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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`GOOGLE INC., SAMSUNG ELECTRONICS CO., LTD.,
`Petitioners,
`
`v.
`
`SUMMIT 6 LLC
`Patent Owner
`____________________
`
`CASE: IPR2015-008061
`Patent No. 7,765,482 B2
`
`Title: Web-Based Media Submission Tool
`
`PATENT OWNER’S OPPOSITION TO PETITIONERS’
`MOTION TO EXCLUDE EVIDENCE
`
`
`1 Samsung Electronics Co., Ltd., who filed a Petition in IPR2016-00029,
`has been joined as a petitioner in the instant proceeding.
`
`

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`IPR2015-00806
`U.S. Pat. No. 7,765,482 B2
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`
`I. 
`II. 
`
`TABLE OF CONTENTS
`Introduction ...................................................................................................... 1 
`Argument ......................................................................................................... 1 
`A. 
`Exhibit 2015 – Market Research Study, “Image Servers – Early
`Adopter Case Studies” .......................................................................... 1 
`1. 
`The Probative Value of Exhibit 2015 Substantially Outweighs
`the Alleged Prejudice .................................................................. 2 
`Exhibit 2015 Is Not Offered To Prove the Truth of the Matter
`Asserted and Exceptions to the Rule Against Hearsay Apply. ... 4 
`Petitioners Improperly Characterize Exhibit 2015 as a Summary
`Rather Than a Market Report ..................................................... 5 
`Exhibit 2044 – Presentation of eBay Picture Services Stats; and
`Exhibit 2045 – Presentation of eBay Jeff Jordan Senior Vice
`President, eBay U.S. .............................................................................. 6 
`1. 
`Petitioners Fail to Present Evidence That It Will Be Prejudiced
`By The Admission of Exhibits 2044 or 2045 ............................. 6 
`Exhibits 2044 and 2045 Do Not Constitute Improper Hearsay .. 8 
`2. 
`Declarations of Scott Lewis, Sarah Pate, and Dr. Martin Kaliski ......... 9 
`1. 
`Sarah Pate Offers Rationally-Based Opinion Testimony as a
`Lay Witness, Rendering FRE 702 Inapplicable ......................... 9 
`Scott Lewis Offers Rationally-Based Opinion Testimony as a
`Lay Witness, Rendering FRE 702 Inapplicable ....................... 11 
`The Declarants’ Indirect Financial Interests Do Not Present a
`Basis to Exclude Testimony ...................................................... 13 
`Dr. Martin Kaliski Declaration is Supported By Ample
`Evidence .................................................................................... 13 
`Exhibits 2073 and 2074 – Court Orders Excluding Testimony of
`Petitioners’ Expert, Dr. Gary Frazier .................................................. 14
`
`2. 
`
`3. 
`
`2. 
`
`3. 
`
`4. 
`
`B. 
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`C. 
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`D. 
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`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Application of Shuman,
`361 F.2d 1008, 1012-13 (C.C.P.A. June 16, 1966) .............................................. 4
`B/E Aerospace, Inc. v. MAG Aerospace Industries, LLC,
`IPR2014-01511, Paper 104 (March 18, 2016) ..................................................... 9
`CaptionCall, LLC v. Ultratec, Inc.,
`IPR2014-00780, Paper 35 (Dec. 1, 2015)............................................................. 2
`Cocroft v. HSBC Bank USA, N.A.,
`796 F.3d 680 (7th Cir. 2015) ................................................................................ 8
`Federal Housing Finance Agency v. Nomura Holding America, Inc.,
`74 F. Supp. 3d 639 (S.D.N.Y. 2015) .................................................................... 4
`Hynix Semiconductor Inc. v. Rambus Inc.,
`No. C-00-20905 RMW,
`2009 WL 112834 (N.D. Cal. Jan. 16, 2009) ......................................................... 4
`Manukamed Ltd. v. Apimed Medical Honey Ltd.,
`IPR2013-00234, Paper 16 (Sept. 25, 2013) .................................................... 2, 13
`Medtronic, Inc. v. Nuvasive, Inc.,
`IPR2014-00074, Paper 49 (Apr. 3, 2015) ............................................................. 4
`Neste Oil Oyj v. REG Synthetic Fuels, LLC,
`IPR2013-00578, Paper 53 (March 12, 2015) ................................................... 2, 6
`Matter of Ollag Construction Equipment Corp.,
`665 F.2d 43 (2d Cir. 1981) ................................................................................... 8
`Phillips v. Mortgage Electric Registration Systems, Inc.,
`No. 5:09-cv-2507-TM,
`2013 WL 1498956 (N.D. Ala. Apr. 5, 2013) ........................................................ 8
`United States v. Catabran,
`836 F.2d 453 (9th Cir. 1988) ................................................................................ 6
`
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`IPR2015-00806
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`United States v. Draiman,
`784 F.2d 248 (7th Cir. 1986) ................................................................................ 6
`United States v. Jakobetz,
`955 F.2d 786 (2d Cir. 1992) ................................................................................. 8
`United States v. Kerley,
`784 F.3d 327 (6th Cir. 2015) ................................................................................ 9
`United States v. Shyres,
`898 F.2d 647 (8th Cir. 1990) ................................................................................ 6
`Virginia v. West Virginia,
`238 U.S. 202 (1915) .............................................................................................. 5
`Regulations
`37 C.F.R. § 42.64(b)(1) .............................................................................................. 9
`Rules
`Federal Rule of Evidence 602 ............................................................................ 10, 12
`Federal Rule of Evidence 701 .................................................................................. 10
`Federal Rule of Evidence 803(17) ............................................................................. 5
`Federal Rule of Evidence 1006 .................................................................................. 5
`
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`I.
`
`INTRODUCTION
`
`Patent Owner Summit 6 LLC (“Summit 6”) opposes Petitioners’ Motion to
`Exclude documentary evidence and portions of each of Summit 6’s witness
`declarations. Petitioners provide several deficient challenges to documentary
`evidence that provides contemporaneous data and information showing that the
`Rimfire service achieved commercial success, solved a long-felt, but unresolved
`need, and received industry praise. This evidence is particularly relevant given that
`Petitioners’ expert did not address these exhibits, yet opined that Summit 6 did not
`provide sufficient data or information to support a conclusion with respect to the
`secondary considerations. See Ex. 1018 at ¶¶19, 24-25, 31-32, 35. In addition,
`Petitioners attempt to exclude portions of Summit 6’s witness testimony based on
`Fed. R. Evid. 702, even though the declarants testified as lay witnesses, offer
`testimony based upon their personal knowledge achieved over the course of their
`employment with the respective entities, and offer opinions rationally based on their
`perception of the events. For these reasons, Summit 6 respectfully requests that the
`Board deny Petitioners’ Motion to Exclude Evidence.
`II. ARGUMENT
`A. Exhibit 2015 – Market Research Study, “Image Servers – Early
`Adopter Case Studies”
`
`Exhibit 2015 is a highly relevant market research study conducted and
`published by the Future Image, Inc. (“Future Image”) in 2001. The Future Image
`Report provides its well-accepted independent market research to industry
`subscribers. Ex. 1019 at 114:2-22. The market research study details its methodology
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`for researching and developing the report to ensure the trustworthiness of the study.
`Ex. 2015 at 5-6. As shown below, Petitioners’ motion to exclude this highly relevant
`testimony should be denied.
`1.
`The Probative Value of Exhibit 2015 Substantially Outweighs the
`Alleged Prejudice
`
`Evidence is rarely excluded under Rule 403 in a bench proceeding. The Board
`is abundantly capable of analyzing relevant evidence and weighing its probative
`value. Because proceedings before the Board are not jury trials, “the risk of unfair
`prejudice against which Rule 403 guards is diminished, if not eliminated entirely.”
`Neste Oil Oyj v. REG Synthetic Fuels, LLC, IPR2013-00578, Paper 53 at 10 (March
`12, 2015); see also Manukamed Ltd. v. Apimed Medical Honey Ltd., IPR2013-
`00234, Paper 16 at 9 (Sept. 25, 2013) (the Board is capable of weighing the probative
`value of relevant evidence, taking into account a declarant’s status as the inventor
`when determining credibility). Despite the Board’s expertise, Petitioners fail to
`explain why the Board cannot weigh the probative value of Ex. 2015, or how Ex.
`2015 probative value is “substantially outweighed” by alleged unfair prejudice.
`
`Petitioners fail to explain how the probative value of the contemporaneous
`market research study is substantially outweighed by the general disclaimer and
`testimonials. See CaptionCall, LLC v. Ultratec, Inc., IPR2014-00780, Paper 35
`(Dec. 1, 2015) (refusing to exclude evidence under FRE 403 for failing to address
`the “substantially outweighed” aspect of the rule). Exhibit 2015 evidences the
`secondary factors of non-obviousness and thus is highly relevant. Paper 28 at 45, 49,
`50, 57, 59. Specifically, Ex. 2015 quotes an eBay representative indicating that
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`before Rimfire, uploading images to online auction listings required “an Electrical
`Engineering degree” to complete, demonstrating a need in the marketplace from
`1995 through eBay’s implementation of Rimfire in 2001. Paper 28 at 49. This
`quotation came directly from eBay representatives and is confirmed by a
`presentation from eBay’s Senior Vice President & General Manager, which is also
`referenced in the market research study. Compare Ex. 2015 at 11 with Ex. 2045 at
`9. Exhibit 2015 establishes that the “[r]eason for [eBay’s] image server purchase”
`was the “drag and drop picture submission feature of Rimfire[,]” confirming the
`nexus between the long-felt need and commercial success of Rimfire and the
`patented technology. Future Image again supported its conclusion with quotations
`from the Director of eBay Services. Ex. 2015 at 10. Finally, Ex. 2015 quotes eBay
`touting both expected and unexpected benefits derived from the patented
`technology, which are also confirmed by an eBay presentation. Compare Ex. 2015
`at 11-12 with Ex. 2045 at 7-10.
`Thus, all information utilized by Summit 6 was obtained directly from the
`“leading online marketplace for the sale of goods and services[,]” eBay, and Future
`Image acquired this data using “comprehensive questionnaire[s]” and “interviews”
`outlined in the “Methodology” section of the published market research study. This
`is precisely the type of “market research” Petitioners’ expert witness declared that
`he needed to evaluate the long-felt need in the online auction industry. Ex. 1018,
`¶21. Yet Petitioners failed to explain how the probative value of this data, the
`methodology of this research study, and the confirmation of the research study from
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`the largest online auction website is substantially outweighed by the generalized
`disclaimer. In reality, it is not.
`Furthermore, the inclusion of a general disclaimer does not render an exhibit
`so irretrievably unreliable that such evidence must be excluded wholesale. Fed.
`Housing Fin. Agency v. Nomura Holding Am., Inc., 74 F. Supp. 3d 639, 657
`(S.D.N.Y. 2015). Instead, any standard disclaimer of a study goes to the exhibit’s
`weight, not its admissibility. Id. Petitioners do not provide any support for their
`position that the disclaimer renders the study unfairly prejudicial, and it fails to
`articulate why the disclaimer substantially outweighs the probative value of the
`exhibit. Accordingly, Petitioners cannot meet their burden to exclude this exhibit.
`2.
`Exhibit 2015 Is Not Offered To Prove the Truth of the Matter
`Asserted and Exceptions to the Rule Against Hearsay Apply.
`
`Exhibit 2015 is not hearsay. It is offered to prove the existence of secondary
`considerations of non-obviousness, and not to prove the truth of the matter asserted.
`As stated in Medtronic, Inc. v. Nuvasive, Inc., IPR2014-00074, Paper 49 at 28-29
`(Apr. 3, 2015), where a party introduces documents to prove secondary
`considerations of non-obviousness, the evidence is presented for non-hearsay
`purposes and will not be excluded. See also Application of Shuman, 361 F.2d 1008,
`1012-13 (C.C.P.A. June 16, 1966) (permitting consideration of advertising
`statements by competitors as secondary considerations of non-obviousness); Hynix
`Semiconductor Inc. v. Rambus Inc., No. C-00-20905 RMW, 2009 WL 112834 (N.D.
`Cal. Jan. 16, 2009) (“the article does not constitute hearsay because it was admitted
`not for its truth, but as a proper secondary consideration of nonobviousness in the
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`form of praise from others in the industry.”). Similarly, Ex. 2015 evidences a long-
`felt, but unresolved need, commercial success of the Rimfire service, and industry
`praise. Paper 28 at 45, 49, 50, 57, 59. Thus, Ex. 2015 is not offered to prove the truth
`of the matter asserted and does not constitute hearsay.
`In addition, the Future Image Report is a market report, and qualifies as an
`exception to hearsay under Fed. R. Evid. 803(17). “[M]arket reports including those
`published in trade journals or newspapers which are accepted as trustworthy, are
`admissible in evidence.” Virginia v. W. Virginia, 238 U.S. 202, 212 (1915). The
`Future Image Report publishes market research and analysis for industry
`subscribers. Ex. 1019 at 114:2-22. Future Image published this market research
`study on the adopters of image servers in 2001. Ex. 2015 at 3-6. This exhibit falls
`squarely within the Rule 803(17) hearsay exception.
`Petitioners also argue that Ex. 2015 contains hearsay within hearsay. Paper 51
`at 3. However, Petitioners failed to object based on Rule 805. See Paper 21 at 10-11.
`As a result, Petitioners have waived their objection. In any event, Ex. 2015 is not
`hearsay, and therefore Ex. 2015 does not contain hearsay within hearsay. Petitioners’
`argument to the contrary should be rejected.
`3.
`Petitioners Improperly Characterize Exhibit 2015 as a Summary
`Rather Than a Market Report
`
`Exhibit 2015 is not a “summary” prepared by the Patent Owner; it is a market
`research study performed by an independent third-party for industry subscribers. Ex.
`1019 at 114:2-22. Moreover, it is not used “to prove the content of voluminous
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`writings.” Fed. R. Evid. 1006. Rather, it is used to prove secondary considerations
`of nonobviousness.
`Even if this market research study was a “summary,” Ex. 2015 would not fall
`within the ambit of Rule 1006, which only covers summaries prepared for trial. See
`United States v. Shyres, 898 F.2d 647, 657 n.5 (8th Cir. 1990) (holding that Rule
`1006 was inapplicable because summary was not created in preparation for trial);
`United States v. Draiman, 784 F.2d 248, 256 (7th Cir. 1986) (holding that business
`records are not summaries because they are not prepared for trial as “secondary
`evidence”) (emphasis in original); see also United States v. Catabran, 836 F.2d 453,
`457 (9th Cir. 1988). Here, this market research study was not prepared for trial.
`Accordingly, it is not implicated by Rule 1006. Reading Rule 1006 as broadly as
`Petitioners do, would swallow Rule 803(17), thereby rendering void any exception
`to hearsay for market reports.
`Because Ex. 2015 is not a summary, it is not used to prove the content of
`voluminous writings, and it was not prepared for trial, Petitioners’ motion to exclude
`Ex. 2015 must be denied.
`B.
`Exhibit 2044 – Presentation of eBay Picture Services Stats; and Exhibit
`2045 – Presentation of eBay Jeff Jordan Senior Vice President, eBay
`U.S.
`1.
`
`Petitioners Fail to Present Evidence That It Will Be Prejudiced By
`The Admission of Exhibits 2044 or 2045
`
`Petitioners’ challenges to Exs. 2044 and 2045 suffer from similar deficiencies
`as their allegations pertaining to Ex. 2015. As outlined above, because this inter
`partes proceeding is not a jury trial, any risk of unfair prejudice is diminished, if not
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`eliminated, and the Board can appropriately weigh the relevant evidence. Neste Oil,
`IPR2013-00578, Paper 53 at 10.
`In addition, each exhibit is supported with testimonial and documentary
`evidence that confirms its accuracy. With respect to Ex. 2045, Petitioners question
`the source of the information, notwithstanding the exhibit plainly states on the cover
`page the name of the author and the entity he represents. Jeff Jordan, Senior Vice
`President of eBay U.S., executed the Visual Content Services Agreement between
`iPIX and eBay, (Ex. 2033 at 19), drafted, and gave the presentation, (Ex. 1019 at
`112:1-3). Ms. Pate provided data to support this presentation, which took place on
`March 13, 2001. Ex. 2051, ¶33. The Future Image Report also corroborates Jeff
`Jordan’s presentation, and contains the same illustrations. Ex. 2015 at 11 (“At the
`Future Image Internet Imaging Symposium at Internet World in March 2001, * Jeff
`Jordan, Senior Vice President & General Manager, eBay U.S., elaborated on the
`benefits of working with iPIX, including those incremental revenue streams.”).
`Thus, several independent sources confirm the accuracy of Ex. 2045.
`With respect to Ex. 2044, the source of the information is listed on the exhibit:
`“Source: eBay Data Warehouse; all eBay sites.” Ex. 2044 at 4-9. Ms. Pate confirmed
`that iPIX’s agreement with eBay required eBay to provide raw image data, and the
`figures “were created off the data that came from eBay” and “the percentages would
`have come from looking at that data and extrapolating the penetration rates.” Ex.
`1019 at 106:7-107:10. Thus, Ms. Pate confirmed the source of the data, and no
`evidence or testimony refutes the accuracy of the information.
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`Petitioners fail to establish that it will be unfairly prejudiced by the Board’s
`reliance on Exhibits 2044 or 2045, and has not attempted to prove that the alleged
`prejudice “substantially outweigh[s]” the probative value of the contemporaneous
`data establishing the success of the Rimfire service. Consequently, the Board can
`adequately ascertain the appropriate weight to be given to the data and information
`presented by Summit 6 to support the commercial success of the Rimfire service.
`2.
`Exhibits 2044 and 2045 Do Not Constitute Improper Hearsay
`
`As demonstrated above, Summit 6 does not present Exs. 2044 and 2045 to
`prove the truth of the matter asserted, but to prove that Rimfire’s patented technology
`achieved commercial success as a result of iPIX’s exclusive relationship with the
`nation’s largest online auction website. Thus, Exs. 2044 and 2045 are not hearsay.
`Nonetheless, each Exhibit is admissible under the business record exception. Rule
`803(6) allows business records to be admitted if a company integrates the records
`from its predecessor. United States v. Jakobetz, 955 F.2d 786, 801 (2d Cir. 1992)
`(quoting Matter of Ollag Constr. Equip. Corp., 665 F.2d 43, 46 (2d Cir. 1981));
`Phillips v. Mortgage Elec. Registration Sys., Inc., No. 5:09-cv-2507-TM, 2013 WL
`1498956 at *2 (N.D. Ala. Apr. 5, 2013). In addition, the records custodian “need not
`be in control of or have individual knowledge of the particular corporate records, but
`need only be familiar with the company’s recordkeeping practices.” Cocroft v.
`HSBC Bank USA, N.A., 796 F.3d 680, 686 (7th Cir. 2015). Ms. Pate confirmed the
`exhibits’ reliability by testifying that they were incorporated from its predecessor,
`maintained in the regular course of business, and that it was a regular practice of
`Summit 6 to make the record. See Ex. 2051 at ¶¶13, 32-34; Ex. 1019 at 44:21-49:6.
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`Consequently, Petitioners have failed to establish a basis for exclusion under either
`Rule 403 or 802.
`C. Declarations of Scott Lewis, Sarah Pate, and Dr. Martin Kaliski
`
`Petitioners’ motion should be denied for their failure to make effective
`objections to the declarations at issue. The lack of an effective objection is a
`sufficient basis to deny a motion to exclude. B/E Aerospace, Inc. v. MAG Aerospace
`Indus., LLC, IPR2014-01511, Paper 104 at 15-16 (March 18, 2016). In B/E
`Aerospace, the Board found the patent owner failed to make effective objections
`because it filed boilerplate objections based on numerous rules of evidence and did
`not reference the specific paragraph of the witness’s declaration. Id. Here, Petitioners
`similarly provided boilerplate objections, failed to identify any particular
`paragraphs, and failed to identify the underlying basis for the objections. Paper 31
`at 5-7, 12-13. As a result, even if Summit 6 could ascertain Petitioners’ intended
`objections, it was unable to correct in the form of supplemental evidence. 37 C.F.R.
`§ 42.64(b)(1). The Board should reject Petitioners’ arguments on this basis alone.
`1.
`Sarah Pate Offers Rationally-Based Opinion Testimony as a Lay
`Witness, Rendering FRE 702 Inapplicable
`
`Petitioners seek to exclude portions of ¶¶24, 29, and 31 of the Pate Declaration
`by mischaracterizing Ms. Pate as an expert witness. However, she is testifying as a
`lay witness, and her testimony is derived from personal knowledge gained through
`participation in the business’s day-to-day affairs. Ex. 2051 at 3, ¶¶4-6. Lay opinion
`testimony is allowed where it is “based on particularized knowledge on a variety of
`topics, when the witness gained such knowledge through employment or
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`involvement in the day-to-day affairs of the business in question.” United States v.
`Kerley, 784 F.3d 327, 339 (6th Cir. 2015). Over the course of her employment, Ms.
`Pate recorded press releases for pBay, (Ex. 2051 at ¶25), submitted image statistics
`for eBay presentations, (id. at ¶33), negotiated the agreement between iPIX and
`eBay, (id. at ¶¶29, 48), and reviewed eBay imaging reports, services statistics, and
`revenue reports, (id. ¶¶29, 31). These statements demonstrate that any alleged
`opinion in ¶¶24, 29, and 31 in her declaration was rationally based on her perception,
`and is admissible under Fed. R. Evid. 701.
`Petitioners also object to portions of ¶¶16, 38, and 50 because Ms. Pate
`allegedly provided testimony without having first-hand knowledge. This objection
`is based on Fed. R. Evid. 602, and Petitioners have waived this objection because it
`chose not to file any objection on this ground. Paper 31 at 6-7. Nonetheless, Ms. Pate
`testified that she was “personally acquainted with the facts herein stated.” Ex. 2051
`at 3. Moreover, Petitioners ignore that Ms. Pate interacted closely with eBay and
`other entities during which she gained relevant first-hand knowledge. Id. at ¶¶14, 21,
`29, 31, 33, 37, 39; Ex. 1019 at 97:5-24. In particular, she received feedback from
`realtors as discussed in ¶16, (Ex. 1019 at 59:14-60:24; Ex. 2051 at ¶17; Ex. 2007),
`she understood how Summit 6’s technology fit into eBay’s business model as
`discussed in ¶38, (Ex. 2051 at ¶¶29-31, 33, 39; Ex. 1019 at 104:2-105:8, 110:21-
`111:12, 117:3-118:9), and she was aware of the articles describing the value of
`Summit 6’s patents as discussed in ¶50 of her declaration, (Ex. 2051 at ¶¶50-54).
`These interactions provided the personal knowledge underlying Ms. Pate’s
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`declaration testimony. Finally, Petitioners provide no basis for which to exclude ¶33.
`Thus, Petitioners’ motion to exclude should be denied.
`2.
`Scott Lewis Offers Rationally-Based Opinion Testimony as a Lay
`Witness, Rendering FRE 702 Inapplicable
`
`Similar to the declaration of Sarah Pate, Petitioners attempt to exclude
`portions of ¶¶11-13, 19, 27-28, 30, 32-33, 37-38, and 41-43 based on the
`misconception that inventor Scott Lewis is testifying as an expert witness. However,
`Mr. Lewis is testifying as a lay witness and his testimony is derived from personal
`knowledge gained through participation in the PictureWorks and iPIX’s day-to-day
`affairs. Ex. 2050 at 3, ¶¶3-5. While at PictureWorks, Mr. Lewis designed new
`software programs, (id. at ¶5), met with major real estate companies to analyze their
`imaging needs, (id. at ¶10), became familiar with eBay based on his own shopping
`experiences and discussions on eBay support forums, (id. at ¶27; Ex. 1016 at 92:19-
`93:5), launched the pBay website, (Ex. 2050 at ¶36), and communicated with iPIX
`on behalf of PictureWorks to showcase their products and technology, (Ex. 1016 at
`123:5-18). Throughout these day-to-day business activities, Mr. Lewis developed
`personal knowledge of the requirements of webpages, the speed of internet
`connections, the needs of people in the real estate market, the success of pBay, and
`the value of iPIX’s acquisition of PictureWorks. Thus, Mr. Lewis, a named inventor
`on the Summit 6 patents, had personal knowledge regarding various website
`requirements, (Ex. 2050 at ¶11), and functionalities of other websites, (id. at ¶37).
`In short, Mr. Lewis had personal knowledge regarding his technical and economic
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`testimony in his declaration. Mr. Lewis’ statements demonstrate that any alleged
`opinion was rationally based on his perception, and is admissible under Rule 701.
`Petitioners’ allegation that Mr. Lewis based some unidentified opinions on
`Ex. 2016 and 2025 without laying the proper foundation as to their authoritativeness
`is a red herring. Petitioners do not identify any opinions in ¶¶28, 38, or 43. Indeed,
`Mr. Lewis merely testified regarding facts in each respective exhibit that evidence
`secondary consideration factors such as meeting a long-felt need and commercial
`success. As discussed above, such evidence is not hearsay. Furthermore, Petitioners
`do not challenge the admissibility of the treatises themselves. Accordingly, ¶¶28, 38,
`and 43 of Mr. Lewis’ declaration should not be excluded.
`As with Ms. Pate, Petitioners object to unidentified testimony because Mr.
`Lewis allegedly provided testimony for which he did not have first-hand knowledge.
`This objection is based on Fed. R. Evid. 602, and Petitioners have waived this
`objection for failure to file any objection on this ground. Paper 31 at 5-6.
`Nonetheless, Mr. Lewis testified in his declaration that he was “personally
`acquainted with the facts herein stated.” Id. at 3. Moreover, Petitioners ignore that
`Mr. Lewis interacted closely with eBay and other entities during which he gained
`relevant first-hand knowledge. Ex. 2050 at ¶¶9-10, 32, 33, 35. In particular, he met
`with several real estate companies to analyze their imaging needs and the various
`website requirements as discussed in ¶¶11, 12, and 19, (Ex. 2050 at ¶¶9-10; Ex. 1016
`at 40:12-41:24), he used the eBay website, reviewed the seller workflow,
`communicated on eBay’s online support forums, and learned that imaging was
`eBay’s primary customer support issue and it had a need for a solution, as discussed
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`in ¶¶27, 30, (Ex. 2050 at ¶27; Ex. 1016 at 92:19-94:25, 106:12-107:11), he met with
`eBay representatives and observed their immediate reactions as discussed in ¶¶32-
`33, he observed the success of pBay by viewing the growth rate and viewing eBay
`support forums as discussed in ¶37, (Ex. 1016 at 117:22-119:6), he communicated
`with iPIX and supported negotiations by providing technical information in
`preparation for iPIX’s acquisition of PictureWorks as discussed in ¶41, (Ex. 1016 at
`122:22-124:25), and he viewed eBay’s user adoption and observed eBay’s interest
`in the revenue growth, (Ex. 1016 at 131:24-132:7). Finally, Petitioners provide no
`basis for which to exclude ¶13. Thus, for each of these reasons, Petitioners’ motion
`should be denied.
`3.
`The Declarants’ Indirect Financial Interests Do Not Present a
`Basis to Exclude Testimony
`
`Petitioners contend that testimony from inventor Scott Lewis and Sarah Pate
`should be excluded in their entirety under 403 based on their financial interest in the
`matter. However, as Petitioners admit, this is a matter of witness credibility, and the
`Board can adequately weigh the witness’s status. See Manukamed Ltd., IPR2013-
`00234, Paper 16 at 9 (the Board is capable of taking into account the status of the
`declarant). Thus, the Board can properly assess Mr. Lewis and Ms. Pate’s status
`under Rule 403.
`4.
`Dr. Martin Kaliski Declaration is Supported By Ample Evidence
`
`Petitioners argue that ¶185 of Dr. Kaliski’s declaration should be excluded.
`Yet in doing so, Petitioners ignore Dr. Kaliski’s extensive (and unrebutted) analysis
`that Summit 6’s Rimfire, including the Prepare and Post Tools, embody the
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`challenged claims. Ex. 2058, § XIII, ¶¶186–310. Indeed, Summit 6 has put forth
`extensive evidence of secondary considerations of nonobviousness, including
`solving a long-felt need, obtaining significant commercial success, receiving a wide
`array of industry recognition, and obtaining licenses to the patents at issue. Paper 28,
`at 44–60; Exs. 2050, 2051. Dr. Kaliski’s opinion in ¶185 regarding Summit 6’s
`commercial products embodying the challenged claims is proper expert testimony,
`and should not be stricken.
`D. Exhibits 2073 and 2074 – Court Orders Excluding Testimony of
`Petitioners’ Expert, Dr. Gary Frazier
`
`Petitioners argue that Exs. 2073 and 2074 should be excluded under Rules 402
`and 403. Not so. First, these exhibits are relevant because they evidence Dr. Frazier’s
`bias and rebut his credibility in areas beyond mere trade dress. The underlying issue
`for Dr. Frazier in these inter partes review is not trade dress (his alleged expertise),
`but rather secondary considerations of nonobviousness—issues that are not within
`his expertise. Moreover, to the extent that his marketing background is relevant, two
`different federal district court judges have found his methodology so careless that it
`was excluded. Because Exs. 2074 and 2075 go to Dr. Frazier’s credibility as an
`expert, those exhibits should not be excluded.
`Exhibits 2073 and 2074 are highly relevant because in each case, the district
`court found Dr. Frazier’s expert testimony to be meritless. In Exhibit 2073, Dr.
`Frazier designed a market study of likelihood of confusion—allegedly within his
`area of expertise—with a fatal flaw. Ex. 2073 at 13. Specifically, Dr. Frazier’s
`survey compared Defendant’s and other manufacturers’ handbags having heart
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`decorations. The color of the Defendants’ handbags matched the distinctive color of
`Plaintiff’s products, whereas the other manufacturers’ handbags in the survey did
`not. Ex. 2073 at 13. Rather than proving ‘actual consumer confusion about
`[Plaintiff’s] brand,” Dr. Frazier’s flawed and bias survey merely “tested the ability
`of participants to pick the most obvious match. Id. Because “color is not an element
`of [Plaintiff’s] definition of trade dress,” the Court excluded Dr. Frazier’s opinion
`on likelihood of confusion. Ex. 2073 at 13.
`Similarly, Dr. Frazier’s testimony was also excluded from a case in the
`Southern District of California. Ex. 2074. In that case, Judge Fischer found Dr.
`Frazier’s testimony inadmissible as it was based on flawed methodology. “Frazier’s
`testimony as to ‘Advantages to the Defendants,’ (¶¶37–47), and ‘Damages to the
`Stop Staring! Business,’ (¶¶48–54), are totally lacking in supporting methodology
`and are basically a regurgitation of Plaintiff’s argument,” (Ex. 2074 at 2), and further
`that “Frazier cites Plaintiff’s witnesses . . . and states Plaintiff’s desired conclusions
`without any apparent analysis or application or expertise.” Ex. 2074 at 3. That two
`different district courts held Dr. Frazier’s testimony regarding trade dress—his
`alleged area of expertise—inadmissible goes directly to his credibility and bias.
`These judi