IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`SAMSUNG ELECTRONICS CO., LTD., SAMSUNG DISPLAY CO., LTD;
`SONY CORPORATION,
`Petitioners,
`
`v.
`
`SURPASS TECH INNOVATION LLC,
`Patent Owner.
`__________________________________________________________________
`
`Case No. IPR2015-00887
`U.S. Patent No. 7,420,550
`__________________________________________________________________
`
`
`PETITIONERS’ MOTION TO EXCLUDE
`EVIDENCE PURSUANT TO 37 C.F.R. § 42.64
`
`
`
`
`DC: 6017285-3
`
`
`
`
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`SAMSUNG ELECTRONICS CO., LTD., SAMSUNG DISPLAY CO., LTD;
`SONY CORPORATION,
`Petitioners,
`
`v.
`
`SURPASS TECH INNOVATION LLC,
`Patent Owner.
`__________________________________________________________________
`
`Case No. IPR2015-00887
`U.S. Patent No. 7,420,550
`__________________________________________________________________
`
`
`PETITIONERS’ MOTION TO EXCLUDE
`EVIDENCE PURSUANT TO 37 C.F.R. § 42.64
`
`
`
`
`DC: 6017285-3
`
`
`
`
`
`
`IPR2015-00887
`
`I.
`
`Introduction
`
`In accordance with 37 C.F.R. § 42.64(c) and the Scheduling Order (Paper
`
`No. 10) as modified by the Joint Stipulation to Modify the Scheduling Order
`
`(Paper No. 21), Petitioners Samsung Electronics Co., Ltd., Samsung Display Co.,
`
`Ltd., and Sony Corporation move to exclude Patent Owner Exhibits 2004, 2006,
`
`2007 and 2024, which were cited by Surpass Tech Innovation LLC (“Patent
`
`Owner”) in support of its Patent Owner’s Response (“PO Response,” Paper 16),
`
`filed on November 24, 2015. Petitioners further move to exclude Exhibit A of the
`
`October 30, 2015 Deposition of Tsu-Jae King Liu, Ph.D., which Patent Owner
`
`cited in its PO Response as Exhibit 2005. This motion to exclude is based on
`
`grounds listed in Petitioners’ Objections to Patent Owner’s Evidence Under 37
`
`C.F.R. § 42.64(b)(1) (“Petitioners Objections,” Paper 17), which were timely filed
`
`and served on Patent Owner on December 2, 2015. Petitioners’ motion is based on
`
`the Federal Rules of Evidence (“FRE”), relevant case law, and the PTAB’s rules as
`
`codified in the Code of Federal Regulations, Title 37, at Part 42.
`
`II. Argument
`A. Exhibit 2004 – October 28, 2015 Deposition of Thomas Credelle in
`IPR2015-00863 Case – Should Be Excluded
`
`In its PO Response, Patent Owner cited an excerpt from Thomas Credelle’s
`
`deposition testimony in another, unrelated IPR trial, IPR2015-00863. This exhibit
`
`1
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`IPR2015-00887
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`(Exhibit 2004) should be excluded under FRE 801 and 802 as inadmissible
`
`hearsay. See Petitioners Objections, pp. 1-2.
`
`Mr. Credelle is not a witness in this trial. Neither U.S. Patent No. 7,420,550
`
`(“the ’550 patent”) nor the publication of PCT Appl. WO 02/075708 to Janssen et
`
`al. (“Janssen ‘708”) (Exhibit 1004 in this proceeding) were disclosed or discussed
`
`in Mr. Credelle’s declaration or deposition in the IPR2015-00863 trial. The cited
`
`Credelle testimony from pages 31:20-32:6 of Exhibit 2004 included in the PO
`
`Response is an out-of-court statement offered in an attempt to prove that the “pixel
`
`symbol indicated in Janssen ’708 is commonly used to indicate a liquid crystal
`
`device in an LCD panel” and that “a liquid crystal pixel is not shown as a resistor
`
`in a circuit diagram.” PO Response, p. 18. The cited testimony is not being
`
`offered as evidence of what an ordinary artisan understands with respect to liquid
`
`crystal pixels, but instead in an impermissible attempt to prove the truth of the
`
`matter regarding the pixel elements disclosed in Janssen ’708. Cf. Biomarin
`
`Pharm. Inc., v. Genzyme Therapeutic Prod. Ltd. P’ship, IPR2013-00537, Paper 79,
`
`p. 25 (Exhibit offered as evidence of what it describes to an ordinary artisan, and
`
`not for proving the truth of the matters addressed in the exhibit).
`
`The cited Credelle testimony is therefore hearsay under FRE 801(c) and
`
`presumptively inadmissible under FRE 802. None of the hearsay exceptions of
`
`2
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`
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`IPR2015-00887
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`FRE 803 or 804 applies to the cited Credelle testimony and Patent Owner has not
`
`suggested that any such exceptions exist.
`
`Petitioner has had no opportunity to examine Mr. Credelle as to the truth of
`
`the matter for which his testimony is being offered. Exhibit 2004 and the
`
`testimony therein is inadmissible hearsay, and should be excluded under FRE 801
`
`and 802.
`
`B.
`
`Exhibit 2005 – Exhibit A of October 30, 2015 Deposition of Tsu-
`Jae King Liu, Ph.D. in IPR2015-00887 Case Should Be Excluded
`
`In its PO Response, Patent Owner referenced Exhibit A of Exhibit 2005,
`
`which is the deposition transcript of Petitioners’ expert witness Dr. Liu. Exhibit A
`
`of Exhibit 2005 is irrelevant and misleading, and should be excluded under FRE
`
`402 and 403. See Petitioners Objections, pp. 2-3.
`
`In the PO Response, Patent Owner characterizes Exhibit A as “the drawing
`
`prepared by Dr. Liu during the deposition” (PO Response, p. 3) and “the symbol
`
`she drew as Exhibit A of her deposition” (Id., p 20). Contrary to this
`
`representation, counsel for Patent Owner directed Dr. Liu to draw the symbol in
`
`Exhibit A. First, Patent Owner’s counsel instructed Dr. Liu to draw the electrical
`
`symbol for a resistor (Ex. 2005, p. 8:3-15), and then instructed Dr. Liu to draw a
`
`circle around the resistor symbol. Id., p. 8:16-18. Dr. Liu did not draw the entire
`
`symbol shown in Exhibit A of Exhibit 2005 in response to a question directed to
`
`common electrical symbols for a resistor – the symbol was the direct result of
`
`3
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`IPR2015-00887
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`drawing instructions from Patent Owner’s counsel, including the circle around the
`
`resistor symbol.
`
`Exhibit A to the deposition of Dr. Liu is irrelevant in light of Dr. Liu’s
`
`testimony at pages 8:5-13:17 of Exhibit 2005 establishing that the symbol
`
`appearing on the exhibit is not a commonly used symbol with a commonly
`
`understood meaning in the art and therefore its meaning depends on the context in
`
`which it is used. Patent Owner has not offered any contrary evidence and has not
`
`established the meaning of the symbol contrary to the meaning shown by Petitioner
`
`in the context of the ‘550 Patent. Thus, Exhibit A of Exhibit 2005 is irrelevant and
`
`misleading, and should be excluded under FRE 402 and 403.
`
`C. Exhibit 2006 – November 11, 2015 Deposition of Michael J.
`Marentic in IPR2015-00913 Case – Should Be Excluded
`
`In its PO Response, Patent Owner cited an excerpt from Michael J.
`
`Marentic’s deposition testimony in another, unrelated IPR trial, IPR2015-00913.
`
`This exhibit (Exhibit 2006) should be excluded under FRE 801 and 802 as
`
`inadmissible hearsay. See Petitioners Objections, p. 3.
`
`Mr. Marentic is not a witness in this trial. Neither the ’550 patent nor
`
`Janssen ‘708 were disclosed or discussed in Mr. Marentic’s declaration or
`
`deposition in the IPR2015-00913 trial. The cited Marentic testimony from page
`
`25:4-10 of Exhibit 2006 included in the PO Response is an out-of-court statement
`
`offered in an attempt to prove that “ramp retrace was applicable to LCD
`
`4
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`
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`IPR2015-00887
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`technology.” PO Response, p. 20. The cited Marentic testimony from Exhibit
`
`2006 is not being offered as evidence of what an ordinary artisan understands with
`
`respect to ramp retrace in the context of liquid crystal display devices, but instead
`
`in an impermissible attempt to prove the truth of the matter regarding ramp retrace
`
`as disclosed in Janssen ’708. Cf. Biomarin, IPR2013-00537, Paper 79, p. 25.
`
`The cited Marentic testimony is therefore hearsay under FRE 801(c) and
`
`presumptively inadmissible under FRE 802. None of the hearsay exceptions of
`
`FRE 803 or 804 applies to the cited Marentic testimony and Patent Owner has not
`
`suggested that any such exceptions exist.
`
`Petitioner has had no opportunity to examine Mr. Marentic as to the truth of
`
`the matter for which his testimony is being offered. Exhibit 2006 and the
`
`testimony therein is inadmissible hearsay, and should be excluded under FRE 801
`
`and 802.
`
`D. Exhibit 2007 – November 13, 2015 Deposition of Richard Zech,
`Ph.D. in IPR2015-00885 Case – Should Be Excluded
`
`In its PO Response, Patent Owner cited an excerpt from Dr. Richard Zech’s
`
`deposition testimony in another, unrelated IPR trial, IPR2015-00885. This exhibit
`
`(Exhibit 2007) should be excluded under FRE 801 and 802 as inadmissible
`
`hearsay. See Petitioners Objections, p. 4.
`
`Dr. Zech is not a witness in this trial. Neither the ’550 patent nor Janssen
`
`‘708 were disclosed or discussed in Dr. Zech’s declaration or deposition in the
`
`5
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`
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`IPR2015-00887
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`IPR2015-00885 trial. The cited Zech testimony from pages 87:16-89:9 of Exhibit
`
`2007 included in the PO Response is an out-of-court statement offered in an
`
`attempt to prove that “ramp retrace was applicable to LCD technology.” PO
`
`Response, p. 20. The cited Zech testimony from Exhibit 2007 is not being offered
`
`as evidence of what an ordinary artisan understands with respect to ramp retrace in
`
`the context of liquid crystal display devices, but instead in an impermissible
`
`attempt to prove the truth of the matter regarding ramp retrace as disclosed in
`
`Janssen ’708. Cf. Biomarin, IPR2013-00537, Paper 79, p. 25.
`
`The cited Zech testimony is therefore hearsay under FRE 801(c) and
`
`presumptively inadmissible under FRE 802. None of the hearsay exceptions of
`
`FRE 803 or 804 applies to the cited Zech testimony and Patent Owner has not
`
`suggested that any such exceptions exist.
`
`Petitioner has had no opportunity to examine Dr. Zech as to the truth of the
`
`matter for which his testimony is being offered. Exhibit 2006 and the testimony
`
`therein is inadmissible hearsay, and should be excluded under FRE 801 and 802.
`
`III. Exhibit 2024 – Website download entitled “Chapter 3. Introduction to
`Electronics”– Should Be Excluded
`
`Patent Owner submitted Exhibit 2024 purportedly as supporting evidence for
`
`its November 24, 2015 PO Response. As identified in Petitioners Objections,
`
`Exhibit 20243 should be excluded (i) under FRE 901 due to lack of authentication,
`
`and (ii) under FRE 801 and 802 as inadmissible hearsay.
`
`6
`
`
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`IPR2015-00887
`
`In the PO Response, Patent Owner relies on the symbols highlighted in the
`
`figures below in Exhibit 2024. See PO Response, p. 22 (citing Ex. 2024, pp. 5-6).
`
`
`
`Exhibit 2024 itself identifies these symbols as a “light bulb (modeled in this circuit
`
`as a 100Ω resistor).” Exhibit 2024 at p. 5. Patent Owner argues that Exhibit 2024
`
`supports its position that “[t]he symbol appearing as Janssen ’708’s pixel in each
`
`embodiment indicates that Janssen ‘708 is directed to a display in which
`
`illumination is generated when current passes through a resistive element.” PO
`
`Response, p. 22.
`
`Exhibit 2024, however, has not been authenticated and is unreliable. The
`
`exhibit is nothing more than a webpage printout of uncertain date. See Patent
`
`Owner Updated Exhibit List, Paper 19 (available at http://users.ece.utexas.edu/
`
`~valvano/Volume1/EBook/C3_Electronics.htm). Patent Owner has submitted no
`
`evidence to authenticate this document or to establish its publication date.
`
`As a general matter, the proponent of evidence from a website must
`
`authenticate the information from the website itself, and not just from the
`
`downloaded pages. See Victaulic Co. v. Tieman, 499 F.3d 227, 236 (3d Cir. 2007),
`
`7
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`
`
`IPR2015-00887
`
`as amended (Nov. 20, 2007) (citing United States v. Jackson, 208 F.3d 633, 638
`
`(7th Cir. 2000)). The Board has required that, for authentication purposes, the
`
`party “proffering the evidence must produce some statement or affidavit from
`
`someone with knowledge of the website . . . for example a web master or someone
`
`else with personal knowledge would be sufficient.” EMC Corp. v. Personalweb
`
`Techs., LLC, IPR2013-00084, Paper 64, p. 45-46 (quoting St. Luke’s Cataract &
`
`Laser Inst., P.A. v. Sanderson, 2006 WL 1320242, at *2 (M.D. Fla. May 12,
`
`2006)).
`
`Patent Owner has failed to provide any such authentication. Patent Owner
`
`provided no supplemental evidence in response to Petitioners’ timely objection in
`
`Paper No. 17. Patent Owner has not provided the testimony of any witness with
`
`personal knowledge of the website listed in Exhibit 2024, and has not provided any
`
`other basis for concluding that the webpage is authentic or to establish its date of
`
`publication. Thus, Exhibit 2024 lacks authentication and is inadmissible under
`
`FRE 901.
`
`Exhibit 2024 is also inadmissible in that it is an out-of-court statement
`
`offered in an attempt to prove that “[t]he symbol appearing as Janssen ’708’s pixel
`
`in each embodiment indicates that Janssen ‘708 is directed to a display in which
`
`illumination is generated when current passes through a resistive element.” PO
`
`Response, p. 22. Exhibit 2024 is hearsay under FRE 801(c) and presumptively
`
`8
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`
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`IPR2015-00887
`
`inadmissible under FRE 802. Exhibit 2024 is not being offered as evidence of
`
`what an ordinary artisan understands with respect to resistive lamp devices, but
`
`instead in an impermissible attempt to prove the truth of the matter regarding pixel
`
`element symbol as disclosed in Janssen ’708. Cf. Biomarin, IPR2013-00537,
`
`Paper 79, p. 25. None of the hearsay exceptions of FRE 803 or 804 apply to
`
`Exhibit 2024 and Patent Owner has not suggested that any such exceptions exist.
`
`The record is devoid of any supporting testimony to provide a non-hearsay
`
`foundation for the admissibility of Exhibit 2024. Notably, Patent Owner filed no
`
`expert testimony relying on Exhibit 2024 or otherwise to support the attorney
`
`argument for which Exhibit 2024 is being proffered. Thus, Exhibit 2024 is
`
`inadmissible hearsay, and should be excluded under FRE 801 and 802.
`
`
`
`
`
`9
`
`
`
`IPR2015-00887
`
`Date: April 4, 2016
`
`Respectfully submitted,
`
`
`
`Jay I. Ale ander
`Regi ‘
`tion No.: 32,678
`Andrea G. Reister
`
`Registration No.: 36,253
`Gregory S. Discher
`Registration No.: 42,488
`COVINGTON & BURLING LLP
`
`One CityCenter, 850 Tenth Street, NW
`Washington, DC 20001
`(202) 662-6000
`
`Walter E. Hanley Jr.
`Registration No.: 28,720
`John Flock
`
`Registration No.: 39,670
`KENYON & KENYON LLP
`
`One Broadway
`New York, NY 10004
`(212) 425-7200
`Attorneys for Petitioners
`
`10
`
`
`
`IPR2015—0O887
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6, I hereby certify that on this 4th day of April 2016, the
`
`foregoing Petitioners’ Motion to Exclude Evidence Pursuant to 37 C.F.R. § 42.64
`
`was served Via electronic mail by agreement of the parties upon the following
`
`counsel of record for Patent Owner:
`
`Wayne M. Helge
`Donald L. Jackson
`
`Michael R. Casey
`Whe1ge@dbjg.com
`djackson@dbjg.com
`mcasey@dbjg.com
`
`Davidson Berquist Jackson & Gowdey L.L.P.
`8300 Greensboro Drive, Suite 500
`
`McLean, VA 22102
`
`Date: April 4, 2016
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