UNITED STATES PATENT AND TRADEMARK OFFICE
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`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_______________
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`SHARP CORPORATION, SHARP ELECTRONICS CORPORATION, and
`SHARP ELECTRONICS MANUFACTURING
`COMPANY OF AMERICA, INC.,
`Petitioners
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`v.
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`SURPASS TECH INNOVATION LLC
`Patent Owner
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`_______________
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`Case IPR2015-00021
`Patent 7,202,843
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`_______________
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`
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`PATENT OWNER SURPASS TECH INNOVATION LLC’S
`REPLY IN SUPPORT OF THE MOTION TO EXCLUDE
`PETITIONERS’ EVIDENCE PURSUANT TO 37 C.F.R. § 42.64(c)
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`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`_______________
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`
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`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
`REPLY IN SUPPORT OF THE MOTION TO EXCLUDE
`PETITIONERS’ EVIDENCE PURSUANT TO 37 C.F.R. § 42.64(c)
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`Patent Owner Surpass Tech Innovation LLC’s Motion to exclude portions of
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`Petitioners’ reply evidence was directed to whether Petitioner’s evidence is
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`admissible, not to the weight to be given to the evidence, contrary to Petitioners’
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`Opposition (Paper 35). Concerning this question of admissibility, Petitioners’
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`Opposition fails to identify valid reasons why the disputed portions of Mr.
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`Marentic’s Rebuttal Declaration and deposition testimony should not be excluded.
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`Exhibit 1010 – ¶¶ 42-43 of the Rebuttal Declaration of Michael J. Marentic
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`Patent Owner sought to exclude ¶¶ 42-43 of Ex. 1010, Mr. Marentic’s
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`testimony on the “Level of Skill in the Art,” under Fed. R. Evid. 702. Mr.
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`Marentic’s standard differs from the standard set forth in the Petition without
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`explanation. Petitioners oppose Patent Owner’s motion to exclude, arguing that
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`Mr. Marentic’s testimony in ¶¶ 42-43 is based on the witness’s experience rather
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`than data and therefore is “proper and reliable under F.R.E. 702.” Paper 35 at 2.
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`To the contrary, Mr. Marentic’s testimony is neither consistent nor reliable.
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`In Marentic’s Reply Declaration, he testified that “I do not agree that a person with
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`a degree in mathematics or computer science would have the requisite education to
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`design LCD drive electronics.” Ex. 1010, ¶ 43. And yet, when asked about Patent
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`Owner’s Expert Declarant, William Bohannon, who possesses an undergraduate
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`degree in mathematics (see Ex. 2005 at 27), Mr. Marentic testified during
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`deposition that he “believe[s] Mr. Bohannon is an expert in LCD drive.” Ex. 2007
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`1
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`at 33:21-22. Mr. Marentic’s deposition testimony is in direct conflict with his
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`declaration, thus leaving the Board with no consistent and reliable testimony from
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`Mr. Marentic on the proper standard of a person having ordinary skill in the art in
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`this case. Fed. R. Evid. 702 mandates exclusion of such inconsistent and unreliable
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`evidence, and renders irrelevant the question of whether inconsistent and unreliable
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`testimony should be given any weight. In other words, while inconsistent and
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`unreliable testimony should be given no weight, the weight of the evidence should
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`not immunize the evidence from the threshold question of admissibility.
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`Petitioners also assert that “Patent Owner does not explain how any of the
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`proposed levels of skill in the art materially affect the anticipation or ‘claim
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`construction’ analyses in this case.” Paper 35 at 2-3. But Petitioners themselves
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`seek to exclude Mr. Bohannon’s testimony on claim construction pursuant to
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`F.R.E. 701, 702, and 703. Id. at 4-6. They do so despite Mr. Marentic’s express
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`testimony that Mr. Bohannon is an expert in the relevant art of LCD driving.
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`Further, Mr. Marentic’s unclear POSITA standard taints all of his testimony
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`in which he applies that standard. For example, Mr. Marentic’s rebuttal declaration
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`argues that “[a]ll of the terms of Claims 4, 8 and 9 of the ‘843 Patent are readily
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`understood by a person of ordinary skill in the art.” Ex. 1010, ¶ 46. But the
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`POSITA standard that Mr. Marentic is applying is either wrong (given his
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`admission about Mr. Bohannon’s qualifications) or undisclosed. If the lynchpin
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`2
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`
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`standard upon which claim construction hinges is unreliable, his opinions based
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`upon that standard are equally unclear, unreliable, and fail to satisfy F.R.E. 702.
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`Thus, Mr. Marentic’s testimony on the “Level of Skill in the Art” fails to
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`satisfy Fed. R. Evid. 702 and should be excluded. Further, the portions of
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`Petitioners’ Reply that apply that standard of “ordinary skill in the art” (see Reply
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`at 6:8 and 14:11-13) should also be excluded.
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`Exhibit 1010 – ¶¶ 92-93 of the Rebuttal Declaration of Michael J. Marentic
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`Patent Owner also sought to exclude ¶¶ 92-93 of Ex. 1010, directed to Mr.
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`Marentic’s reliance on Exs. 1012, 1013, and 1014 for the accuracy of the
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`disclosures contained therein. Petitioners argue that the “content of these Exhibits
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`is not offered ‘to prove the truth of the matter asserted, but rather to show their
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`effect on a person of ordinary skill in the art.’” Paper 35 at 6. This is incorrect. In
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`this instance, Mr. Marentic is not relying on these Exhibits “for their effect on one
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`of ordinary skill in the art” but rather to confirm his own interpretation of the terms
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`in dispute in the ‘843 patent. As Petitioners themselves quoted in their Opposition,
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`Mr. Marentic states that “[t]here are three patents that use the term similar to how I
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`understand it.” Paper 35 at 5 (quoting Ex. 2007, 77:8-12) (emphasis added).
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`Moreover, as noted in Patent Owner’s Motion, Mr. Marentic confirmed during his
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`deposition that he has no knowledge about who drafted those exhibits, much less
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`the technical background of the drafter(s). Id. at 66:8-69:13; 78:1-81:9; 83:12-86:4.
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`3
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`And while the Petitioners ask the Board to “exercise [its] discretion to assign
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`appropriate weight to the evidence,” Paper 35 at 7 (citation omitted), this is an
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`improper argument when the issue is inadmissibility. Inadmissible evidence should
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`not be admitted, even where the proper weight given to these Exhibits on the
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`proper construction of the ‘843 patent terms should be negligible. Accordingly,
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`the Board should exclude this unreliable hearsay.
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`Exhibit 2007 – 116:12 to 118:3 of Deposition of Michael J. Marentic
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`Patent Owner sought to exclude page 116, line 12 to page 118, line 3 of Mr.
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`Marentic’s deposition testimony submitted as Ex. 2007, as non-responsive to the
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`question asked. Mr. Marentic was asked “Are you aware of any driving circuit in
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`the ‘843 patent that does not output two overdriven pixel data per frame?” Ex.
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`2007 at 116:12-14 (emphasis added). Mr. Marentic responded by identifying
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`disclosures directed to driving methods without identifying any driving circuits.
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`Id. at 116:117-118:3. This testimony, regardless of whether it was consistent with
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`Petitioners’ theory of the case (see Paper 35 at 8-10) (opposing Patent Owner’s
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`Motion to exclude based on weight rather than admissibility), was non-responsive
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`to the question, was timely objected to, and therefore is properly subject to a
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`motion to exclude. 37 C.F.R. § 42.53(f)(8).
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`The non-responsive nature of Mr. Marentic’s answer was subject to cross-
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`examination by Patent Owner’s counsel (Ex. 2007 at 118:15-120:17), after which
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`4
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`Mr. Marentic acknowledged (in testimony that Patent Owner has not moved to
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`exclude) that he would need to modify the driving circuit disclosed in the ‘843
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`patent to achieve a driving circuit responsive to the deposition question. Ex. 2007
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`at 120:19-122:13; see also Paper 35 at 9. Petitioners did not attempt to rehabilitate
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`Mr. Marentic’s non-responsive answer during re-direct examination. The non-
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`responsive testimony should be should be excluded.
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`For the reasons set forth in Patent Owner’s motion to exclude, the evidence
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`identified should be declared in admissible and excluded from the trial in this
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`matter.
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`Dated: November 12, 2015
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`Respectfully submitted,
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`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
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`5
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`CERTIFICATE OF SERVICE
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`I hereby certify that on November 12, 2015, a true and correct copy of the
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`foregoing REPLY IN SUPPORT OF MOTION TO EXCLUDE PETITIONERS’
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`EVIDENCE is being served via email by consent to the Petitioners at the
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`correspondence addresses of record as follows:
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`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
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`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
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`
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`6
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