UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`APPLE, INC.,
`Petitioners,
`
`v.
`
`DSS TECHNOLOGY MANAGEMENT, INC.,
`Patent Owner.
`
`____________
`
`Case: IPR2015-00373
`U.S. Patent No. 6,128,290
`
`____________
`
`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION TO
`EXCLUDE EVIDENCE
`
`
`
`
`
`
`
`
`
`
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`APPLE, INC.,
`Petitioners,
`
`v.
`
`DSS TECHNOLOGY MANAGEMENT, INC.,
`Patent Owner.
`
`____________
`
`Case: IPR2015-00373
`U.S. Patent No. 6,128,290
`
`____________
`
`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION TO
`EXCLUDE EVIDENCE
`
`
`
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`TABLE OF CONTENTS
`
`I. Exhibits 2003-2008, 2011-2014, and 2017 Should Not Be Excluded As
`I. Exhibits 2003-2008, 2011-2014, and 2017 Should Not Be Excluded As
`Hearsay .................................................................................................................. 1
`Hearsay ................................................................................................................ .. 1
`
`
`A. Exhibits 2003-2008, 2011-2014 and 2017 Are Not Hearsay................ 1
`A.
`Exhibits 2003-2008, 2011-2014 and 2017 Are Not Hearsay .............. .. 1
`
`B. Exhibits 2003-2008, 2011-2014 Are Admissible Under FRE 703 ....... 3
`B.
`Exhibits 2003-2008, 2011-2014 Are Admissible Under FRE 703 ..... .. 3
`
`II. Exhibits 2003-2008, 2012-2014, and 2017 Are Relevant .............................. 4
`II.
`Exhibits 2003-2008, 2012-2014, and 2017 Are Relevant ............................ .. 4
`
`III. PETITIONER MISCHARACTERIZES THE LAW ..................................... 6
`III.
`PETITIONER MISCHARACTERIZES THE LAW ................................... .. 6
`
`1.
`1.
`
`Stewart-Warner Corp. v. City of Pontiac ............................................. 6
`Stewart-Warner Corp. V. City of Pontiac ........................................... .. 6
`
`2.
`2.
`
`Amazon.com Inc. v. AC Technologies S.A. .......................................... 8
`Amazon.com Inc. V. AC Technologies S.A ........................................ .. 8
`
`3.
`3.
`
`SK Innovation Co., Ltd. v. Celgard, LLC............................................. 9
`SK Innovation Co., Ltd. V. Celgard, LLC ........................................... .. 9
`
`IV. CONCLUSION ...........................................................................................11
`IV. CONCLUSION ......................................................................................... .. 11
`
`
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`i
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` TABLE OF AUTHORITIES
`
`
`
`Cases
`
`Amazon.com Inc. v. AC Technologies S.A.,
` IPR2015-01801, Paper No. 9, pp. 2-3 (P.T.A.B., Jan. 22, 2016) ......................... 8
`
`Donnelly Garment Co. v. NLRB,
` 123 F.2d 215, 224 (8th Cir. 1941) ....................................................................... 5
`
`Google Inc. v. Intellectual Ventures II LLC,
` IPR2014-01031, Paper No. 41, p. 10 (P.T.A.B. Dec. 7, 2015) ............................ 5
`
`Laird Technologies, Inc. v. GrafTech International Holdings, Inc.,
` IPR2014-00025, Final Decision at pg. 44 (P.T.A.B. March 25, 2015) ................ 4
`
`Ltd. v. Celgard, SK Innovation Co., Ltd. v. Celgard, LLC,
` IPR2014-00679, Paper 58, p. 49 (P.T.A.B. Sept. 25, 2015) ................................ 3
`
`OddzOn Products, Inc. v. Just Toys, Inc.,
` 122 F. 3d 1396, 1407 (Fed. Cir. 1997) ................................................................ 4
`
`SK Innovation Co., Ltd. v. Celgard, LLC,
` IPR2014-00679, Paper 58, p. 49 (P.T.A.B. Sept. 25, 2015) ...............................10
`
`Stewart-Warner Corp. v. City of Pontiac,
` 767 F.2d 1563, 1570 (Fed. Cir. 1985) ...................................................... 2, 7, 8, 9
`
`
`
`Federal Rules
`
`Fed. R. Evid. 401 ........................................................................................... passim
`
`Fed. R. Evid. 703 .......................................................................................... 3, 4, 10
`
`Fed. R. Evid. 801 ............................................................................................ 1, 2, 3
`
`ii
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`IPR2015-00373
`U.S. Pat. No. 6,128,290
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`
`Pursuant to 37 C.F.R. § 42.23, Patent Owner DSS Technology Management,
`
`Inc. (“Patent Owner”) hereby opposes Petitioner Apple, Inc.’s (“Petitioner”)
`
`Motion to Exclude Evidence.
`
`
`
`Petitioner filed a Motion to Exclude on the following grounds:
`
`I.
`
`Exhibits 2003-2008, 2012-2014, and 2017:
`
`(1) Hearsay under Federal Rules of Evidence (“FRE”) 801;
`
`(2) Irrelevance under FRE 401;
`
`II.
`
`Exhibit 2011:
`
`(1) Hearsay under FRE 801.
`
`The Board should deny Petitioner’s Motion to Exclude in its entirety for the
`
`reasons that follow.
`
`
`
`I.
`
`Exhibits 2003-2008, 2011-2014, and 2017 Should Not Be Excluded
`As Hearsay
`
`
`A. Exhibits 2003-2008, 2011-2014 and 2017 Are Not Hearsay
`
`Exhibits 2003-2008, 2011-2014, and 2017 are admissible because they are
`
`not hearsay. FRE 801(c) defines “hearsay” as a statement that “a party offers in
`
`evidence to prove the truth of the matter asserted in the statement.” Fed. R. Evid.
`
`801(c). It is well established, however, that “[i]f the significance of an offered
`
`statement lies solely in the fact that it was made, no issue is raised as to the truth of
`
`
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`1
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`IPR2015-00373
`U.S. Pat. No. 6,128,290
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`anything asserted, and the statement is not hearsay.” Fed. R. Evid. 801 Advisory
`
`Committee’s Notes on Proposed Rules (citing Emich Motors Corp. v. General
`
`Motors Corp., 181 F.2d 70 (7th Cir. 1950)).
`
`In its Motion to Exclude, Petitioner failed to recognized that Exhibits 2003-
`
`2008, 2011-2014, and 2017 serve a non-hearsay purpose. Patent Owner offered
`
`Exhibits 2003-2008, 2011-2014, and 2017 for what they describe to a person of
`
`ordinary skill in the art (“POSITA”), and not for the truth of the matter asserted
`
`therein. The law is well established that the Board will not exclude evidence that is
`
`proffered to show what a POSITA would have known about the relevant field of art.
`
`See Liberty Mut. Ins. Co. Petitioner, CBM2012-00010, Final Decision (P.T.A.B.
`
`Feb. 24, 2014) (“We further agree with Liberty that the articles that are Exhibits
`
`1025-1034 and 1036 serve a non-hearsay purpose for which they can be admitted—
`
`namely to show what one with ordinary skill in the art would have known about
`
`technical features and developments in the pertinent art.”). Furthermore, Exhibits
`
`2003-2008, 2011-2014, and 2017 are not hearsay because they provide context for
`
`the testimony of an expert witness Mr. Dezmelyk and, therefore, can assist the Board
`
`in assessing Mr. Dezmelyk’s credibility.
`
`At least for these reasons, Petitioner’s motion to exclude Exhibits 2003-2008,
`
`2011-2014, and 2017 as hearsay under FRE 801 is improper and should be denied.
`
`
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`2
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`U.S. Pat. No. 6,128,290
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`B. Exhibits 2003-2008, 2011-2014 Are Admissible Under FRE 703
`
`Even if Exhibits 2003-2008, 2011-2014 were hearsay—which they are not—
`
`they would nevertheless be admissible under FRE 703. FRE 703 provides that “[a]n
`
`expert may base an opinion on facts or data . . . [b]ut if the facts or data would
`
`otherwise be inadmissible, the proponent of the opinion may disclose them to the
`
`jury only if their probative value in helping the jury evaluate the opinion
`
`substantially outweighs their prejudicial effect.” Fed. R. Evid. 703. Petitioner has
`
`not established that the challenged exhibits will have a prejudicial effect, and,
`
`therefore, because these exhibits are probative, they are admissible.
`
`The Board has previously addressed this issue head-on in SK Innovation Co.,
`
`Ltd. v. Celgard, SK Innovation Co., Ltd. v. Celgard, LLC, IPR2014-00679, Paper
`
`58, p. 49 (P.T.A.B. Sept. 25, 2015):
`
`Patent Owner responds that under FRE 703 it is
`proper for its expert, Dr. White, to rely on otherwise
`inadmissible evidence in forming his opinion. . . .
`
`We agree with Patent Owner on this issue. As Patent
`Owner contends, FRE 703 allows the proponent of the
`expert opinion to disclose the evidence underlying an
`expert opinion to the jury if the “probative value in helping
`the jury evaluate the opinion substantially outweighs [its]
`prejudicial effect.”
`
`As evidenced by the discussion on the merits above,
`we find that these exhibits have substantial probative value
`in helping us to evaluate Dr. White’s opinion. Moreover,
`because the Board is not a lay jury, and has significant
`
`
`
`3
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`experience in evaluating expert testimony, the danger of
`prejudice in this proceeding is considerably lower than in
`a conventional district court trial.
`
`Accordingly, in an IPR proceeding, the evidence on which an expert witness
`
`relies is admissible, even if that evidence is hearsay. Consequently, because Mr.
`
`Dezmelyk relies on Exhibits 2003-2008, 2011-2014 in his declaration, these exhibits
`
`are admissible under FRE 703.
`
`
`
`II. Exhibits 2003-2008, 2012-2014, and 2017 Are Relevant
`
`Petitioner’s arguments pertaining to alleged inadmissibility of Exhibits 2003-
`
`2008, 2012-2014, and 2017 under FRE 401 are unavailing. FRE 401 dictates that
`
`evidence is relevant if “it has any tendency to make a fact more or less probable than
`
`it would be without the evidence” and “the fact is of consequence in determining the
`
`action.” Fed. R. Evid. 401. Both the Federal Circuit and the Board have recognized
`
`that there is a “low threshold for relevancy.” Laird Technologies, Inc. v. GrafTech
`
`International Holdings, Inc., IPR2014-00025, Final Decision at pg. 44 (P.T.A.B.
`
`March 25, 2015) (citing OddzOn Products, Inc. v. Just Toys, Inc., 122 F. 3d 1396,
`
`1407 (Fed. Cir. 1997)). “[S]imilar to a district court in a bench trial, the Board, sitting
`
`as a non-jury tribunal with administrative expertise, is well-positioned to determine
`
`and assign appropriate weight to evidence presented.” Id. at pg. 42 (citing Donnelly
`
`Garment Co. v. NLRB, 123 F.2d 215, 224 (8th Cir. 1941) (“One who is capable of
`
`
`
`4
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`IPR2015-00373
`U.S. Pat. No. 6,128,290
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`ruling accurately upon the admissibility of evidence is equally capable of sifting it
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`accurately after it has been received . . . .”)). Moreover, “[e]vidence which is
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`essentially background in nature can scarcely be said to involve disputed matter, yet
`
`it is universally offered and admitted as an aid to understanding.” Fed. R. Evid. 401
`
`Advisory Committee’s Notes on Proposed Rules.
`
`Petitioner challenges relevance of Exhibits 2003-2008, 2012-2014, and 2017
`
`on a premise that they postdate the priority date of the ‘290 Patent. Petitioner alleges
`
`that the challenged exhibits are not “sufficiently contemporaneous” with the ‘290
`
`Patent and because “[i]n the rapidly changing wireless communications field, it is
`
`inappropriate to assume that a quotation from [an exhibit] would have been
`
`applicable” at the time of the invention. See Petitioner’s Motion to Exclude at pg. 2,
`
`6, 7, 9, and 10. Petitioner’s allegations that the challenged exhibits are inadmissible
`
`as irrelevant are baseless. Petitioner itself recognizes that temporal concerns
`
`pertaining to proffered evidence are not a ground for exclusion. See Motion to
`
`Exclude at pg. 3 (citing Google Inc. v. Intellectual Ventures II LLC, IPR2014-01031,
`
`Paper No. 41, p. 10 (P.T.A.B. Dec. 7, 2015)).
`
`Other than the conclusory statements quoted above, Petitioner provides no
`
`explanation and no objective evidence as to why the technical descriptions
`
`pertaining to HDLC and its use of “idle words” in the evidence submitted by Patent
`
`Owner would lose their applicability to the ‘290 Patent and the cited prior art after a
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`
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`5
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`IPR2015-00373
`U.S. Pat. No. 6,128,290
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`certain period of time. Petitioner does not specify any particular event occurring
`
`between the date of the ‘290 Patent and the publication dates of the challenged
`
`exhibits that would have altered POSITA’s understanding of the concepts of HDLC
`
`and idle words, thereby rendering any subsequent publication irrelevant. Instead,
`
`Petitioner challenges admissibility of Patent Owner’s evidence solely based on
`
`naked conclusory statements, to which the Board should give no weight.
`
`Contrary to Petitioner’s allegations, Exhibits 2003-2008, 2012-2014, and
`
`2017 are relevant for a number of reasons. First, these exhibits are relevant “as an
`
`aid to understanding” the technology claimed in the ‘290 Patent and disclosed in the
`
`prior art. See Fed. R. Evid. 401 Advisory Committee’s Notes on Proposed Rules.
`
`Second, as discussed in Part I, supra, expert witness Mr. Dezmelyk relied on the
`
`challenged exhibits in his declaration, and therefore, this evidence is relevant for
`
`assessment of his credibility and for establishing the context for his testimony.
`
`For the reasons set forth above, the Board should deny Petitioner’s Motion to
`
`Exclude Exhibits 2003-2008, 2012-2014, and 2017 under FRE 401.
`
`
`III. PETITIONER MISCHARACTERIZES THE LAW
`
`Petitioner’s Motion to Exclude is plagued with repeated mischaracterization
`
`of the law.
`
`
`
`1. Stewart-Warner Corp. v. City of Pontiac
`
`6
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`IPR2015-00373
`U.S. Pat. No. 6,128,290
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`Petitioner cites Stewart-Warner Corp. v. City of Pontiac, 767 F.2d 1563, 1570
`
`(Fed. Cir. 1985) in support of its assertion that “Exhibit 2003 is not remotely
`
`contemporaneous with the ’290 patent and, as such, is not relevant for defining ‘low
`
`duty cycle.’” Petitioner’s Motion to Exclude at pg. 2-3. Specifically, Petitioner
`
`provides the following quote from Stewart-Warner Corp.: “the evidence presented
`
`was of activities occurring well after the filing date of the '926 patent application,
`
`and was not shown to apply to the time the invention was made, as required by 35
`
`U.S.C. § 103.” Id. Petitioner fails to disclose the entire sentence of Stewart-Warner
`
`Corp., which explains that the portion quoted by Petitioner pertains to the issue of
`
`whether evidence qualifies as prior art against a patent, and not whether it is relevant
`
`to establish the general knowledge of POSITA. See Stewart-Warner Corp. at 1570
`
`(“Development by others may also be pertinent to a determination of the obviousness
`
`of an invention, but the evidence presented was of activities occurring well after the
`
`filing date of the '926 patent application, and was not shown to apply to the time the
`
`invention was made, as required by 35 U.S.C. § 103.”) (emphasis added).
`
`Clearly, Stewart-Warner Corp. pertains to evidence offered for the purpose of
`
`patentability analysis under 35 U.S.C. § 103 and provides no guidance as to what
`
`constitutes admissible evidence under FRE 401. Therefore, Petitioner’s reliance on
`
`this decision for the purpose of FRE 401 analysis is misguided.
`
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`7
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`U.S. Pat. No. 6,128,290
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`Of course, in the context of invalidity, the date of evidence is critical because
`
`evidence that postdates the priority date of a challenged patent claim is irrelevant
`
`because it does not qualify as prior art. In this case, however, the evidence provided
`
`by Patent Owner is not offered as prior art against the ‘290 Patent, but rather as a
`
`source of information explaining the technical concepts pertaining to the ‘290 Patent
`
`and the prior art. Thus, Petitioner’s challenge of admissibility of Exhibits 2003-2008,
`
`2012-2014, and 2017 under FRE 401 mischaracterizes and misapplies Stewart-
`
`Warner Corp.
`
`2. Amazon.com Inc. v AC Technologies S.A.
`
` Petitioner reliance on Amazon.com Inc. v. AC Technologies S.A., IPR2015-
`
`01801, Paper No. 9, pp. 2-3 (P.T.A.B., Jan. 22, 2016) is also misplaced. Petitioner’s
`
`statement that in Amazon.com Inc. the Board “den[ied] authorization to submit
`
`exhibits showing public accessibility as of 2001 instead of 1999 in part due to the
`
`marginal relevance of such exhibits” is misleading. In Amazon.com Inc, the
`
`petitioner challenged validity of a patent having a priority date of January 11, 1999
`
`based on an alleged prior art reference (Rabinovich). In its preliminary response, the
`
`patent owner disputed the publication date of Rabinovich. When the petitioner
`
`requested the Board’s permission to file additional exhibits, the Board denied the
`
`request stating that: “Petitioner clarified that its proposed exhibits would establish
`
`
`
`8
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`IPR2015-00373
`U.S. Pat. No. 6,128,290
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`public availability of the Rabinovich reference only as of 2001. As such, the
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`relevance of the proposed exhibits is less compelling than if the exhibits supported
`
`public availability of Rabinovich prior to the priority dates of the challenged claims.”
`
`Id. at pg. 2. Clearly, just like Stewart-Warner Corp., Amazon.com Inc. pertains to
`
`criticality of the publication date of evidence with respect to its status as prior art
`
`against a patent, but is inapplicable to the issue of whether the evidence is relevant
`
`under FRE 401.
`
`In the present case, the exhibits provided by Patent Owner are not offered as
`
`prior art. Instead they are provided for the purpose of helping the Board to
`
`understand the technical concepts claimed in the ‘290 Patent and disclosed in
`
`Natarajan and Neve as they would have been understood by POSITA. Accordingly,
`
`the case law cited by Petitioner in its Motion to Exclude is inapplicable to the issue
`
`of whether the challenged exhibits are admissible under FRE 401.
`
`3. SK Innovation Co., Ltd. v. Celgard, LLC
`
`Petitioner motions the Board to exclude Exhibits 2003 and 2012-2014 because
`
`Patent Owner does not cite to these exhibits in its Patent Owner Response. See
`
`Petitioner’s Motion to Exclude at pg. 3, 6, 7, and 9. Petitioner ignores the fact that
`
`although these exhibits were not cited directly in the Patent Owner Response, they
`
`were, nevertheless, cited to in declaration of Mr. Dezmelyk. See Ex. 2016 at pg. 5,
`
`
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`9
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`IPR2015-00373
`U.S. Pat. No. 6,128,290
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`13, and 14. Thus, for the reasons set forth in Part II, supra, Exhibits 2003 and 2012-
`
`2014 are relevant under FRE 401.
`
`Petitioner misapplies SK Innovation Co., Ltd. v. Celgard, LLC. In that
`
`decision, the Board granted a Motion to Exclude certain exhibits because Patent
`
`Owner did not cite to them at all. Petitioner mischaracterizes the Board’s ruling by
`
`citing to it in support for Petitioner’s assertion that an exhibit not cited in Patent
`
`Owner Response is inadmissible under FRE 401. See Petitioner’s Motion to Exclude
`
`at pg. 3, 6, 7, and 9. This is not true. In fact, in the very same decision, the Board
`
`held that even inadmissible evidence should be admitted under FRE 703 if it is relied
`
`upon by an expert witness. SK Innovation Co., Ltd. v. Celgard, LLC, IPR2014-
`
`00679, Paper 58, p. 49 (P.T.A.B. Sept. 25, 2015) (“Patent Owner responds that under
`
`FRE 703 it is proper for its expert, Dr. White, to rely on otherwise inadmissible
`
`evidence in forming his opinion. . . . We agree with Patent Owner on this issue.”).
`
`Because expert witness Mr. Dezmelyk cites to Exhibits 2003 and 2012-2014 in his
`
`declaration, Petitioner’s Motion to Exclude these exhibits should be denied.
`
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`10
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`IPR2015-00373
`U.S. Pat. No. 6,128,290
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`IV. CONCLUSION
`
`Because Exhibits Exhibits 2003-2008, 2011-2014, and 2017 are admissible
`
`under the Federal Rules of Evidence, Petitioner’s motion to exclude should be
`
`denied.
`
`
`
`Date: February 26, 2016
`
` Respectfully submitted,
`
`/andriy lytvyn/
`
`Andriy Lytvyn
`Lead Counsel for Patent Owner
`Registration No. 65,166
`
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`SMITH & HOPEN, PA
`
`180 Pine Avenue North
`Oldsmar, FL 34677
`Tel: 813-925-8505
`Fax: 800-726-1491
`Email: ipr@smithhopen.com
`
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`IPR2015-00373
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that, in accordance with 37 C.F.R. §
`
`42.6(e), the above Patent Owner’s Opposition to Petitioner’s Motion to Exclude
`
`Evidence was served via electronic mail on October 5, 2015, in their entirety upon
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`the following:
`
`David K.S. Cornwell, Lead Counsel for Petitioner
`davidc-PTAB@skgf.com
`
`Mark W. Rygiel, Back-Up Counsel for Petitioner
`mrygiel-PTAB@skgf.com
`
`Robert Sterne, Back-Up Counsel for Petitioner
`rsterne-PTAB@skgf.com
`
`Jason Fitzsimmons, Back-Up Counsel for Petitioner
`jfitzsimmons-PTAB@skgf.com
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`
`
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`Date: February 26, 2016
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`/andriy lytvyn/
`Andriy Lytvyn
`Lead Counsel for Patent Owner
`Registration No. 65,166
`
`SMITH & HOPEN, P.A.
`180 Pine Avenue North
`Oldsmar, FL 34677
`(813) 925-8505
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