate for admission under the residual exception to the hearsay rule.
`
`Exhibits 2017-2019 also lack adequate authentication. In response to
`
`Petitioner's prior objection to a complete lack of authentication of Exhibits 2017-
`
`2019, the Patent Owner responded by submission of a Declaration of Yue Li ("Li
`
`Decl.") Exhibit 1021, Exhibit A. The Li Decl. only alleges, without any
`
`explanation, that the declarant has personal knowledge that each of Exhibits 2017-
`
`2019 "is a true and correct copy" of the cited portions of the three different
`
`dictionaries. The Li Decl. fails to comply with FRE 602, which requires evidence
`
`sufficient to support a finding that the witness has personal knowledge of the
`
`matter. With regard to this threshold evidence, FRE 602 states: "[e]vidence to
`
`prove personal knowledge may . . . consist of the witness' own testimony."
`
`However, this does not necessarily mean that the declarant is completely absolved
`
`of any responsibility for providing a factual basis for the claim of personal
`
`knowledge of the subject testimony. Hilgraeve, 271 F.Supp.2d at 974 ("the
`
`witness must still set forth a factual basis for his claim of personal knowledge of
`
`the matter in question").
`
`In addition, there is no evidence authenticating Exhibits 2017-2019 as being
`
`what they are purported to be, namely, available to the public or at least those of
`
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`Case IPR2014-00199
`Patent 6,771,970
`ordinary skill in the art and thus indicative of the art's understanding of the
`
`meaning of these claim terms as of the date of invention associated with the '970
`
`patent. There is no testimony that the declarant has personal knowledge that any of
`
`the dictionaries were accessible by the public or those of ordinary skill in the art as
`
`of the date of invention associated with the '970 patent, or any other evidence
`
`demonstrating the availability of the cited dictionaries to those of ordinary skill in
`
`the art as of the critical date. It is clear that the copyright notices and dates
`
`associated with each Exhibit are inadequate on their face to demonstrate
`
`availability to the public. Ex Parte Rembrandt Gaming Techs. LP, 2014 WL
`
`6847163, at *3, Control No. 90/012,379 (PTAB Dec. 3, 2014) ("[W]e agree with
`
`Appellant the 1993 copyright date in Tequila Sunrise does not show the requisite
`
`availability in 1993, as the Examiner finds. Instead, the 1993 'copyright date
`
`merely establishes ‘the date the document was created or printed.' Thus, we find
`
`the evidence of record is insufficient to show Tequila Sunrise was disseminated or
`
`otherwise made accessible to persons interested and ordinarily skilled in gaming
`
`machine design. Therefore, we find the Examiner erred in relying on Tequila
`
`Sunrise as prior art.") (quoting Hilgraeve); ResQNet.com, Inc. v. Lansa, Inc., 533
`
`F. Supp. 2d 397, 414 (S.D.N.Y. 2008) (vacated, in part, on other grounds) (noting
`
`that, even when the Flashpoint reference bore a copyright date, "In the absence of
`
`any evidence that the . . . references were published prior to the critical date, [the
`
`- 10 -
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`Case IPR2014-00199
`Patent 6,771,970
`references] cannot be considered prior art for the purposes of invalidating the '075
`
`Patent"). Thus, even if Exhibits 2017-2019 are not excluded on the basis of
`
`hearsay (FRE 802), they should be excluded due to lack of sufficient authentication
`
`pursuant to FRE 901.
`
`III. CONCLUSION
`The evidence proffered by the Patent Owner in the August 11, 2014 Patent
`
`Owner Response in the form of Exhibits 2016-2019 fails to comply with the
`
`Federal Rules of Evidence for at least the reasons noted above, and thus should be
`
`excluded from evidence.
`
`Dated: December 30, 2014
`
`Respectfully submitted,
`Dentons US LLP
`
`By:
`
`/Scott W. Cummings/
`
`Mark L. Hogge, Reg. No. 31,622
`Email: mark.hogge@dentons.com
`
`Scott W. Cummings, Reg. No. 41, 567
`Email: scott.cummings@dentons.com
`
`Attorneys for Petitioner
`
`- 11 -
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`
`
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
`
`Theundersignedherebycertifiesthattheforegoing PETITIONER’S
`MOTION TO EXCLUDE EVIDENCE PURSUANT TO 37 C.F.R. § 42.64was
`servedviaFedExPriorityOvernight,initsentiretyonAttorneysofrecordin
`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
`
`Dated: December 30, 2014
`
`By: /Louie Malloy/
`Louie Malloy
`
`
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