UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`
`
`APPLE INC.
`Petitioner
`
`v.
`
`DSS TECHNOLOGY MANAGEMENT, INC.
`Patent Owner
`
`_____________________
`
`Case IPR2015-00373
`Patent 6,128,290
`_____________________
`
`
`
`
`PETITIONER APPLE INC.’S MOTION TO EXCLUDE
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`

`
`Case IPR2015-00373 of
`U.S. Patent No. 6,128,290
`
`TABLE OF CONTENTS
`
`
`I.  Relief Requested .................................................................................................. 2 
`II.  The Board should exclude Exhibit 2003. ............................................................. 1 
`A.  Exhibit 2003 is hearsay. .................................................................................... 1 
`B.  Exhibit 2003 is irrelevant. ................................................................................ 2 
`III.  The Board should exclude Exhibits 2004–2008. ................................................. 3 
`A.  Exhibits 2004–2008 are hearsay. ...................................................................... 4 
`B.  Exhibits 2004–2008 are irrelevant. ................................................................... 4 
`IV.  The Board should exclude Exhibit 2011. ............................................................. 4 
`V.  The Board should exclude Exhibit 2012. ............................................................. 5 
`A.  Exhibit 2012 is hearsay. .................................................................................... 5 
`B.  Exhibit 2012 is irrelevant. ................................................................................ 6 
`VI.  The Board should exclude Exhibit 2013. ............................................................. 6 
`A.  Exhibit 2013 is hearsay. .................................................................................... 7 
`B.  Exhibit 2013 is irrelevant. ................................................................................ 7 
`VII. The Board should exclude Exhibit 2014. ............................................................. 8 
`A.  Exhibit 2014 is hearsay. .................................................................................... 8 
`B.  Exhibit 2014 is irrelevant. ................................................................................ 8 
`VIII. The Board should exclude Exhibit 2017. ........................................................... 9 
`A.  Exhibit 2017 is hearsay. .................................................................................. 10 
`B.  Exhibit 2017 is irrelevant. .............................................................................. 10 
`IX.  Conclusion ......................................................................................................... 11 
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e)) .............................................. 12
`
`
`
`
`
`
`
`
`- i -
`
`

`
`Case IPR2015-00373 of
`U.S. Patent No. 6,128,290
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Amazon.com Inc. v. AC Technologies S.A., IPR2015-01801, Paper No. 9, (P.T.A.B.,
`Jan. 22 2016) ............................................................................................................ 3
`
`
`Google Inc. v. Intellectual Ventures II LLC, IPR2014-01031, Paper No. 41
`(P.T.A.B. Dec. 7, 2015) ........................................................................................... 3
`
`
`In re Farrenkopf,
`713 F.2d 714 (Fed. Cir. 1983) ................................................................................. 2
`
`
`SK Innovation Co., Ltd. v. Celgard, LLC, IPR2014-00679, Paper 58 (P.T.A.B. Sept.
`25, 2015) ...................................................................................................... 3, 6, 8, 9
`
`
`Stewart-Warner Corp. v. City of Pontiac,
`767 F.2d 1563 (Fed. Cir. 1985) ..................................................................... passim
`
`
`Rules
`
`Fed. R. Evid. 401 .............................................................................................. passim
`
`Fed. R. Evid. 801 .............................................................................................. passim
`
`
`
`
`
`
`
`
`- ii -
`
`

`
`Case IPR2015-00373 of
`U.S. Patent No. 6,128,290
`
`
`I.
`
`Relief Requested
`
`Petitioner Apple Inc. (“Apple”) asks the Board to exclude from the record
`
`inadmissible exhibits submitted by Patent Owner DSS Technology Management,
`
`Inc. (“DSS”). More specifically, the Board should exclude Exhibits 2003–2008,
`
`2011–2014, and 2017. It is not enough for the Board to find that this Motion is
`
`moot if the Board does not rely on the inadmissible exhibits in reaching its Final
`
`Written Decision. If the exhibits remain in the record, DSS could continue to rely
`
`on them on appeal to the Federal Circuit, and Apple would be unfairly forced to
`
`face them again.
`
`II. The Board should exclude Exhibit 2003.
`Mr. Dezmelyk quotes Exhibit 2003, suggesting that a “low duty cycle” is
`
`“usually between 0.1% and 10%, depending on the band and the intended usage.”
`
`(DSS 2016, Dezmelyk Decl. ¶ 18.) Apple timely objected to Exhibit 2003 as
`
`inadmissible hearsay without any applicable exception (FRE 801) and irrelevant
`
`(FRE 401). (Paper 16, p. 2.) The Board should exclude Exhibit 2003 for at least
`
`these reasons.
`
`A. Exhibit 2003 is hearsay.
`Hearsay is an out-of-court statement offered to prove the truth of the matter
`
`asserted. FRE 801. The statement in the Dormer article quoted by Mr. Dezmelyk
`
`
`
`- 1 -
`
`

`
`Case IPR2015-00373 of
`U.S. Patent No. 6,128,290
`was made outside of this proceeding and is an out-of-court statement. Yet Mr.
`
`Dezmelyk asserts the quotation from the Dormer article for its truth—that a “low
`
`duty cycle” is “usually between 0.1% and 10%, depending on the band and the
`
`intended usage.” This is classic hearsay and no exception applies to this article.
`
`Therefore, the Board should exclude Exhibit 2003.
`
`B. Exhibit 2003 is irrelevant.
`Evidence is relevant and admissible only if (1) it has any tendency to make a
`
`fact more or less probable than it would be without the evidence, and (2) the fact is
`
`of consequence in determining the action. FRE 401. Because Exhibit 2003 is not
`
`relevant, it is inadmissible.
`
`First, the ’290 patent was filed on October 14, 1997. So even assuming
`
`arguendo that the Dormer article was published in 2008 based on the listed
`
`copyright date—which Apple does not concede—Dormer was published eleven
`
`years after the ’290 patent’s filing date. In the rapidly changing wireless
`
`communication field, it is inappropriate to assume that the quotation from Exhibit
`
`2003 would have been applicable eleven years earlier. Exhibit 2003 is not remotely
`
`contemporaneous with the ’290 patent and, as such, is not relevant for defining
`
`“low duty cycle.” See Stewart-Warner Corp. v. City of Pontiac, 767 F.2d 1563,
`
`1570 (Fed. Cir. 1985) (citing In re Farrenkopf, 713 F.2d 714, 720 (Fed. Cir. 1983))
`
`(recognizing that development by others may be pertinent, but noting that “the
`
`
`
`- 2 -
`
`

`
`Case IPR2015-00373 of
`U.S. Patent No. 6,128,290
`evidence presented was of activities occurring well after the filing date” and “was
`
`not shown to apply to the time the invention was made, as required by 35 U.S.C. §
`
`103.”). Cf. Amazon.com Inc. v. AC Technologies S.A., IPR2015-01801, Paper No.
`
`9, pp. 2-3 (P.T.A.B., Jan. 22, 2016) (denying authorization to submit exhibits
`
`showing public accessibility as of 2001 instead of 1999 in part due to the marginal
`
`relevance of such exhibits). But see Google Inc. v. Intellectual Ventures II LLC,
`
`IPR2014-01031, Paper No. 41, p. 10 (P.T.A.B. Dec. 7, 2015) (accounting for
`
`temporal concern in weight given to evidence rather than exclusion).
`
`Second, DSS does not cite Exhibit 2003 in its Patent Owner Response.
`
`Therefore, DSS does not rely on this exhibit or identify with any particularity how
`
`this exhibit is relevant to this proceeding. Accordingly, the Board should exclude
`
`Exhibit 2003. SK Innovation Co., Ltd. v. Celgard, LLC, IPR2014-00679, Paper 58,
`
`p. 49 (P.T.A.B. Sept. 25, 2015) (“Because Patent Owner did not cite Exhibits 2013
`
`and 2016 in this proceeding, we grant Petitioner’s Motion to Exclude Exhibits 2013
`
`and 2016.”)
`
`III. The Board should exclude Exhibits 2004–2008.
`DSS relies on Exhibits 2004–2008, alleging that “a POSITA would have
`
`understood that a server transmitter is energized in a low duty cycle when the server
`
`transmitter is energized for less than ten percent (10%) of the total duration
`
`designated for outbound transmissions.” (Paper 15, pp. 11-13; see also Dezmelyk
`
`
`
`- 3 -
`
`

`
`Case IPR2015-00373 of
`U.S. Patent No. 6,128,290
`Decl. ¶¶ 24-25.) Apple timely objected to Exhibits 2004–2008 as inadmissible
`
`hearsay without any applicable exception (FRE 801) and irrelevant (FRE 401).
`
`(Paper 16, p. 3.) The Board should exclude Exhibits 2004–2008 for at least these
`
`reasons.
`
`A. Exhibits 2004–2008 are hearsay.
`DSS asserts quotations from Exhibits 2004–2008 in Table 1 for the truth of
`
`the matter therein, proffering them as “evidence of how a POSITA would interpret
`
`the terms [sic] ‘low duty cycle.’” (Paper 15, p. 13.) But these statements,
`
`attributable to the inventors of the respective patents, were made outside of this
`
`proceeding. Thus, they are hearsay. No exception is applicable. Accordingly, the
`
`Board should exclude Exhibits 2004–2008.
`
`B. Exhibits 2004–2008 are irrelevant.
`Exhibits 2004–2008 were published on the following dates: Exhibit 2004 on
`
`July 7, 2009; Exhibit 2005 on August 15, 2006; Exhibit 2006 on May 23, 2006;
`
`Exhibit 2007 on September 16, 2014; and Exhibit 2008 on May 20, 2014. None of
`
`these Exhibits even have a priority date in the 1990s. Thus, Exhibits 2004–2008 are
`
`not remotely contemporaneous with the ’290 patent to be relevant for defining “low
`
`duty cycle.” See Stewart-Warner Corp., 767 F.2d at 1570. Accordingly, the Board
`
`should exclude Exhibits 2004–2008.
`
`IV. The Board should exclude Exhibit 2011.
`
`
`
`- 4 -
`
`

`
`Case IPR2015-00373 of
`U.S. Patent No. 6,128,290
`DSS quotes Exhibit 2011, alleging that it provides “a brief explanation of the
`
`idle word transmissions and the advantages they provide.” (Paper 15, p. 3; see also
`
`Dezmelyk Decl. ¶¶ 28, 43.) Apple timely objected to Exhibit 2011 as inadmissible
`
`hearsay without any applicable exception (FRE 801). (Paper 16, p. 4.) The Board
`
`should exclude Exhibit 2011 for at least this reason.
`
`DSS asserts the quotation from Exhibit 2011 for the truth of the matter
`
`therein. But the quotation is attributable to the inventors of the patent and thus
`
`made outside of this proceeding. Therefore, it is hearsay. No exception is
`
`applicable. Accordingly, the Board should exclude Exhibit 2011.
`
`V. The Board should exclude Exhibit 2012.
`Mr. Dezmelyk quotes Exhibit 2012, asserting that “HDLC (High-Level Data
`
`Link Control) is an example of a serial data communication system which transmits
`
`data in delimited frames or packets.” (Dezmelyk Decl. ¶ 35 (quoting Exhibit 2013
`
`at 1:26-28).) Apple timely objected to Exhibit 2012 as inadmissible hearsay without
`
`any applicable exception (FRE 801) and irrelevant (FRE 401). (Paper 16, p. 3.) The
`
`Board should exclude Exhibit 2012 for at least these reasons.
`
`A. Exhibit 2012 is hearsay.
`Mr. Dezmelyk quotes Exhibit 2012 for the truth of the matter therein, as
`
`evidence for what was allegedly known about HDLC at the time in question.
`
`(Dezmelyk Decl. ¶ 35.) But this statement, attributable to the inventors of the
`
`
`
`- 5 -
`
`

`
`Case IPR2015-00373 of
`U.S. Patent No. 6,128,290
`patent, was made outside of this proceeding, Therefore, it is hearsay. No exception
`
`is applicable. Thus, the Board should exclude Exhibit 2012.
`
`B. Exhibit 2012 is irrelevant.
`Exhibit 2012 was published on January 3, 2006 and its filing date is only
`
`September 5, 2001. Thus, Exhibit 2012 is not sufficiently contemporaneous with
`
`the ’290 patent—or the Natarajan patent, which discloses using an HDLC protocol,
`
`for that matter—to be relevant for explaining HDLC. See Stewart-Warner Corp.,
`
`767 F.2d at 1570. Accordingly, the Board should exclude Exhibit 2012.
`
`Moreover, DSS does not cite Exhibit 2012 in its Patent Owner Response.
`
`Therefore, DSS does not rely on this exhibit or identify with any particularity how
`
`this exhibit is relevant to this proceeding. Accordingly, the Board should exclude
`
`Exhibit 2012. SK Innovation Co., Ltd. v. Celgard, LLC, IPR2014-00679, Paper 58,
`
`p. 49 (P.T.A.B. Sept. 25, 2015) (“Because Patent Owner did not cite Exhibits 2013
`
`and 2016 in this proceeding, we grant Petitioner’s Motion to Exclude Exhibits 2013
`
`and 2016.”)
`
`VI. The Board should exclude Exhibit 2013.
`Mr. Dezmelyk quotes Exhibit 2013, which states that “[i]n synchronous
`
`transmission, groups of bits are combined into frames and frames are sent
`
`continuously with or without data to be transmitted.” (Dezmelyk Decl. ¶¶ 35, 43
`
`(quoting DSS 2013, p. 2).) Apple timely objected to Exhibit 2013 as inadmissible
`
`
`
`- 6 -
`
`

`
`Case IPR2015-00373 of
`U.S. Patent No. 6,128,290
`hearsay without any applicable exception (FRE 801) and irrelevant (FRE 401).
`
`(Paper 16, p. 4.) The Board should exclude Exhibit 2013 for at least these reasons.
`
`A. Exhibit 2013 is hearsay.
`The statement in the Yurcik article, quoted by Mr. Dezmelyk, was made
`
`outside of this proceeding and is an out-of-court statement. Yet Mr. Dezmelyk
`
`asserts the quotation from the Dormer article for its truth about synchronous
`
`transmission. This is classic hearsay and no exception applies to this article.
`
`Therefore, the Board should exclude Exhibit 2013.
`
`B. Exhibit 2013 is irrelevant.
`The ’290 patent was filed on October 14, 1997. So even assuming arguendo
`
`that the Yurcik article was published in 2002, according to the copyright date listed
`
`on the article, then the Yurcik article was published five years after the ’290
`
`patent’s filing date. In the rapidly changing wireless communication field, it is
`
`inappropriate to assume that the quotation from Exhibit 2013 would have been
`
`applicable five years prior. Thus, Exhibit 2013 is not sufficiently contemporaneous
`
`with the ’290 patent to be relevant. See Stewart-Warner Corp., 767 F.2d at 1570.
`
`Moreover, DSS does not cite Exhibit 2013 in its Patent Owner Response.
`
`Therefore, DSS does not rely on this exhibit or identify with any particularity how
`
`this exhibit is relevant to this proceeding. Accordingly, the Board should exclude
`
`Exhibit 2013. SK Innovation Co., Ltd. v. Celgard, LLC, IPR2014-00679, Paper 58,
`
`
`
`- 7 -
`
`

`
`Case IPR2015-00373 of
`U.S. Patent No. 6,128,290
`p. 49 (P.T.A.B. Sept. 25, 2015) (“Because Patent Owner did not cite Exhibits 2013
`
`and 2016 in this proceeding, we grant Petitioner’s Motion to Exclude Exhibits 2013
`
`and 2016.”)
`
`VII. The Board should exclude Exhibit 2014.
`Mr. Dezmelyk provides a quote from Section 2.5.6 of Exhibit 2014, which
`
`states that an “[a]synchronous HDLC controller will transmit IDLE characters
`
`(characters consisting of only “1”s) when no data is available for transmission.”
`
`(Dezmelyk Decl. ¶ 35.) Apple timely objected to Exhibit 2014 as inadmissible
`
`hearsay without any applicable exception (FRE 801) and irrelevant (FRE 401).
`
`(Paper 16, pp. 4-5.) The Board should exclude Exhibit 2014 for at least these
`
`reasons.
`
`A. Exhibit 2014 is hearsay.
`The statement in Exhibit 2014, quoted by Mr. Dezmelyk, was made outside
`
`of this proceeding by an unknown author and is an out-of-court statement. Yet Mr.
`
`Dezmelyk asserts the quotation from Exhibit 2014 for its truth about HDLC. This is
`
`classic hearsay and no exception applies to Exhibit 2014, so the Board should
`
`exclude Exhibit 2014.
`
`B. Exhibit 2014 is irrelevant.
`DSS does not establish a publication date for Exhibit 2014. Therefore, DSS
`
`fails to establish its relevance because DSS cannot show that Exhibit 2014 is
`
`
`
`- 8 -
`
`

`
`Case IPR2015-00373 of
`U.S. Patent No. 6,128,290
`sufficiently contemporaneous with the ’290 patent to be relevant. See Stewart-
`
`Warner Corp., 767 F.2d at 1570. And to the extent that DSS relies on the
`
`September 24, 1996 date on the face of Exhibit 2014 as a publication date, that date
`
`is hearsay under FRE 801 and thus inadmissible.
`
`Moreover, DSS does not cite Exhibit 2014 in its Patent Owner Response.
`
`Therefore, DSS does not rely on this exhibit or identify with any particularity how
`
`this exhibit is relevant to this proceeding. Accordingly, the Board should exclude
`
`Exhibit 2014. SK Innovation Co., Ltd. v. Celgard, LLC, IPR2014-00679, Paper 58,
`
`p. 49 (P.T.A.B. Sept. 25, 2015) (“Because Patent Owner did not cite Exhibits 2013
`
`and 2016 in this proceeding, we grant Petitioner’s Motion to Exclude Exhibits 2013
`
`and 2016.”)
`
`VIII. The Board should exclude Exhibit 2017.
`DSS relies on Exhibit 2017, providing a quote alleging that “the easiest
`
`approach to implement bursty traffic would be to have the AIF transmitter
`
`continuously send dummy data, and insert useful data when there is actually
`
`something to send.” (Paper 15, p. 24 (quoting DSS 2017, p. 1) (emphasis in Paper
`
`15).) Apple timely objected to Exhibit 2017 as inadmissible hearsay without any
`
`applicable exception (FRE 801) and irrelevant (FRE 401). (Paper 16, p. 5.) The
`
`Board should exclude Exhibit 2017 for at least these reasons.
`
`
`
`- 9 -
`
`

`
`Case IPR2015-00373 of
`U.S. Patent No. 6,128,290
`
`A. Exhibit 2017 is hearsay.
`The statement in Exhibit 2017, quoted by DSS, was made outside of this
`
`proceeding by its author and is an out-of-court statement. Yet DSS asserts the
`
`quotation from Exhibit 2017 for its truth about bursty traffic. This is classic hearsay
`
`and no exception applies to Exhibit 2017, so the Board should exclude Exhibit
`
`2017.
`
`B. Exhibit 2017 is irrelevant.
`Exhibit 2017 is undated, so its relevance also cannot be established because
`
`DSS cannot show that Exhibit 2014 is sufficiently contemporaneous with the ’290
`
`patent to be relevant. See Stewart-Warner Corp., 767 F.2d at 1570. Accordingly,
`
`the Board should exclude Exhibit 2017.
`
`
`
`
`
`
`
`- 10 -
`
`

`
`Case IPR2015-00373 of
`U.S. Patent No. 6,128,290
`
`IX. Conclusion
`For the foregoing reasons, the Board should exclude DSS’s Exhibits 2003–
`
`2008, 2011–2014, and 2017.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Date: February 22, 2016
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`
`Respectfully submitted,
` STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Mark W. Rygiel/
`
`
`
`
`
`
`
`
`Mark W. Rygiel
`Registration No. 45,871
`Attorney for Petitioner Apple Inc.
`
`
`
`
`
`- 11 -
`
`

`
`Case IPR2015-00373 of
`U.S. Patent No. 6,128,290
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
`The undersigned hereby certifies that the above-captioned PETITIONER’S
`
`MOTION TO EXCLUDE was served in its entirety on February 22, 2016, via e-
`
`mail upon the following counsel of record for the patent owner:
`
`Andriy Lytvyn (Lead Counsel)
`Anton J. Hopen (Back-up Counsel)
`Nicholas Pfeifer (Back-up Counsel)
`SMITH & HOPEN, P.A.
`180 Pine Avenue North
`Oldsmar, FL 34677
`andriy.lytvyn@smithhopen.com
`anton.hopen@smithhopen.com
`nicholas.pfeifer@smithhopen.com
`
` STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`
`
`/Mark W. Rygiel/
`
`
`
`
`
`Mark W. Rygiel
`Registration No. 45,871
`Attorney for Petitioner Apple Inc.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Date: February 22, 2016
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`2773582_1.DOCX