Filed on behalf of: CoreLogic, Inc.
`By:
`Joseph E. Palys (josephpalys@paulhastings.com)
`
`Naveen Modi (naveenmodi@paulhastings.com)
`
`Daniel Zeilberger (danielzeilberger@paulhastings.com)
`
`Paul Hastings LLP
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`CORELOGIC, INC.
`
`Petitioner
`
`v.
`
`BOUNDARY SOLUTIONS, INC.
`
`Patent Owner
`
`____________________
`
`Case No. IPR2015-00222
`Patent No. 8,065,352
`____________________
`
`PETITIONER’S MOTION TO EXCLUDE
`
`
`By:
`Joseph E. Palys (josephpalys@paulhastings.com)
`
`Naveen Modi (naveenmodi@paulhastings.com)
`
`Daniel Zeilberger (danielzeilberger@paulhastings.com)
`
`Paul Hastings LLP
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`CORELOGIC, INC.
`
`Petitioner
`
`v.
`
`BOUNDARY SOLUTIONS, INC.
`
`Patent Owner
`
`____________________
`
`Case No. IPR2015-00222
`Patent No. 8,065,352
`____________________
`
`PETITIONER’S MOTION TO EXCLUDE
`
`
`
`Case IPR2015-00222 - Patent No. 8,065,352
`
`
`Table of Contents
`
`Precise Relief Requested ................................................................................. 1
`
`Legal Standard ................................................................................................. 1
`
`
`I.
`
`II.
`
`III. Mr. Huxhold’s Redirect Testimony Regarding Claim Interpretations
`Should be Excluded ......................................................................................... 1
`
`IV. Conclusion ....................................................................................................... 3
`
`
`
`
`
`i
`
`
`
`
`
`Board Cases
`
`Case IPR2015-00222 - Patent No. 8,065,352
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Universal Remote Control, Inc. v. Universal Electronics, Inc.,
`IPR2014-01146, Paper 36 (Dec. 10, 2015) ............................................................................1, 2
`
`Federal Regulations
`
`37 C.F.R. § 42.62(a).........................................................................................................................1
`
`37 C.F.R. § 42.64 .............................................................................................................................1
`
`Federal Rule of Evidence 611(c) .................................................................................................1, 3
`
`Other
`
`Office Patent Trial Practice Guide,
`77 Fed. Reg. 48758 ....................................................................................................................1
`
`
`
`
`
`
`
`ii
`
`
`
`Case IPR2015-00222 - Patent No. 8,065,352
`
`
`I.
`
`Precise Relief Requested
`
`Pursuant to 37 C.F.R. § 42.64, Petitioner CoreLogic, Inc. (“Petitioner”)
`
`moves to exclude certain portions of the testimony of Patent Owner’s expert,
`
`William Huxhold. This motion is timely filed in accordance with the Board’s
`
`Scheduling Order (Paper 8) and the parties’ Notice of Stipulation Regarding Due
`
`Date 4 (Paper 33). In particular, Petitioner requests the redirect testimony of Mr.
`
`Huxhold in Exhibit 1034 at 150:6-153:8 be excluded from the record.
`
`II. Legal Standard
`The Federal Rules of Evidence apply to inter partes review proceedings. 37
`
`C.F.R. § 42.62(a), Office Patent Trial Practice Guide, 77 Fed. Reg. 48758. Under
`
`Federal Rule of Evidence 611(c), “[l]eading questions should not be used on direct
`
`examination except as necessary to develop the witness’s testimony.” Fed. R.
`
`Evid. 611(c). A question that suggests to the witness the answer is leading.
`
`Universal Remote Control, Inc. v. Universal Electronics, Inc., IPR2014-01146,
`
`Paper 36 at 6 (Dec. 10, 2015). In addition to the content of a question, the “tone of
`
`voice employed, and the body language or conduct of counsel” may be considered
`
`in determining whether a question is leading. Id. at 7.
`
`III. Mr. Huxhold’s Redirect Testimony Should be Excluded
`During cross-examination, Mr. Huxhold answered without qualification that
`
`“the jurisdictional identifier that’s recited in the claims of the patents is limited to a
`
`county FIPS number.” (Ex. 1034 at 72:5-13.) He also acknowledged that this is
`
`1
`
`
`
`Case IPR2015-00222 - Patent No. 8,065,352
`
`
`the understanding he “applied in [his] analysis to support [his] opinions in [his]
`
`declarations for these matters” because “[t]hat’s what makes the patents unique is
`
`the use of the FIPS number for managing the data.” (Id. at 72:14-22.)
`
`During redirect, counsel for Patent Owner asked questions relating to Mr.
`
`Huxhold’s testimony above. (Id. at 150:6-153:8.) The questions were phrased to
`
`elicit either a “yes” or “no” answer, and contained contextual cues sufficient to
`
`suggest the answer that counsel desired to elicit. (Id.) In fact, Mr. Huxhold either
`
`responded with a “yes” or parroted the question in his answers. (Id. at 152:17,
`
`152:152:7-19.) In one instance, Patent Owner’s counsel elicited Mr. Huxhold’s
`
`testimony through voice inflection to emphasize the desired response. (Id. at
`
`152:7-19.)
`
`This testimony should be excluded because it was in response to leading
`
`questions presented by Patent Owner’s counsel in an attempt to hide Mr.
`
`Huxhold’s acknowledgements that undermine his and Patent Owner’s reasons for
`
`distinguishing the challenged claims from the prior art at issue in this proceeding.
`
`Indeed, similar to the testimony at issue in Universal Remote Control, the overall
`
`context of the questions shows that Patent Owner’s counsel was leading Mr.
`
`Huxhold and the Board should exclude this testimony. Universal Remote Control,
`
`Paper 36 at 7. In Universal, the Board excluded similar testimony despite not
`
`having an “opportunity to observe any non-verbal cues such as tone of voice.” Id.
`
`2
`
`
`
`Case IPR2015-00222 - Patent No. 8,065,352
`
`
`But here, the testimony shows that Patent Owner’s counsel used such cues to elicit
`
`desired testimony from Mr. Huxhold. (Ex. 1034 at 152:7-19 (showing how Mr.
`
`Huxhold inferred from counsel’s question and voice inflection what counsel
`
`wanted him to say (“Oh, the claims?”).)1
`
`Although Patent Owner has not yet relied on this testimony, Petitioner
`
`expects Patent Owner to rely on this testimony at the hearing. But as explained
`
`above, this testimony should be excluded as it was elicited using improper leading
`
`questions. Fed. R. Evid. 611(c).
`
`IV. Conclusion
`For the reasons set forth above, the Board should exclude Mr. Huxhold’s
`
`redirect testimony in Ex. 1034 at 150:14-153:8.
`
`
`
`
`1 Mr. Huxhold’s redirect testimony is further suspect when considered in context of
`
`his conduct during cross-examination, where he spoke with counsel about the
`
`substance of his testimony despite being aware that such conduct was forbidden,
`
`and referred to counsel’s laptop and the real time feed of his testimony during
`
`examination. (Ex. 1034 at 46:1-47:13, 73:12-20, 78:22-79:2.)
`
`3
`
`
`
`Dated: January 14, 2016
`
`Case IPR2015-00222 - Patent No. 8,065,352
`
`
`Respectfully submitted,
`
`By: /Joseph E. Palys/
`Joseph E. Palys
`Reg. No. 46,508
`Counsel for Petitioner
`
`
`
`4
`
`
`
`CERTIFICATE OF SERVICE
`
`Case IPR2015-00222
`Patent No. 8,065,352
`
`
`I hereby certify that on this 14th day of January, 2016, a copy of the
`
`foregoing Petitioner’s Motion to Exclude was served electronically, pursuant to
`
`agreement, upon the following:
`
`
`
`Lawrence Edelman
`The Law Office of Lawrence Edelman
`130 San Aleso Avenue
`San Francisco, CA 94127
`lawrence.edelman@comcast.net
`
`Bruce J. Wecker
`Hausfeld LLP
`600 Montgomery, Suite 3200
`San Francisco, CA 94111
`bwecker@hausfeld.com
`
`
`
`
`Respectfully submitted,
`
`By: /Joseph E. Palys/
`Joseph E. Palys.
`Reg. No. 46,508
`
`Counsel for Petitioner
`
`
`Dated: January 14, 2016
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