UNITED STATES PATENT AND TRADEMARK OFFICE
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`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_______________
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`SONY CORPORATION, SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG DISPLAY CO., LTD.
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`Petitioners,
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`v.
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`SURPASS TECH INNOVATION LLC,
`Patent Owner.
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`_______________
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`Case IPR2015-00863
`Patent 7,202,843
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`_______________
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`PATENT OWNER SURPASS TECH INNOVATION LLC’S
`OPPOSITION TO PETITIONERS’ MOTION TO EXCLUDE EVIDENCE
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`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_______________
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`SONY CORPORATION, SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG DISPLAY CO., LTD.
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`Petitioners,
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`v.
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`SURPASS TECH INNOVATION LLC,
`Patent Owner.
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`_______________
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`Case IPR2015-00863
`Patent 7,202,843
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`_______________
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`PATENT OWNER SURPASS TECH INNOVATION LLC’S
`OPPOSITION TO PETITIONERS’ MOTION TO EXCLUDE EVIDENCE
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`I.
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`Introduction
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`Petitioners’ Motion to Exclude Evidence (“Petitioners’ Motion”) (Paper 30)
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`seeks to exclude two specific exhibits or portions thereof from the record in this
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`case against U.S. Patent No. 7,202,843 (“the ‘843 patent”):
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`Exhibit Description
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`2007
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`Transcript for the Deposition of Richard Zech, Ph.D. dated November
`13, 2015, in IPR2015-00885
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`Declaration of William K. Bohannon
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`¶ 39 of
`Ex. 2022
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`None of this evidence should be excluded from this case for the reasons
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`explained below.
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`II. Exhibit 2007 is Admissible as Sworn Testimony
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`Exhibit 2007 listed above constitutes the sworn deposition testimony of a
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`technical witness tendered by petitioner LG Display Co., Ltd. (“LG”) in IPR2015-
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`00885 against the ‘843 patent. There, petitioner LG touted the technical prowess
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`of its technical witness, yet Dr. Zech gave testimony that contradicted Mr.
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`Credelle’s testimony and conclusions in this matter.
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`Petitioners’ Motion moves to exclude Exhibit 2007 as hearsay under Fed. R.
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`Evid. 802. But the relied-upon testimony of Dr. Zech is not “hearsay” under Fed.
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`R. Evid. 801, just as a signed and sworn declaration of a witness’s own testimony
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`1
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`does not constitute inadmissible hearsay. “Hearsay” is defined under the Federal
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`Rules of Evidence as a “statement, other than one made by the declarant while
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`testifying at the trial or hearing, offered in evidence to prove the truth of the matter
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`asserted.” Fed. R. Evid. 801. The statements of Dr. Zech that Petitioners wish to
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`exclude were his own opinions, based on his understanding of LCD-related
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`technology, delivered while testifying on cross-examination and under oath. Dr.
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`Zech was testifying to his own technical opinions, just as if he had issued a signed
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`and sworn declaration as to his statements for submission as evidence in this case.
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`In other words, his relied-upon testimony as contained in Exhibit 2007 included his
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`statements, offered into evidence to prove (inter alia) the truth of those statements.
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`Petitioners’ Motion treats the sworn deposition testimony of Dr. Zech as
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`somehow a lower pedigree than direct testimony provided in the form of a
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`declaration. But under the Board’s regulations, the deposition transcript of Exhibit
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`2007 is appropriate evidence under 37 C.F.R. § 42.53(a), which states that “all
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`other testimony [other than uncompelled direct testimony] … must be in the form
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`of a deposition transcript.”
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`Indeed, Exhibit 2007 does not constitute an “out-of-court” statement any
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`more than a witness’s declaration prepared, signed, and filed as an exhibit. In
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`response to Patent Owner’s filing of Exhibit 2007, Petitioners failed to take
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`appropriate steps to cross-examine the testimony of Dr. Zech in this proceeding.
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`2
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`Specifically, Petitioners made no attempt to cross-examine Dr. Zech by deposition,
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`and did not seek or include any declaration from him to either recant or explain
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`away the testimony that Petitioners now seek to exclude. Petitioners state in their
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`Motion that they “did not have the opportunity to question Dr. Zech.” Motion at 2.
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`But Petitioners have made no showing anywhere in this case that Dr. Zech was
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`unavailable for cross-examination on Exhibit 2007. Petitioners certainly never
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`contacted the undersigned Patent Owner’s counsel to set up a deposition of Dr.
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`Zech. Petitioners’ statement that they had no “opportunity” to cross-examine Dr.
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`Zech is simply unfounded.
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`Petitioners then go so far as to say that “Dr. Zech did not testify on direct at
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`the current trial” (Motion at 2), but Petitioners’ decision not to rely on Dr. Zech’s
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`testimony does not preclude Patent Owner from relying on Dr. Zech’s testimony in
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`this case. Indeed, the Board’s own Office Patent Trial Practice Guide
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`acknowledges that patent owners may submit witness testimonial evidence that is
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`not prepared specifically for the case in which it is submitted. See Office Patent
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`Trial Practice Guide, 77 Fed. Reg. 48756, 48764 (Aug. 14, 2012) (“The
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`preliminary response may present evidence other than new testimonial evidence …
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`.”).
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`At a minimum, even assuming Petitioners are correct that Dr. Zech was
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`unavailable for cross-examination by Petitioners on Exhibit 2007 (which has not
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`3
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`
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`been established), Dr. Zech’s testimony should be admitted as an exception to
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`hearsay under Fed. R. Evid. 804(b)(1), as Petitioners had the same interest in
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`challenging the claims of the ‘843 patent as petitioner LG Display Co., Ltd. in the
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`related proceedings. Moreover, contrary to Petitioners’ Motion, the residual
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`exception under Fed. R. Evid. 807 should apply in this situation, as sworn
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`testimony from an expert of a related petitioner has “equivalent circumstantial
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`guarantees of trustworthiness,” was subject to redirect examination by petitioner
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`LG Display Co., Ltd., and the statements are offered as evidence of a material fact
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`and are more probative on the point for which they are offered (i.e. even a
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`technical witness adverse to Patent Owner supports Patent Owner’s position) than
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`any other evidence that the proponent can obtain through reasonable efforts. In the
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`interest of justice, Dr. Zech’s statements should be admitted.
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`The Board should further deny Petitioners’ Motion as a matter of policy.
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`Petitioners seek to insulate Dr. Zech’s testimony in IPR2015-00885 from the
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`current case, even though the challenged patent and claims overlap, and the
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`standards of a person of ordinary skill in the art should be consistent. Granting
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`Petitioners’ Motion would create a slippery slope, where parties would be able to
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`introduce widely diverging evidence across separate cases, and then argue that the
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`evidence from other cases is “out-of-court.” This sort of gamesmanship would
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`hinder rather than promote the Board’s fact-finding. It is far better for the Board to
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`4
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`deny Petitioners’ Motion, and to appropriately weigh the cited testimony of Dr.
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`Zech from Exhibit 2007 against Mr. Credelle’s conflicting testimony.
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`In summary, the testimony contained in Exhibit 2007 should not be excluded
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`simply because Dr. Zech was not testifying in this matter. His sworn testimony
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`during deposition of his own opinions is no more hearsay than would be a sworn
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`and signed declaration provided by a witness of Patent Owner. Petitioners’
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`decision not to cross-examine or otherwise seek a responsive declaration from Dr.
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`Zech does not render his testimony “out-of-court” under Fed. R. Evid. 801.
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`For these reasons, Petitioners’ Motion as to Exhibit 2007 should be denied.
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`III. Paragraph 39 of Exhibit 2022 Should Not Be Excluded
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`As explained above, Dr. Zech’s testimony on the meaning of “hold drive”
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`should not be excluded. Further, Petitioners’ arguments to exclude Mr.
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`Bohannon’s testimony go to the weight to be given to this testimony, rather than to
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`admissibility.
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`IV. Petitioners Bear the Burden of Proof on Their Motion
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`Under 37 C.F.R. § 42.20(c), the “moving party has the burden of proof to
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`establish that it is entitled to the requested relief [sought in the motion].” See also
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`Flir Systems, Inc. v. Leak Surveys, Inc., IPR2014-00411, slip. op. at 3 (Sept. 3,
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`2015) (Paper 113). As explained in Flir Systems, Board “practice differs from that
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`in a U.S. district court where a party must move to have evidence admitted.” Id. at
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`5
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`5. When before the Board, “it is the opponent who bears the burden of establishing
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`inadmissibility of an exhibit.” Id. (citing 37 C.F.R. § 42.20(c) and 37 C.F.R. §
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`42.64(c)). Further, a motion to exclude is presented to challenge admissibility, and
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`“is not a vehicle for addressing the weight to be given evidence.” Flir Systems at 4.
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`For the reasons explained above, Petitioners have not met this burden of
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`establishing any admissibility of Patent Owner’s evidence.
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`Respectfully submitted,
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`By: /s/ Wayne M. Helge
`Wayne M. Helge (Reg. No. 56,905)
`Donald L. Jackson (Reg. No. 41,090)
`Michael R. Casey (Reg. No. 40,294)
`Davidson Berquist Jackson & Gowdey, LLP
`8300 Greensboro Drive, Suite 500
`McLean, VA 22102
`Telephone: 571-765-7700
`Fax: 571-765-7200
`Email: whelge@dbjg.com
`Email: djackson@dbjg.com
`Email: mcasey@dbjg.com
` Counsel for Patent Owner
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`Dated: April 18, 2018
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`6
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`CERTIFICATE OF SERVICE
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`I hereby certify that on April 18, 2016, a true and correct copy of the
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`foregoing PATENT OWNER’S OPPOSITION TO PETITIONERS’ MOTION TO
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`EXCLUDE EVIDENCE is being served via email by consent to the Petitioners at
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`the correspondence addresses of record as follows:
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`Lead Counsel: Walter Hanley (Reg. No. 28,720) of Kenyon & Kenyon LLP
`Backup Counsels: John Flock (Reg. No. 39,670); Jay I. Alexander (Reg. No.
`32,678) of Covington & Burling LLP.
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`Electronic Service: Sony-SurpassTech@kenyon.com
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`By: /s/ Wayne M. Helge
` USPTO Reg. No. 56,905
` Counsel for Patent Owner
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`7
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