Case IPR2015-00863
`U.S. Patent No. 7,202,843
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`Paper No. 30
`Filed: April 4, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
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`SONY CORPORATION, SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG DISPLAY CO., LTD.
`Petitioners
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`v.
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`SUPRASS TECH INNOVATION LLC
`Patent Owner
`
`_________________________
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`Case IPR2015-00863
`Patent 7,202,843 B2
`_________________________
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`
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`PETITIONERS’ MOTION TO EXCLUDE
`EVIDENCE UNDER 37 C.F.R. § 42.64(c)
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`U.S. Patent No. 7,202,843
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`Paper No. 30
`Filed: April 4, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
`
`SONY CORPORATION, SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG DISPLAY CO., LTD.
`Petitioners
`
`v.
`
`SUPRASS TECH INNOVATION LLC
`Patent Owner
`
`_________________________
`
`Case IPR2015-00863
`Patent 7,202,843 B2
`_________________________
`
`
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`PETITIONERS’ MOTION TO EXCLUDE
`EVIDENCE UNDER 37 C.F.R. § 42.64(c)
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`
`
`Case IPR2015-00863
`U.S. Patent No. 7,202,843
`I.
`INTRODUCTION
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`Paper No. 29
`Filed: April 4, 2016
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`Pursuant to 37 C.F.R. § 42.64(c), Petitioners move to exclude Exhibit 2007
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`(Transcript of the Deposition of Richard Zech, Ph.D. dated November 13, 2015 in
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`IPR2015-00885) and Paragraph 39 of Exhibit 2022 (Declaration of William K.
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`Bohannon in Response to Petition of Sony Corporation et al.).
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`II. ARGUMENT
`The admissibility of exhibits submitted in a PTAB proceeding is governed
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`by the Federal Rules of Evidence. 37 C.F.R. § 42.62(a) (“the Federal Rules of
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`Evidence shall apply to a proceeding”).
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`A. Exhibit 2007 Should be Excluded Under Fed. R. Evid. 802
`The deposition testimony of Dr. Zech, Exhibit 2007, should be excluded
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`because the testimony is inadmissible hearsay under Fed. R. Evid. 802. Dr. Zech
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`did not testify on direct at the current trial, i.e., IPR2015-00863, but instead
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`testified in an unrelated trial, in IPR2015-00885, and was cross examined at a
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`deposition in that unrelated trial. Petitioners in this trial are not parties in
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`IPR2015-00885, were not present at the deposition of Dr. Zech, and did not have
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`the opportunity to question Dr. Zech. Petitioners timely objected on this ground in
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`“Petitioner’s Objections to Patent Owner’s Evidence” (“Petitioners Objections”).
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`Paper No. 22 at 1.
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`Dr. Zech’s deposition testimony is hearsay, as it is being offered by Patent
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`Owner to prove the truth of the matter asserted. See Patent Owner Surpass Tech
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`Paper No. 29
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`Case IPR2015-00863
`Filed: April 4, 2016
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`U.S. Patent No. 7,202,843
`Innovation LLC's Response Under 37 C.F.R. § 42.120 (Paper 21), page 5, footnote
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`2, pages 6-7, pages 15-16, page 19 and page 26.
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`No hearsay exception applies. For example, the former testimony exception
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`of Fed. R. Evid. 804(b)(1) does not apply as neither Petitioners nor any
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`predecessor in interest to Petitioners had an opportunity or similar motive to
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`develop Dr. Zech’s testimony by cross examination in IPR2015-00885. Further,
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`the residual exception of Fed. R. Evid. 807 does not apply. Patent Owner
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`primarily relies on the testimony of their own expert, Mr. Bohannon, and does not
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`argue that Dr. Zech’s testimony is “more prohibitive on the point for which offered
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`than any other evidence that [Patent Owner] can obtain through reasonable
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`efforts.” Fed. R. Evid. 807(a)(3).
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`B.
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`Paragraph 39 of Exhibit 2022 Should be Excluded Under Fed. R.
`Evid. 802
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`Paragraph 39 of Exhibit 2022 (Declaration of William K. Bohannon) should
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`be excluded because Mr. Bohannon relies on inadmissible hearsay, i.e., the
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`deposition testimony of Dr. Zech, discussed above. Petitioners timely objected on
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`this ground in Petitioner’s Objections. Paper No. 22 at 3. As discussed above, no
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`hearsay exception applies.
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`Nor should the Board admit paragraph 39 under Fed. R. Evid. 703 because
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`the relied upon hearsay is not the “kinds of facts or data” on which an expert in this
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`field would reasonably rely in forming an opinion. In paragraph 39, Mr. Bohannon
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`Paper No. 29
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`Case IPR2015-00863
`Filed: April 4, 2016
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`U.S. Patent No. 7,202,843
`bases his opinion that the term “hold drive” in the Suzuki prior art reference
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`(Exhibit 1003) is “not commonly known to a person of ordinary skill in the art” on
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`Dr. Zech’s testimony that “I’m not sure I know exactly . . . what hold drive
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`means.” Exhibit 2007 at 89:10-21. That is, Mr. Bohannon relies on an anecdotal
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`expression of uncertainty by one expert as the basis for his opinion that, in general,
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`those of ordinary skill in the field possess that same uncertainty. Moreover,
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`although Dr. Zech was uncertain as to the exact meaning of “hold drive,” he
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`recognized it immediately as “an electrical engineering term.” Exhibit 2007 at
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`89:10-13. Mr. Bohannon is not an electrical engineer. Exhibit 2022 at 26.
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`Petitioners’ Expert, Thomas Credelle, is an electrical engineer, and testified that he
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`had an understanding of the meaning of the term “hold drive.” See Transcript for
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`the Deposition of Thomas Credelle dated October 28, 2015, IPR2015-00863
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`(Exhibit 2004) at 121:23 – 122:8; Thomas L. Credelle Curriculum Vitae (Exhibit
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`1015) at 1.
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`Further, even if Dr. Zech had expressed an affirmative opinion that the term
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`“hold drive” is not commonly known in the field, as opposed to recognizing the
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`term but expressing uncertainty as to its meaning, Mr. Bohannon’s reliance on it
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`still would not be admissible under Rule 703. Courts have excluded expert
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`testimony that was based on another expert’s inadmissible opinion absent a basis
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`for concluding that the inadmissible opinion was reliable. For example, in TK-7
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`Paper No. 29
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`Case IPR2015-00863
`Filed: April 4, 2016
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`U.S. Patent No. 7,202,843
`Corp v. Estate of Barbouti, 993 F.2d 722, 732 (10th Cir. 1993), the court affirmed
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`the exclusion of expert testimony where the expert “failed to demonstrate any basis
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`for concluding that another individual’s opinion on a subjective financial
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`prediction was reliable, other than the fact that it was the opinion of someone he
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`believed to be an expert who had a financial interest in making an accurate
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`prediction.” Mr. Bohannon has not provided any basis for concluding that Dr.
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`Zech’s uncertainty is reliable other than that Dr. Zech is an expert.
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`III. CONCLUSION
`For the reasons stated above, Petitioners submit that the Board should
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`exclude Exhibit 2007 and ¶ 39 of Exhibit 2022.
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`Dated: April 4, 2016
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`Respectfully submitted,
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`/Walter E. Hanley, Jr./
`Walter E. Hanley Jr.
`Lead Counsel, Registration No. 28,720
`John Flock
`Backup Counsel, Registration No. 39,670
`KENYON & KENYON LLP
`One Broadway
`New York, NY 10004-1007
`Tel: 212-425-7200
`Fax: 212-425-5288
`
`Jay I. Alexander
`Backup Counsel, Registration No. 32,678
`COVINGTON & BURLING LLP
`One CityCenter, 850 Tenth Street, NW
`Washington, DC 20001
`(202) 662-6000
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`Case IPR2015-00863
`U.S. Patent No. 7,202,843
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`
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`Paper No. 30
`Filed: April 4, 2016
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`CERTIFICATE OF SERVICE
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`
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`The undersigned hereby certifies that the foregoing PETITIONERS’
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`MOTION TO EXCLUDE EVIDENCE UNDER 37 C.F.R. § 42.62(c) was served
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`electronically via email on April 4, 2016, in its entirety on the following:
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`Patent Owners:
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`Wayne M. Helge
`Donald L. Jackson
`Michael R. Casey
`wheldge@dbjg.com
`djackson@dbjg.com
`mcasey@dbjg.com
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`Davidson Berquist Jackson & Gowdey, L.L.P.
`8300 Greenboro Drive, Suite 500
`McLean, VA 221102
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`/Walter E. Hanley Jr./
`Walter E. Hanley
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004-1007
`Tel.: (212) 425-7200
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`Dated: April 4, 2016
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