UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`APPLE INC.,
`ZTE CORPORATION and ZTE (USA) INC.,
`Petitioners
`v.
`E-WATCH, INC.,
`Patent Owner
`_____________________
`
`
`IPR2015-00412
`IPR2015-013661
`U.S. Patent No. 7,365,871 B2
`_____________________
`
`
`
`PETITIONER’S RESPONSE TO PATENT OWNER’S MOTION FOR
`OBSERVATIONS ON CROSS-EXAMINATION
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`1 IPR2015-01366 has been joined with IPR2015-00412.
`
`
`
`

`
`
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`RESPONSES TO OBSERVATIONS ............................................................. 1
`
`L.
`
`A. Observation No. 1 Related to 10:19-11:4, 14:19-15:13, 16:11-
`20, and 22:12-24 .................................................................................... 1
`Observation No. 2 Related to 25:9-26:14 and 28:9-15 ......................... 2
`B.
`Observation No. 3 Related to 38:18-39:21 and 41:2-12 ....................... 2
`C.
`D. Observation No. 4 Related to 45:5-47:2 ............................................... 3
`E.
`Observation No. 5 Related to 48:15-49:24 ........................................... 4
`F.
`Observation No. 6 Related to 51:12-52:4 and 54:15-57:10 .................. 4
`G. Observation No. 7 Related to 58:23-59:24 ........................................... 5
`H. Observation No. 8 Related to 63:4-65:21 and 67:4-68:5 ...................... 5
`I.
`Observation No. 9 Related to 68:25-70:24, 71:10-73:22, 74:17-
`75:20, and 75:25-76:24 ......................................................................... 6
`Observation No. 10 Related to 87:19-88:11 and 90:25-91:5 ................ 7
`J.
`K. Observation No. 11 Related to 92:22-93:16, 94:14-95:2, and
`99:12-100:14 ......................................................................................... 8
`Observation No. 12 Related to 104:24-105:4, 110:1-11, and
`199:23-200:2 ......................................................................................... 9
`M. Observation No. 13 Related to 112:11-14, 114:17-20, 115:13-
`19, and 119:1-25 .................................................................................. 10
`N. Observation No. 14 Related to 124:18-125:9 and 125:21-126:24 ...... 11
`O. Observation No. 15 Related to 133:4-11, 135:13-136:3, 140:18-
`141:1, and 196:25-197:15 ................................................................... 11
`Observation No. 16 Related to 143:7-144:7, 145:16-146:2, and
`148:2-7 ................................................................................................. 12
`Q. Observation No. 17 Related to 157:23-158:2, 158:5-14, 159:1-
`160:2, 160:13-15, 161:19-162:3 .......................................................... 13
`Observation No. 18 Related to 165:11-166:10, 166:22-167:4,
`and 167:20-168:10 ............................................................................... 14
`
`P.
`
`R.
`
` i
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`
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`

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`
`
`TABLE OF ABBREVIATIONS
`
`
`Abbreviation
`’871 patent
`BRI
`Decision
`Ex.
`McNelley
`Umezawa
`Obs.
`Pet.
`
`PO
`POSA
`Reply
`Resp.
`
`
`Description
`U.S. Patent No. 7,365,871
`Broadest Reasonable Interpretation
`Institution Decision (Paper 12)
`Exhibit
`U.S. Patent No. 5,550,754 (Ex. 1006)
`U.S. Patent No. 5,491,507 (Ex. 1007)
`Patent Owner’s Observations on Cross-Examination (Paper 41)
`Petition for Inter Partes Review of U.S. Patent No.
` 7,365,871 (Paper 2)
`Patent Owner
`Person of Ordinary Skill in the Art
`Petitioner’s Reply (Paper 30)
`Patent Owner’s Response (Paper 19)
`
`
`ii
`
`

`
`
`
`Petitioner Apple Inc. presents the following responses to the eighteen
`
`observations on the reply cross-examination testimony of Steven Sasson submitted
`
`by Patent Owner, which misstate and mischaracterize the relevance of that cross-
`
`examination testimony and, in some cases, fail to even provide the statement of
`
`relevance required by the Trial Practice Guide.
`
`I.
`
`RESPONSES TO OBSERVATIONS
`A. Observation No. 1 Related to 10:19-11:4, 14:19-15:13, 16:11-20,
`and 22:12-24
`
`Sasson stated that McNelley, Umezawa, and the ’871 patent are only
`
`“attachments to networks … [and] are peripherals,” and a POSA would “have to
`
`just know the interface to the network and not how the network actually transmits
`
`the information.” Ex. 2014 at 14:19-15:13. In other words, these devices were
`
`merely “add-ons to the network” that “ha[ve] nothing to do with how the network
`
`works.” Id. at 170:11-22. He further explained that “there is no teaching about
`
`cellular technology or any of the technical challenges with respect to cellular
`
`technology in the ’871 [patent].” Id. at 169:14-170:4; Ex. 1014 ¶¶ 5, 7 (citing
`
`’871 patent at 3:8-10, 4:64-66, 9:31-35); see also Ex. 1013 at 84:15-25, 86:11-25.
`
`Sasson found Patent Owner’s proposal that “non-audio digital signals” in claim 12
`
`refers to the transmission protocol to be contrary to the claim language, the
`
`understanding of one of skill in the art, “unclear at best,” and “meaningless.”
`
`Ex. 1014 ¶¶ 44-52. Nevertheless, Sasson testified that McNelley and Umezawa are
`
`1
`
`

`
`
`
`not limited to any particular communication standard, and that McNelley has a
`
`more robust disclosure of cellular technology than even the ’871 patent. Id. ¶¶ 94-
`
`96; see Ex. 2014 at 16:11-20, 170:23-171:8.
`
`B. Observation No. 2 Related to 25:9-26:14 and 28:9-15
`Sasson was merely confirming that one sentence in the specification
`
`describes an embodiment that “permits the capture, storage and selective recall of
`
`captured images for transmission.” Ex. 2014 at 26:3-11; see Ex. 1014 ¶ 14. He
`
`testified later that claim 1, as written, only “refer[s] to a single image,” not multiple
`
`images (Ex. 2014 at 28:3-8; see Ex. 1014 ¶¶ 13-15), and that claim 1 is not limited
`
`to a sequence in which selective display has to occur first and “then” selective
`
`transmission. Id. at 175:19-177:3 (“No, there is no sequence.”).
`
`C. Observation No. 3 Related to 38:18-39:21 and 41:2-12
`Sasson testified that the BRI of “alphanumeric signals” are signals which are
`
`“characters consisting of letters and/or digits”—consistent with Patent Owner’s
`
`prior stipulation in the district court and technical dictionaries. Ex. 1014 ¶¶ 20-24.
`
`During his deposition he reiterated that the “plain and ordinary meaning” of
`
`“alphanumeric” is “characters consisting of letters and/or digits,” and that “all
`
`numeric expressions are alphanumeric” because “they are part of the alphanumeric
`
`character set.” Ex. 2014 at 40:2-5, 42:20-23. In the cited passage, Sasson
`
`confirmed that the one “idea” of the ’871 patent was to permit entry of “letters and
`
`2
`
`

`
`
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`text” (id. at 41:2-12)—which says nothing about numbers—and is entirely
`
`consistent with the BRI of “alphanumeric signals” as signals which are “characters
`
`consisting of letters and/or digits.” With regard to the testimony cited in Ex. 2014
`
`at 38:18-39:21, Sasson confirmed that he is “not a lawyer” and “[has] no opinion”
`
`on whether petitioners can “advance different claim construction positions in the
`
`IPR from a litigation.” Id. at 39:6-15.
`
`D. Observation No. 4 Related to 45:5-47:2
`Sasson, in this cited passage, was asked to read from a portion of the
`
`“Detailed Description Of The Preferred Embodiments” section of the ’871 patent
`
`that describes one embodiment where an image is transmitted “to a remote
`
`receiving station where the image is downloaded for viewing on a screen or
`
`printing on hard paper copy or other medium.” Id. at 44:18-45:16 (referring to
`
`’871 patent at 4:58-5:2). He testified that while this could describe one possible
`
`attribute of a remote receiving station, he “didn’t know if it defines a remote
`
`receiving station.” Id. at 46:1-8. He later confirmed that there is no requirement in
`
`claim 1 that a remote receiving station be able to display an image. Id. at 181:6-
`
`11; see Ex. 1014 ¶ 30. He also testified, consistent with Patent Owner’s expert and
`
`the ’871 patent, that a “remote receiving station” can be a “server.” Ex. 1014
`
`¶¶ 31, 82-83; Ex. 1013 at 142:6-14; ’871 patent at 2:42-43, 13:7-9, 13:21-23
`
`(“remote receiving devices such as … network servers”). Finally, he testified that
`
`3
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`

`
`
`
`in 1998 a number dialed on the cell phone “was communicated over the network to
`
`a server of some kind so that the call could be completed”—“a network server …
`
`[is] how you communicate with the cellular devices, through a server of some
`
`kind.” Ex. 2014 at 49:4-9, 125:14-20; Ex. 1014 ¶ 83.
`
`E. Observation No. 5 Related to 48:15-49:24
`The passage cited by Patent Owner was not discussing claim 1 or claim 12.
`
`Sasson testified that claim 6 requires that alphanumeric signals be “transmitted
`
`over the cellular network” and that he “believe[s] that transmitting numbers over a
`
`network suffices[.]” Ex. 2014 at 48:15-49:3. He stated in his Reply Declaration
`
`that “[c]laim 12 does not mention transmission of alphanumeric signals,” and that
`
`claim 1 only requires transmission of “one or some of the digitized signals (such as
`
`the digitized image frame).” Ex. 1014 ¶ 28.
`
`F. Observation No. 6 Related to 51:12-52:4 and 54:15-57:10
`Sasson testified that a person of ordinary skill in the art, applying the BRI,
`
`would understand that claim 1’s limitation of “transmitting any of the digitized
`
`signals” is not equivalent to “transmitting all of the digitized signals.” Id. ¶ 28.
`
`And that the BRI of “‘any’ in this circumstance is akin to ‘one’ or ‘some,’ and is
`
`not limited to ‘each of the members of a set,’ a much narrower interpretation”—
`
`and that this is consistent with common dictionary definitions of “any.” Id. ¶¶ 28,
`
`29; see Ex. 2014 at 181:22-182:7. He concluded that “as long as one or some of
`
`4
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`

`
`
`
`the digitized signals (such as the digitized image frame) is transmitted to the
`
`compatible remote receiving station, this claim limitation is met.” Ex. 1014 ¶ 28.
`
`He testified consistently with this passage that “if any one of [the digitized signals]
`
`can be transmitted,” this limitation is met. Ex. 2014 at 51:20-25. The cited
`
`testimony at 54:15-57:10 is a collection of irrelevant and incomplete hypotheticals
`
`raised by Patent Owner’s counsel dealing with juice, flavors of Baskin Robbins ice
`
`cream, and star constellations.
`
`G. Observation No. 7 Related to 58:23-59:24
`Contrary to its observation, Patent Owner has not argued that the preambles
`
`of claims 6 and 12 are limiting, and for claim 1, Sasson’s discussion of McNelley
`
`and the preamble from claim 1 is not an admission that the preamble is in any way
`
`limiting. As Sasson stated, with regard to claim 1, he provided disclosures from
`
`McNelley that corresponded to claim 1 of the ’871 patent’s preamble because he
`
`“was trying to be thorough … but [he] was not trying to make any kind of a legal
`
`statement” with regard to whether the preamble was limiting. Id. at 59:7-13. As
`
`he stated in his Reply Declaration, that preamble does not provide “essential
`
`structure, life, meaning, or vitality to the housing limitations.” Ex. 1014 ¶¶ 35-40.
`
`H. Observation No. 8 Related to 63:4-65:21 and 67:4-68:5
`Sasson, when asked about the legal definition of “antecedent basis” with
`
`regard to claim construction, testified that he is “not a lawyer” and did not know if
`
`5
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`

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`
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`he could “really opine on it from a legal basis.” Ex. 2014 at 63:4-8. But he also
`
`explained his layman’s interpretation of antecedent basis is “that it helps define a
`
`term that’s used later on,” for example “if you’re referring to a device or something
`
`[later in the claim], if it was defined in the preamble, you would say it had an
`
`antecedent basis[.]” Id. at 183:8-24; see also id. at 63:4-8. Patent Owner’s cited
`
`questioning regarding “housing” repeatedly added the word “same” to the claim
`
`limitations “portable housing” and “housing.” Id. at 63:22-65:21, 67:4-16. Sasson
`
`testified that the claimed housing is not limited to “one single solitary piece” or “a
`
`singular, integrated housing” (id. at 182:23-183:7; Ex. 1014 ¶¶ 33-34, 38, 41-43),
`
`and, in response to this line of questioning, had concerns about using the word
`
`“same” to describe the housing: “I have the same concerns about referring to them
`
`all being the same [housing].” Ex. 2014 at 65:5-11, 67:4-16 (“It’s contained in an
`
`enclosing structure. I don’t know if it’s all the same exact structure at the same
`
`time.”).
`
`I.
`
`Observation No. 9 Related to 68:25-70:24, 71:10-73:22, 74:17-
`75:20, and 75:25-76:24
`
`Patent Owner’s observation assumes there is redundancy in the “non-audio
`
`digital signal” claim language where there is none. Claim 12 states: “the non-
`
`audio digital signals including a selected digitized framed image.” As Sasson
`
`explained, claim 12 is “using as an example [of a non-audio digital signal] a
`
`digital image.” Id. at 174:17-175:4, 184:19-185:2; Ex. 1014 ¶¶ 45 (“the digitized
`
`6
`
`

`
`
`
`frame image transmitted is a type of non-audio digital signal”), 47 (non-audio
`
`digital signals “such as digitized framed images”) (emphasis added). Sasson
`
`identified a number of non-audio digital signals, including: video, images, and
`
`software. Ex. 1014 ¶ 93; Ex. 2014 at 141:20-23; see also Ex. 2014 at 71:10-17
`
`(also identifying text as “non-audio”). In addition, Patent Owner’s questioning
`
`focused on why the applicant drafted the “non-audio digital signal” limitation or if
`
`the claims were “poorly written” by the applicant, and Sasson responded that he
`
`cannot comment on why the applicant drafted the “non-audio digital signal” claim
`
`limitation. Ex. 2014 at 68:25-69:12 (“You’re asking me why the claim was written
`
`the way it was. I didn’t write the claim. I’m not a patent lawyer, so I can’t
`
`comment on why …”), 73:6-22, 74:17-24, 75:13-20; see also id. at 69:14-70:24.
`
`J. Observation No. 10 Related to 87:19-88:11 and 90:25-91:5
`Sasson testified that one of the user interfaces in Umezawa is “changing-
`
`over the picture frames of the control panel” and for “scrolling the picture frame of
`
`the control panel.” Ex. 1014 ¶ 67 (citing ’871 patent at 8:33-35). Sasson testified
`
`that this discloses a “user interface for enabling a user to select the image data
`
`signal for viewing and transmission,” that Umezawa “demonstrates a capability of
`
`being able to select images” because images “are scrolled using this technique,”
`
`and that Umezawa “has the capability of specifically capturing an image and
`
`displaying it and transmitting it.” Ex. 2014 at 88:17-24, 89:8-19, 90:15-24. He
`
`7
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`

`
`
`
`concluded that a POSA “would have understood that these changing-over and
`
`scrolling functions, as a streamlined user interface for reviewing stored options,
`
`could be used to change-over and scroll through stored images in McNelley just as
`
`they are used for the control panels in Umezawa.” Ex. 1014 ¶ 67. He also
`
`discussed Umezawa’s other user interfaces for selective display and selective
`
`transmission, such as using the “transmission/reception key” and the “pausing and
`
`unpausing” feature. Id. ¶¶ 68, 69; see Ex. 2014 at 185:6-22.
`
`K. Observation No. 11 Related to 92:22-93:16, 94:14-95:2, and 99:12-
`100:14
`
`Patent Owner ignores that Sasson testified in his Reply Declaration that
`
`McNelley explicitly discloses selective display and selective transmission in its
`
`various modes. Ex. 1014 ¶¶ 56-60. He later explained, in paragraphs 61-66, how
`
`the answering machine greetings function, including that “multiple greetings are
`
`prerecorded and a user designates (selects) one of those prerecorded greetings for
`
`his message box.” Id. ¶ 61. That “designation” is a specific and explicit
`
`“selection.” Id. ¶ 62. He added, consistent with the other modes in McNelley,
`
`that “the recorded greeting would have to be played back for the user to approve—
`
`an acknowledgement that increases accuracy, just like viewing a phone number on
`
`a display.” Id. Sasson testified that playing back a recorded greeting for approval
`
`was “very common at the time” to have “any type of information you wanted to be
`
`representing you by an automatic reply, you would have reviewed it first.”
`
`8
`
`

`
`
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`Ex. 2014 at 92:8-12. In the cited passage at Ex. 2014 at 99:12-100:14, Sasson was
`
`merely confirming that “selecting a greeting” happens “before the call comes in.”
`
`L. Observation No. 12 Related to 104:24-105:4, 110:1-11, and
`199:23-200:2
`
`Sasson’s testimony regarding the pause/unpause functionality and the blue
`
`screen was not “new.” As Sasson testified, the pause/unpause functionality that
`
`temporarily starts and stops transmission was addressed in the Petition (pages 21-
`
`23) and his opening declaration (paragraph 52). Id. at 186:1-188:7; Pet. 21-23
`
`(citing Umezawa at 8:6-12); Ex. 1008 ¶ 52 (citing Umezawa at 8:6-12); Umezawa
`
`at 8:6-12 (“When the pause button 37 is depressed … the photographing operation
`
`of the camera 3 (or the transmission of a photographed picture) is temporarily
`
`stopped.”). He also testified that he was responding to the Patent Owner’s
`
`Response (page 19) and the Patent Owner’s expert’s criticism (paragraphs 59-60)
`
`of the pause/unpause feature. Ex. 2014 at 188:16-190:6; Resp. 19; Ex. 2003 ¶¶ 59-
`
`60. Umezawa, as Sasson testified, also discloses selective display of images, and
`
`explicitly refers to the pause screen (which can be blue) as the “specified display
`
`picture,” that has to be “predetermined and/or designated” prior to use. Ex. 1014
`
`¶¶ 67, 69 (emphasis added). According to Sasson, choosing between two such
`
`images would have been obvious and well known. Id. ¶ 70.
`
`9
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`

`
`
`
`M. Observation No. 13 Related to 112:11-14, 114:17-20, 115:13-19,
`and 119:1-25
`
`Patent Owner’s observation fails to explain why the cited testimony is
`
`relevant to Sasson’s statements in paragraphs 73-78, in violation of the guidelines
`
`in the Trial Practice Guide. 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). The
`
`cited testimony discusses Ex. 1010, multi-tap for text entry, and image tagging.
`
`Sasson testified that McNelley and Umezawa were “referring to” a standard
`
`keypad like that shown in Ex. 1010 and that “some portions of it are shown” in, for
`
`example, “Fig. 9 of McNelley and Fig. 1 of Umezawa,” but “they just don’t show
`
`the full resolution that shows both letters and numbers on each key.” Ex. 2014 at
`
`111:12-15, 112:3-9. For multi-tap, Sasson explained that multi-tap “was a
`
`common way of [entering] text in the period of time before 1998,” that “he
`
`personally used it” and how a POSA “using the keypads in McNelley and
`
`Umezawa would have done text.” Id. at 115:20-116:17, 116:-25-117:11. Sasson
`
`noted that Patent Owner was alluding to multi-tap in its Patent Owner Response by
`
`referring to short message service (“SMS”), because the “SMS function and text
`
`messaging in general was largely exercised via the ‘multi-tap’ functionality which
`
`used the standard ten-key telephone keypad[.]” Ex. 1014 ¶ 78 (referring to Resp.
`
`15). Image tagging, as Sasson testified, “for portable devices, such as cameras”
`
`would have been “manually enter[ed]” in 1998. Ex. 2014 at 119:9-21.
`
`10
`
`

`
`
`
`N. Observation No. 14 Related to 124:18-125:9 and 125:21-126:24
`Patent Owner mischaracterizes the cited testimony. Sasson did not testify
`
`that “something different than a server is being used” (Obs. at 10) when placing a
`
`call to a network. He merely testified that the label given to the “server” could
`
`vary: “I don’t know if they would [] call it a server – they may call it a host or an
`
`operating – they may call it something different”; “they could be called servers,
`
`they could be called hosts, they could be called a lot of different things”; “I would
`
`refer to it as a[] server.” Ex. 2014 at 126:1-7, 126:23-127:19. Sasson testified that
`
`in 1998 a number dialed on the cell phone “was communicated over the network to
`
`a server of some kind so that the call could be completed”—and that “a network
`
`server … [is] how you communicate with the cellular devices, through a server of
`
`some kind.” Id. at 49:4-9, 125:14-20; Ex. 1014 ¶ 83. He added that even though
`
`“[t]he word ‘server’ is not [used in McNelley]” it was implied in McNelley’s
`
`statement that the “electronics package establishes contact with a network and
`
`sends properly processed audio and video signals to the network through a
`
`connection.” Ex. 2014 at 126:23-127:13.
`
`O. Observation No. 15 Related to 133:4-11, 135:13-136:3, 140:18-
`141:1, and 196:25-197:15
`
`Patent Owner has not contested in its Response whether McNelley or
`
`Umezawa discloses devices that are or are not “handheld” or “portable,” and has
`
`waived this argument for patentability. See Scheduling Order, Paper 13, at 3 (May
`
`11
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`

`
`
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`11, 2015) (“[A]ny arguments for patentability not raised in the response will be
`
`deemed waived.”). In the cited passages, Sasson testified that “[h]andheld means I
`
`can pick it up with my hands and use it.” Ex. 2014 at 132:23-133:1. With regard
`
`to McNelley’s Figures 8 and 9, he testified, and disagreed with Patent Owner
`
`repeatedly, that Figure 9 is only a side view of Figure 9. See id. at 134:15-135:11.
`
`Figure 9 “illustrates an additional set of dialing controls 186 and the telecamcorder
`
`controls 188 ‘built into’ the main housing that serve ‘in lieu of the controls on the
`
`handset 174’” from Figure 8, a “distinct component” from the handset. Ex. 1014
`
`¶ 90 (citing McNelley at 7:39-41, 8:11-14). He pointed out a number of
`
`differences between Figures 8 and 9 as well that support this reading. Id. ¶ 91
`
`(new ports in Figure 9; latching would obscure the face of handset 174). He also
`
`testified that the McNelley’s devices could be “small-scale” and “fit on a table”
`
`and that having a stand does not make it “not a handheld device.” Ex. 2014 at
`
`191:18-192:13.
`
`P. Observation No. 16 Related to 143:7-144:7, 145:16-146:2, and
`148:2-7
`
`Sasson’s discussion of “voice protocols” was in response to questioning
`
`from counsel attempting to apply Patent Owner’s interpretation of “non-audio
`
`digital signals” as excluding facsimile. Id. at 143:25-144:3 (“THE WITNESS:
`
`When you say ‘voice protocols’, you mean FSK, like fax? BY MR. DONAHUE:
`
`Q. Yes.”). He confirmed that facsimile could send an image digitally using FSK
`
`12
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`

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`
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`(“frequency shift keying”). Id. at 175:5-17. But Sasson has testified repeatedly
`
`that “non-audio digital signals” “doesn’t refer to transmission protocol at all,” as
`
`Patent Owner urges, because that interpretation is contrary to the claim language,
`
`the understanding of one of skill in the art, and is “unclear,” and “meaningless.”
`
`Id. at 174:17-175:4; Ex. 1014 ¶¶ 44-52. With regard to McNelley and Umezawa,
`
`Sasson testified that McNelley and Umezawa are not limited to any particular
`
`standard, and that McNelley has a more robust disclosure of cellular technology
`
`than even the ’871 patent. Ex. 1014 ¶¶ 94-96; see Ex. 2014 at 16:11-20, 170:23-
`
`171:8; Ex. 1008 ¶¶ 121, 131. Finally, Sasson testified that when he put together
`
`his initial declaration he did not have any idea that the Patent Owner was going to
`
`argue that non-audio digital signals referred to a protocol. Ex. 2014 at 195:5-11.
`
`Q. Observation No. 17 Related to 157:23-158:2, 158:5-14, 159:1-
`160:2, 160:13-15, 161:19-162:3
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`Patent Owner’s observation fails to explain why the cited testimony is
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`relevant to Sasson’s statements in paragraphs 109-110of his Reply Declaration in
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`violation of the Trial Practice Guide. 77 Fed. Reg. 48,756, 48,768 (Aug. 14,
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`2012). Sasson testified that paragraphs 109 and 110 of his Reply Declaration were
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`meant to “clarify all elements of the claim and where they showed up in the
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`respective patents.” Ex. 2014 at 159:25-160:2, 162:2-3. Patent Owner has not
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`sought to strike any portion of Sasson’s Declaration as beyond the scope of a
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`proper reply, and Patent Owner was able to cross-examine Sasson and file its
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`13
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`

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`
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`Observations with regard to paragraphs 109 and 110. With regard to the testimony
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`at Ex. 2014 at 161:19-162:3, the Board instituted inter partes review of “claims 1-8
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`and 12-14 of the ’871 patent, under 35 U.S.C. § 103, as obvious over McNelley
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`and Umezawa.” Decision at 18. The Board’s institution decision determined
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`whether there was “a reasonable likelihood of prevailing” (id. at 2)—it did not
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`make a final determination of whether McNelley or Umezawa disclosed any
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`particular element.
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`R. Observation No. 18 Related to 165:11-166:10, 166:22-167:4, and
`167:20-168:10
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`Sasson is compensated hourly for his time as an expert in this matter.
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`Ex. 1008 ¶ 2. The cited testimony says nothing about any preconceived notions
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`about invalidity of the ’871 patent nor establishes any bias on the part of Sasson.
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`On the contrary, it establishes his independence: he has previously testified against
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`Petitioner Apple in multiple proceedings. Ex. 2014 at 167:6-12. Indeed, the
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`testimony only establishes that he previously testified as a fact witness, not an
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`expert. Id. at 168:11-23. This is in stark contrast to Patent Owner’s expert who,
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`along with his wife, makes a living asserting and enabling their clients to assert
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`patents directly against both Petitioners. Reply 24-25.
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`14
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`DATED: December 2, 2015
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`By: /s/ Brian M. Buroker
`
`Brian M. Buroker (Reg. No. 39,125)
`Blair A. Silver (Reg. No. 68,003)
`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
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`Attorneys for Petitioner Apple Inc.
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`15
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`CERTIFICATE OF SERVICE
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`The undersigned certifies service pursuant to 37 C.F.R. § 42.6(e) of a copy
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`of this Response to Patent Owner’s Motion for Observations on Cross-
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`Examination by electronic mail on December 2, 2015 on the counsel of record for:
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`Patent Owner:
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`Greg Donahue, gdonahue@dpelaw.com
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`Andrew DiNovo, adinovo@dpelaw.com
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`Robert C. Curfiss, bob@curfiss.com
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`David Simmons, dsimmons1@sbcglobal.net
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`ZTE Corporation and ZTE (USA) Inc.:
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`
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`Steve Moore, steve.moore@pillsburylaw.com
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`Richard Thill, richard.thill@pillsburylaw.com
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`Barry Shelton, barry.shelton@pillsburylaw.com
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`Brian Nash, nash@pillsburylaw.com
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`
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`DATED: December 2, 2015
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`By: /s/ Brian M. Buroker
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`
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`
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`Brian M. Buroker (Reg. No. 39,125)
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`Attorney for Petitioner Apple Inc.
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`16