UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MICROSOFT CORPORATION and MICROSOFT MOBILE, INC.,
`Petitioners,
`
`v.
`
`GLOBAL TOUCH SOLUTIONS, LLC,
`Patent Owner.
`
`
`Case IPR2015-01149
`Patent 7,329,970
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`
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`PETITIONERS’ RESPONSE TO PATENT OWNER’S MOTION FOR
`OBSERVATION ON CROSS EXAMINATION OF PETITIONER’S REPLY
`WITNESS DR. MARK HORENSTEIN
`
`
`
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MICROSOFT CORPORATION and MICROSOFT MOBILE, INC.,
`Petitioners,
`
`v.
`
`GLOBAL TOUCH SOLUTIONS, LLC,
`Patent Owner.
`
`
`Case IPR2015-01149
`Patent 7,329,970
`
`
`
`
`
`
`
`
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`PETITIONERS’ RESPONSE TO PATENT OWNER’S MOTION FOR
`OBSERVATION ON CROSS EXAMINATION OF PETITIONER’S REPLY
`WITNESS DR. MARK HORENSTEIN
`
`
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`
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`
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`Patent Owner’s entire Motion for Observation on Cross Examination of
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`Case IPR2015-01149
`U.S. Patent No. 7,329,970
`
`
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`Petitioner’s Reply Witness Dr. Mark Horenstein should be disregarded because
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`rather than provide “concise statement[s] of a precisely identified testimony to a
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`precisely identified argument or portion of an exhibit,” as the rules require, Patent
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`Owner’s Motion instead “raise[s] new issues” and “pursue[s] objections,” which
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`the rules forbid. Office Patent Trial Practice Guide, 77 Fed. Reg. 157 (August 14,
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`2012) at 48,768 (noting that an observation “is not an opportunity to raise new
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`issues, re-argue issues, or pursue objections”). Patent Owner’s Motion consists of
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`an improper argumentative introduction, followed by observations addressed to
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`entirely new issues or improper objections to Dr. Horenstein’s signature and
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`attestation. Therefore, it should be disregarded. See id; see also Atrium Medical
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`Corp. v. Davol, IPR2013-00184, Paper No. 49 at 2 (February 28, 2014) (“The
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`Board may decline consideration or entry of excessively long or argumentative
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`observations.”).
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`Response to Introduction
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`Patent Owner’s Introduction to its Observations should be disregarded
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`because it is not an observation, it raises new issues, and it pursues objections.
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`The Trial Practice Guide explains that each observation should be in the form of
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`“In exhibit __ on page __, lines__, the witness testified __. This testimony is
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`1
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`relevant to the __ on page __ of __. The testimony is relevant because __.” 77
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`Case IPR2015-01149
`U.S. Patent No. 7,329,970
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`Fed. Reg. 157 at 48,768. Patent Owner’s two-page introduction fails to follow this
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`format, and raises new issues and improper objections such as whether Dr.
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`Horenstein’s “affixation of a graphic text” was sufficient to sign his declaration.
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`IPR2015-01149, Paper No. 24 at 3.1 Thus, Patent Owner’s introduction should be
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`disregarded. See IPR2013-00184, Paper No. 49 at 2.
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`Response to Observation 1
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`Observation 1: In Exhibit 2007, at 80:5-7, regarding Dr.
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`Horenstein’s Second Declaration
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`(Exhibit 1020), Dr.
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`Horenstein testified “I think it would be obvious to anyone
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`reading paragraph seven that the first instance of number 520 is
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`a typo and should be 516.” This is relevant to Dr. Horenstein’s
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`credibility and the weight to be given to his testimony because
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`Dr. Horenstein did not acknowledge this error upon signing the
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`Second Declaration (Exhibit 1020) on June 1, 2016, or upon re-
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`1 Petitioner addresses the substance of Patent Owner’s objections to Dr.
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`Horenstein’s signature and attestation in its response to Patent Owner’s Motion to
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`Exclude, which is focused on the same issues.
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`2
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`Case IPR2015-01149
`U.S. Patent No. 7,329,970
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`signing the Second Declaration (Exhibit 2008) on June 9, 2016,
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`indicating he did not read either declaration.
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`Patent Owner’s Observation 1 should be disregarded because it raises new
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`issues and pursues objections. 77 Fed. Reg. 157 at 48,768. Moreover, contrary to
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`Patent Owner’s argument that Dr. Horenstein “did not read either declaration,” Dr.
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`Horenstein testified that “of course” he read the declarations prior to signing and
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`that he simply “did not catch the typographical error.” Ex. 2007 (Deposition
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`Transcript of Mark Horenstein dated June 28, 2016) at 81:7-16.
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`Response to Observation 2
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`Observation 2: In Exhibit 2007, at 92:4-6, regarding Dr.
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`Horenstein’s Second Declaration
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`(Exhibit 1020), Dr.
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`Horenstein testified “In my mind, this is in context, it is an
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`obvious typographical error that anyone could identify upon
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`reading the document[.]” This is relevant to Dr. Horenstein’s
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`credibility and the weight to be given to his testimony because
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`Dr. Horenstein did not acknowledge this error upon signing the
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`Second Declaration (Exhibit 1020) on June 1, 2016, or upon re-
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`signing the Second Declaration (Exhibit 2008) on June 9, 2016,
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`indicating he did not read either declaration.
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`3
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`Patent Owner’s Observation 2 should be disregarded because it raises new
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`Case IPR2015-01149
`U.S. Patent No. 7,329,970
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`
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`issues and pursues objections. 77 Fed. Reg. 157 at 48,768. Moreover, contrary to
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`Patent Owner’s argument that Dr. Horenstein “did not read either declaration,” Dr.
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`Horenstein testified that “of course” he read the declarations prior to signing and
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`that he simply “did not catch the typographical error.” Ex. 2007 (Deposition
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`Transcript of Mark Horenstein dated June 28, 2016) at 81:7-16.
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`Response to Observation 3
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`Observation 3: In Exhibit 2007, at 97:21-98:1, regarding
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`whether Dr. Horenstein knew about the error of paragraph 7 of
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`Dr. Horenstein’s Second Declaration (Exhibit 1020) by June 9,
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`2016, Dr. Horenstein testified “Apparently not because I signed
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`the documents on June 9th with the boiler plate clause added.”
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`This is relevant to Dr. Horenstein’s credibility and the weight to
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`be given to his testimony because Dr. Horenstein did not
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`acknowledge this error upon signing the Second Declaration
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`(Exhibit 1020) on June 1, 2016, or upon re-signing the Second
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`Declaration (Exhibit 2008) on June 9, 2016, indicating he did
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`not read either declaration.
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`4
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`Patent Owner’s Observation 3 should be disregarded because it raises new
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`Case IPR2015-01149
`U.S. Patent No. 7,329,970
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`
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`issues and pursues objections. 77 Fed. Reg. 157 at 48,768. Moreover, contrary to
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`Patent Owner’s argument that Dr. Horenstein “did not read either declaration,” Dr.
`
`Horenstein testified that “of course” he read the declarations prior to signing and
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`that he simply “did not catch the typographical error.” Ex. 2007 (Deposition
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`Transcript of Mark Horenstein dated June 28, 2016) at 81:7-16. Further, Dr.
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`Horenstein testified that he noticed the typographical error while “reviewing the
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`document” in preparation for his deposition. Id. at 101:15-102:8.
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`Response to Observation 4
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`Observation 4: In Exhibit 2007, at 37:11-12, regarding
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`the jurat added to the Second Declaration (Exhibit 2008), Dr.
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`Horenstein testified that the jurat “to me what appears to be a
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`standard boiler plate paragraph[.]” Similarly, in Exhibit 2007, at
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`38:2-3; 38:11-16; 97:21-98:1; 104:12-13; 104:18-19; 105:22-
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`106:1; 137:3-4; and 139:21-22, Dr. Horenstein testified that he
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`views the jurat as merely “boiler plate” language. This is
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`relevant to Dr. Horenstein’s credibility and the weight to be
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`given to his testimony because this testimony indicates the lack
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`of meaning given to the jurat by Dr. Horenstein.
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`5
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`Patent Owner’s Observation 4 should be disregarded because it raises new
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`Case IPR2015-01149
`U.S. Patent No. 7,329,970
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`
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`issues and pursues objections. 77 Fed. Reg. 157 at 48,768. Further, contrary to
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`Patent Owner’s argument that Dr. Horenstein’s “testimony indicates the lack of
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`meaning given to the jurat,” Dr. Horenstein testified that even though his original
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`declaration did not include a jurat, “[o]f course [he] wouldn’t sign a document that
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`[he] didn’t testify before or stand behind.” Ex. 2007 (Deposition Transcript of
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`Mark Horenstein dated June 28, 2016) at 18:8-9.
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`Response to Observation 5
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`Observation 5: In Exhibit 2007, at 131:10-14, regarding
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`the scope of Patent Owner’s expert’s testimony, Dr. Horenstein
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`testifies that Patent Owner’s expert did not testify about
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`adjusting sensitivity of a touch sensor: “Did he talk about
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`adjusting the sensitivity of the touch sensor in any fashion?
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`MR. MURPHY: Object to form. THE WITNESS: No. In
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`paragraph four I offer the remedy of adjusting the sensitivity.”
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`This is relevant to the timeliness of the arguments presented in
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`at least paragraph 4 of Dr. Horenstein’s Second Declaration
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`(Exhibit 1020).
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`6
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`Patent Owner’s Observation 5 should be disregarded because it raises new
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`Case IPR2015-01149
`U.S. Patent No. 7,329,970
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`
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`issues and pursues objections. 77 Fed. Reg. 157 at 48,768. Moreover, while
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`Patent Owner argues that Dr. Horenstein’s argument regarding adjusting sensitivity
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`of the touch sensor is not timely, Dr. Horenstein testified that “the sensitivity is one
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`of three possible remedies that addresses the use brought up by Dr. Morley [of
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`inadvertent animate actuation].” Ex. 2007 (Deposition Transcript of Mark
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`Horenstein dated June 28, 2016) at 11:19:8-132:3; see also 133:3-8 (“I was
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`addressing something asserted by Dr. Morley . . . Inadvertent actuation by animate
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`objects.”).
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`Response to Observation 6
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`Observation 6: In Exhibit 2007, at 133:8, regarding the
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`portions of the record to which paragraph 4 of Dr. Horenstein’s
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`Second Declaration
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`responds, Dr. Horenstein
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`testifies
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`“Inadvertent actuation by animate objects.” This is relevant to
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`the timeliness of the arguments presented in at least paragraph 4
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`of Dr. Horenstein’s Second Declaration (Exhibit 1020) because
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`inadvertent actuation by animate objects was previously
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`addressed in Dr. Horenstein’s First Declaration (Exhibit 1012 at
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`7
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`Case IPR2015-01149
`U.S. Patent No. 7,329,970
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`¶42) without discussion of adjusting sensitivity of a touch
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`sensor.
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`Patent Owner’s Observation 6 should be disregarded because it raises new
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`issues and pursues objections. 77 Fed. Reg. 157 at 48,768. As indicated in
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`relation to Observation 5, while Patent Owner argues that Dr. Horenstein’s
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`argument regarding adjusting sensitivity of the touch sensor is not timely, Dr.
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`Horenstein testified that “the sensitivity is one of three possible remedies that
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`addresses the use brought up by Dr. Morley [of inadvertent animate actuation].”
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`Ex. 2007 (Deposition Transcript of Mark Horenstein dated June 28, 2016) at
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`11:19:8-132:3; see also 133:3-8 (“I was addressing something asserted by Dr.
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`Morley . . . Inadvertent actuation by animate objects.”).
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`Dated: July 13, 2016
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`
`Respectfully submitted,
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`
`
`/Daniel J. Goettle/
`Daniel J. Goettle
`Registration No. 50,983
`BAKER & HOSTETLER LLP
`2929 Arch Street
`Cira Centre, 12th Floor
`Philadelphia, PA 19104-2891
`Telephone: 215.568.3100
`Facsimile: 215.568.3439
`dgoettle@bakerlaw.com
`
`Attorney for Petitioners
`MICROSOFT CORPORATION and
`MICROSOFT MOBILE, INC.
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`Case IPR2015-01149
`U.S. Patent No. 7,329,970
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I hereby certify that true and correct copies
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`of the foregoing PETITIONERS’ RESPONSE TO PATENT OWNER’S
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`MOTION FOR OBSERVATION ON CROSS EXAMINATION OF
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`PETITIONER’S REPLY WITNESS DR. MARK HORENSTEIN was served
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`via email this 13th day of July, 2016, on the following:
`
`Steven B. Kelber
`Law Offices of Steven B. Kelber
`6701 Democracy Lane, Suite 300
`Bethesda, MD 20854
`sbkelber@aol.com
`
`William H. Mandir
`Fadi N. Kiblawi
`Peter S. Park
`Brian K. Shelton
`SUGHRUE MION PLLC
`2100 Pennsylvania Ave NW, Suite 800
`Washington, DC 20037
`wmandir@sughrue.com
`fkiblawi@sughrue.com
`pspark@sughrue.com
`bshelton@sughrue.com
`gts@sughrue.com
`
`Nathan Cristler
`Cristler IP, PLLC
`1801 21st Road North
`Arlington, VA 22209
`ncristler@cristlerip.com
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`/Daniel J. Goettle/
`Daniel J. Goettle
`Registration No. 50,983
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`9
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`Case IPR2015-01149
`U.S. Patent No. 7,329,970
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`BAKER & HOSTETLER LLP
`2929 Arch Street
`Cira Centre, 12th Floor
`Philadelphia, PA 19104-2891
`Telephone: 215.568.3100
`Facsimile: 215.568.3439
`dgoettle@bakerlaw.com
`
`Attorney for Petitioners
`
`
`10
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