UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––––––––––
`
`THE MANGROVE PARTNERS MASTER FUND, LTD., and APPLE INC., and
`BLACK SWAMP IP, LLC,
`Petitioners,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`
`––––––––––––––––––
`
`Case No. IPR2015-010471
`U.S. Patent No. 7,490,151
`
`––––––––––––––––––
`
`PETITIONERS’ OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE
`
`
`
`1 Apple Inc. and Black Swamp IP, LLC, who filed a petitions in IPR2016-00063
`and IPR2016-00167, respectively, have been joined as a Petitioner in the instant
`proceeding.
`
`
`
`
`––––––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––––––––––
`
`THE MANGROVE PARTNERS MASTER FUND, LTD., and APPLE INC., and
`BLACK SWAMP IP, LLC,
`Petitioners,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`
`––––––––––––––––––
`
`Case No. IPR2015-010471
`U.S. Patent No. 7,490,151
`
`––––––––––––––––––
`
`PETITIONERS’ OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE
`
`
`
`1 Apple Inc. and Black Swamp IP, LLC, who filed a petitions in IPR2016-00063
`and IPR2016-00167, respectively, have been joined as a Petitioner in the instant
`proceeding.
`
`
`
`
`IPR2015-01047
`
`
`
`Petitioners’ Opp. to Mot. to Exclude
`
`Table of Contents
`
`I.
`
`II.
`
`Introduction ...................................................................................................... 1
`
`Argument ......................................................................................................... 1
`
`A.
`
`Exhibits 1029 and 1031-1033 Are Admissible Under Fed. R. Evid.
`807. ........................................................................................................ 1
`
`B.
`
`Exhibits 1034, 1037, 1039-1042 Are Admissible. ................................ 8
`
`1.
`
`2.
`
`Exhibits 1037, 1041, and 1042 Are Not Hearsay. ...................... 8
`
`Exhibits 1034, 1037, 1039-1042 Are Admissible Under Fed. R.
`Evid. 803(16), 803(17), and/or 807. ........................................... 9
`
`C.
`
`Exhibits 1010, 1012-1014, and 1044 Are Relevant. ........................... 14
`
`III. Conclusion ..................................................................................................... 15
`
`
`
`
`
`
`
`i
`
`
`
`IPR2015-01047
`
`
`
`Petitioners’ Opp. to Mot. to Exclude
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Apple Inc. v. Smartflash LLC,
`CBM2014-00180, Paper 50 (Sep. 25, 2015) ...................................................... 14
`
`CA Inc. v. Simplecom Inc.,
`780 F. Supp. 2d 169 (E.D. N.Y. 2009) ................................................................. 2
`
`Conoco Inc. v. Dept. of Energy,
`99 F.3d 387 (Fed. Cir. 1996) .......................................................................... 8, 11
`
`Doe v. United States,
`976 F.2d 1071 (7th Cir. 1992), cert. denied 510 U.S. 812 (1993) ....................... 1
`
`Ericsson Inc. v. Intellectual Ventures I LLC,
`IPR2014-00527, Paper 41 (May 18, 2015) ........................................... 6, 8, 11, 13
`
`IBM Corp. v. Intellectual Ventures II LLC,
`IPR2015-00089, Paper 44 (Apr. 25, 2016) ....................................................... 1, 7
`
`OddzOnProducts, Inc. v. Just Toys, Inc.,
`122 F.3d 1396 (Fed. Cir. 1997) .......................................................................... 13
`
`PGMedia, Inc. v. Network Solutions, Inc.,
`51 F. Supp. 2d 389 (S.D.N.Y. 1999) .................................................................... 6
`
`Poole v. Textron, Inc.,
`192 F.R.D. 494 (D. Md. 2000) ............................................................................. 5
`
`QSC Audio Prods., LLC v. Crest Audio, Inc.,
`IPR2014-00127, Paper 43 (Apr. 29, 2015) ................................................... 10, 12
`
`Ultratec, Inc. v. Sorenson Commc'ns, Inc.,
`No. 13-CV-346, 2014 WL 4829173 (W.D. Wis. Sept. 29, 2014) ........................ 5
`
`United States v. North,
`910 F.2d 843 (D.C. Cir. 1990) cert. denied 500 U.S. 941 (1991) ........................ 1
`
`ii
`
`
`
`IPR2015-01047
`
`Statutes
`
`
`
`Petitioners’ Opp. to Mot. to Exclude
`
`35 U.S.C. § 316(b) ..................................................................................................... 6
`
`Other Authorities
`
`37 C.F.R. § 42.1(b) .................................................................................................... 6
`
`37 C.F.R. § 42.65 ..................................................................................................... 14
`
`Fed. R. Civ. P. 32(a)(8) .............................................................................................. 5
`
`Fed. R. Evid. 401 ..................................................................................................... 14
`
`Fed. R. Evid. 402 ..................................................................................................... 14
`
`Fed. R. Evid. 801(c)(2) .............................................................................................. 8
`
`Fed. R. Evid. 803(16) ................................................................................................. 9
`
`Fed. R. Evid. 803(17) ......................................................................................... 10, 11
`
`Fed. R. Evid. 807 ..............................................................................................passim
`
`
`
`iii
`
`
`
`IPR2015-01047
`
`I.
`
`Introduction
`
`
`
`Petitioners’ Opp. to Mot. to Exclude
`
`The evidence of record establishes that Exhibits 1010, 1012-1014, 1029,
`
`1031-1034, 1037, 1039-1042 and 1044 are admissible. Patent Owner has failed to
`
`show otherwise, and thus, its motion must be denied. See Paper 66 (“Mot.”).
`
`II. Argument
`
`A. Exhibits 1029 and 1031-1033 Are Admissible Under Fed. R. Evid.
`807.
`
`Patent Owner seeks to exclude Exhibits 1029 and 1031-1033 as inadmissible
`
`hearsay, Mot. at 3-5, but these exhibits, to the extent they are hearsay, fall within
`
`an exception to the hearsay rule. Under Federal Rule of Evidence 807, a
`
`“statement is not excluded by the rule against hearsay” if: “(1) the statement has
`
`equivalent circumstantial guarantees of trustworthiness; (2) it is offered as
`
`evidence of a material fact; (3) it is more probative on the point for which it is
`
`offered than any other evidence that the proponent can obtain through reasonable
`
`efforts; and (4) admitting it will best serve the purposes of these rules and the
`
`interests of justice.” Fed. R. Evid. 807(a). The testimony’s proponent must also
`
`give (5) “reasonable notice of the intent to offer the statement and its particulars.”
`
`Fed. R. Evid. 807(b). Courts are accorded wide discretion in applying this
`
`exception. IBM Corp. v. Intellectual Ventures II LLC, IPR2015-00089, Paper 44 at
`
`55-56 (Apr. 25, 2016) (citing Doe v. United States, 976 F.2d 1071, 1076–77 (7th
`
`Cir. 1992), cert. denied 510 U.S. 812 (1993); United States v. North, 910 F.2d 843,
`
`1
`
`
`
`IPR2015-01047
`
`
`
`Petitioners’ Opp. to Mot. to Exclude
`
`909 (D.C. Cir. 1990) cert. denied 500 U.S. 941 (1991)).
`
`Exhibits 1029 and 1031-1033 qualify for the residual exception to the rule
`
`against hearsay. Fed. R. Evid. 807. Exhibits 1029 and 1031 include the testimony
`
`of Ms. Sandy Ginoza, and, Exhibits 1032 and 10332 are articles from trade
`
`publications dated from 1999. Each exhibit is relied upon to show that RFCs—in
`
`particular RFC 1034—were publicly available for distribution via the Internet prior
`
`to February 2000. Paper 56 at 20. To the extent these exhibits contain statements
`
`that are hearsay, they satisfy the residual exception to hearsay, and are admissible.
`
`First, Exhibits 1029 and 1031-1033 have equivalent circumstantial
`
`
`
`2 Exhibits 1032-1033 are independently admissible because each is being used to
`
`demonstrate that various RFCs are available from the IETF’s webpage, and that the
`
`skilled person, exercising reasonable diligence, would have known how to locate
`
`the RFCs, Paper 50 at 21. The exhibits are not hearsay when used for this purpose.
`
`See, e.g., CA Inc. v. Simplecom Inc., 780 F. Supp. 2d 169, 227-228 (E.D. N.Y.
`
`2009) (“The Meininger email is not hearsay because it is not being offered for the
`
`truth of its contents… Rather, it is offered to show that the Meininger web page
`
`was available in May of 1998 because it was disseminated to members of the
`
`public…. Reply e-mails are not hearsay because… [they] show that others
`
`accessed, used and were aware of the Meininger reference.”).
`
`2
`
`
`
`IPR2015-01047
`
`
`
`Petitioners’ Opp. to Mot. to Exclude
`
`guarantees of trustworthiness. See Fed. R. Evid. 807(a)(1). Exhibits 1029 and
`
`1031 contain the prior sworn testimony of Ms. Ginoza and IETF and reflect Patent
`
`Owner’s cross-examination of Ms. Ginoza on the substance of her testimony.
`
`Exhibit 1029 is a declaration from Sandy Ginoza, acting as a designated
`
`representative of the IETF, created in response to a subpoena served as part of an
`
`investigation initiated by Patent Owner before the International Trade Commission
`
`(337-TA-858). Ex. 1029 at ¶¶ 1-5; Ex. 1031 at 6:23-7:4, 10:5-14. In her
`
`declaration, Ms. Ginoza testified that RFC 1034 was published on the RFC
`
`Editor’s website and was publicly available on the website or through other means
`
`since its publication in November 1987. Ex. 1029 at ¶¶ 9-11. Exhibit 1031 is the
`
`transcript of Ms. Ginoza’s February 8, 2013 deposition that was taken as part of
`
`the ITC action, where she testified that RFC 1034 was publicly available as of
`
`November 1987. Ex. 1031 at 20:23-22:9. During this deposition, Patent Owner
`
`had an opportunity to cross-examine Ms. Ginoza about her testimony and
`
`declaration, but developed no contrary testimony.
`
`This testimony is corroborated by and corroborates the disclosure in
`
`Exhibits 1032 and 1033, which are excerpts from industry publications that state it
`
`was known that RFCs were publicly available through the Internet, such as through
`
`the IETF’s website. See Ex. 1032, 9 (stating “All of these documents are available
`
`on the IETF website: www.ietf.org/rfc.html”); Ex. 1033, 3 (noting IETF RFCs are
`
`3
`
`
`
`IPR2015-01047
`
`
`
`Petitioners’ Opp. to Mot. to Exclude
`
`available at, e.g., “www.ietf.org/rfc/rfc2401.txt”).
`
`Substantial circumstantial guarantees of trustworthiness are also provided by
`
`the evidence submitted with Petitioners’ filings, such as the testimony of Dr.
`
`Guerin and RFC 2026. Dr. Guerin explained that RFCs are “prepared and
`
`distributed under a formalized publication process overseen by one of several
`
`Internet standards or governing bodies, such as the Internet Engineering Task
`
`Force (IETF)” and that the publication process described in RFC 2026 (Ex. 1010),
`
`Ex. 1003 at ¶¶ 41-47, explains that anyone can obtain RFCs from a number of
`
`Internet hosts, Ex. 1010 at 5-6, and that each RFC “is made available for review
`
`via world-wide on-line directories,” id. at 4; see Ex. 1003 at ¶ 42; see also Ex.
`
`1041 at 7-9 and Ex. 1042 at 4-6 (historical documents describing same publication
`
`process). Dr. Guerin testified from his personal knowledge that RFCs list their
`
`publication date in the top corner of the first page (Ex. 1003 at ¶ 44). Indeed, RFC
`
`1034 lists the date on its face, in the top corner, consistent with Dr. Guerin’s and
`
`Ms. Ginoza’s testimony. See id.; Ex. 1031 at 22:5-9; Ex. 1005 at 1.
`
`Second, Exhibits 1029 and 1031-1033 are offered as evidence of a material
`
`fact (Fed. R. Evid. 807(a)(2)): the public availability of RFCs—including RFC
`
`1034—via the internet or other means since November 1987. Paper 56 at 20.
`
`Third, Exhibits 1029 and 1031-1033 are more probative on the point for
`
`which it is offered than any other evidence that the proponent can obtain through
`
`4
`
`
`
`IPR2015-01047
`
`
`
`Petitioners’ Opp. to Mot. to Exclude
`
`reasonable efforts. See Fed. R. Evid. 807(a)(3). Exhibits 1032 and 1033 are
`
`periodicals published prior to the earliest priority date for the patent-in-suit, and
`
`directly answer the material fact at issue. Ex. 1032 at 9; Ex. 1033 at 3. Ms.
`
`Ginoza’s testimony is probative because she testified “on behalf of the Internet
`
`Engineering Task Force” as a designated corporate representative, (Ex. 1031 at
`
`10:5-22; Ex. 1029 at 1 (entitled “Declaration of the RFC Publisher for the
`
`[IETF]”)), and, as such, was testifying to “the knowledge of the corporation,”
`
`Poole v. Textron, Inc., 192 F.R.D. 494, 504 (D. Md. 2000). And, corporate
`
`witnesses like Ms. Ginoza commonly testify about publication date of a prior art
`
`document. See, e.g., Ultratec, Inc. v. Sorenson Commc’ns, Inc., No. 13-CV-346,
`
`2014 WL 4829173, at *6 (W.D. Wis. Sept. 29, 2014).
`
`It is not reasonable to burden the IETF and Ms. Ginoza—who are not parties
`
`to this dispute—with preparing more declarations and potentially additional
`
`depositions to develop the same testimony contained in Exhibits 1029 and 1031.
`
`Ms. Ginoza’s testimony was developed during concurrent litigation between Apple
`
`and Patent Owner, where Patent Owner had an incentive to develop any contrary
`
`testimony from Ms. Ginoza on the publication issue. See Fed. R. Civ. P. 32(a)(8)
`
`(“Deposition Taken in an Earlier Action. A deposition lawfully taken . . . may be
`
`used in a later action involving the same subject matter between the same parties . .
`
`. to the same extent as if taken in the later action.”). The IETF thus already
`
`5
`
`
`
`IPR2015-01047
`
`
`
`Petitioners’ Opp. to Mot. to Exclude
`
`authenticated and corroborated the publication of RFC 1034 in the context of a
`
`related dispute, and it is not reasonable to force the IETF to do so again.
`
`Fourth, it would be in the interests of justice to admit Exhibits 1029 and
`
`1031-33. See Fed. R. Evid. 807(a)(4). An IPR is “an administrative proceeding
`
`designed and intended to afford expedited and efficient relief.” See Ericsson Inc.
`
`v. Intellectual Ventures I LLC, IPR2014-00527, Paper 41 at 56 (May 18, 2015); see
`
`35 U.S.C. § 316(b); 37 C.F.R. § 42.1(b). Exceptions to the hearsay rule should be
`
`liberally applied in these proceedings because the Board is equipped to evaluate
`
`the reliability and circumstantial guarantees of trustworthiness. It makes no sense
`
`to exclude documents that are regularly relied upon by skilled artisans or to
`
`exclude testimony that has been adequately tested by cross-examination.
`
`RFC documents, such as those at issue here, are perhaps one of the most
`
`well-known sources of technical information in the art at issue in this proceeding.
`
`See, e.g., Control No. 95/001,7893, Action Closing Prosecution (Sept. 9, 2012)
`
`(“Regarding the RFC(s), these publications are among the most authoritative
`
`publications for Internet systems and protocols.”).4 Ms Ginoza’s testimony about
`
`
`
`3 Control No. 95/001,789 involves a family member of the patent at issue here.
`
`4 “[M]uch of the development and technical management of the Internet has been
`
`by the consensus of Internet users. This is evidenced… by IETF and the more than
`
`6
`
`
`
`IPR2015-01047
`
`
`
`Petitioners’ Opp. to Mot. to Exclude
`
`the IETF’s publication practices and the publication of RFC documents—
`
`particularly where Patent Owner has already cross-examined her on that
`
`testimony—is reliable, and excluding it would be contrary to providing an
`
`“expedited and efficient” proceeding. Likewise, Exhibits 1032 and 1033 are
`
`articles from trade publications that were well-known to those of skill, and their
`
`exclusion would remove a reliable source of evidence from the record.
`
`Lastly, Petitioners gave Patent Owner “reasonable notice of the intent to
`
`offer the statement and its particulars” (Fed. R. Evid. 807(b)), as evidenced by
`
`Petitioner Apple’s Petition and Petitioners’ updated exhibit list submitted on
`
`February 4, 2016. See Paper 34 at 3; IPR2016-00062, Paper No. 1 at 39-42.
`
`Therefore, Exhibits 1029 and 1031-1033 are admissible under the residual
`
`exception to the rule against hearsay.
`
`Patent Owner’s preemptive responses lack merit. First, Patent Owner
`
`blankly states there are no “circumstantial guarantees of trustworthiness” because
`
`there is “no evidence corroborating” Ms. Ginoza’s statements in Exhibits 1029 and
`
`1031, Mot. at 5, which entirely ignores they are corroborated by and corroborate
`
`Dr. Guerin’s RFC testimony and RFC 2026. See IBM Corp. v. Intellectual
`
`
`
`2000 RFC’s which have been written and circulated.” PGMedia, Inc. v. Network
`
`Solutions, Inc., 51 F. Supp. 2d 389, 391 (S.D.N.Y. 1999) (citation omitted).
`
`7
`
`
`
`IPR2015-01047
`
`
`
`Petitioners’ Opp. to Mot. to Exclude
`
`Ventures II LLC, IPR2015-00089, Paper 44 at 55-56 (Apr. 25, 2016). Patent
`
`owner also attempts to discredit Ms. Ginoza’s statements because she did not
`
`prepare or maintain the RFC herself. Mot. at 4. “Courts have made clear,
`
`however, that the ‘custodian or other qualified witness’ who must authenticate
`
`business records need not be the person who prepared or maintained the records,
`
`…as long as the witness understands the system used to prepare the records.”
`
`Conoco Inc. v. Dept. of Energy, 99 F.3d 387, 391 (Fed. Cir. 1996). Patent Owner
`
`does not dispute that Ms. Ginoza understands how the RFC records are created and
`
`maintained, or explain why testimony from an author of RFC 1034 would have
`
`been more probative than testimony from the IETF’s RFC publisher.
`
`B.
`
`Exhibits 1034, 1037, 1039-1042 Are Admissible.
`
`1.
`
`Exhibits 1037, 1041, and 1042 Are Not Hearsay.
`
`Patent Owner moves to exclude Exhibits 1037, 1041, and 1042 as
`
`inadmissible hearsay. Mot. at 6, 7-8. But none of these exhibits are hearsay
`
`because they are relied in part as circumstantial evidence of knowledge in the art
`
`and not for the truth of their contents. Fed. R. Evid. 801(c). Under Federal Rule of
`
`Evidence 801(c), “Hearsay means a statement that… (2) a party offers in evidence
`
`to prove the truth of the matter asserted in the statement.” Id., 801(c)(2) (emphasis
`
`added).
`
`Petitioners rely on Exhibit 1037—RFC 1983, “Internet User’s Glossary”—to
`
`8
`
`
`
`IPR2015-01047
`
`
`
`Petitioners’ Opp. to Mot. to Exclude
`
`show how a person of ordinary skill would have understood the term “client.”
`
`Paper No. 56 at 11. Therefore, the exhibit is being offered to show what it would
`
`have conveyed to a person of ordinary skill in the art rather than the truth of its
`
`contents. See HTC Corp. v. Advanced Audio Device, LLC, IPR2014-01157, Paper
`
`No. 41 at (Jan. 22, 2016) (citing, inter alia, Joy Techs., Inc. v. Manbeck, 751 F.
`
`Supp. 225, 233 n.2 (D.D.C. 1990), aff’d, 959 F.2d 226 (Fed. Cir. 1992)).
`
`Exhibits 1041 and 1042 are similarly not being offered for the truth of their
`
`contents. These exhibits are RFCs entitled “The Internet Standards Process” and
`
`contain different dates on their covers. See Ex. 1041 (entitled “The Internet
`
`Standards Process – Revision 2,” dated March 1994); Ex. 1042 (entitled “The
`
`Internet Standards Process,” dated March 1992). Petitioners rely on Exhibit 1041
`
`and 1042 to demonstrate that the process described therein is the same as the
`
`processed described in Exhibit 1010. See Paper 56 at 20 (“…RFC 2026 describes
`
`the same fundamental process described in predecessor RFCs. Compare Ex. 1010,
`
`5-8 with Ex. 1041, 7-9 and Ex. 1042, 4-6.”).
`
`Thus, Patent Owner’s hearsay objections do not apply to Exhibits 1037 and
`
`1041-1042, which should be admitted as evidence in this proceeding.
`
`2.
`
`Exhibits 1034, 1037, 1039-1042 Are Admissible Under Fed. R.
`Evid. 803(16), 803(17), and/or 807.
`
`Patent Owner objects to Exhibits 1034, 1037 and 1039-1042 as inadmissible
`
`hearsay. Mot. at 6-8. But, each of these exhibits fall within at least two exceptions
`9
`
`
`
`IPR2015-01047
`
`to the hearsay rule.
`
`
`
`Petitioners’ Opp. to Mot. to Exclude
`
`a.
`
`Exhibits 1037, 1041, and 1042 Are Admissible Under
`Fed. R. Evid. 803(16).
`
`To the extent Exhibits 1037, 1041, and 1042 are hearsay, they are admissible
`
`as “ancient documents.” Fed. R. Evid. 803(16) (providing “[a] statement in a
`
`document that is at least 20 years old and who authenticity is established” is
`
`admissible). Exhibit 1041 is dated March 1994 and Exhibit 1042 is dated March
`
`1992, making both documents more than 20 years old. Exhibit 1037 was published
`
`in August 1996, so, if this panel issues its decision after August 2016, it will also
`
`be more than 20 years old. Patent Owner does not dispute the authenticity of any
`
`of these exhibits. Thus, these exhibits are admissible. See QSC Audio Prods., LLC
`
`v. Crest Audio, Inc., IPR2014-00127, Paper 43 at 13 (Apr. 29, 2015).
`
`b.
`
`Exhibits 1034, 1037, and 1039-1042 Are Admissible
`Under Fed. R. Evid. 803(17).
`
`In addition, Exhibits 1034, 1037, and 1039-1042 are admissible under the
`
`exception for market reports and similar commercial publications, or otherwise
`
`under the residual exception. Each exhibit is an RFC or draft RFC that forms part
`
`of the Internet standards that are published and overseen by the Internet
`
`Engineering Task Force (IETF).
`
`Under Federal Rule of Evidence 803(17), “[m]arket quotations, lists,
`
`directories, or other compilations that are generally relied on by the public or by
`
`10
`
`
`
`IPR2015-01047
`
`
`
`Petitioners’ Opp. to Mot. to Exclude
`
`persons in particular occupations” fall within a hearsay exception and are
`
`admissible. Fed. R. Evid. 803(17). Petitioners rely on Exhibits 1034 and 1039-
`
`1042 for statements about their authorship or the publication practices of the IETF.
`
`Petitioners rely on Exhibit 1037 to provide a definition of a term used in RFC
`
`documents. The Board has previously found that statements about authorship and
`
`publication made by a well-known, reputable compiler and publisher of scientific
`
`and technical publications, such as IEEE, are reliable and admissible under
`
`803(17). Ericsson, Inc. v. Intellectual Ventures I LLC, IPR2014-00527, Paper 41
`
`at 11 (May 18, 2015).
`
`For the same reasons, Exhibits 1034, 1037 and 1039-1042 should be
`
`admissible under Federal Rule of Evidence 803(17). As Dr. Guerin’s testimony
`
`and RFC 2026 (Ex. 1010) explain, RFCs are “prepared and distributed under a
`
`formalized publication process overseen by one of several Internet standards or
`
`governing bodies, such as the Internet Engineering Task Force (IETF)” to the
`
`public and “[t]he formalized process of preparing, publishing and widely
`
`distributing RFC documents is a very important part of the Internet culture…[and]
`
`to the adoption of these standards, and the stability and functionality of the Internet
`
`for developers to adhere to standard and evolving ‘best practices.’” Ex. 1003,
`
`¶¶41-47; Ex. 1010 at 4-9 (each RFC “is made available for review via world-wide
`
`on-line directories”). Thus, RFCs are trustworthy because there is a “general
`
`11
`
`
`
`IPR2015-01047
`
`
`
`Petitioners’ Opp. to Mot. to Exclude
`
`reliance by the public or by a particular segment of it” (Internet users), Advisory
`
`Note to Fed. R. Evid. 803(17), and they are “prepared with the view that they
`
`would be in general use by an industry or members of the public having a general
`
`need to rely on information of that type,” Conoco, 99 F.3d at 393. Thus, these
`
`exhibits are admissible. See Ericsson, IPR2014-00527, Paper 41 at 11.
`
`c.
`
`Exhibits 1034, 1037, and 1039-1042 Are Admissible
`Under Fed. R. Evid. 807.
`
`Alternatively, Exhibits 1034, 1037 and 1039-1042 fall within the residual
`
`exception under Federal Rule of Evidence 807. First, these exhibits have
`
`equivalent circumstantial guarantees of trustworthiness. See Fed. R. Evid.
`
`807(a)(1). These RFCs are standards that were prepared for and intended for
`
`adherence by the public, without any motivation to deceive. And, Exhibits 1034,
`
`1037, and 1039-1042 possess the requisite indicia of trustworthiness on their
`
`respective cover pages to show they are genuine RFC publications. See QSC
`
`Audio Prods., LLC v. Crest Audio, Inc., IPR2014-00127, Paper 43 at 14-15 (Apr.
`
`29, 2015).
`
`Second, Exhibits 1034, 1037, and 1039-1042 are offered as evidence of
`
`material facts (Fed. R. Evid. 807(a)(2)): the meaning of “client” (Ex. 1037), to
`
`support Dr. Guerin’s knowledge of RFCs (Ex. 1039-1040), and to demonstrate the
`
`practice and procedures for RFCs (Ex. 1034, 1041-1042). Paper 56 at 11, 21.
`
`Third, Exhibits 1034, 1037, and 1039-1042 are more probative on the point
`12
`
`
`
`IPR2015-01047
`
`
`
`Petitioners’ Opp. to Mot. to Exclude
`
`for which they are offered than any other evidence that the proponent can obtain
`
`through reasonable efforts. See Fed. R. Evid. 807(a)(3). Exhibit 1037 is probative
`
`on the meaning of “client” as understood by those of ordinary skill in the art during
`
`the relevant time period because it is a glossary of terms for the RFC standards,
`
`which those of ordinary skill in the art used at the time. Exhibits 1039 and 1040
`
`are probative of Dr. Guerin’s familiarity and authorship of RFCs because they are
`
`RFC publications that name him as the author, and they are consistent with his
`
`testimony that he authored RFCs. See Ex. 2037 at 139:12-140:6. Exhibits 1041
`
`and 1042 are probative of the historic existence of the same fundamental process
`
`described in Ex. 1010. And Exhibit 1034 is probative of the process used to
`
`publish draft RFCs.
`
`Fourth, it would be in the interests of justice to admit these exhibits. See
`
`Fed. R. Evid. 807(a)(4). As previously stated, RFC documents, such as those at
`
`issue here, are perhaps one of the most well-known sources of technical
`
`information in the art at issue in this proceeding. See § II.A, above. Excluding
`
`these documents would not comport with “an administrative proceeding designed
`
`and intended to afford expedited and efficient relief.” See Ericsson, IPR2014-
`
`00527, Paper 41 at 56.
`
`Lastly, Petitioners gave Patent Owner “reasonable notice of the intent to
`
`offer the statement and its particulars” (Fed. R. Evid. 807(b)), as evidenced by
`
`13
`
`
`
`IPR2015-01047
`
`
`
`Petitioners’ Opp. to Mot. to Exclude
`
`Petitioners Reply. See Paper 56 at vii-viii.
`
`Therefore, Exhibits 1034, 1037, and 1039-1042 are admissible under either
`
`the market reports and similar commercial publications exception or the residual
`
`exception to the rule against hearsay.
`
`C. Exhibits 1010, 1012-1014, and 1044 Are Relevant.
`
`Patent Owner moves to exclude Exhibits 1010, 1014, 1020, and 1044 as
`
`lacking relevance. Mot. at 8-9. As the Federal Circuit has acknowledged, there is
`
`a “low threshold for relevancy.” OddzOnProducts, Inc. v. Just Toys, Inc., 122 F.3d
`
`1396, 1407 (Fed. Cir. 1997). Evidence is relevant if it has any “tendency to make
`
`the existence of any fact that is of consequence to the determination of the action
`
`more probable or less probable than it would be without the evidence.” Fed. R.
`
`Evid. 401.
`
`Patent Owner erroneously argues that Exhibits 1010 and 1012-1014 are not
`
`relevant because they are not cited in the Petition or Petitioners’ Reply. Mot. at 8-
`
`9. Initially, Exhibits 1010 and 1014 were cited in Petitioners’ Reply and thus are
`
`relevant. See Paper 56 at 11, 19. All four exhibits were also cited in Dr. Guerin’s
`
`declaration. See Ex. 1003 at ¶¶ 46-49 (discussing and citing Exhibit 1010); id. at ¶
`
`16 (citing Exhibits 1012 and 1013); id. at ¶ 18 (citing Exhibit 1014). The Board
`
`has repeatedly held that evidence relied upon in forming an expert’s opinion is
`
`relevant under FRE 401 and 402. See Apple Inc. v. Smartflash LLC, CBM2014-
`
`14
`
`
`
`IPR2015-01047
`
`
`
`Petitioners’ Opp. to Mot. to Exclude
`
`00180, Paper 50 at 19-20 (Sep. 25, 2015). The admissibility of this type of
`
`evidence is particularly important because “[e]xpert testimony that does not
`
`disclose the underlying facts or data on which the opinion is based is entitled to
`
`little or no weight.” 37 C.F.R. § 42.65.
`
`The only purportedly irrelevant exhibit not relied upon in Petitioners’ Reply
`
`or Dr. Guerin’s declaration is Exhibit 1044. Exhibit 1044 is a transcript from the
`
`trial on November 1, 2012 between the Patent Owner and Petitioner Apple. The
`
`continued presence of these latter exhibits causes no conceivable prejudice to
`
`Patent Owner or the Board. Patent Owner’s challenge should thus be dismissed.
`
`III. Conclusion
`
`For the foregoing reasons, the Board should deny Patent Owner’s Motion.
`
`
`
`Dated: June 13, 2016
`
`/Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Reg. No. 43,401
`Sidley Austin LLP
`Attorney for Petitioner Apple
`
`/Thomas H. Martin/
`Thomas H. Martin
`Reg. No. 34,383
`MARTIN & FERRARO, LLP
`Attorney for Petitioner Black Swamp
`
`Respectfully Submitted,
`
`/Abraham Kasdan/
`Abraham Kasdan
`Reg. No. 32,997
`Wiggin & Dana LLP
`
`James T. Bailey
`Reg. No. 44,518
`The Law Office of James. T. Bailey
`Attorneys for Petitioner Mangrove
`
`15
`
`
`
`IPR2015-01047
`
`
`
`Petitioners’ Opp. to Mot. to Exclude
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), I hereby certify that on this 13th day of
`
`June, 2016, I caused to be served a true and correct copy of the foregoing by e-mail
`
`on the following counsel:
`
`Joseph E. Palys
`E-mail: josephpalys@paulhastings.com
`
`Naveen Modi
`E-mail: naveenmodi@paulhastings.com
`
`
`
`
`
`
`Dated: June 13, 2016
`
`/Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Reg. No. 43,401
`Sidley Austin LLP
`Attorney for Petitioner Apple
`
`/Thomas H. Martin/
`Thomas H. Martin
`Reg. No. 34,383
`MARTIN & FERRARO, LLP
`Attorney for Petitioner Black Swamp
`
`
`Respectfully Submitted,
`
`/Abraham Kasdan/
`Abraham Kasdan
`Reg. No. 32,997
`Wiggin & Dana LLP
`
`James T. Bailey
`Reg. No. 44,518
`The Law Office of James. T. Bailey
`Attorneys for Petitioner Mangrove
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
