Paper _____
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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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`APPLE INC., MOTOROLA MOBILITY LLC, and
`TOSHIBA AMERICA INFORMATION SYSTEMS, INC.,
`Petitioners
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`v.
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`GLOBAL TOUCH SOLUTIONS, LLC
`Patent Owner
`________________
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`Case IPR2015-01173
`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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`APPLE INC., MOTOROLA MOBILITY LLC, and
`TOSHIBA AMERICA INFORMATION SYSTEMS, INC.,
`Petitioners
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`v.
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`GLOBAL TOUCH SOLUTIONS, LLC
`Patent Owner
`________________
`
`Case IPR2015-01173
`Patent No. 7,329,970 B2
`________________
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`PATENT OWNER’S MOTION TO EXCLUDE
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`STATEMENT OF PRECISE RELIEF REQUESTED
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`Patent Owner Global Touch Solutions, LLC (“PO” herein) moves to
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`I.
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`exclude Exhibits 1003, filed May 11, 2015 and Exhibit 1003(Corrected)
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`filed on July 3, 2016, Exhibit 1035 served on counsel and Exhibit 1035
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`(Corrected) filed on July 3, 2016, well after, and in response to, Patent
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`Owner’s Objection to Evidence dated June 8, 2016.
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`Exhibit 1035, the Reply Declaration of Paul Beard should be
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`excluded. It lacks any sort of representation that the statements presented
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`are true or even believed to be true. It is simple hearsay. Further, Exhibit
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`1035 lacks an original signature, a requirement of the Rules applicable
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`herein, including 37 C.F.R. §1.68, and corresponding evidentiary
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`requirements of the Federal Rules. The documents that are Exhibits 1003
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`and 1035 are nothing more than hearsay, and inadmissible. Exhibits 1003
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`(corrected) and 1035 (corrected) served and filed as supplemental evidence,
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`fail to cure the deficiencies of the objected to evidence, and should be
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`excluded as well.
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`II. ARGUMENT IN SUPPORT OF THE REQUESTED RELIEF
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`A. Exhibit 1035 is not admissible
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`PO submits that the governing law on the question of the inadmissible
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`character of Petitioners’ Exhibit 1035 is beyond dispute. Testimony that is
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`not compelled, and the “Reply Declaration of Beard” that is Exhibit 1035
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`was not compelled, must be submitted in the form of an affidavit. 37 C.F.R.
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`§42.53(a). Testimony that is not submitted in compliance with this Rule is
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`inadmissible. Lowe’s Home Centers, LLC v. Reddy, 2016 WL 1275315 *8
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`(PTAB) and Coalition for Affordable Drugs IX, LLC v. Bristol Myers
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`Squibb, Co., 2016 WL 1082935 fn.5 (“Uncompelled direct testimony “must
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`be submitted in the form of an affidavit” otherwise it is not admissible”)
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`citing 37 C.F.R. §42.53(a), 42.61(a).
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`Further, Exhibit 1035 lacks an original signature. As can be readily
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`ascertained by comparing the signature on Exhibit 1035 with the signature
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`on the “Reply Declaration of Beard” filed in companion IPRs 2015-01171,
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`2015-01172, 2015-01173, 2015-01174, 2015-01175 and 2015-01603 it is
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`clear that rather than providing an original signature on these documents,
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`someone (could be the witness, could be counsel, could be someone acting
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`on behalf of Petitioners) caused an electronic reproduction of a graphic
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`image to be attach to the document. 37 C.F.R. § 1.4 (d) requires all
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`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
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`controlling in an IPR, Federal Rule of Civil Procedure 26(b) includes a
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`parallel provision for expert reports, which are not dissimilar from the type
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`- 3
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`of expert Declarations submitted in this IPR. The requirement for an
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`original signature is present for the same type of credibility and reliability
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`issues met by an original signature and jurat, both missing in the Reply
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`Declaration of Beard, Exhibit 1035. Clearly, the Reply Declaration of
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`Beard, does not meet the requirements of the Rules. Having timely objected
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`to the Exhibit during the deposition, exclusion on this basis is requested as
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`well.
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`B. The Supplemental Evidence Filed July 3, 2016 Is Inadmissible
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`PO notes that none of the Declarations submitted by Petitioners in the
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`series of IPRs between PO and Petitioners (IPRs 2015-01171, 2015-01172,
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`2015-01173, 2015-01174, 2015-01175 and 2015-1603) bear an original
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`signature or a jurat or statement certifying their reliability. While not all of
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`those Declarations were in fact objected to, the decision of PO previously to
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`not object to these inadmissible documents is moot – on July 3, 2016
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`Petitioners replaced them with new Exhibits to which PO objects. These
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`Declarations are indicated as “(Corrected).” The Board has discretion to
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`decline to consider any document not admissible. Patent Owner urges the
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`Board to decline to consider such clearly inadmissible documents as the
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`Beard Declarations and the Reply Declarations of Beard in each of the
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`identified IPRs. PO identifies the following grounds for objection:
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`1)
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`There is no Board Order or other indication that would permit
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`the filing of new Declarations at this point in time. While there was a
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`conference call with the Board during which the Board indicated it would
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`permit the filing of “replacement Declarations” (the transcript of that call is
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`Exhibit 1038) the Board has not issued an Order or indicated in what way or
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`on what basis such “replacement Declarations” may be made. Thus, the
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`Declarations are either too late or premature.
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`2)
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`The Exhibits are not in compliance with Rule 53. Rule 53
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`requires that uncompelled testimony be by affidavit. Neither Exhibit 1003
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`(Corrected) nor Exhibit 1035 (Corrected) is an affidavit, and are thus
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`inadmissible.
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`3)
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`The Exhibits are not “replacement Declarations.” While they
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`purport to be “corrected” Declarations, they are simply the same
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`Declarations signed some time ago. They have each been provided with an
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`additional page dated much later than the original Declaration, with a form
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`of jurat that is neither that required for an Affidavit nor that required by 37
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`C.F.R. §1.68. They are quite simply neither fish nor fowl, and so
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`inadmissible.
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`4)
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`The format of the exhibits is contrary to the Rules and Practice.
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`They are not Affidavits. They both reflect a page added weeks or months
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`after the declaration they purport to refer to was first prepared and executed
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`(the originals were never signed but reflect a graphic text appended by an
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`unidentified individual), and that added page does not indicate that it
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`addresses anything done months ago. The added page refers to “the
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`application or any patent issued thereon” but no application is referenced
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`anywhere, and the United States Patent referenced in the caption is not that
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`of the Declarant or Petitioners, but rather that of Patent Owner. It begs the
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`imagination to reconcile how a false statement made by Petitioners’ retained
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`Declarant should be permitted to adversely impact Patent Owner’s patent.
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`1. Relevant Facts
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`Petitioners filed their Petition relying heavily on the Declaration of
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`Beard. See the Petition, page 5 and every page thereafter to the Conclusion.
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`PO made the decision not to discuss the hearsay statement of Exhibit 1003,
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`or otherwise preliminarily respond to the Petition. When Petitioners, more
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`than a year later, submitted a Reply Declaration of Beard, Patent Owner
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`objected on the grounds set forth above. It was not until Patent Owner
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`objected that Petitioners began to realize their error.
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`Petitioners apparently appreciated the nature of their defective
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`“Declarations” and requested permission to submit wholesale replacement
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`Declarations. PO objected – no evidence demonstrated a basis for this
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`correction. In a brief conference call that followed on June 30, 2016, the
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`Board authorized the submission of the replacement Declarations, “adding
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`only the omitted penalty of perjury acknowledgement as discussed between
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`the parties.” Exhibit 1038, pp. 18–19. Counsel for PO asked for the basis
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`for the exception being made, and was advised that the Board has:
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`“Discretion to grant evidence vary allowances.” (Believed to
`have been intended as variances).” Exhibit 1038, p. 19.
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`Counsel for PO requested that the basis be spelled out in an order or paper to
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`be issued. Ultimately, after taking note of the request, the Board did not
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`issue a further paper or Order. With respect, there is no evidence
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`whatsoever of record that establishes the material added to Exhibits 1031
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`and1035, and filed on July 3, 2016, and objected to herein, was omitted
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`“inadvertently.” There is simply no evidentiary record at all.
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`Subsequently, on July 3, 2016, “corrected” exhibits were filed. Those
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`corrected exhibits are not in fact as specified by the Board. Each is the
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`original Exhibit filed (1003 and1035) with an extra page appended long after
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`the “Declaration” it is intended to correct. Petitioners did not have their
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`witness go through the original Declaration and attest to the accuracy of that
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`Declaration, or even the Reply Declaration. Rather, the witness was given a
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`one paragraph page to sign. Counsel later appended that one page to the
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`original Declaration and submitted the result as the “corrected” Declaration.
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`- 7
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`The one additional paragraph reads as follows:
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`All statements made herein of my own knowledge are
`true, and all statements made on information and belief are
`believed to be true. Further, I am aware that these statement are
`made with the knowledge that willful false statements and the
`like so made are punishable by fine or imprisonment, or both
`under 18 U.S.C. §1001, and that such willful false statements
`may jeopardize the validity of the application or any patent
`issued thereon. I declare under penalty of perjury that the
`foregoing is true and correct.(emphasis supplied)
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`2. The Corrected Exhibits Do Not Satisfy the Requirements
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`The Board’s statement on the conference call was specific – add the
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`statement to the original Declarations that the Declaration is made subject to
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`the penalty of perjury. This is not what Petitioners did. Rather than
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`“correct” the original Declarations, Petitioners had Beard sign a one page
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`Document that is not indicated in any fashion to be part of the earlier
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`Declaration. Of significance, the last page appended to “corrected” Exhibit
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`1003 lacks the page number the author had affixed to each page of his
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`original Exhibit 1003, which ended at page112. The same is true of the
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`“corrected” Reply Declaration, Exhibit 1035. One can only conclude that
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`the witness had before him, on July 3, 2016, the last page of the “corrected”
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`Declarations- the one quoted above, but none of the actual Declaration. He
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`could not have sworn to the Declarations he was not asked to review or read.
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`Where a Declarant’s signature under oath appears not on his Declaration, but
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`on a page appended to that Declaration by Counsel, the document is
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`inadmissible and cannot be accepted to establish the facts in that which it is
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`attached to. Ex parte Macleod, 2012 WL 6636583*2 (PTAB). Indeed,
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`where execution is separated not only physically but in time, some sort of
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`evidence demonstrating the witness subscribed to the penalties of perjury for
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`not only the newly made statements, but those made previously, is required.
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`Ernsthausen v.Nakayama, 1985 WL 71768*6 (BPAI). Here, Beard did not
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`sign, but caused an electronic representation of his signature, to be affixed to
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`Exhibit 1003 on May 11, 2015. He swore the statements made on the page
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`appended to that Exhibit by counsel are true on July 3, 2016 – more than a
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`year later. There is no evidence that Beard himself came to the conclusion
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`that the statements made in Exhibit 1003 and1035 are true – he was not
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`asked to do so.
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`Further, the impropriety of the “jurat” affixed by counsel is troubling.
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`The Board indicated the “Declarations” might be corrected by “adding only
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`the inadvertently omitted penalty of perjury acknowledgement.” Exhibit
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`1038, p. 18-19. Specific language is provided for in 28 U.S.C. §1746.
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`Rather than following the Board’s instruction, Petitioners made up their own
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`jurat, which is a hybrid of the statute and the provisions of Rule 68. See the
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`- 9
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`appended page of the “corrected” Declarations quoted above. It fails both
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`requirements.
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`If in fact Beard signed the corrected Declarations, he swore that they
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`were true and asserted that if they were not true he was aware that
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`such willful false statements may jeopardize the validity of the
`application or any patent issued thereon.
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`Exactly which patent application are we to assume that Mr. Beard was
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`referring to? None is mentioned. If in fact we are to understand this
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`sentence to refer to the patent at issue – U.S. Patent No. 7,329,970 (herein
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`“’970 Patent”) – what sense does that make? How can it possibly reinforce
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`our belief in the truth of Mr. Beard’s statements to know that if he
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`deliberately lied, what Petitioners have asked for might be granted – the
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`validity of the’970 Patent might be put into question? Quite simply, it
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`cannot.
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`In failing to correct the “Declarations” in question – and rather,
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`appending to them a one -page document that may or may not reflect
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`Beard’s signature, but which was quite clearly not “read and understood” by
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`him because it can make no sense, Exhibits 1003(corrected)
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`and1035(corrected) are inadmissible, and exclusion is respectfully requested.
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`3. There is No Basis to Accept the Corrected Declarations
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`As noted above. Patent Owner Global Touch Solutions followed the
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`Rules set forth for objecting to evidence that is inadmissible. See Bd. Rule
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`64(b)(1). Rather than follow the Rules set forth, including Rule 64(b)(2) –
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`Petitioners sought relief from the Board for an opportunity to correct their
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`“unforced errors” including errors made more than a year before. The
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`Board, without review of or citation to evidence of any kind, concluded the
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`errors were “inadvertent” and gave permission to replace them with better
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`documents. As basis, the Board pointed to its inherent power to “grant
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`evidence vary allowances” (which may have been intended to read “grant
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`evidence variances.”). With respect – the Board did not grant a variance in
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`this matter – it “made an evidentiary finding”- that the failure to submit
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`admissible evidence on the part of well experienced counsel and an
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`experienced witness was “inadvertent.” Respectfully – no evidence supports
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`this conclusion. Had a witness so testified, counsel for PO would have taken
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`her deposition. No one even suggested facts that made this out to be the
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`case. Respectfully, the Board’s action was unwarranted.
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`To be certain, the Board has discretion to waive any requirement of
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`the Rules it finds warranted, including the requirements of Rule 53. That
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`discretion is not unbounded, however, and an abuse of discretion will lie
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`where a decision “is not supported by substantial evidence.” Conopco, Inc.
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`v. The Proctor & Gamble Company, 2014 WL 2738465*1 (PTAB). The
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`- 11
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`Court of Appeals for the Federal Circuit has similar precedent, including
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`Intelligent Bio-Systems, Inc. v. Illumina Cambridge, Ltd. ,821 F. 3d 1359,
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`1367 (Fed. Cir. 2016) noting that an abuse of discretion may be observed
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`where an action in an IPR involves a record that contains no evidence on
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`which the Board could rationally base its decision, citing Bilstad v.
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`Wakalopulos , 386 F. 3d 1116, 1121 (Fed. Cir. 2004). Here there is no
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`evidentiary record of any type.
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`Respectfully, the suggestion that the Board’s decision does not
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`prejudice PO in any way, Exhibit 1038, 14:6–9, is absurd. This is a possibly
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`outcome determinative decision. If Petitioners’ evidence is excluded as is
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`proper, Petitioners case rests on submissions to the Board of unsupported
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`argument – Petitioners rely on Exhibit 1003 and 1035 to do their
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`“argument.” Moreover, Petitioners’ counsel and witness knew the stakes
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`were high before Review was ever sought. The Petition submitted in this
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`case was filed in response to a Complaint for Patent Infringement. Petition,
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`page 3. If in fact counsel and the witness “inadvertently” forgot the
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`importance of the requirements of the Rules, and the safeguards on truthful
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`testimony, at a minimum they should be asked to prove the same.
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`In similar circumstances, this Board has demanded the same. See,
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`e.g., Array BioPharma, Inc. v. Takeda Pharmaceutical Corp., IPR 2015-
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`- 12
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`00754, Paper No. 20, 2015, which in turn relied upon similar cases such as
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`Microsoft v. Enfish, LLC, IPR2013-00559 (Paper No. 13) (where
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`inadvertence was found, and permission to correct was granted) and
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`Zhongsan Broad Ocean Motor Co.,v. Nidec Motor Corporation,IPR2014-
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`01123 (Paper No. 20) (where inadvertence was not found and permission to
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`correct was not granted).
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`Thus, with respect, Patent Owner submits that the Board’s
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`determination of correctable inadvertence in a case of this dimension, on a
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`potentially outcome determinative issue, in the absence of an evidentiary
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`record, is contrary to Rule and Practice. On this basis, PO moves Exhibits
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`1003, 1003(corrected), 1035 and 1035 (corrected) be excluded.
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`Respectfully, Petitioners should not be permitted until the close of the period
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`in which evidence may be presented to correct profound errors in the
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`documents they ask to be considered. This is not some obvious correction of
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`one numeral for another, or a name – this is a substantive change to convert
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`inadmissible documents to those that might be considered. Lacking any
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`evidence to support such a blatant change, and working extreme prejudice to
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`Patent Owner who was the first to notice the error, the documents in
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`question should be excluded.
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`- 13
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`Respectfully submitted,
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`
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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
`Counsel for Patent Owner
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`- 14
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`Date: July 11, 2016
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`Pursuant to 37 C.F.R. §§ 42.6 and 42.105, I hereby certify that on this
`11th day of July, 2016, the foregoing PATENT OWNER’S MOTION TO
`EXCLUDE was served by e-mail on counsel for Petitioner:
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`CERTIFICATE OF SERVICE
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`Robert Steinberg (Via E-Mail)
`Bob.steinberg@lw.com
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`Matthew J. Moore
`Matthew.moore@lw.com
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`Gabriel S. Gross
`Gabe.gross@lw.com
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`Phillip E. Morton
`pmorton@cooley.com
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`DeAnna Allen
`dallen@cooley.com
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`Joseph M. Drayton
`(jdrayton@cooley.com
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`Doris Johnson Hines
`dori.hines@finnegan.com
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`Luke McCammon
`Luke.mccammon@finnegan.com
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`/s/ Steven B. Kelber
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`Steven B. Kelber
`Registration No: 30,073
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`- 15
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`Date: July 11, 2016
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