UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`_______________
`
`
`
`SHARP CORPORATION, SHARP ELECTRONICS CORPORATION, and
`SHARP ELECTRONICS MANUFACTURING
`COMPANY OF AMERICA, INC.,
`Petitioners
`
`
`
`v.
`
`SURPASS TECH INNOVATION LLC
`Patent Owner
`
`_______________
`
`Case IPR2015-00021
`Patent 7,202,843
`
`_______________
`
`
`
`PATENT OWNER SURPASS TECH INNOVATION LLC’S
`MOTION TO EXCLUDE PETITIONERS’ EVIDENCE
`PURSUANT TO 37 C.F.R. § 42.64(c)
`
`
`
`
`
`
`
`
`
`
`
`
`_______________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`_______________
`
`
`
`SHARP CORPORATION, SHARP ELECTRONICS CORPORATION, and
`SHARP ELECTRONICS MANUFACTURING
`COMPANY OF AMERICA, INC.,
`Petitioners
`
`
`
`v.
`
`SURPASS TECH INNOVATION LLC
`Patent Owner
`
`_______________
`
`Case IPR2015-00021
`Patent 7,202,843
`
`_______________
`
`
`
`PATENT OWNER SURPASS TECH INNOVATION LLC’S
`MOTION TO EXCLUDE PETITIONERS’ EVIDENCE
`PURSUANT TO 37 C.F.R. § 42.64(c)
`
`
`
`
`
`
`
`
`
`
`
`
`Patent Owner Surpass timely moves to exclude the following portions of
`
`Petitioners’ Reply Evidence as set forth below:
`
`
`
`Exhibit 1010 – ¶¶ 42-43 of the Rebuttal Declaration of Michael J. Marentic
`
`1. Identity of the exhibit and portion thereof sought to be excluded: ¶¶ 42-
`
`43, directed to Mr. Marentic’s testimony on the “Level of Skill in the
`
`Art.”
`
`2. Objection: Fed. R. Evid. 702.
`
`3. An objection was made in Patent Owner Surpass’s Objections, filed
`
`September 17, 2015. See Paper 25, p. 2, row 3.
`
`4. Petitioners rely on Mr. Marentic’s standard for a person “of ordinary skill
`
`in the art” on p. 6 (ln. 8) and p. 14 (ll. 11-13) of the Reply. Petitioners
`
`also present a standard for a person of ordinary skill in the art on p. 19 (ll.
`
`14-17) of the Petition, though the Petition’s standard differs from Mr.
`
`Marentic’s standard.
`
`5. Mr. Marentic’s asserted testimony on the “Level of Skill in the Art” fails
`
`to satisfy Fed. R. Evid. 702. Under Fed. R. Evid. 702, a qualified witness
`
`“may testify in the form of an opinion or otherwise if: … (b) the
`
`testimony is based on sufficient facts or data; (c) the testimony is the
`
`product of reliable principles and methods; and (d) the expert has reliably
`
`1
`
`
`
`
`applied the principles and methods to the facts of the case.” Mr. Marentic
`
`offers no facts or data to support his opinion on the level of skill in the
`
`art, and in fact presents a standard that differs from the standard
`
`presented at p. 19 of the Petition without explanation or disclosing the
`
`underlying facts or data of his opinion. See also Ex. 2007 at 38:10-41:6.
`
`His testimony in these paragraphs fails to satisfy Fed. R. Evid. 702 and
`
`should be excluded. Similarly, the portions of the Reply that draw
`
`conclusions according to the standard of “ordinary skill in the art” (see
`
`Reply at p. 6 (ln. 8) and p. 14 (ll. 11-13)) should also be excluded.
`
`
`
`Exhibit 1010 – ¶¶ 92-93 of the Rebuttal Declaration of Michael J. Marentic
`
`1. Identity of the exhibit and portion thereof sought to be excluded: ¶¶ 92-
`
`93, directed to Mr. Marentic’s reliance on Ex. 1012, 1013, and 1014 for
`
`the accuracy of the disclosures contained therein.
`
`2. Objection: Fed. R. Evid. 802.
`
`3. An objection was made in Patent Owner Surpass’s Objections, filed
`
`September 17, 2015. See Paper 25, p. 2, row 4.1
`
`1 In Patent Owner Surpass’s Objections, filed September 17, 2015, Patent Owner
`
`indicated that the objection was to “¶¶ 92-92” rather than “¶¶92-93.” Paper 25, p.
`
`2, row 4. However, Patent Owner’s discussion of that objection indicates that the
`
`2
`
`
`
`
`4. Petitioners rely on Mr. Marentic’s ¶¶ 92-93 on p. 23, ln. 14 through p. 24,
`
`ln. 16 of the Reply, in support of their claim construction arguments.
`
`5. The written statements in Ex. 1012, 1013, and 1014 are hearsay because
`
`Petitioners offer them for the truth of the matter asserted in the
`
`statements. Petitioners and Mr. Marentic are not merely relying upon Ex.
`
`1012, Ex. 1013, and Ex. 1014 to show that the term “transmission rate”
`
`exists in the prior art. Rather, Mr. Marentic confirmed during his
`
`deposition that Sharp is relying on the accuracy of the disclosures of Ex.
`
`1012, Ex. 1013, and Ex. 1014 to support his position regarding how
`
`“control a transmission rate” and “transmission rate,” as those terms
`
`appear in claim 4 of the ‘843 patent, should be factually understood. See
`
`Ex. 2007 at 77:7-21. This is consistent with Marentic’s statement in ¶ 93
`
`of Ex. 1010, in which he presents what he believes is the “correct
`
`understanding” of these terms, and then cites to Ex. 1014 and Ex. 1012
`
`for support. Ex. 1010 at ¶ 93. Petitioners rely on Mr. Marentic’s
`
`objection is to “Paragraphs” of Ex. 1010, rather than just a single paragraph, and
`
`the objections are founded upon Mr. Marentic’s reliance on Ex. 1014, which is
`
`discussed in ¶ 93 of the Marentic Rebuttal Declaration, Ex. 1010. Therefore,
`
`Petitioners were placed on notice of Patent Owner’s objections as to both ¶¶92 and
`
`93 with sufficient particularity, per 37 C.F.R. § 42.64(b)(1).
`
`3
`
`
`
`
`testimony to provide factual support for its position as to the correct
`
`construction of the claimed phrase “control a transmission rate.” The
`
`testimony in Ex. 1010, ¶¶ 92-93 invokes the rule against hearsay, and
`
`therefore fails to satisfy Fed. R. Evid. 802. This testimony should be
`
`excluded. Moreover, Petitioners have not identified an exception to the
`
`rule against hearsay. Indeed, Mr. Marentic confirmed during his
`
`deposition that he has no knowledge about who drafted those exhibits,
`
`much less the technical background of the drafter(s). Id. at 66:8-69:13;
`
`78:1-81:9; 83:12-86:4. Mr. Marentic’s testimony should be excluded,
`
`and the portions of the Reply that rely upon the excluded testimony
`
`should be disregarded.
`
`
`
`Exhibit 2007 – 116:12 to 118:3 of Deposition of Michael J. Marentic
`
`1. Identity of the exhibit and portion thereof sought to be excluded or
`
`stricken: page 116, line 12 to page 118, line 3 of Mr. Marentic’s
`
`deposition testimony submitted as Ex. 2007.
`
`2. Objection: Non-responsive.
`
`3. An objection was made by counsel for Patent Owner Surpass at page
`
`118, lines 4-6 of Ex. 2007, immediately upon the conclusion of Mr.
`
`Marentic’s testimony.
`
`4
`
`
`
`
`4. Mr. Marentic was asked “Are you aware of any driving circuit in the ‘843
`
`patent that does not output two overdriven pixel data per frame?” Ex.
`
`2007 at 116:12-14. Mr. Marentic responded “Yes,” and proceeded to
`
`point to three disclosures in the ‘843 patent directed to driving methods
`
`without identifying any responsive driving circuits. Id. at 116:117-
`
`118:3. The non-responsive nature of Mr. Marentic’s answer was subject
`
`to cross-examination by counsel for Patent Owner at 118:15 to 120:17.
`
`Petitioners did not attempt to rehabilitate Mr. Marentic’s non-responsive
`
`answer during re-direct examination. The non-responsive testimony
`
`should be should be excluded or otherwise stricken.
`
`Respectfully submitted,
`
`By: /s/ Wayne M. Helge
`Wayne M. Helge (Reg. No. 56,905)
`Donald L. Jackson (Reg. No. 41,090)
`Michael R. Casey (Reg. No. 40,294)
`Davidson Berquist Jackson & Gowdey, LLP
`8300 Greensboro Drive, Suite 500
`McLean, VA 22102
`Telephone: 571-765-7700
`Fax: 571-765-7200
`Email: whelge@dbjg.com
`Email: djackson@dbjg.com
`Email: mcasey@dbjg.com
` Counsel for Patent Owner
`
`5
`
`
`
`Dated: October 15, 2015
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`
`
`I hereby certify that on October 15, 2015, a true and correct copy of the
`
`foregoing MOTION TO EXCLUDE PETITIONERS’ EVIDENCE is being served
`
`via email by consent to the Petitioners at the correspondence addresses of record as
`
`follows:
`
`Anthony F. Lo Cicero
`Reg. No. 29,403
`Amster, Rothstein & Ebenstein LLP
`90 Park Avenue
`New York, NY 10016
`Telephone: (212) 336–8110
`Facsimile: (212) 336–8001
`E-mail: alocicero@arelaw.com
`
`Brian A. Comack
`Reg. No. 45,343
`Amster, Rothstein & Ebenstein LLP
`90 Park Avenue
`New York, NY 10016
`Telephone: (212) 336–8098
`Facsimile: (212) 336–8001
`E-mail: Sharp-843IPR@arelaw.com
`
`By: /s/ Wayne M. Helge
` USPTO Reg. No. 56,905
` Counsel for Patent Owner
`
`
`
`6
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
