UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`E-WATCH, INC.,
`Patent Owner.
`
`_____________________
`
`Case No. IPR2015-00412
`Patent 7,365,871
`_____________________
`
`C.F.R. § 42.64(b)(1)
`
`PETITIONER APPLE INC.’S OBJECTIONS TO EVIDENCE UNDER 37
`
`
`
`1
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`E-WATCH, INC.,
`Patent Owner.
`
`_____________________
`
`Case No. IPR2015-00412
`Patent 7,365,871
`_____________________
`
`C.F.R. § 42.64(b)(1)
`
`PETITIONER APPLE INC.’S OBJECTIONS TO EVIDENCE UNDER 37
`
`
`
`1
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.64(b)(1), the Petitioner Apple Inc. (“Apple”),
`
`hereby objects to the following evidence submitted by Patent Owner e-Watch, Inc.
`
`during Inter Partes Review of U.S. Patent No. 7,365,871:
`
`1.
`
`Exhibit 2008 is objected to for lack of proper authentication under Fed. R.
`
`Ev. 901 and 37 C.F.R. § 42.62. Exhibit 2008 lacks a certification or other
`
`evidence proving it is a true and accurate copy of what it claims to be.
`
`2.
`
`Exhibit 2008 is objected to as irrelevant under Fed. R. Ev. 402 and 37
`
`C.F.R. § 42.62; the exhibit and its contents are not cited or discussed in the
`
`patent, file history, or instituted references; the exhibit discusses subject
`
`matter unrelated to this inter partes review; and the exhibit is dated many
`
`years after the priority date of the patent.
`
`3.
`
`Exhibit 2008 is further objected to as hearsay under Fed. R. Ev. 801 and 802
`
`and 37 C.F.R. § 42.62 because it is an out of court statement used for the
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`truth of the matter asserted.
`
`4.
`
`Exhibit 2009 is objected to for lack of proper authentication under Fed. R.
`
`Ev. 901 and 37 C.F.R. § 42.62. Exhibit 2001 lacks a certification or other
`
`evidence proving it is a true and accurate copy of what it claims to be.
`
`5.
`
`Exhibit 2009 is objected to as irrelevant under Fed. R. Ev. 402 and 37
`
`C.F.R. § 42.62; the exhibit and its contents are not cited or discussed in the
`
`patent, file history, or instituted references; the exhibit discusses subject
`
`
`
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`2
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`
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`matter unrelated to this inter partes review; and the exhibit is dated many
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`years after the priority date of the patent.
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`6.
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`Exhibit 2009 is further objected to as hearsay under Fed. R. Ev. 801 and 802
`
`and 37 C.F.R. § 42.62 because it is an out of court statement used for the
`
`truth of the matter asserted.
`
`7.
`
`Exhibit 2010 is objected to as irrelevant under Fed. R. Ev. 402 and 37
`
`C.F.R. § 42.62; the exhibit and its contents are not cited or discussed in the
`
`patent, file history, or instituted references; and the exhibit discusses subject
`
`matter unrelated to this inter partes review.
`
`8.
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`Exhibit 2010 is further objected to as unfairly prejudicial, confusing the
`
`issues, misleading, and a waste of time under Fed. R. Ev. 403; the exhibit
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`and its contents are not cited or discussed in the patent, file history, or
`
`instituted references; and the exhibit discusses subject matter unrelated to
`
`this inter partes review.
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`9.
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`Exhibit 2010 is further objected to as hearsay under Fed. R. Ev. 801 and 802
`
`and 37 C.F.R. § 42.62 because it is an out of court statement used for the
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`truth of the matter asserted.
`
`10. Exhibit 2003 is objected to for the following reasons:
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`(a) Dr. Melendez’s discussion of United States patent law and patent
`
`examination practice is objected to under 37 C.F.R. § 42.65(a). Such
`
`
`
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`3
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`
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`statements can be found, for example, in the following paragraphs: 2,
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`22, 23, 24, 25, 26, 32, 33, and 69.
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`(b) Dr. Melendez’s statement in ¶ 3 that “My report is intended as a
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`supplement to arguments put forward in the e-Watch Patent Owner
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`Response to which it is appended” is objected to as an improper
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`attempt to incorporate by reference under 37 C.F.R. § 42.6(a)(3).
`
`(c) The following testimony of Dr. Melendez is conclusory with no
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`supporting factual analysis and is thus not based on sufficient facts or
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`data under Fed. R. Evid. 702 and 703 and 37 C.F.R. § 42.65:
`
`(i)
`
`¶ 2: “Many of these references related to systems that generally
`
`serve to combine imaging and wireless technologies, an
`
`indication, as will be noted in further detail here, that the ‘871
`
`patent claims and invention was necessarily distinguished
`
`during prosecution from the generic concept of combining
`
`imaging and wireless, of which McNelley and Umezawa
`
`separately and together, only reveal disclosures and teachings
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`that are distinguishable from the ‘871 patent. As such, a person
`
`of ordinary skill in the art (POSITA), even as defined by Mr.
`
`Sasson, would thus have not been motivated to combine these
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`4
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`
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`references, nor have been enabled if having so done, to come to
`
`the ‘871 patent’s invention.”
`
`(ii)
`
`¶ 6: “Neither McNelley nor Umezawa contain enabling
`
`disclosures particularly with respect to cellular transmission of
`
`captured visual images over cellular networks.”
`
`(iii) ¶ 7: “The claims of the ‘871 Patent are directed to technical
`
`issues or needs that were not well recognized nor understood,
`
`and technical solutions that were not well developed to address
`
`the technical issues or needs, at the time of the priority date of
`
`the ‘871 Patent – January 12, 1998.”
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`(iv) ¶ 10: “Yet regardless of Umezawa’s intent, it is well known by
`
`a POSITA that cellular networks at the time of Umezawa were
`
`not capable of transmitting sequential visual images.”
`
`(v)
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`¶ 38: “In my opinion, in the relevant time period, there were
`
`very few individuals with the necessary skills in both digital
`
`camera and cellular communications or the requisite experience
`
`in developing such integrated devices. This being the case, it
`
`would be critical for a patent reference such as, for example,
`
`McNelley and Umezawa to provide an enabling disclosure of
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`5
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`
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`how to achieve an integrated digital cellular camera telephone,
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`which they do not.”
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`(vi) ¶ 43: “It would have been well known by a POSITA that
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`‘audio signals’ may be analog or digital, and that ‘audio digital
`
`signals’ may include audio content such as voice, video content,
`
`or other types of data. Even laypersons should recall the
`
`difference between communicating digital content via audio
`
`signals (for example, by using dial up modems to transmit data
`
`over telephone lines) versus communication via non-audio
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`signals (for example, by using an Ethernet connection to the
`
`internet). In contrast, the telephony networks disclosed by
`
`McNelley and Umezawa, and known to a POSITA, would not
`
`have contemplated the limitation of ‘the wireless telephone
`
`being selectively operable to transmit and receive non-audio
`
`digital signals, the non-audio digital signals including a selected
`
`digitized framed image.’”
`
`(vii) ¶ 44: “In actuality, due to inherent limitations of radio spectral
`
`bandwidths, cellular networks capable of supporting video
`
`conferencing required significant ingenuity and invention,
`
`including innovations in both networking and terminal
`
`6
`
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`
`
`technologies, including, as a specific example, invention of new
`
`antenna technologies. For this reason, video conferencing
`
`applications, such as Petitioner’s own Facetime application,
`
`were not realized until some 15 years later.”
`
`(viii) ¶ 45: “The key understanding as to why conventional networks
`
`and conventional thinking - like McNelley’s regarding their
`
`evolution in the time period – fail to succeed is that audio
`
`signals alone would prove insufficient to realize video
`
`conferencing over cellular networks.”
`
`(ix) ¶ 47: “As would be appreciated by a POSITA, as well as
`
`laypersons who recall using dial up modems to transmit data
`
`over telephone lines, such modems function by transmitting
`
`audio signals, and as such fail to meet or disclose the non-audio
`
`limitation of the ‘871 Claims 12-15.”
`
`(x)
`
`¶ 50: A POSITA would most reasonably conclude that the
`
`equipment of Umezawa was intended as a local (cordless)
`
`interface working in conjunction with a local area access point
`
`to connect to phone lines via the PSTN, since there is no
`
`mention of cellular networks in Umezawa and utility on a
`
`wireless network of video conferencing between remote users
`
`7
`
`
`
`
`
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`
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`was still the dream referred to by McNelley, ‘a persistent dream
`
`for over 50 years has been the ability to add a moving image to
`
`a telephone so that the conversation would include sight as well
`
`as sound.’ [McNelley 1:18-21].”
`
`(xi)
`
` ¶ 51: “At the time of McNelley and Umezawa, conventional
`
`transmission of image data over a phone line was exclusively
`
`by audio means, and cellular systems would have been no
`
`different. This has likely been experienced by anyone who has
`
`answered a telephone call from a modem, as doing so results in
`
`hearing the audio tones characteristic of, for example, a fax
`
`transmission and or the squawks of listening to a dial-up
`
`internet connection.”
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`(xii) ¶ 56: “One may recall that even voice-only answering machines
`
`of the era were known to play back all messages, unlike visual
`
`voicemail systems of today where a user could choose specific
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`messages to play back using a menu.”
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`(xiii) ¶ 74: “A POSITA would understand the disclosed handy video
`
`telephone equipment to be intended for local wireless
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`communcations [sic] such as in a cordless phone based on
`
`access points. It would have been known by a POSITA that
`
`8
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`cellular networks at the time of Umezawa were not capable of
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`transmitting video as would be required to use Umezawa’s
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`invention.”
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`(xiv) ¶ 76: “Operationally a POSITA would understand that a user
`
`interface combines with a physical display to present a user
`
`with a variety of display windows and display window content
`
`at differing times during operation.”
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`(xv) ¶ 77: “Additionally, the capability claimed in ‘871 Patent Claim
`
`7 would not have been ‘easily implemented’ by a POSITA at
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`the time of the invention, since it would have required
`
`intermixing the display of signal types on an embedded display
`
`with the limited processing capabilities of embedded processors
`
`of the time.”
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`(xvi) ¶¶ 42, 54, 61, 68, 75, 78: Dr. Melendez’s conclusions that the
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`limitations “would not have been obvious to a POSITA at the
`
`time of invention.”
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`(d) The statements in Exhibit 2003 that appear to rely upon and/or cite to
`
`Exhibit 2008 (e.g.. ¶ 31) for the same reasons identified above in
`
`paragraphs 1–3, above, including:
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`9
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`
`
`(i)
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`lack of proper authentication under Fed. R. Ev. 901 and 37
`
`C.F.R. § 42.62. Exhibit 2008 lacks a certification or other
`
`evidence proving it is a true and accurate copy of what it claims
`
`to be.
`
`(ii)
`
`irrelevant under Fed. R. Ev. 402 and 37 C.F.R. § 42.62; the
`
`exhibit and its contents are not cited or discussed in the patent,
`
`file history, or instituted references; the exhibit discusses
`
`subject matter unrelated to this inter partes review; and the
`
`exhibit is dated many years after the priority date of the patent;
`
`and
`
`(iii)
`
`hearsay under Fed. R. Ev. 801 and 802 and 37 C.F.R. § 42.62
`
`because it is an out of court statement used for the truth of the
`
`matter asserted.
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`These objections have been timely made, served, and filed within 5 business
`
`days from the date of service of the above referenced exhibits.
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`10
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`Respectfully submitted,
`
`
`DATED: August 10, 2015
`
`
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`
`
`
`
`
`
`By: /s/ Brian M. Buroker
`
`Brian M. Buroker (Reg. No. 39,125) (lead)
`Blair A. Silver (Reg. No. 68,003) (back-up)
`GIBSON, DUNN & CRUTCHER LLP
`1050 Connecticut Avenue, N.W.
`Washington, DC 20036-5306
`Telephone: 202.955.8500
`Facsimile: 202.467.0539
`bburoker@gibsondunn.com
`bsilver@gibsondunn.com
`
`Attorney for Petitioner Apple, Inc.
`
`11
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`
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`CERTIFICATE OF SERVICE
`
`The undersigned certifies service pursuant to 37 C.F.R. § 42.6(e) of a copy
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`of this Objections to Evidence by electronic mail on August 10, 2015 on the
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`counsel of record of the Patent Owner:
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`Robert C. Curfiss, bob@curfiss.com
`
`David Simmons, dsimmons1@sbcglobal.net
`
`
`
`DATED: August 10, 2015
`
`By: /s/ Brian M. Buroker
`
`
`
`Brian M. Buroker (Reg. No. 39,125)
`
`Attorney for Petitioner Apple Inc.
`
`12
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