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.,
`Petitioner,
`
`v.
`
`SURPASS TECH INNOVATION LLC,
`Patent Owner.
`___________
`
`Case IPR2015-00021
`Patent No. 7,202,843 B2
`___________
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`
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION TO EXCLUDE
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`
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`616034.2
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`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`SHARP CORPORATION, SHARP ELECTRONICS CORPORATION, and
`SHARP ELECTRONICS MANUFACTURING
`COMPANY OF AMERICA, INC.,
`Petitioner,
`
`v.
`
`SURPASS TECH INNOVATION LLC,
`Patent Owner.
`___________
`
`Case IPR2015-00021
`Patent No. 7,202,843 B2
`___________
`
`
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION TO EXCLUDE
`
`
`
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`
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`616034.2
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`Sharp Corporation, Sharp Electronics Corporation, and Sharp Electronics
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`Manufacturing Company of America, Inc. (collectively, “Petitioner”) submit this
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`opposition to Patent Owner’s Motion to Exclude (“Motion,” Paper 31). As
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`discussed below, Patent Owner provides no legal or factual basis for excluding any
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`of Petitioner’s evidence. Patent Owner’s Motion should be denied in full.
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`I. Mr. Marentic’s Level of Skill Opinions Are Admissible
`Patent Owner asserts that Mr. Marentic’s testimony relating to the applicable
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`“level of skill in the art” (Ex. 1010, ¶42-43) should be excluded because “it fails to
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`satisfy Fed. R. Evid. 702.” (Motion at 1). In this regard, Patent Owner states that
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`“Mr. Marentic offers no facts or data to support his opinion on the level of skill in
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`the art . . . .” (Id. at 2) (emphasis added). But, other than regurgitate portions of
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`Rule 702, Patent Owner does not explain why these opinions should be excluded.
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`In Paragraph 42, Mr. Marentic sets forth the level of skill in the art
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`applicable to this proceeding:
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`A person of ordinary skill in the art would have had an
`undergraduate degree in electrical engineering, or
`equivalent work experience. That person would also have
`had 3 or more years of experience designing flat panel
`display drive electronics and active matrices for LCDs.
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`(Ex. 1010, ¶42). As explained in Paragraph 43, Mr. Marentic provided this
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`opinion in direct response to the level of skill proposed by Patent Owner’s expert,
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`Mr. Bohannon. (Ex. 1010, ¶43 (“I do not agree that a person with a degree in
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`mathematics or computer science would have the requisite education to design
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`LCD drive electronics”)). Mr. Marentic also explained that, under either of the
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`parties’ proposed level of skill, Patent Owner’s arguments were incorrect and the
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`claims at issue are invalid. (Id. at ¶43).
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`All of this testimony is based upon Mr. Marentic’s “30 years of experience
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`working on liquid crystal display (LCD) and related technologies.” (Id. at ¶17).
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`Courts have long recognized that testimony based on an expert’s experience is
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`proper and reliable under F.R.E. 702. See, e.g., Metavante Corp. v. Emigrant Sav.
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`Bank, 619 F.3d 748, 761 (7th Cir. 2010) (“An expert’s testimony is not unreliable
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`simply because it is founded on his experience rather than on data . . . .”); Figueroa
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`v. Boston Sci. Corp., 254 F. Supp. 2d 361, 368 (S.D.N.Y. 2003) (“An expert may
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`base his opinion on experience alone, and [arguments critical thereof] implicate the
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`weight of the evidence rather than its admissibility.”).
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`It is entirely unclear what additional “facts or data” Patent Owner contends
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`are absent from the objected-to paragraphs. Like Mr. Marentic, Patent Owner’s
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`own expert similarly sets forth the education and experience of a person of
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`ordinary skill in the art, without supporting data. (Ex. 2005, ¶ 8).
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`Tellingly, Patent Owner does not explain how any of the proposed levels of
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`skill in the art materially affect the anticipation or “claim construction” analyses in
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`616034.2
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`this case. Here, no express finding on the level of skill in the art is even required.
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`See Juniper Networks, Inc. v. Brixham Solutions, Ltd., IPR2014-00425, Paper 38 at
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`9-10 (PTAB July 27, 2015) (no need to determine level of skill where challenging
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`party “has not provided a sufficient explanation as to how its specific proposal
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`regarding the level of ordinary skill . . . affects the analysis in this case.”); see
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`Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of
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`specific findings on the level of skill in the art does not give rise to reversible error
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`where the prior art itself reflects an appropriate level and a need for testimony is
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`not shown.”) (internal quotation marks omitted).
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`Patent Owner also notes that Mr. Marentic “presents a standard that differs
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`from the standard presented [in] the Petition.” (Motion at 2). But Mr. Marentic
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`testified that those “both [standards] are equivalent” (Ex. 2007, 40:21-41:6) and
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`that any minor differences between the two had no bearing on his opinions. (Ex.
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`2007, 161:10-162:4). And, here again, Patent Owner does nothing more than
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`repeat the text of Rule 702 without providing any argument or analysis.
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`Finally, it is well established that this type of objection under F.R.E. 702
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`“goes to the weight and sufficiency of the testimony, rather than its admissibility.”
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`Primera Tech., Inc. v. Automatic Mfg. Sys., Inc., IPR2013-00196, Paper 50 at 28-
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`29 (PTAB July 17, 2014). As the Board has stated, a motion to exclude evidence
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`“may not be used to challenge the sufficiency of the evidence to prove a particular
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`616034.2
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`3
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`fact.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14,
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`2012).
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`For these reasons, Patent Owner’s request to exclude Paragraphs 42-43 of
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`Mr. Marentic’s declaration should be denied.
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`II.
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`Petitioner’s Exs. 1012, 1013 and 1014 Are Not Hearsay
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`Patent Owner next asserts that Paragraphs 92-93 of Marentic’s Rebuttal
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`Declaration should be excluded because the patents cited in these Paragraphs (i.e.,
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`Exs. 1012, 1013 and 1014) purportedly contain inadmissible hearsay. (Motion at
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`2-4). Patent Owner is wrong. These three issued U.S. patents were cited to rebut
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`Patent Owner’s odd claim construction arguments and are therefore not hearsay.
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`In all events, U.S. patents are subject to the “public records exception” to hearsay
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`under FRE 803(8). Following Patent Owner’s logic, the ‘843 Patent would itself
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`be inadmissible hearsay, which is simply absurd.
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`By way of background, Petitioner’s initial petition for inter partes review
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`established that no construction is necessary for any term of the ‘843 Patent. (See
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`Paper 1 at 18). Patent Owner did not offer any constructions either. The Board
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`agreed, and did not construe any terms in its Decision instituting review. (See
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`Paper 10 at 4-5). In its Response, Patent Owner sought to amend Claim 4 under
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`the guise of claim construction, arguing that the phrase “control a transmission
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`rate” should further require the application of “two or more overdriven data
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`616034.2
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`4
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`impulses . . . or overdriving.” (Paper 20 at 25-26) (emphasis added). Paragraphs
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`92-93 of Mr. Marentic’s declaration directly respond to Patent Owner’s “claim
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`construction” arguments. Specifically, Mr. Marentic explains that “transmission
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`rate” and “controlling a transmission rate” are common terms in the field of LCDs
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`and optics. (Ex. 1010, ¶¶92-93). Mr. Marentic also cited to three issued U.S.
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`patents (Exs. 1012-1014), which confirm his opinions. (Ex. 1010, ¶¶92-93; see
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`also Ex. 2007, 77:8-12 (“Q And you know that there are three patents that you
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`contend confirm your understanding of the meaning of transmission rate, correct?
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`A There are three patents that use the term similar to how I understand it.”)).
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`Patent Owner does not cite a single case where the Board or a court has
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`excluded such evidence. To the contrary, Phillips v. AWH Corp., 415 F.3d 1303
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`(Fed. Cir. 2005) (en banc) confirms that “extrinsic evidence concerning . . . the
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`meaning of technical terms, and the state of the art” may be consulted when
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`construing a claim term. Id. at 1314 (citation omitted); see also Neev v. Abbott
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`Med. Optics, Inc., No. 09-146 (RBK), 2012 U.S. Dist. LEXIS 42024, at *38 (D.
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`Del. Mar. 26, 2012) (“The state of the art at the time of the invention is relevant to
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`claim construction.”).
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`Indeed, the Board and District Courts regularly consider similar patent
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`documents when construing claims. See, e.g., Tate & Lyle Americas, LLC v.
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`Cargill, Inc., IPR2014-00084, Paper 12 at 7 (PTAB Apr. 1, 2014) (adopting
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`616034.2
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`5
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`petitioner’s proposed construction that was supported by an extrinsic patent);
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`Fresenius Med. Care Holdings, Inc. v. Baxter Int'l, Inc., Civ. No. 03-1431, 2006
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`WL 1330003, *3 (N.D. Cal. May 15, 2006) (“Baxter does not cite a single case in
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`support of its Motion where a court has excluded PTO documents as inadmissible
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`hearsay. To the contrary, courts regularly consider such documents
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`when construing claims for the purposes of infringement and validity analyses.”).
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`Patent Owner argues that “Sharp is relying on the accuracy of the
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`disclosures of Ex. 1012, Ex. 1013, and Ex. 1014 to support his [sic] position
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`regarding how ‘control a transmission rate’ and ‘transmission rate,’ . . . should be
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`factually understood.” (Motion at 3) (emphasis added). But the content of these
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`Exhibits is not offered “to prove the truth of the matter asserted, but rather to show
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`their effect on a person of ordinary skill in the art.” Neev v. Abbott Med. Optics,
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`Inc., Civ. No. 09-146, 2012 U.S. Dist. LEXIS 42024, *38 (D. Del. Mar. 26, 2012).
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`“Statements in a reference offered for their effect on one of ordinary skill in the art
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`are not hearsay.” Id. at *39 (emphasis added); see also Hay & Forage Indus. v.
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`New Holland N. Am., Inc., 25 F. Supp. 2d 1170, 1175 n.2 (D. Kan. 1998) (“The
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`court rejects defendant’s hearsay argument because . . . Plaintiff offers these
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`[patents] not to prove the truth of any of the matters which they assert, but rather to
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`prove that various patents use the term steering structure as a noun in a variety of
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`contexts.”). Under 37 C.F.R. § 42.61(c), U.S. patents are automatically admissible
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`616034.2
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`for the purpose of establishing what the specification or drawing describes.
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`Accordingly, Exs. 1012-1014 are not hearsay and are admissible to the legal issue
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`of claim construction under Federal Circuit law.
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`Furthermore, even if Exs. 1012-1014 did contain hearsay, as issued patents,
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`they are public records that are subject to the “public records exception” to hearsay
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`under FRE 803(8). See IA Labs CA, LLC v. Nintendo Co., 857 F. Supp. 2d 550,
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`552 n.2 (D. Md. 2012) (“[T]he Court recognizes that documents created in the
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`course of the reexamination proceedings may well fall within the exception to
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`hearsay for public records.”); Hay & Forage Indus., 25 F. Supp. 2d at 1175 n.2
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`(“In any event, even if the patents were hearsay, they would be subject to the
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`public records exception to the hearsay rule.”). The Federal Rules of Evidence
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`also provide that experts may rely on hearsay in forming their opinions. See Fed.
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`R. Evid. 703.
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`Finally, to the extent that there are any hearsay aspects to Exs. 1012-1014,
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`the Board should simply “exercise [its] discretion to assign appropriate weight to
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`the evidence.” SAP America, Inc. v. Arunachalam, CBM2013-00013, Paper 61 at
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`28-29 (PTAB Sept. 18, 2014) (denying motion to exclude evidence under FRE
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`802).
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`616034.2
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`7
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`III. There Is No Basis For Excluding The Objected-To Portions of Mr.
`Marentic’s Deposition
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`Patent Owner asserts that lines 116:2-118:3 of Mr. Marentic’s deposition
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`transcript (Ex. 2007) should be excluded as “non-responsive.” This contention has
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`no merit and is merely an eleventh hour attempt to sidestep testimony damaging to
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`Patent Owner’s position.
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`As discussed above, Patent Owner has sought to amend Claim 4 to add
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`“overdriving.” In support of this argument, Patent Owner and its expert focus
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`solely on those teachings in the specification that relate to overdriving, while
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`wholly ignoring those teachings that relate to the claims actually at issue in this
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`proceeding, which do not require overdriving. Patent Owner also ignores the fact
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`that Claims 4, 8 and 9 are original, and therefore part of the specification. Mr.
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`Marentic identified each of these defects in Patent Owner’s reasoning in his
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`declaration. (See, e.g., Ex. 1010, ¶¶78-86).
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`During his deposition, Mr. Marentic was asked whether he was “aware of
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`any driving circuit in the ‘843 patent that does not output two overdriving pixel
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`data per frame.” (Ex. 2007, 116:12-14). In response, Mr. Marentic identified the
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`same portions of the specification (e.g., Claim 4, Col. 2:20-33, Col. 5:45-55)
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`identified in his declaration (Ex. 1010, ¶¶82-86 )—which Patent Owner does not
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`challenge—that disclose applying two or more non-overdriven data impulses in a
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`frame. His response was consistent and correct.
`8
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`616034.2
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`Patent Owner’s complaint that Mr. Marentic response was directed to
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`“driving methods,” rather than “driving circuits,” makes no sense. Claims 4, 8 and
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`9—the only claims at issue in this proceeding—recite driving methods, not
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`circuits.
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`As best understood, Patent Owner is arguing that Claim 4, as written, is not
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`enabled, and should therefore be amended as Patent Owner proposes. Patent
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`Owner is wrong. In subsequent testimony that Patent Owner omits, Mr. Marentic
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`explained in extensive detail how a person of ordinary skill in the art would
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`practice the driving method of Claim 4 using the driving circuits shown in the
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`Figures:
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`Q So in order to achieve that driving circuit that I'm asking about, you'd
`have to modify the disclosure of Shen; is that correct? . . .
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`A I would adjust some constants. . . . So within Shen, the application, you
`would need to tune the blur clear converter based on the panel that you’re
`working with. It’s common in the industry. And if I didn't want any blur
`clear converter overdrive, I would set those coefficients so that the input data
`equaled the output data. The G and the G prime would be equal, although
`time-shifted because of the two or three memory banks. ... It would be
`obvious to someone how to do that. I mean, these -- these circuits require
`some tuning. That’s just part of implementing the circuit.
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`(Ex. 2007, 120:19-122:13) (emphasis added).
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`616034.2
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`In sum, the testimony in lines 116:2-118:3 of Ex. 2007 is responsive to the
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`question presented and entirely consistent with Mr. Marentic’s written testimony,
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`which Patent Owner concedes is admissible. Patent Owner’s Motion should
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`therefore be denied.
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`Respectfully submitted,
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`AMSTER, ROTHSTEIN & EBENSTEIN
`LLP
`Attorneys for Petitioner
`90 Park Avenue
`New York, NY 10016
`(212) 336-8000
`
`Dated: October 29, 2015
` New York, New York
`
`
`By: /Anthony F. Lo Cicero/
`Anthony F. Lo Cicero
` Registration No.: 29,403
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`616034.2
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certifies that on this
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`29th day of October, 2015, a copy of the foregoing PETITIONER’S OPPOSITION
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`TO PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE was served via e-
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`mail on the counsel of record for the Patent Owner at the following e-mail
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`addresses:
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`Wayne M. Helge (whelge@dbjg.com)
`Donald L. Jackson (djackson@dbjg.com)
`Michael R. Casey (mcasey@dbjg.com)
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`By: /Anthony F. Lo Cicero/
`Dated: October 29, 2015
` New York, New York Anthony F. Lo Cicero
` Registration No.: 29,403
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`616034.2
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`11
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