Paper No. 33
`Filed: April 25, 2016
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`
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`Case IPR2015-00863
`U.S. Patent No. 7,202,843
`
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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
`_________________________
`
`
`
`REPLY IN SUPPORT OF PETITIONER’S MOTION TO EXCLUDE
`EVIDENCE UNDER 37 C.F.R. § 42.62(c)
`
`
`Filed: April 25, 2016
`
`
`
`
`
`
`Case IPR2015-00863
`U.S. Patent No. 7,202,843
`
`
`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
`_________________________
`
`
`
`REPLY IN SUPPORT OF PETITIONER’S MOTION TO EXCLUDE
`EVIDENCE UNDER 37 C.F.R. § 42.62(c)
`
`
`
`Case IPR2015-00863
`U.S. Patent No. 7,202,843
`
`I.
`
`INTRODUCTION
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`
`
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`Paper No. 33
`Filed: April 25, 2016
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`Petitioners, Sony Corporation, Samsung Electronics Co., Ltd. and Samsung
`
`Display Co., Ltd., submit this reply to Patent Owner’s opposition to Petitioner’s
`
`Motion to Exclude Evidence (Paper 32) (“PO Opp.”).
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`A. Exhibit 2007- Deposition Transcript of Dr. Zech
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`Patent Owner urges the Board to consider the cross-examination of an expert
`
`who testified on direct in another proceeding as though the cross-examination
`
`constitutes a “signed and sworn affidavit” submitted in this proceeding. The Patent
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`Owner misapplies 37 C.F.R. 42.53 (a) to support its position. While 37 C.F.R.
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`42.53 (a) states “all other testimony [other than uncompelled direct testimony] …
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`must be in the form of a deposition transcript,” 37 C.F.R. 42.53(d) requires that
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`“[p]rior to the taking of deposition testimony, all parties to the proceeding must
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`agree on the time and place for taking testimony.” Sony was not a party to the
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`proceeding in which Dr. Zech’s testimony was taken, and thus was not given any
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`notice or opportunity to participate in the deposition of Dr. Zech.
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`Patent Owner asserts that “petitioners failed to take the appropriate steps to
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`cross-examine the testimony of Dr. Zech in the proceeding.” PO Opp. at 2. To the
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`contrary, Petitioners had no right or occasion to cross-examine Dr. Zech because
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`Dr. Zech never testified on direct in this proceeding. Patent Owner never
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`submitted an affidavit (or declaration) of Dr. Zech in this proceeding as required
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`1
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`Case IPR2015-00863
`U.S. Patent No. 7,202,843
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`Paper No. 33
`Filed: April 25, 2016
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`by 37 C.F.R. 42.53 (a). See 37 C.F.R. 42.53 (a) (“uncompelled direct testimony
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`must be submitted in the form of an affidavit”)
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`The Patent Owner also points to the Office Patent Trial Practice Guide, 77
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`Fed. Reg. 48756, 48764 (Aug. 14, 2012), and argues that “patent owners may
`
`submit witness testimonial evidence that is not prepared specifically for the case in
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`which it is submitted.” PO Opp. at 3. Patent Owner cites to the sentence of 77
`
`Fed. Reg. 48756, 48764 that states: “The preliminary response may present
`
`evidence other than new testimonial evidence to demonstrate that no review should
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`be instituted.” (Emphasis added). This sentence does not apply for two reasons.
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`First, Dr. Zech’s testimony was not submitted with Patent Owner’s preliminary
`
`response. Second, even if Dr. Zech’s testimony had been submitted with the
`
`preliminary response, it would not have been immunized from exclusion under the
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`Federal Rules of Evidence. The sentence on which Patent Owner relies is not a
`
`loophole for patent owners to dump inadmissible evidence into the record.
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`Further, the Patent Owner’s position that a deposition transcript from a prior
`
`proceeding is automatically admissible is contrary to Fed. R. Evid. 804(b). This
`
`rule admits prior testimony as a “hearsay exception” under certain narrow
`
`circumstances—only if the former testimony is offered against a party who had, or
`
`whose predecessor in interest had, an “an opportunity and similar motive to
`
`develop it by direct, cross, or redirect examination.” Thus, if these circumstances
`
`
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`2
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`Case IPR2015-00863
`U.S. Patent No. 7,202,843
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`Paper No. 33
`Filed: April 25, 2016
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`are not present, prior testimony is inadmissible hearsay under the Federal Rules of
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`Evidence.
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`The Patent Owner’s position that Dr. Zech’s testimony should be admitted
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`under Fed. R. Evid. 804(b)(1) because Petitioners had “the same interest in
`
`challenging the claims of the ‘843 patent as petitioner LG Display Co., Ltd.” (Opp.
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`at 4) blatantly ignores the text of the rule. As discussed above, Fed. R. Evid.
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`804(b) requires that the party against whom the former testimony is now offered,
`
`or its predecessor, have had an opportunity and similar motive to develop the
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`former testimony. LG Display, the party in IPR2015-00885 who submitted Dr.
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`Zech’s direct testimony, is not the same party as any of Petitioners, nor is it a
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`predecessor of any of Petitioners.
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`Further, the residual exception, Fed. R. Evid. 807, does not apply. The
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`statements made by Dr. Zech lack “equivalent trustworthiness,” as LG Display did
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`not have the same motive to develop Dr. Zech’s testimony as Petitioners would
`
`have had. Patent Owner relies on Dr. Zech’s transcript to prove, inter alia, that
`
`“Suzuki’s definition of ‘hold drive’ is equally applicable to passive matrix LCD
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`technical”. Patent Owner’s Response (Paper 21) at 26-27. However, Suzuki is
`
`not a prior art reference in IPR2015-00885. The prior art reference at issue in
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`IPR2015-00885, Korean Patent Pub. No. 2000-00736673 (“Lee”), does not even
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`mention the term “hold drive.” Nor was the term “hold drive” mentioned in the
`
`
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`3
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`Case IPR2015-00863
`U.S. Patent No. 7,202,843
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`Paper No. 33
`Filed: April 25, 2016
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`IPR2015-00885 petition. Further, Patent Owner has not shown that the testimony
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`is more probative than other evidence on the point for which it is offered. Patent
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`Owner asserts that Dr. Zech’s testimony prove that “even a technical witness
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`adverse to Patent Owner supports Patent Owner’s position.” (Opp. at 4) However,
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`if this is what the evidence is being offered to prove, then the evidence is not
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`offered to prove a material fact and the residual exception should not apply. See
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`Fed. R. Evid. 807(a)(2).
`
`B.
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`Paragraph 39 of Exhibit 2022 – Mr. Bohannon
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`Patent Owner argues that Petitioners’ argument goes to the weight of Mr.
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`Bohannon’s testimony rather than its admissibility. However, this is a
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`mischaracterization of Petitioners’ argument. Although Petitioners demonstrated
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`that Mr. Bohannon’s opinion in Paragraph 39 should be given little to no weight,
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`Petitioners’ argued that his opinion should be excluded because the relied upon
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`hearsay, i.e. the deposition testimony of Dr. Zech, is not the “kinds of facts or
`
`data” on which an expert in this field would reasonably rely in forming an opinion
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`of this type. See Fed. R. Evid. 703, 803.
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`
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`4
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`Case IPR2015-00863
`U.S. Patent No. 7,202,843
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`Paper No. 33
`Filed: April 25, 2016
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`
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`II. CONCLUSION
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`For the reasons state above, the Board should exclude Exhibit 2007, and ¶
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`38 of Exhibit 2022.
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`
`
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`Dated: April 25, 2016
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`Respectfully submitted,
`
`/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
`
`
`
`5
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`Case IPR2015-00863
`U.S. Patent No. 7,202,843
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`Paper No. 33
`Filed: April 25, 2016
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the foregoing REPLY IN SUPPORT
`
`OF PETITIONERS’ MOTION TO EXCLUDE EVIDENCE UNDER 37 C.F.R. §
`
`42.62(c) was served electronically via email on April 25, 2016, in its entirety on
`
`Wayne M. Helge
`Donald L. Jackson
`Michael R. Casey
`wheldge@dbjg.com
`djackson@dbjg.com
`mcasey@dbjg.com
`
`Davidson Berquist Jackson & Gowdey, L.L.P.
`8300 Greenboro Drive, Suite 500
`McLean, VA 221102
`
`the following:
`
`Patent Owners:
`
`
`
`
`
`/Walter E. Hanley Jr./
`Walter E. Hanley, Jr.
`
`
`
`Dated: April 25, 2016
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