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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`SAMSUNG ELECTRONICS CO., LTD., SAMSUNG DISPLAY CO., LTD., and
`SONY CORPORATION,
`Petitioners,
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`v.
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`SURPASS TECH INNOVATION LLC,
`Patent Owner.
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`_______________
`
`Case IPR2015-00887
`Patent 7,420,550 B2
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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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`SAMSUNG ELECTRONICS CO., LTD., SAMSUNG DISPLAY CO., LTD., and
`SONY CORPORATION,
`Petitioners,
`
`v.
`
`SURPASS TECH INNOVATION LLC,
`Patent Owner.
`
`_______________
`
`Case IPR2015-00887
`Patent 7,420,550 B2
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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 27)
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`seeks to exclude five specific exhibits or portions thereof from the record in this
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`case against U.S. Patent No. 7,420,550 (“the ‘550 patent”):
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`Exhibit Description
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`2004
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`2006
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`2007
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`Transcript for the Deposition of Thomas Credelle dated October 28,
`2015, IPR2015-00863
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`Transcript for the Deposition of Michael J. Marentic dated November
`11, 2015, in IPR2015-00913
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`Transcript for the Deposition of Richard Zech, Ph.D. dated November
`13, 2015, in IPR2015-00885
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`Page 164
`of Ex.
`2005
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`Handwritten Drawing performed by Dr. Liu; Included in Ex. 2005, the
`Transcript for the Deposition of Tsu-Jae King Liu dated October 30,
`2015, in IPR2015-00887
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`Chapter 3. Introduction to Electronics (available at
`http://users.ece.utexas.edu/~valvano/Volume1/E-
`Book/C3_Electronics.htm)
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`2024
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`
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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. Exhibits 2004, 2006, and 2007 are Admissible as Sworn Testimony
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`The first three Exhibits 2004, 2006, and 2007 listed above constitute the
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`sworn deposition testimony of technical witnesses tendered by the petitioners in
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`the respective identified IPR matters against Patent Owner Surpass Tech
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`1
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`
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`Innovation LLC (“Surpass”). Exhibit 2004 is in fact the testimony of Petitioners’
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`own witness, Mr. Credelle, in related IPR2015-00863 against U.S. Patent No.
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`7,202,843, and Petitioners’ counsel were present to defend and conduct redirect
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`examination of Mr. Credelle during this proceeding. See Ex. 2004 at 3. Exhibit
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`2006 is the testimony of Mr. Marentic in IPR2015-00913 brought by the Sharp
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`petitioners against the ‘550 patent at issue in this case, and Exhibit 2007 is the
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`testimony of Dr. Zech in IPR2015-00885 brought by LG Display Co., Ltd. also
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`against the ‘843 patent. In each case, the respective petitioners have touted the
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`technical prowess of their technical witnesses, yet Mr. Credelle, Mr. Marentic, and
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`Dr. Zech each gave testimony that contradicted Dr. Liu’s testimony and
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`conclusions in this matter.
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`Petitioners’ Motion moves to exclude Exhibits 2004, 2006, and 2007 as
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`hearsay under Fed. R. Evid. 801 and 802. But the relied-upon statements of Mr.
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`Credelle, Mr. Marentic, and Dr. Zech are not “hearsay” under Fed. R. Evid. 801,
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`just as a signed and sworn declaration of a witness’s own testimony does not
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`constitute inadmissible hearsay in an inter partes review. “Hearsay” is defined
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`under the Federal Rules of Evidence as a “statement, other than one made by the
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`declarant while testifying at the trial or hearing, offered in evidence to prove the
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`truth of the matter asserted.” Fed. R. Evid. 801. The statements of Mr. Credelle,
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`Mr. Marentic and Dr. Zech that Petitioners wish to exclude were their own
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`2
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`
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`opinions, based on their understanding of LCD-related technology, delivered while
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`testifying on cross-examination and under oath. They were testifying to their own
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`technical opinions, just as if they had issued a signed and sworn declaration for
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`submission as evidence in this case. In other words, their relied-upon testimony as
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`contained in Exhibits 2004, 2006, and 2007 were statements by the respective
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`declarants, offered into evidence to prove (inter alia) the truth of their statements.
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`Petitioners’ Motion treats the sworn deposition testimony of Mr. Credelle,
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`Mr. Marentic, and Dr. Zech as somehow a lower pedigree than direct testimony
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`provided in the form of a declaration. But under the Board’s regulations, these
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`deposition transcripts of Exhibits 2004, 2006, and 2007 are appropriate evidence
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`under 37 C.F.R. § 42.53(a), which states that “all other testimony [other than
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`uncompelled direct testimony] … must be in the form of a deposition transcript.”
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`Indeed, Exhibits 2004, 2006, 2007 do not constitute an “out-of-court”
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`statement any more than a witness’s declaration prepared, signed, and filed as an
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`exhibit. The only reason that Petitioners can even argue that these transcripts
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`constitute “out-of-court” statements here (see, e.g., Motion at 2) is because
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`Petitioners failed to take appropriate steps to cross-examine the testimony of Mr.
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`Credelle, Mr. Marentic, and Dr. Zech in this proceeding. Specifically, Petitioners
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`made no attempt to cross-examine by deposition any of these three witnesses, and
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`did not seek or include any declaration from any of these witnesses to either recant
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`3
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`or explain away the testimony that Petitioners now seek to exclude. Petitioners
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`state in their Motion that they had “no opportunity to examine Mr. Credelle as to
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`the truth of the matter for which is testimony is being offered.” Motion at 3.
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`Similar statements are made about Mr. Marentic and Dr. Zech. Id. at 4, 6. But
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`Petitioners’ counsel defended Mr. Credelle at the deposition identified as Ex. 2004
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`(see p. 3), and there has been no showing by Petitioners anywhere in this case that
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`these witnesses were unavailable for cross-examination by Petitioners on Exhibits
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`2004, 2006, and 2007. Petitioners certainly never contacted the undersigned Patent
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`Owner’s counsel to set up a deposition of any of these witnesses. And Mr. Credelle
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`was even present with counsel for Petitioners and Patent Owner for another
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`witness’s deposition in IPR2015-00863 (see IPR2015-00863, Ex. 1019 at p. 3).
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`Petitioners’ statement that they had “no opportunity” to cross-examine these
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`witnesses is simply unfounded.
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`Petitioners then go so far as to say that each of these three witnesses “is not a
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`witness in this trial.” Motion at 2, 4, 5. Not true. Petitioners chose not to submit a
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`declaration from any of these witnesses in this case, and elected not to cross-
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`examine these witnesses. But that does not prohibit Patent Owner from
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`introducing them as witnesses. Indeed, the Board’s own Office Patent Trial
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`Practice Guide acknowledges that patent owners may submit witness testimonial
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`evidence that is not prepared specifically for the case in which it is submitted. See
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`4
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48764 (Aug. 14, 2012)
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`(“The preliminary response may present evidence other than new testimonial
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`evidence … .”).
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`Further, at least the testimony of Mr. Credelle is admissible in this case
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`under Fed. R. Evid. 801(d)(2)(C) as non-hearsay. As noted above, Mr. Credelle is
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`Petitioners’ own witness in IPR2015-00863 and was deposed concerning the
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`subject of LCD technology. His testimony in that related matter is admissible as
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`an admission by a party-opponent since it is “a statement by a person [Mr.
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`Credelle] authorized by the party [Petitioners] to make a statement concerning the
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`subject.” Fed. R. Evid. 801(d)(2)(C). See, e.g., Glendale Fed. Bank, FSB v. U.S.,
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`39 Fed. Cl. 422, 425 (1997) (holding that prior deposition testimony of an expert
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`witness put forward as a testifying expert at trial is an admission against the party
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`who retained the expert). Mr. Credelle’s testimony has not been withdrawn in
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`IPR2015-00863 and there is no reason to believe that Petitioners have not
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`authorized Mr. Credelle’s testimony on the subject at issue in these cases. Id. at
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`424-425.
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`At a minimum, even assuming that Petitioners are correct that these
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`witnesses are unavailable for cross-examination (which has not been established),
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`the testimony should be admitted as an exception to hearsay under Fed. R. Evid.
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`804(b)(1), since Petitioners had the same interest in challenging Patent Owner’s
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`5
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`patent claims as the other petitioners in the related proceedings. Moreover,
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`contrary to Petitioners’ Motion, the residual exception under Fed. R. Evid. 807
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`should apply in this situation, as sworn testimony from an expert of a related
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`petitioner has “equivalent circumstantial guarantees of trustworthiness,” was
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`subject to redirect examination, and the statements are offered as evidence of a
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`material fact and are more probative on the point for which they are offered (i.e.
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`even a technical witness adverse to Patent Owner supports Patent Owner’s
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`position) than any other evidence that the proponent can obtain through reasonable
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`efforts. In the interest of justice, they 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 Mr. Credelle’s testimony in IPR2015-00863 from the
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`current case, even though the parties are the same, patent owner’s patented
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`technologies are both related to LCD displays, and the standards of a person of
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`ordinary skill in the art are nearly identical. Granting Petitioners’ Motion would
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`create a slippery slope, where a party would be able to introduce widely diverging
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`evidence across separate cases, and then argue that the evidence from other cases is
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`“out-of-court.” This sort of gamesmanship would hinder rather than promote the
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`Board’s fact-finding. It is far better for the Board to deny Petitioners’ Motion, and
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`to appropriately weigh the testimony of Mr. Credelle, Mr. Marentic, and Dr. Zech
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`against Dr. Liu’s conflicting testimony.
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`6
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`In summary, the testimony contained in Exhibits 2004, 2006, and 2007
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`should not be excluded simply because those witnesses were not testifying in this
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`matter. Their sworn testimony during deposition of their own opinions is no more
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`hearsay than would be a sworn and signed declaration provided by a witness of
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`Patent Owner. Petitioners’ decision not to cross-examine these witnesses or
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`otherwise seek a responsive declaration from these witnesses does not render their
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`testimony “out-of-court” under Fed. R. Evid. 801.
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`For these reasons, Petitioners’ Motion as to Exhibits 2004, 2006, and 2007
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`should be denied.
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`III. Page 164 of Exhibit 2005, Dr. Liu’s Drawing, Should Not Be
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`Excluded
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`Petitioners argue that Dr. Liu’s drawing of a resistor, surrounded by a circle,
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`should be excluded as irrelevant and misleading under Fed. R. Evid. 402 and 403.
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`As a preliminary matter, this Motion is untimely and improper. Page 164 of Ex.
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`2005 is a deposition exhibit, Ex. A. See Ex. 2005 at 164. Petitioners were required
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`to object at the deposition, and failed to make this objection at deposition. See 37
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`C.F.R. § 42.64(a); Ex. 2005 at 13. Additionally, a motion to exclude must identify
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`the objections in the record. See 37 C.F.R. § 42.64(c). Petitioners’ Motion fails to
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`do so, and must be denied.
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`7
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`Further, Petitioners’ arguments clearly go to the weight to be given to the
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`evidence, rather than to admissibility. The Board is fully capable of viewing and
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`evaluating Dr. Liu’s drawing and corresponding deposition testimony without
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`being mislead or confused.
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`Moreover, this symbol drawn by Dr. Liu is the same symbol appearing in the
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`Janssen ‘708 reference and identified as a “pixel.” Dr. Liu’s testimony and
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`familiarity with this symbol is very relevant to the weight that should be given to
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`her opinion about the technology disclosed in Janssen ‘708. Petitioners’ Motion as
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`to Dr. Liu’s handwritten drawing in Exhibit 2005 should be denied.
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`IV. Exhibit 2024 Should Not Be Excluded
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`Finally, Petitioners argue that Ex. 2024 should be excluded for lack of
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`authentication and as inadmissible hearsay. As Dr. Liu testified in the second
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`volume of her deposition, Ex. 2024 is the only reference aside from two Janssen
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`references in the case that use Janssen’s pixel symbol:
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`Q. Are you aware of any reference that you reviewed that used
`the symbol of a resistor with a circle around it other than the two
`Janssen references?
`A. So the prior art that I cited in my response -- my reply
`declaration did cite one, I believe. I can't recall -- I don't recall exactly
`which one it was. Let me check. So this Chapter 3, "Introduction to
`Electronics," that's Exhibit 2024, I recall that that had a circuit with a
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`8
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`resistor that was used to model a lightbulb, and that resistor had a
`circle around it 2 to -- it was shaded, a shaded circle.
`Ex. 2027 at 187:17-188:2. As reflected in that testimony, Dr. Liu did not indicate
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`any reason to question the accuracy of Ex. 2024. Further, Ex. 2024 is self-
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`authenticating in that it states that it is
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`“Reprinted with approval from Embedded Systems: Introduction to ARM Cortex-
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`M Microcontrollers, 2014, ISBN: 9781477508992,
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`http://users.ece.utexas.edu/~valvano/arm/outline1.htm” (see Ex. 2024 at 11), and
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`contains clearly accurate fundamentals of electrical engineering for good reason,
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`since Dr. Valvano is and has been an educator at The University of Texas at Austin
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`for over 30 years according to the website identified in Ex. 2024. The Board may
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`take judicial notice that Dr. Valvano’s text is a “reliable authority” as required
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`under Fed. R. Evid. 803(18)(B). And as noted above, Dr. Liu specifically referred
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`to Ex. 2024 on cross-examination as required under Fed. R. Evid. 803(18)(A). As
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`such, Ex. 2024 satisfies an exception to the rule against hearsay as a learned
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`treatise, and should not be excluded for lack of authentication.
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`Accordingly, Patent Owner’s evidence is admissible under the Board’s rules
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`of practice and the Federal Rules of Evidence, and is not only relevant but helpful
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`to the Board in reaching a decision on the issues before it in this case.
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`9
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`V.
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`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. 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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`Dated: April 18, 2018
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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
`10
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`CERTIFICATE OF SERVICE
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`
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`
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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: Jay I. Alexander (Reg. No. 32,678) of Covington & Burling LLP
`Backup Counsels: Andrea G. Reister (Reg. No. 36,253) and Gregory S. Discher
`(Reg. No. 42,488) of Covington & Burling LLP; John Flock (Reg. No. 39,670) of
`Kenyon & Kenyon LLP
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`Electronic Service: jalexander@cov.com; areister@cov.com; gdischer@cov.com,
`Sony-SurpassTech@kenyon.com
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`
`
`By: /s/ Wayne M. Helge
` USPTO Reg. No. 56,905
` Counsel for Patent Owner
`
`
`
`11
`
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