`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
`___________________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and
`SAMSUNG TELECOMMUNICATIONS AMERICA, LLC,
`and
`LG ELECTRONICS, INC., LG ELECTRONICS U.S.A., INC., and LG
`ELECTRONICS MOBILECOMM U.S.A., INC.
`Petitioners
`
`v.
`
`BLACK HILLS MEDIA, LLC
`Patent Owner
`___________________
`
`Case No. IPR2014-00717
`Case No. IPR2015-00335
`U.S. Patent 6,108,686
`___________________
`
`PATENT OWNER’S MOTION FOR OBSERVATIONS
`REGARDING CROSS-EXAMINATION OF PETITIONER’S
`REPLY WITNESS KEVIN C. ALMEROTH, PH.D.
`
`
`
`By:
`
`
`
`
`
`
`
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`
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`IPR2014-00717
`U.S. Patent 6,108,686
`
`Exhibit #
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`Previously filed
`
`UPDATED TABLE OF EXHIBITS
`
`Exhibit Description
`Redacted Rebuttal Witness Statement of Mr. Ivan
`Zatkovich for Investigation No. 337-TA-882 at the
`United States International Trade Commission
`(“Zatkovich Rebuttal Witness Statement”)
`Proposed Discovery Requests
`
`Mobile Application Distribution Agreement
`Complaint in Black Hills Media, LLC v. Samsung
`Elecs. Co., Ltd., et al., No. 2:13-cv-00379 (E.D.
`Tex.).
`Complaint Under Section 337 of the Tariff Act of
`1930, As Amended, & Attached Infringement Chart.
`Select Internet Web pages from en.wikipedia.org.
`Google Inc.’s Motion to Intervene in International
`Trade Commission Investigation No. 337-TA-882
`(ITC Jul. 26, 2013).
`ITC Investigation No. 337-TA-882 Prehearing
`Conference Transcript, Aug. 6, 2013
`Transcript of Proceedings before the Hon. Lucy H.
`Koh for Apple, Inc. v. Samsung Elecs. Co., Ltd., No.
`12-cv-00630 (N.D. Ca. June 18, 2014), ECF No. 1926
`(hereinafter “Apple v. Samsung Tr.”).
`Transcript of Deposition of Justin Denison (Plaintiff’s
`Exhibit No. 3001) for Apple, Inc. v. Samsung Elecs.
`Co., Ltd., No. 12-cv-00630 (N.D. Ca. June 16, 2014),
`ECF No. 1920 (hereinafter “Denison Dep. Tr.”).
`Select Internet Web Pages from samsung.com
`Claim Charts Illustrating Infringement of U.S. Patent
`6,618,593 in Black Hills Media, LLC v. Samsung
`Elecs. Co., Ltd., et al., No. 2:13-cv-00379 (E.D.
`Tex.), served on August 22, 2013.
`
`
`
`-i-
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`IPR2014-00717
`U.S. Patent 6,108,686
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`UPDATED TABLE OF EXHIBITS (CONTINUED)
`
`Previously filed (continued)
`
`Exhibit Description
`
`Exhibit #
`
`Declaration of William O. Putnam.
`
`Selected portions of the Microsoft Computer
`Dictionary, 4th Edition, Microsoft Press, 1999.
`
`Selected portions of PC Magazine Encyclopedia
`(http://www.pcmag.com/encyclopedia), accessed
`February 18, 2015.
`
`“PointCast unveils free news service,” Rose Aguilar,
`CNET News, February 13, 1996,
`http://news.cnet.com/PointCast-unveils-free-news-
`service/2100-1023_3-204658.html (accessed
`February 23, 2015).
`
`Transcript of Deposition of Kevin C. Almeroth,
`Ph.D., dated February 3, 2015.
`
`2013
`
`2014
`
`2015
`
`2016
`
`2017
`
`
`
`New
`
`Exhibit Description
`
`Transcript of Deposition of Kevin C. Almeroth,
`Ph.D., dated June 16, 2015.
`
`Exhibit #
`
`2018
`
`
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`-ii-
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`IPR2014-00717
`U.S. Patent 6,108,686
`
`As authorized by the Board’s December 18, 2014 Scheduling Order (Paper
`
`28), Black Hills Media, LLC (“Patent Owner”) respectfully submits the following
`
`observations on the June 16, 2015 deposition of Kevin C. Almeroth, Ph.D., and
`
`requests that the Board enter this Motion for Observations Regarding Cross-
`
`Examination of Petitioner’s Reply Witness, Kevin C. Almeroth, Ph.D. Office
`
`Patent Trial Practice Guide, 77 Fed. Reg. 48756 at 48767–68 (August 14, 2012).1
`
`1. Observation #1
`
`In Exhibit 2018, page 308, lines 1-23, Dr. Almeroth testified that “I don't
`
`think it’s necessarily accurate to say that claim 1 [of the ‘686 Patent] requires a
`
`search because we haven't really defined what ‘search’ is.· We haven't looked at
`
`the question of whether or not there are ways of accomplishing claim 1 that doesn't
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`require some vague and as yet defined term for what ‘search’ is.· I just don't
`
`think it's a reasonable way to try and characterize what claim 1 is -- [ ] --generally
`
`speaking.” (Emphasis added). This testimony is relevant to ¶21 of Dr. Almeroth’s
`
`second declaration (Ex. 1017), in which he objected to Patent Owner’s expert’s
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`citation to a definition of the noun “search” instead of “the term ‘search’ as an
`
`adjective.”
`
`1 The Transcript of Deposition of Kevin C. Almeroth, Ph.D., dated June 16, 2015,
`
`is submitted herewith as Exhibit 2018. All exhibits to the deposition have already
`
`been made of record and are not filed again pursuant to 37 C.F.R. § 42.6(d).
`
`-1-
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`IPR2014-00717
`U.S. Patent 6,108,686
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`2. Observation #2
`
`In Exhibit 2018, page 328, lines 10-22, Dr. Almeroth testified that Patent
`
`Owner’s expert cited to a dictionary definition of the search that “suggests that the
`
`target of the search is a particular file or the location of a file,” and further that
`
`such an interpretation “might exclude every single embodiment in the ‘686 patent.·
`
`I don't recall if the ‘686 patent ever has an embodiment where you’re searching for
`
`a particular file.” This testimony is relevant to ¶22 of Dr. Almeroth’s second
`
`declaration (Ex. 1017), in which he alleges that “Mr. Putnam’s interpretation of
`
`these definitions seems to imply that a particular file has to be the focus of the
`
`search. See, e.g., ‘search (noun)’ and ‘search (verb)’ in Exhibit 2013 ¶ 29,
`
`suggesting that the target of the search is ‘a particular file’ or ‘the location of a
`
`file’,” and to Patent Owner’s expert’s testimony at ¶46 of Ex. 2013 which cites to
`
`the definition of search (noun) as “[t]he process of seeking a particular file or
`
`specific data” and of search (verb) as “[t]o seek specific data within a file or data
`
`structure…”
`
`3. Observation #3
`
`In Exhibit 2018, page 310, line 4 through page 312, line 23, Dr. Almeroth
`
`testified that “I am not sure that I had a specific term in mind other than if you just
`
`look at claim 1 and generally the terms under the broadest reasonable construction”
`
`when asked what term he was construing under the broadest reasonable
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`-2-
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`IPR2014-00717
`U.S. Patent 6,108,686
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`construction in making the statement that “[a] person of ordinary skill in the art at
`
`the time would have understood that there is no indication in the plain language of
`
`the claims that requires the use of a “pull-based searching approach,” especially
`
`under the broadest reasonable construction standard. (Id. ¶ 38 (emphasis in
`
`original))” in ¶7 of his second expert declaration (Ex. 2013). This testimony is
`
`relevant to the section in Patent Owner’s Response at pages 39-41 entitled
`
`“Petitioner’s Declarant Did Not Scrutinize The Language Of The Challenged
`
`Claims Or The Application Of Reilly Thereto.”
`
`4. Observation #4
`
`In Exhibit 2018, page 306, line 11 through page 307, line 2, Dr. Almeroth
`
`testified that “I haven’t set out to define what the term ‘search’ would be in the
`
`eyes of a person of skill in the art.· I think I have opined on what a search agent
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`is, and that’s included in my declaration. And then I’ve provided a variety of
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`responses to what Mr. Putnam has attempted to do by separately using dictionary
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`definitions of ‘search’ and then ‘agent’ and then trying to combine those
`
`definitions together, and why both his process is faulty and why his ultimate
`
`conclusion does not meet the broadest reasonable construction standard.” This
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`testimony is relevant to the section in Patent Owner’s Response at pages 39-41
`
`entitled “Petitioner’s Declarant Did Not Scrutinize The Language Of The
`
`Challenged Claims Or The Application Of Reilly Thereto” and to Patent Owner’s
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`-3-
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`
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`expert’s testimony that “Petitioner’s proposed definition is unreasonably broad in
`
`scope . . . and completely overlooks the distinguishing features of a ‘search’
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`IPR2014-00717
`U.S. Patent 6,108,686
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`agent. . . .” (Ex. 2013 at ¶31).
`
`5. Observation #5
`
`In Exhibit 2018, page 311, lines 10-18, Dr. Almeroth testified that “[w]hat
`
`I’m saying is if you apply the broadest reasonable construction standard, then there
`
`aren’t any terms that I can see within the ‘686 patent where you can provide a hook
`
`that says that there’s a pull-based searching approach.” This testimony is relevant
`
`to Patent Owner’s expert’s testimony that “a person of ordinary skill in the art
`
`would understand that a search agent is a particular type of program that seeks or
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`searches for specific information on behalf of a user based on a defined set of
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`search criteria” (Ex. 2013 at ¶31) and that in the ‘686 Patent “[t]he method of
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`locating and retrieving the desired information makes use of a search agent – a
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`computer program configured to locate and retrieve specific information.” (Ex.
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`2013 at ¶39).
`
`6. Observation #6
`
`In Exhibit 2018, page 344, line 2-5, Dr. Almeroth testified that he had “not
`
`gone through and looked at an OCR PDF to see if the word ‘search’ ever appears
`
`anywhere” in Reilly. This testimony is relevant to Patent Owner’s observation in
`
`the Response that “Reilly does not once utilize the word “search” or its
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`-4-
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`IPR2014-00717
`U.S. Patent 6,108,686
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`derivatives.” (Paper 36 at 24, emphasis added).
`
`7. Observation #7
`
`In Exhibit 2018, page 308, lines 1-23, Dr. Almeroth testified that “I don't
`
`think it’s necessarily accurate to say that claim 1 [of the ‘686 Patent] requires a
`
`search because we haven't really defined what ‘search’ is.· We haven't looked at
`
`the question of whether or not there are ways of accomplishing claim 1 that doesn't
`
`require some vague and as yet defined term for what ‘search’ is.” This passage is
`
`relevant to his testimony in Exhibit 2018, page 343, line 23 through page 344, line
`
`10, in which Dr. Almeroth testified that it wouldn’t surprise him if the word
`
`“search” did not appear in Reilly, and further that “I don’t think it needs to. I don’t
`
`-- I think it can describe what it’s doing without actually using the word ‘search.’”
`
`8. Observation #8
`
`In Exhibit 2018, page 342, line 24 through page 343, line 7, in response to
`
`the question “in Figure 5 [of Ex. 1003, Reilly] where you’ve got the football news,
`
`the ‘include’ and ‘exclude filters’ on the side, do you see that?,” Dr. Almeroth
`
`responded “You've characterized them as filters.· I'm not sure that that's correct.”
`
`This testimony is relevant because it is inconsistent with Dr. Almeroth’s assertion
`
`in his first declaration (Ex. 1005) with regard to the same disclosure in Reilly that
`
`“[t]he data structure can additionally include a filter based on keywords entered
`
`by the user that causes the retrieval of news items in the relevant user-preferred
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`-5-
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`IPR2014-00717
`U.S. Patent 6,108,686
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`categories that include the keywords entered by the user. Id. at 9:50-58.” (Ex.
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`1005 at ¶27, emphasis added). Dr. Almeroth’s testimony at page 342, line 24
`
`through page 343, line 7 is similarly inconsistent with Dr. Almeroth’s testimony in
`
`¶29 of Ex. 1005.
`
`9. Observation #9
`
`In Exhibit 2018, page 342, line 24 through page 343, line 7, in response to
`
`the question “in Figure 5 [of Ex. 1003, Reilly] where you’ve got the football news,
`
`the ‘include’ and ‘exclude filters’ on the side, do you see that?,” Dr. Almeroth
`
`responded “You've characterized them as filters.· I'm not sure that that's correct.”
`
`This testimony is relevant to Reilly’s disclosure with reference to the figure in
`
`question that “either an ‘include only’ or an ‘exclude’ filter (but not both) can be
`
`defined where the user types in key words to be used to select (for the include
`
`only) or deselect news items within that subcategory.” (Ex. 1003 at 9:35-62,
`
`emphasis added).
`
`10. Observation #10
`
`In Exhibit 2018, page 342, line 24 through page 343, line 7, in response to
`
`the question “in Figure 5 [of Ex. 1003, Reilly] where you’ve got the football news,
`
`the ‘include’ and ‘exclude filters’ on the side, do you see that?,” Dr. Almeroth
`
`responded “You've characterized them as filters.· I'm not sure that that's correct.”
`
`This testimony is relevant to his previous testimony in ¶¶27,29 of Ex. 1005 in
`
`-6-
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`IPR2014-00717
`U.S. Patent 6,108,686
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`which he first characterized Reilly’s disclosure as a “filter based on keywords,”
`
`which in turn is inconsistent with Dr. Almeroth’s characterization in ¶28 second
`
`declaration (Ex. 1017) of Figure 5 as allegedly disclosing that a “user can . . . enter
`
`search terms (e.g., stories mentioning “49ers, Rams.”).” (Emphasis added).
`
`11. Observation #11
`
`In Exhibit 2018, page 308, lines 1-23, Dr. Almeroth testified that “I don't
`
`think it’s necessarily accurate to say that claim 1 [of the ‘686 Patent] requires a
`
`search because we haven't really defined what ‘search’ is.· We haven't looked at
`
`the question of whether or not there are ways of accomplishing claim 1 that doesn't
`
`require some vague and as yet defined term for what ‘search’ is.” This testimony
`
`is relevant to ¶34 of Dr. Almeroth’s second declaration (Ex. 1017), in which he
`
`alleges that “[a] person of ordinary skill in the art would understand that filtering is
`
`simply a form of searching.”
`
`12. Observation #12
`
`In Exhibit 2018, page 347, line 24 through page 348, line 10, in response to
`
`a question of whether “retrieve” and “receive” mean the same thing within the
`
`context of the ‘686 Patent, Dr. Almeroth testified that “I haven’t really tried to
`
`answer that question.· Sitting here right now, if you substituted ‘receive’ for
`
`‘retrieve,’ maybe there are instances when it means different things. There’s a
`
`good chance it would change the claim scope.· Maybe it does; maybe it doesn’t.· I
`
`-7-
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`IPR2014-00717
`U.S. Patent 6,108,686
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`would really have to think about that in a fair amount of detail before I could
`
`answer your question.” This testimony is relevant to Patent Owner’s Response,
`
`which stated that “users of the clients (102) merely receive content that was
`
`previously received at, edited at, and compiled for download by the information
`
`server (104),” (Paper 36 at 22) and that “in Reilly’s system, no searching is
`
`performed.” (Paper 36 at 22). Dr. Almeroth’s testimony is also relevant to Patent
`
`Owner’s expert’s statement that “[i]n Reilly’s system, no searching is performed.
`
`Instead, news items from various sources on various topics are compiled at the
`
`information server under the control of an administrator and downloaded to client
`
`computers during scheduled periodic connections. The information server
`
`receives information from sources such as news wire services including the AP
`
`news feed, the DOW news feed, and various sports feeds.” (Ex. 2013 at ¶45,
`
`emphasis added).”
`
`13. Observation #13
`
`In Exhibit 2018, page 297, line 23 through page 298, line 7, in response to
`
`the question “So if it's not meaningful to describe something as push versus pull,
`
`why has that nomenclature creeped into these types of systems?,” Dr. Almeroth
`
`responded “Well, I'm not sure it's not meaningful, but often the terms are taken
`
`relative to each other, and in certain instances -- well, I mean, in some instances it
`
`might identify an alternative design philosophy.” (Emphasis added). This
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`-8-
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`
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`IPR2014-00717
`U.S. Patent 6,108,686
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`testimony is relevant to Patent Owner’s expert’s testimony at ¶46 of Ex. 2013 that
`
`the “‘686 Patent describes the use of a search agent and search rules – a distinctly
`
`different approach to information retrieval from the ‘push’ technology described
`
`in the Reilly patent,” (emphasis added) as well as Patent Owner’s statement in the
`
`Response that “[a]s indicated by the contrasting names by which these
`
`technologies are commonly described, ‘push’ and ‘pull’ systems represent two
`
`distinct paradigms in the manner in which access to information is provided to a
`
`user.” (Paper 36 at 20, emphasis added).
`
`14. Observation #14
`
`In Exhibit 2018, page 345, line 18 through page 346, line 10-22, when asked
`
`to identify “an example of a search being push-based,” Dr. Almeroth testified that
`
`“a search for restaurants” is “a kind of push” because “a request for restaurants . . .
`
`isn’t a specific request, and so the server pushes a list of possible options to that
`
`user. So there’s a search, there’s even a request, but it isn’t for specific
`
`information. It’s not for a specific restaurant or the hours. But what’s returned is
`
`not something that was specifically requested, but something that was responsive
`
`to the request.” This testimony is relevant to Patent Owner’s expert’s citation in
`
`¶22 of Ex. 2013 to the Microsoft Computer Dictionary (Ex. 2014, p. 364) for
`
`“pull” being “[t]he process of retrieving data from a network server” and to PC
`
`Magazine Encyclopedia (Ex. 2015) for “pull technology” being described as
`
`-9-
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`U.S. Patent 6,108,686
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`“[s]pecifically requesting information from a particular source.”
`
`15. Observation #15
`
`In Exhibit 2018, page 347, line 24 through page 348, line 10, in response to
`
`a question of whether “retrieve” and “receive” mean the same thing within the
`
`context of the ‘686 Patent, Dr. Almeroth testified that “I haven’t really tried to
`
`answer that question.· Sitting here right now, if you substituted ‘receive’ for
`
`‘retrieve,’ maybe there are instances when it means different things. There’s a
`
`good chance it would change the claim scope.· Maybe it does; maybe it doesn’t.· I
`
`would really have to think about that in a fair amount of detail before I could
`
`answer your question.” This testimony is relevant to Patent Owner’s argument in
`
`the Response that “whereas the methods and systems of the ‘686 Patent utilize a
`
`search agent to identify, locate, and retrieve targeted information from one or
`
`more data sources, Reilly’s system utilizes ‘push’ technology such that users of the
`
`clients (102) merely receive content that was previously received at, edited at,
`
`and compiled for download by the information server (104). (Ex. 2013 at ¶¶39-
`
`40).” (Paper 36 at 22, emphasis added). Dr. Almeroth’s testimony is also relevant
`
`to Patent Owner’s expert’s statement that “[a]nother distinction is that a search
`
`agent searches for and retrieves information, whereas an application using “push”
`
`technology merely receives content compiled and distributed by an information
`
`service provider.” (Ex. 2013 at ¶39, emphasis original).
`
`-10-
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`16. Observation #16
`
`In Exhibit 2018, page 311, lines 10-18, Dr. Almeroth testified that “[w]hat
`
`I’m saying is if you apply the broadest reasonable construction standard, then there
`
`aren’t any terms that I can see within the ‘686 patent where you can provide a hook
`
`that says that there’s a pull-based searching approach.” This testimony is relevant
`
`to Patent Owner’s expert’s testimony that “Petitioner’s proposed definition is
`
`unreasonably broad in scope . . . and completely overlooks the distinguishing
`
`features of a ‘search’ agent. . . .” (Ex. 2013 at ¶31).
`
`17. Observation #17
`
`In Exhibit 2018, page 328, lines 2-22, Dr. Almeroth conceded that he
`
`understood that the claims of a patent do not have to cover all embodiments. This
`
`testimony is relevant to ¶¶45-47 of Dr. Almeroth’s second declaration (Ex. 1017),
`
`in which he argues, for example, that Patent Owner’s expert’s testimony regarding
`
`dependent claim 2 is faulty because “Mr. Putnam fails to explain why claim 2
`
`should be read so narrowly and in a manner that excludes [one particular
`
`embodiment].” (Ex. 1017 at ¶46).
`
`-11-
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`Dated: June 25, 2015
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`IPR2014-00717
`U.S. Patent 6,108,686
`
`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
`
`-12-
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`IPR2014-00717
`U.S. Patent 6,108,686
`
`CERTIFICATE OF SERVICE
`
` I
`
` hereby certify that on June 25, 2015, a true and accurate copy of this paper,
`MOTION FOR OBSERVATIONS REGARDING CROSS-EXAMINATION OF PETITIONER’S
`REPLY WITNESS, KEVIN C. ALMEROTH, PH.D. and its exhibit were served on the
`following counsel for Petitioners Samsung Electronics Co., Ltd. et al. and
`Petitioners LG Electronics, Inc., et al., via email:
`
`Andrea G. Reister
`Gregory S. Discher
`Covington & Burling LLP
`
`dori.hines@finnegan.com
`
`Dori Johnson Hines, Esq.
`jonathan.stroud@finnegan.com
`
`Jonathan R. Stroud, Esq.
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`
`
`
`
`areister@cov.com
`gdischer@cov.com
`
`
`
`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
`
`
`
`
`
`Dated: June 25, 2015