UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`GOOGLE INC., and
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioners
`
`v.
`
`SUMMIT 6 LLC,
`Patent Owner
`
`
`
`
`Case IPR2015-00806
`Patent No. 7,765,482
`
`
`
`
`
`
`PETITIONERS’ REPLY IN SUPPORT OF THEIR MOTION TO
`EXCLUDE
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`GOOGLE INC., and
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioners
`
`v.
`
`SUMMIT 6 LLC,
`Patent Owner
`
`
`
`
`Case IPR2015-00806
`Patent No. 7,765,482
`
`
`
`
`
`
`PETITIONERS’ REPLY IN SUPPORT OF THEIR MOTION TO
`EXCLUDE
`
`
`
`
`IPR2015-00806
`7,765,482
`Google Inc. and Samsung Electronics Co., Ltd. (“Petitioner”) respectfully
`
`submit this Reply in Support of their Motion to Exclude (Paper 51) (the “Motion”).
`
`I.
`
`Improper Arguments on the Merits.
`
`Patent Owner’s Opposition (Paper 57) (the “Opposition”) repeatedly
`
`reargues the merits of the proceeding. For example, Patent Owner argues that an
`
`Exhibit “confirm[s] the nexus between the long-felt need and commercial success
`
`of Rimfire and the patented technology.” Opposition at 3. This is improper. Flir
`
`Sys., Inc. v. Leak Surveys, Inc., IPR2014-00411/434 Paper 113, IPR2015-00065
`
`Paper 71 (P.T.A.B. Sep. 3, 2015) (impermissible to include “continued arguments
`
`on the merits as opposed to succinctly addressing issues limited to admissibility of
`
`evidence.”). The Board should decline to consider these arguments.
`
`II. Exhibit 2015.
`Exhibit 2015 states that any data it contains is unreliable. Specifically, it
`
`states “[n]either Future Image nor these third-party providers represent, or endorse
`
`the accuracy of any advice, opinion, statement or other information presented in
`
`this report .…” Ex. 2015 at 2. Because of this disclaimer and the lack of underlying
`
`data, and because the report is incomplete, Dr. Frazier testified that Exhibit 2015 is
`
`unreliable. See, e.g., Ex. 2075 at 25:13-23; 26:6-13; 105:19-23.
`
`Patent Owner argues that because a quotation in Exhibit 2015 is confirmed
`
`in another Exhibit, the entirety of the Exhibit is confirmed. But Patent Owner has
`
`
`
`-1-
`
`
`
`IPR2015-00806
`7,765,482
`pointed to no source data to confirm the conclusions in Exhibit 2015. Nor could it,
`
`as Patent Owner’s counsel represented during the deposition of Dr. Frazier that the
`
`underlying data was not available. Ex. 2075 at 26:14-16. Patent Owner offers a
`
`case suggesting that a disclaimer does not render the Exhibit unreliable. The case
`
`considered databases, which were “among the sources of information on which …
`
`experts regularly rely….” Fed. Hous. Fin. Agency v. Nomura Holding Am., Inc., 74
`
`F. Supp. 3d 639, 657 (S.D.N.Y. 2015). But Exhibit 2015 characterizes data, rather
`
`than presenting raw data as a database would. And Patent Owner has not shown
`
`that experts “regularly rely” on this characterization. Indeed, the only marketing
`
`expert in this proceeding testified that he would not rely on its characterization. Ex.
`
`2075 at 26:10-13 (“it’s difficult for me as a marketing expert to rely on other
`
`people’s characterization of the data if I don’t have the underlying data.”). Further,
`
`Exhibit 2015 is incomplete, as evidenced by its table of contents, which shows that
`
`other companies used, presumably different, image servers. Ex. 2015 at 7-9.
`
`Patent Owner next argues that Exhibit 2015 is not offered to prove the truth
`
`of the matter asserted, but rather to prove secondary considerations. Patent Owner
`
`cites multiple decisions allegedly supporting this proposition. However, these
`
`decisions do not state that any evidence of secondary considerations is admissible
`
`as non-hearsay. Rather, each discusses advertising statements or industry praise. In
`
`contrast, the Opposition itself notes that Exhibit 2015 is used to show “a longfelt,
`
`
`
`-2-
`
`
`
`IPR2015-00806
`7,765,482
`but unresolved need [or] commercial success of the Rimfire service.” Opposition at
`
`5. Patent Owner offers statements in Exhibit 2015 for their truth, arguing it
`
`“establishes … the ‘[r]eason for [eBay’s] image server purchase.’” Opposition at 3.
`
`Patent Owner identifies a hearsay exception under Rule 803(17). But the
`
`decision Patent Owner cites found admissible reports “published in trade journals
`
`or newspapers which are accepted as trustworthy….” Virginia v. W. Virginia, 238
`
`U.S. 202, 212 (1915) (emphasis added). Patent Owner has identified no such
`
`evidence. Dr. Frazier, the only marketing expert in this proceeding, testified that he
`
`had never heard of the future image report or its author and that it is unreliable. Ex.
`
`2075 at 24:24-25:23; 26:6-13; 105:19-23.
`
`III. Exhibits 2044 and 2045.
`Patent Owner argues that “Ms. Pate provided data to support [Exhibit
`
`2045].” Opposition at 7. But Ms. Pate did not know who created the presentation.
`
`Ex. 1019 at 112:1-3 (“Q. Who created the presentation [Exhibit 2045]? A. I --
`
`someone -- either Jeff Jordan or someone working for Jeff Jordan. It was an eBay
`
`presentation.”). Similarly, Patent Owner suggests that because Exhibit 2015
`
`“contains the same illustrations” this corroborates Exhibit 2045. At best, this
`
`corroborates only those “same illustrations” not the data presented in Exhibit 2045.
`
`And Patent Owner routinely relies on this data to suggest that there was
`
`commercial success. See, e.g., Paper 28 at 53.
`
`
`
`-3-
`
`
`
`IPR2015-00806
`7,765,482
`Similarly, Patent Owner suggests that “Ms. Pate confirmed the source of the
`
`data [in Exhibit 2044].” Opposition at 7. In fact, Ms. Pate testified that she did not
`
`know who created the Exhibit, when it was created, or if the data was accurate or a
`
`projection. Ex. 1019 at 105:18-106:1 (“Q. Who created [Exhibit 2044]? A. I'm not
`
`sure. Q. Do you know when it was created? A. I don't know…. It has statistics in it
`
`through 2003. Q. Do you know if all these numbers are actual numbers? A. I'm not
`
`sure.”). And Ms. Pate also testified that the numbers presented in Exhibit 2044
`
`were not created by eBay. Ex. 1019 at 106:21-24 (“A. No. These numbers were
`
`created off the data that came from eBay.”).
`
`Patent Owner suggests that Rule 803(6) allows evidence if the records are
`
`from a predecessor. But the exact case cited by Patent Owner in fact states “Rule
`
`803(6) allows business records to be admitted if witnesses testify that the records
`
`are integrated into a company's records and relied upon in its day to day
`
`operations.” United States v. Jakobetz, 955 F.2d 786, 801 (2d Cir. 1992)
`
`(emphasis added, internal citations and quotation marks omitted). Patent Owner
`
`has presented no evidence that these Exhibits were relied upon in Summit 6’s day
`
`to day operations. Nor could it explain how two presentations, one from eBay,
`
`were relied upon in this way. Indeed, under Patent Owner’s interpretation,
`
`anything stored by a corporation would qualify under the business records
`
`exception.
`
`
`
`-4-
`
`
`
`IPR2015-00806
`7,765,482
`
`IV. Exhibits 2050, 2051, and 2058
`Patent Owner argues that Mr. Lewis and Ms. Pate testify as lay witnesses.
`
`However, Patent Owner cites to no case suggesting that lay witnesses may offer
`
`opinions on technical issues or business success. The case cited by Patent Owner
`
`allows lay witness testimony because that testimony “did not purport to opine
`
`about generally applicable standards … that would be familiar only to one with
`
`specialized or technical knowledge under Rule 702.” United States v. Kerley, 784
`
`F.3d 327, 340 (6th Cir. 2015). Here, it is inconceivable that a lay witness would be
`
`allowed to provide opinions that: “pBay … was a huge success,” “there was a
`
`long-felt need for a means to upload pre-processed images,” and “iPIX’s contract
`
`with eBay proved to be very successful.” Ex. 2050 at ¶¶ 37, 27, and 42.
`
`Contrary to Patent Owner’s suggestion, Petitioner does not attempt to strike
`
`all of Dr. Kaliski’s declaration, only the testimony he admits: (1) he is not qualified
`
`to provide, and (2) was not his opinion, but given to him by Patent Owner’s
`
`attorneys. Ex. 1017 at 81:4-12 (“A. I was told that that was the case by the
`
`attorneys that I'm working with…. I'm not really in a position to judge what
`
`is commercial success.” (emphasis added)).
`
`V. Conclusion
`For the reasons articulated above and in the Motion, Petitioner respectfully
`
`requests the Board grant its Motion to Exclude.
`
`
`
`-5-
`
`
`
`Respectfully submitted,
`
`IPR2015-00806
`7,765,482
`
`
`
`By:
`John Alemanni
`Registration No. 47,384
`Lead Counsel for Petitioner Google Inc.
`
`
`Lead Counsel
`John Alemanni
`Registration No. 47,384
`JAlemanni@kilpatricktownsend.com
`
`Postal and Hand-Delivery Address:
`Kilpatrick Townsend & Stockton LLP
`1001 West Fourth Street
`Winston-Salem, NC 27101-2400
`Telephone: (336) 607-7311
`Fax: (336) 607-7500
`
`Back-Up Counsel
`Michael Morlock
`Registration No. 62,245
`MMorlock@kilpatricktownsend.com
`
`Postal and Hand-Delivery Address:
`Kilpatrick Townsend & Stockton LLP
`1001 West Fourth Street
`Winston-Salem, NC 27101-2400
`Telephone: (336) 607-7391
`Fax: (336) 607-7500
`
`
`
`
`
`
`
`By: /s/ Brian Erickson
`Registration No. 48,895
`Lead Counsel for Petitioner Samsung Electronics Co., Ltd.
`
`
`Lead Counsel
`Brian Erickson
`Reg. No. 48,895
`Samsung_Summit-IPR@dlapiper.com
`Postal and Hand-Delivery Address:
`DLA Piper LLP (US)
`401 Congress Avenue, Suite 2500
`Austin, TX 78701
`(512) 457-7059 (phone)
`(512) 457-7001 (fax)
`
`
`
`Back-Up Counsel
`James M. Heintz
`Reg. No. 41,828
`Jim.heintz@dlapiper.com
`Postal and Hand-Delivery Address:
`DLA Piper LLP (US)
`11911 Freedom Drive, Suite 300
`Reston, VA 20190
`(703) 773-4148 (phone)
`(703) 773-5200 (fax)
`
`-6-
`
`
`
`CERTIFICATE OF SERVICE
`
`IPR2015-00806
`7,765,482
`
`The undersigned hereby certifies that a copy of this PETITIONERS’
`REPLY IN SUPPORT OF THEIR MOTION TO EXCLUDE has been served
`via electronic mail on April 20, 2016, upon the following:
`
`
`Peter J. Ayers
`peter@leehayes.com
`John Shumaker
`jshumaker@leehayes.com
`Brian Mangum
`brianm@leehayes.com
`LEE & HAYES, PLLC
`11501 Alterra Parkway, Suite 450
`Austin, TX 78758
`
`
`
`Date: April 20, 2016
`
`
`
`
`
`
`
`
`
`By:
`John C. Alemanni (Reg. No. 47,384)
`
`
`
`
`-7-
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
