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’ OPPOSITION TO PATENT OWNER’S MOTION TO
`EXCLUDE PETITIONER’S EXHIBIT 1020
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`____________
`
`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
`
`
`
`PETITIONERS’ OPPOSITION TO PATENT OWNER’S MOTION TO
`EXCLUDE PETITIONER’S EXHIBIT 1020
`
`
`
`
`
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`
`
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`
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`Patent Owner’s Motion to Exclude Exhibit 1020 ― Petitioner’s Second
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`Case IPR2015-01149
`U.S. Patent No. 7,329,970
`
`
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`Declaration of Dr. Mark Horenstein ― should be denied because the proper and
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`fair remedy for the clerical error identified by Patent Owner is to file a corrected
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`declaration, which Petitioner has already done. Furthermore, Patent Owner’s
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`allegation that the correction of Dr. Horenstein’s declarations casts doubts on Dr.
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`Horenstein’s credibility goes to weight, not admissibility, of his testimony.
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`The Board has repeatedly resolved disputes over missing attestation
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`paragraphs in declarations by accepting corrected versions of the declarations
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`adding the missing paragraph. This remedy is appropriate because it leaves the
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`substance of the declaration unchanged, and therefore does not prejudice the party
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`opposing the correction. See, e.g., Array BioPharma Inc. v. Takeda
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`Pharmaceutical Co. Ltd., IPR2015-00754, Paper No. 20 at 4-5 (October 21, 2015)
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`(granting Petitioner’s Motion to Submit Corrected Exhibits with attestation
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`paragraph and finding that “Patent Owner has [not] argued persuasively that the
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`corrections Petitioner proposes amount to substantive changes or would cause
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`Patent Owner to suffer any prejudice”); Microsoft Corp. v. Enfish, LLC, IPR2013-
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`00559-63, Paper No. 13 at 4 (January 23, 2014) (“the rule permitting correction of
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`clerical errors is remedial in nature, and is, therefore, entitled to a liberal
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`construction”) (internal citations omitted); Indoor Skydiving Germany GmbH v.
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`Ifly Holdings LLC, IPR2015-01272, Paper 11 at 2-3 (Sept. 30, 2015) (“correcting
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`1
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`
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`the original Declaration, for example, by adding ‘I declare under penalty of perjury
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`Case IPR2015-01149
`U.S. Patent No. 7,329,970
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`that the foregoing is true and correct’ . . . would not change the substance of the
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`statements set forth in paragraphs 1–47 of the original Declaration. Accordingly,
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`we determine that granting Petitioner’s request would correct a clerical mistake,
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`without prejudice to Patent Owner.”).1
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`On July 8, 2016, after receiving permission from the Board, Petitioner filed a
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`corrected version of Exhibit 1020 that included an attestation paragraph missing
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`from an earlier version of Exhibit 1020 filed on June 2, 2016. See Ex. 1023 (July
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`6, 2016 Email from Andrew Kellogg, PTAB Supervisory Paralegal). The
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`inclusion of the attestation paragraph in corrected Exhibit 1020 did not amount to a
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`substantive change in part because, as Dr. Horenstein testified, “[o]f course [he]
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`wouldn’t sign a document that [he] didn’t testify before or stand behind.” Ex. 2007
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`(Deposition Transcript of Mark Horenstein dated June 28, 2016) at 18:8-9. Dr.
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`Horenstein also testified that “[y]es,” he reviewed the declarations he signed on
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`June 1, 2016. Id. at 81:11-14. Patent Owner is also not prejudiced by Petitioner’s
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`1 Correction of Exhibit 1020 is also appropriate under 35 U.S.C. § 26. See
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`Array BioPharma Inc. v. Takeda Pharmaceutical Co. Ltd., IPR2015-00754, Paper
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`No. 17 at 5 (October 9, 2015) (relying on 35 U.S.C. § 26); Presidio Components,
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`Inc. v. AVX Corp., IPR2015-01332, Paper 13 at 3 (Aug. 21, 2015) (same).
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`2
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`filing of the corrected version of Exhibit 1020 because Patent Owner preserved the
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`Case IPR2015-01149
`U.S. Patent No. 7,329,970
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`record by deposing Dr. Horenstein on the substance of his Second Declaration on
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`June 28, 2016 and submitting a transcript thereof as Exhibit 2007.
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`Lastly, Patent Owner’s Motion should be denied because if the arguments
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`are valid at all, then they go to the weight of Dr. Horenstein’s testimony, rather
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`than its admissibility. Informatica Corp. v. Protegrity Corp., CBM 2015-00021,
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`Paper No. 38 at 1 (May 31, 2016) (“[T]he Board, sitting as a non-jury tribunal with
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`administrative expertise, is well-positioned to determine and assign appropriate
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`weight to the evidence presented in this trial, without resorting to formal exclusion
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`that might later be held reversible error.”) (internal citations omitted); see also
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`Daiichi Sankyo Co., Ltd. v. Alethia Biotherapeutics, Inc., IPR2015-00291, Paper
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`No. 75 at 24 (June 14, 2016). Patent Owner is free to present its credibility
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`arguments at the hearing in this matter if it so chooses. 2
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`2 Patent Owner’s suggestion that the rules require Dr. Horenstein to sign his
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`declarations in ink is directly contradicted by the same rule that Patent Owner
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`cites. IPR2015-01149, Paper No. 25 at 2. 37 C.F.R. 1.4 (d) provides that
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`“[c]orrespondence permitted via the Office electronic filing system may be signed
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`by a graphic representation of a handwritten signature.” 37 C.F.R. 1.4(d)(3)
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`(emphasis added); see also Seoul Semiconductor Co., Ltd. v. Enplas Corp.,
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`IPR2014-00878, Paper No. 34 at 7-8 (October 15, 2015) (disregarding Patent
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`3
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`For the foregoing reasons, Petitioner respectfully requests that Patent
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`Case IPR2015-01149
`U.S. Patent No. 7,329,970
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`
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`Owner’s Motion to Exclude Exhibit 1020 be denied.
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`
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`Respectfully submitted,
`
`/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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`
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`
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`Dated: July 13, 2016
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`Owner’s argument that Petitioner’s expert testimony was not trustworthy or
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`credible in part because the expert’s signature was an electronic image of a
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`signature). In any event, Dr. Horenstein signed the corrected version of Exhibit
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`1020 in ink.
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`4
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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’ OPPOSITION TO PATENT OWNER’S
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`MOTION TO EXCLUDE PETITIONER’S EXHIBIT 1020 was served via
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`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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`
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`
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`/Daniel J. Goettle/
`Daniel J. Goettle
`Registration No. 50,983
`BAKER & HOSTETLER LLP
`2929 Arch Street
`
`5
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`Case IPR2015-01149
`U.S. Patent No. 7,329,970
`
`Cira Centre, 12th Floor
`Philadelphia, PA 19104-2891
`Telephone: 215.568.3100
`Facsimile: 215.568.3439
`dgoettle@bakerlaw.com
`
`Attorney for Petitioners
`
`
`6
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