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 REPLY TO PATENT OWNER’S
`OPPOSITION TO MOTION TO EXCLUDE
`
`
`
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`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`_____________________
`
`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 REPLY TO PATENT OWNER’S
`OPPOSITION TO 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
`
`
`
`
`
`
`
`
`IPR2015-00373
`U.S. Pat. No. 6,128,290
`
`TABLE OF CONTENTS
`
`
`Exhibits 2003-2008, 2011-2014, and 2017 are hearsay. .................................. 1
`I.
`FRE 703 is not a loophole for Exhibits 2003-2008 and 2011-2014. ............... 1
`II.
`III. Exhibits 2003-2008, 2012-2014, and 2017 are not relevant. ........................... 3
`IV. DSS misinterprets and mischaracterizes the cited cases in Apple’s Motion to
`
`
`Exclude. ............................................................................................................ 4
`V. Conclusion ........................................................................................................ 5
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`- i -
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`IPR2015-00373
`U.S. Pat. No. 6,128,290
`
`TABLE OF AUTHORITIES
`
`Cases
`Amazon.com Inc. v. AC Technologies S.A.,
`IPR2015-01801 (P.T.A.B. 2016) ............................................................................. 5
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) .................................................................................................... 5
`In re Farrenkopf,
`713 F.2d 714 (Fed. Cir. 1983) ................................................................................. 4
`Liberty v. Progressive,
`CBM2012-00010 (P.T.A.B. 2014) .......................................................................... 1
`Medtronic Vascular v. Abbott Cardiovascular Systems,
`614 F. Supp.2d 1006, (N.D. Cal. 2009)................................................................... 4
`SK Innovation Co., Ltd. v. Celgard, LLC,
`IPR2014-00679 (P.T.A.B. 2015) ......................................................................... 3, 5
`Stewart-Warner Corp. v. City of Pontiac,
`767 F.2d 1563 (Fed. Cir. 1985) ............................................................................... 4
`Statutes
`35 U.S.C. § 103(a) (pre-AIA) ..................................................................................... 1
`Other Authorities
`FRE 703, Committee Notes on Rules–2000 Amendment .......................................... 2
`Rules
`FRE 703 ...................................................................................................................... 2
`
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`- ii -
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`IPR2015-00373
`U.S. Pat. No. 6,128,290
`Exhibits 2003-2008, 2011-2014, and 2017 are hearsay.
`
`I.
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`DSS alleges that Exhibits 2003-2008, 2011-2014, and 2017 are not hearsay
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`because they “serve a non-hearsay purpose” by being offered “for what they
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`describe to a person of ordinary skill in the art (‘POSITA’), and not for the truth of
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`the matter asserted therein.” (Paper 31, p. 2.) This is not so. DSS and Mr. Dezmelyk
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`simply provide quotes from these Exhibits. (See e.g., DSS 2016, Dezmelyk Decl.,
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`¶¶ 18, 24, 25, 28, 35, 43; see also Paper 15, pp. 3, 12.) Thus, they are indeed being
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`offered exactly for the impermissible purpose of proving the truth of the matter
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`asserted therein. The Board should exclude these Exhibits as hearsay.
`
`Moreover, Exhibits 2003-2008, 2012-2014, and 2017 post-date the ’290
`
`patent or are entirely undated and therefore cannot “show what one with ordinary
`
`skill in the art would have known about technical features and developments in the
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`pertinent art.” Liberty v. Progressive, CBM2012-00010, Paper 59, p. 37 (P.T.A.B.
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`Feb. 24, 2014) (emphasis added). Indeed, the viewpoint for the obviousness inquiry
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`is “at the time the invention was made to a person having ordinary skill in the art.”
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`35 U.S.C. § 103(a) (pre-AIA) (emphasis added). Because these post-dated Exhibits
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`do not show what a person of ordinary skill in the art would have known at the time
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`the alleged invention was made, they do not serve a “non-hearsay purpose.”
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`Accordingly, the Board should exclude these Exhibits as hearsay.
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`II.
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`FRE 703 is not a loophole for Exhibits 2003-2008 and 2011-2014.
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`IPR2015-00373
`U.S. Pat. No. 6,128,290
`DSS inappropriately relies on FRE 703 as a mechanism for the admission of
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`Exhibits 2003-2008 and 2011-2014. First, DSS neglects that FRE 703 applies only
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`“[i]f experts in the particular field would reasonably rely on those kinds of facts or
`
`data in forming an opinion on the subject….” FRE 703. DSS makes no such
`
`allegation. And the necessary supposition that an expert would “reasonably rely” on
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`post-dated or undated documents is dubious at best. Even assuming arguendo that
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`an expert would have reasonably relied on these Exhibits, FRE 703 is intended to
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`“emphasize that when an expert reasonably relies on inadmissible information to
`
`form an opinion or inference, the underlying information is not admissible simply
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`because the opinion or inference is admitted.” FRE 703, Committee Notes on
`
`Rules–2000 Amendment (emphasis added).
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`Second, DSS’s Exhibits are admissible “only if their probative value in
`
`helping the jury evaluate the opinion substantially outweighs their prejudicial
`
`effect.” FRE 703 (emphasis added). Indeed, FRE 703 is intended to “provide[] a
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`presumption against disclosure to the jury of information used as the basis of an
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`expert’s opinion and not admissible for any substantive purpose, when that
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`information is offered by the proponent of the expert.” FRE 703, Committee Notes
`
`on Rules–2000 Amendment (emphasis added). In its Opposition, DSS baldly
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`asserts that “because these exhibits are probative, they are admissible,” without any
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`explanation as to why the Exhibits are probative. (Paper 31, p. 3.) DSS does not
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`IPR2015-00373
`U.S. Pat. No. 6,128,290
`provide any rationale as to how these Exhibits have substantial probative value in
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`helping the Board evaluate Mr. Dezmelyk’s opinions. See SK Innovation Co., Ltd.
`
`v. Celgard, LLC, IPR2014-00679, Paper 58, p. 49 (P.T.A.B. Sept. 25, 2015). And
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`contrary to DSS’s assertion that Apple has not established the prejudicial effect of
`
`admitting these Exhibits, Apple’s arguments regarding the irrelevance of proposed
`
`definitions from post-dated and undated references provides ample support. (See
`
`e.g., Paper 26, p. 2.)
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`Accordingly, for at least these reasons, FRE 703 is inapplicable and the
`
`Board should not admit Exhibits 2003-2008 and 2011-2014.
`
`III. Exhibits 2003-2008, 2012-2014, and 2017 are not relevant.
`DSS alleges that Exhibits 2003-2008, 2012-2014, and 2017 “are relevant ‘as
`
`an aid to understanding’ the technology claimed in the ‘290 Patent and disclosed in
`
`the prior art” and “for establishing the context” of Mr. Dezmelyk’s testimony.
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`(Paper 31, pp. 5-6.) This line of reasoning is unsound. These exhibits either post-
`
`date the ’290 patent or are undated. And DSS does not explain how these
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`subsequent references aid in understanding what is “disclosed in the prior art.”
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`Similarly, DSS does not explain how references published ten or more years after
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`the filing date of the ’290 patent provide any relevant “context” to Mr. Dezmelyk’s
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`testimony, who is supposed to analyze what a person of ordinary skill in the art
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`would have known at the time of the invention. Quite simply, they do not.
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`IPR2015-00373
`U.S. Pat. No. 6,128,290
`IV. DSS misinterprets and mischaracterizes the cases cited in Apple’s
`Motion to Exclude.
`DSS misinterprets Stewart-Warner Corp. v. City of Pontiac, 767 F.2d 1563
`
`(Fed. Cir. 1985). Stewart-Warner addresses development by others as a secondary
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`consideration and/or as an indication of the level of skill in the art, not just as prior
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`art. 767 F.2d at 1569-70. This context is evidenced, in part, by the citation in
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`Stewart-Warner to In re Farrenkopf, 713 F.2d 714 (Fed. Cir. 1983), where the
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`Federal Circuit discussed evidence of contemporaneous activity as being evidence
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`of the level of skill in the art. 713 F.2d at 719-20. In addition, while DSS asserts
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`that Stewart-Warner “provides no guidance as to what constitutes admissible
`
`evidence under FRE 401,” (Paper 31, p. 7) at least one district court has relied on
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`Stewart-Warner in discussing the admissibility of “evidence of contemporaneous
`
`invention going to the level of ordinary knowledge or skill in the art, or evidencing
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`secondary considerations of obviousness.” Medtronic Vascular v. Abbott
`
`Cardiovascular Systems, 614 F. Supp.2d 1006, 1028-29 (N.D. Cal. 2009). Further,
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`DSS labels the evidence as “a source of information explaining the technical
`
`concepts pertaining to the ’290 Patent and the prior art” (Paper 31, p. 8), but fails to
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`recognize that as such, this evidence is “offered for the purpose of patentability
`
`analysis under 35 U.S.C. § 103” (id. at 7) because it relates to the level of skill or
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`knowledge of a person of ordinary skill in the art. See Graham v. John Deere Co.,
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`IPR2015-00373
`U.S. Pat. No. 6,128,290
`383 U.S. 1, 17 (1966). Therefore, DSS’s non-contemporaneous evidence is not
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`relevant.
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`DSS also misunderstands the analogy drawn with Apple’s citation to
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`Amazon.com Inc. v. AC Technologies S.A., IPR2015-01801, Paper 9 (P.T.A.B., Jan.
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`22, 2016). (See e.g., Paper 26, pp. 2-3.). Just as the proposed exhibits in Amazon
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`only went to the public availability of a reference as of a date after the priority date,
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`DSS’s challenged exhibits only go to the knowledge of one of ordinary skill in the
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`art as of a date after the ’290 patent’s filing date. DSS’s non-contemporaneous
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`evidence is not relevant to what one of ordinary skill would have known at the time
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`of the alleged invention.
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`Finally, DSS mischaracterizes the Board’s position in SK Innovation Co.,
`
`Ltd. v. Celgard, LLC, IPR2014-00679, Paper 58 (P.T.A.B. Sept. 25, 2015). DSS
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`asserts that “the Board held that even inadmissible evidence should be admitted
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`under FRE 703 if it is relied upon by an expert witness.” (Paper 31, p. 10.) Far from
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`espousing this blanket rule, the Board carefully qualified its statement as pertaining
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`only to situations where the “probative value in helping the jury evaluate the
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`opinion substantially outweighs [its] prejudicial effect,” as specified in FRE 703.
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`SK Innovation, Paper 58 at 50. And as explained above, that is not the case here.
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`V. Conclusion
`The Board should exclude DSS’s Exhibits 2003–2008, 2011–2014, and 2017.
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`IPR2015-00373
`U.S. Pat. No. 6,128,290
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`Respectfully submitted,
` STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Mark W. Rygiel/
`
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`
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`Mark W. Rygiel
`Registration No. 45,871
`Attorney for Petitioner Apple Inc.
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`Date: March 1, 2016
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
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`IPR2015-00373
`U.S. Pat. No. 6,128,290
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
`The undersigned hereby certifies that the above-captioned PETITIONER
`
`APPLE INC.’S REPLY TO PATENT OWNER’S OPPOSITION TO
`
`MOTION TO EXCLUDE was served in its entirety on March 1, 2016, via e-mail
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`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: March 1, 2016
`
` 1100 New York Avenue, N.W.
` Washington, D.C. 20005-3934
` (202) 371-2600
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