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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`________________
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`MICROSOFT CORPORATION and MICROSOFT MOBILE, INC.,
`Petitioners
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`v.
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`GLOBAL TOUCH SOLUTIONS, LLC
`Patent Owner
`________________
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`Case IPR2015-01149
`Patent No. 7,329,970 B2
`________________
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`PATENT OWNER’S MOTION TO EXCLUDE
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`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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`MICROSOFT CORPORATION and MICROSOFT MOBILE, INC.,
`Petitioners
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`v.
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`GLOBAL TOUCH SOLUTIONS, LLC
`Patent Owner
`________________
`
`Case IPR2015-01149
`Patent No. 7,329,970 B2
`________________
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`PATENT OWNER’S MOTION TO EXCLUDE
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`I.
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`STATEMENT OF PRECISE RELIEF REQUESTED
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`Patent Owner Global Touch Solutions, LLC (“PO” herein) moves to exclude
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`the Second Declaration of Mark Horenstein, Exhibit 1020. PO timely objected to
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`this “Declaration” on June 8, 2016 – see Patent Owner’s Objection to Evidence,
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`Notice 21. Petitioners rely extensively on Exhibit 1020 in Petitioners’ Reply to
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`Patent Owner’s Response to the Petition. See, e.g., pages 3,5, and 13 (where a new
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`argument is presented in Horenstein’s Declaration that is neither responsive to an
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`argument presented by PO nor based on information discovered after Horenstein’ s
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`First Declaration, and is thus untimely).
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`The Second Declaration of Horenstein should be excluded. It lacks any sort
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`of representation that the statements presented are true or even believed to be true,
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`and cross-examination reflected the Declarant’s belief that such guarantees of
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`trustworthiness and believability are “boilerplate” that he pays no attention to.
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`Transcript of the Deposition of Horenstein, Exhibit 2007. Indeed, the witness
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`testified that the “execution” of Exhibit 1020 lacks an original signature, a
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`requirement of the Rules applicable herein, including 37 C.F.R. §1.68, and
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`corresponding evidentiary requirements of the Federal Rules. The document that
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`is Exhibit 1020 is nothing more than hearsay, and inadmissible.
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`Exclusion is respectfully requested.
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`II. ARGUMENT IN SUPPORT OF THE REQUESTED RELIEF
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`PO submits that the governing law on the question of the inadmissible
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`character of Petitioners’ Exhibit 1020 is beyond dispute. Testimony that is not
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`compelled, and the “Second Declaration of Horenstein” that is Exhibit 1020 was
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`not compelled, must be submitted in the form of an affidavit. 37 C.F.R. §42.53(a).
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`Testimony that is not submitted in compliance with this Rule is inadmissible.
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`Lowe’s Home Centers, LLC v. Reddy, 2016 WL 1275315 *8 (PTAB) and Coalition
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`for Affordable Drugs IX, LLC v. Bristol Myers Squibb, Co., 2016 WL 1082935 fn.4
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`(“Uncompelled direct testimony “must be submitted in the form of an affidavit”
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`otherwise it is not admissible”) citing 37 C.F.R. §42.53(a), 42.61(a).
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`Further, Exhibit 1020 lacks an original signature. The witness testified as to
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`the true nature of the execution of Exhibit 1020 during his deposition, indicating he
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`did not sign the document, but instead caused an electronic reproduction of a
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`graphic image to attach to it. Exhibit 2007, 10:20 – 25. 37 C.F.R. § 1.4 (d)
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`requires all documents that have to be signed to reflect the person’s “original
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`handwritten signature personally signed…by that person”. While not controlling
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`in an IPR, Federal Rule of Civil Procedure 26(b) includes a parallel provision for
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`expert reports, which are not dissimilar from the type of expert Declaration
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`submitted in this IPR. The requirement for an original signature is present for the
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`same type of credibility and reliability issues met by an original signature and
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`jurat, both missing in the Second Declaration of Mark Horenstein, Exhibit
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`1020.Clearly, the Second Declaration of Horenstein, Exhibit 1020, does not meet
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`the requirements of the Rules. Having timely objected to the Exhibit during the
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`deposition, exclusion on this basis is requested as well.
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`In this regard, PO notes that none of the Declarations submitted by
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`Petitioners in the series of IPRs between PO and Petitioners (IPRs 2015-01147,
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`2015-01148, 2015-01149, 2015-01150, and 2015-01151) bear an original signature
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`or a jurat or statement certifying their reliability. While not all of those
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`Declarations were in fact objected to, none are competent to be considered, for the
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`reasons discussed above. Simply because an Exhibit is not objected to does not
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`mean this Board must accept it as admissible. The Board has discretion to decline
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`to consider any document not admissible. Patent Owner urges the Board to decline
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`to consider such clearly inadmissible documents as the Horenstein Declarations
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`and the Second Horenstein Declarations in each of the identified IPRs.
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`4
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`Respectfully submitted,
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`/s/ Steven B. Kelber
`Steven B. Kelber
`Reg. No: 30,073
`The Kelber Law Group
`1875 Eye Street, N.W., Fifth Floor
`Washington, D.C. 20006
`E-Mail: steve@kelberlawgroup.com
`Tel: (240) 506-6702
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`Nathan Cristler
`Reg. No: 61,736
`Cristler IP, PLLC
`1801 21st Road North
`Arlington, Virginia 22209
`E-Mail: ncristler@cristlerip.com
`Tel: (512) 576-5166
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`Counsel for Patent Owner
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`Date: July 6, 2016
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6 and 42.105, I hereby certify that on this 6th
`day of July 6, 2016, the foregoing PATENT OWNER’S MOTION TO
`EXCLUDE was served by e-mail on counsel for Petitioner:
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`Daniele J. Goettle
`bdgoettle@bakerlaw.com
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`John F. Murphy
`johnmurphy@bakerlaw.com
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`Sarah C. Dukmen
`Msft-gt@bakerlaw.com
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`Respectfully submitted,
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`/s/ Steven B. Kelber
`Steven B. Kelber
`Reg. No: 30,073
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`6
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