Filed on behalf of: Apple Inc., et al.
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`Entered: July 18, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
`
`APPLE INC., MOTOROLA MOBILITY LLC, and
`TOSHIBA AMERICA INFORMATION SYSTEMS, INC.,
`Petitioner
`
`v.
`
`GLOBAL TOUCH SOLUTIONS, LLC,
`Patent Owner
`_______________________
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`
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`Case IPR2015-01173
`U.S. Patent No. 7,329,970 B2
`_______________________
`
`Before JUSTIN BUSCH, LYNN E. PETTIGREW, and
`BETH Z. SHAW, Administrative Patent Judges.
`
`
`
`PETITIONER’S RESPONSE TO
`PATENT OWNER’S MOTION TO EXCLUDE
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`Entered: July 18, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
`
`APPLE INC., MOTOROLA MOBILITY LLC, and
`TOSHIBA AMERICA INFORMATION SYSTEMS, INC.,
`Petitioner
`
`v.
`
`GLOBAL TOUCH SOLUTIONS, LLC,
`Patent Owner
`_______________________
`
`
`
`
`
`
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`Case IPR2015-01173
`U.S. Patent No. 7,329,970 B2
`_______________________
`
`Before JUSTIN BUSCH, LYNN E. PETTIGREW, and
`BETH Z. SHAW, Administrative Patent Judges.
`
`
`
`PETITIONER’S RESPONSE TO
`PATENT OWNER’S MOTION TO EXCLUDE
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`
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`Case IPR2015-01173
`U.S. Patent No. 7,329,970
`I.
`
`INTRODUCTION
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`Patent Owner attempts to avoid a decision on the validity of its patents by
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`doubling down on its complaint about a technicality, a complaint the Board already
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`rejected. It argues that, because Mr. Beard’s originally-filed declarations
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`inadvertently omitted a perjury acknowledgment, these declarations should be
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`excluded. But this issue has already been decided—the Board granted Petitioner
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`permission on June 30 to correct Mr. Beard’s declarations and add the
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`inadvertently omitted perjury statement, and Petitioner filed the corrected
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`declarations. These corrected declarations include the perjury acknowledgment
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`required by 37 C.F.R. § 1.68 and cure the problems raised by Patent Owner.
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`Instead of abiding by this decision, Patent Owner complains that it was not proper
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`for the Board to allow these corrected declarations without an exhaustive
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`evidentiary record. But Patent Owner’s own conduct belies this complaint. Patent
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`Owner had a deposition of Mr. Beard scheduled four days after Petitioner provided
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`the corrected declarations, but it unilaterally cancelled the deposition after
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`receiving Petitioner’s corrected declarations. Patent Owner apparently prefers to
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`argue in its papers that it lacks a sufficient evidentiary record instead of actually
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`questioning Mr. Beard.
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`1
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`Case IPR2015-01173
`U.S. Patent No. 7,329,970
`II.
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`PATENT OWNER’S CONDUCT DEMONSTRATES THAT IT HAS
`NO LEGITIMATE CONCERNS ABOUT THE VERACITY OF MR.
`BEARD’S TESTIMONY.
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`Patent Owner had the opportunity to depose Mr. Beard on July 7, after
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`receiving all of the corrected declarations. It could have questioned Mr. Beard
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`about the truthfulness of his declarations and about his perjury acknowledgements
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`at that time. But Patent Owner instead unilaterally cancelled the deposition.
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`The parties agreed on June 22 that Patent Owner would depose Mr. Beard,
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`for a second time, on July 7 near his home in Kalispell, Montana.1 A little over a
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`week after the deposition date was finalized, on June 30, the Board granted
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`Petitioner permission to file corrected declarations. Two days later, on Saturday,
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`July 2, Patent Owner, for the first time, suggested that it was withdrawing its
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`Notice of Deposition of Mr. Beard because, in part, Petitioner had not yet served
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`the corrected declarations. (Ex. 1039, July 2 Kelber E-mail.) Petitioner promptly
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`provided the corrected declarations, over the holiday weekend, to ensure that
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`Patent Owner would have the corrected declarations several days before the
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`scheduled deposition. But Patent Owner nonetheless cancelled the deposition. If
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`1 Patent Owner previously deposed Mr. Beard on February 11, 2016 regarding his
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`declarations filed with the petitions. It asked no questions about the lack of a
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`perjury acknowledgment in his declarations.
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`2
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`Case IPR2015-01173
`U.S. Patent No. 7,329,970
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`Patent Owner had legitimate concerns about the veracity of Mr. Beard’s testimony
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`or his perjury acknowledgments, it had the opportunity to depose him. It declined.
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`And this is not the only conduct by Patent Owner that suggests it has no
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`actual concerns about Mr. Beard’s testimony. Patent Owner never objected to Mr.
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`Beard’s declarations accompanying the petitions, never asked Mr. Beard questions
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`about the lack of perjury acknowledgment during his February 11, 2016
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`deposition, and never raised any concerns about the veracity of Mr. Beard’s
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`testimony or the lack of perjury acknowledgment in its Responses. If Patent
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`Owner was legitimately concerned that Mr. Beard were not being truthful in his
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`declarations, it would have raised those concerns earlier.
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`III. PATENT OWNER’S MOTION
`UNCORRECTED DECLARATIONS.
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`IS MOOT AS TO THE
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`Patent Owner asks the Board to exclude the uncorrected versions of Mr.
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`Beard’s declaration, Exhibits 1003 and 1035, because these declarations are
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`allegedly “inadmissible.” (Paper No. 34, “Mot.” at 2.) This request is moot. The
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`Board granted Petitioner permission to file corrected versions of these declarations
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`on June 30. (Ex. 1038, “Hearing Tr.” at 18:20-19:2 (“The Panel is going to allow
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`the petitioners permission to file the corrected expert declarations, adding only the
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`inadvertently omitted penalty of perjury acknowledgment as discussed between the
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`parties.”).) Petitioner filed the corrected versions in this proceeding promptly on
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`3
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`Case IPR2015-01173
`U.S. Patent No. 7,329,970
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`July 3. (Exs. 1003 (corrected) and 1035 (corrected).) Patent Owner’s concern that
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`the uncorrected declarations were inadmissible has therefore been cured, with the
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`permission of the Board.2
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`IV. MR. BEARD’S CORRECTED DECLARATIONS ARE ADMISSIBLE.
`A. The Corrected Perjury Acknowledgment Complies with
`37 C.F.R. § 1.68.
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`Patent Owner complains that the perjury acknowledgment included in Mr.
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`Beard’s corrected declarations is deficient because it includes the statement “such
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`willful false statements may jeopardize the validity of the application or any patent
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`issued thereon.” (Mot. at 9-10 (emphasis removed).) This is incorrect. This
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`language follows and is taken directly from Rule 68, which states:
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`Any document to be filed in the Patent and Trademark Office and
`which is required by any law, rule, or other regulation to be under
`oath may be subscribed to by a written declaration. Such declaration
`may be used in lieu of the oath otherwise required, if, and only if, the
`declarant is on the same document, warned that willful false
`statements and the like are punishable by fine or imprisonment, or
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`2 In addition, Patent Owner never objected to Mr. Beard’s seven declarations filed
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`with the petitions or to three of his six reply declarations. Because Patent Owner
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`cannot “identify the objections in the record” that form the basis of a motion to
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`exclude these ten declarations it cannot move to exclude them. 37 C.F.R. § 42.64.
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`4
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`Case IPR2015-01173
`U.S. Patent No. 7,329,970
`both (18 U.S.C. 1001) and may jeopardize the validity of the
`application or any patent issuing thereon. The declarant must set
`forth in the body of the declaration that all statements made of the
`declarant’s own knowledge are true and that all statements made on
`information and belief are believed to be true.
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`37 C.F.R. § 1.68 (emphasis added). Mr. Beard’s perjury acknowledgment simply
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`includes the language expressly required by Rule 68.
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`The Corrected Declarations are Signed.
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`B.
`Patent Owner also complains that some of Mr. Beard’s declarations “lack[]
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`an original signature” because they allegedly include “an electronic reproduction
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`of a graphic image.” (Mot. at 3.) This is factually and legally incorrect. First, this
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`is factually incorrect because Mr. Beard’s corrected declarations are all signed with
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`an original ink signature, mooting Patent Owner’s concern. (Exs. 1003 (corrected)
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`and 1035 (corrected).) Second, it is legally incorrect because Patent Owner cites
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`no rule barring signature using a graphic reproduction of a handwritten signature.
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`To the contrary, the very rule cited by Patent Owner permits signing “by a graphic
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`representation of a handwritten signature.” 37 C.F.R. § 1.4(d)(3) (emphasis
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`added).
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`Finally, Patent Owner complains that Mr. Beard’s corrected declarations are
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`somehow deficient because Mr. Beard included his perjury acknowledgement as
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`part of a signature page included at the end of each of his original declarations.
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`5
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`Case IPR2015-01173
`U.S. Patent No. 7,329,970
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`This complaint has no merit. The Panel allowed correction of Mr. Beard’s
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`declarations “adding only
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`the
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`inadvertently omitted penalty of perjury
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`acknowledgment as discussed between the parties.” (Hearing Tr. at 18:20-19:2.)
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`To ensure that nothing else in the declarations was inadvertently modified, Mr.
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`Beard corrected his prior declarations to add the perjury acknowledgment and a
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`new signature. This is entirely proper.3
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`V. THE BOARD’S JUNE 30 ORDER WAS CORRECT.
`Patent Owner suggests that the Board’s June 30, 2016 order granting
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`permission to file corrected declarations was improper, essentially seeking
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`reconsideration through a motion to exclude. This is also wrong. The Board has
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`allowed corrections in analogous circumstances. See, e.g., Array BioPharma Inc.
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`3 Patent Owner cites two cases, but neither is applicable. In Ex Parte Macleod, No.
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`2012-002447, 2012 WL 6636583, at *2 (P.T.A.B. Dec. 17, 2012) the Board held
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`that an inventor affidavit must be signed by the inventor and not his attorney. Mr.
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`Beard signed his affidavits—not counsel. In Ernsthausen v. Nakayama, 1
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`U.S.P.Q.2d 1539, 1985 WL 71768, at * 6 (B.P.A.I. Sept. 30, 1985) the Board
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`considered an affidavit that was improperly served and held that the contents of the
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`affidavit should still be admitted because to do otherwise “would merely exalt
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`form over substance.”
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`6
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`Case IPR2015-01173
`U.S. Patent No. 7,329,970
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`v. Takeda Pharm. Co. Ltd., No. IPR2015-00754, Paper No. 20 at 4-5 (P.T.A.B.
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`Oct. 21, 2015) (allowing correction of expert declaration to add inadvertently
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`omitted perjury acknowledgment); Microsoft Corp. v. Enfish, LLC, No. IPR2013-
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`00559, Paper No. 13 at 4-5 (P.T.A.B. Jan. 23, 2014) (same); Indoor Skydiving
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`Germany GMBH v. IFLY Holdings LLC, No. IPR2015-01272, Paper No. 11 at 3
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`(P.T.A.B. Sept. 30, 2015) (same).
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`The Board has also denied a motion to exclude on the basis of a lack of
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`perjury acknowledgment when the offending party cured the issue by providing a
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`corrected declaration in response to the motion to exclude. Autel U.S. Inc. v. Bosch
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`Auto. Serv. Sols. LLC, No. IPR2014-00183, Paper No. 59 at 53-54 (P.T.A.B. May
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`5, 2015). And the Board has sua sponte allowed a party to correct its declarations
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`to add a missing perjury acknowledgment. Apple, Inc. v. Far Stone Tech., Inc.,
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`No. IPR2015-00599, Paper No. 28 at 2 (P.T.A.B. May 19, 2016) (sua sponte
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`ordering patent owner to correct declarations).4 The Board acted entirely properly
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`in allowing correction of the declarations.
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`4 Patent Owner’s suggestion that the Board lacks authority to allow correction is
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`contrary to the law. Pursuant to 37 C.F.R. § 42.5(b), the Board has authority to
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`“waive or suspend a requirement of parts 1, 41, and 42.” See, e.g., CaptionCall,
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`LLC v. Ultratec, Inc., No. IPR2013-00540, Paper No. 63 at 10 (P.T.A.B. Sept. 24,
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`7
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`
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`Case IPR2015-01173
`U.S. Patent No. 7,329,970
`VI. CONCLUSION
`For the reasons set forth above, Petitioner respectfully requests that the
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`Board deny Patent Owner’s Motion to Exclude.
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`Dated: July 18, 2016
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`Respectfully submitted,
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`By: /Robert Steinberg/
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`Robert Steinberg (Reg. No. 33,144)
`Latham & Watkins LLP
`355 South Grand Avenue
`Los Angeles, CA 90071-1560
`213.485.1234; 213.891.8763 (Fax)
`
`Counsel for Petitioner Apple Inc.
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`Phillip E. Morton (Reg. No. 57,835)
`Cooley LLP
`1299 Pennsylvania Ave., NW
`Suite 700
`Washington, D.C. 20004
`703.456.8668; 703.456.8100 (Fax)
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`Counsel for Petitioner Motorola
`Mobility LLC
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`
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`2014) (allowing correction of a declaration accompanying a translation and
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`suspending requirements of part 42); see also 35 U.S.C. § 26 (allowing documents
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`to be “provisionally accepted by the Director despite a defective execution,
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`provided a properly executed document is submitted within such time as may be
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`prescribed.”).
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`8
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`Case IPR2015-01173
`U.S. Patent No. 7,329,970
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`Doris Johnson Hines
`(Reg. No. 34,629)
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, L.L.P.
`901 New York Avenue, NW
`Washington, DC 20001-4413
`202.408.4250; 202.408.4400 (Fax)
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`Counsel for Petitioner Toshiba
`America Information Systems, Inc.
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`9
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`Case IPR2015-01173
`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 on this 18th day of
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`July, 2016, true and correct copies of the foregoing Petitioner’s Response to
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`Patent Owner’s Motion to Exclude were served by electronic mail upon the
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`following counsel of record for Patent Owner Global Touch Solutions, LLC:
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`Lead Counsel
`Steven B. Kelber (Reg. No. 30,073)
`skelber@labgoldlaw.com
`Law Offices of Marc R. Labgold, P.C.
`12005 Sunrise Valley Drive, Suite 203
`Reston, Virginia 20191
`Tel: (240) 506-6702
`Fax: (877) 401-8855
`Backup Counsel
`William H. Mandir (Reg. No. 32,156)
`wmandir@sughrue.com
`SUGHRUE MION PLLC
`2100 Pennsylvania Ave NW
`Suite 800
`Washington, DC 20037
`Tel: (202) 663-7458
`Fax: (202) 293-7860
`Backup Counsel
`Brian K. Shelton (Reg. No. 50,245)
`bshelton@sughrue.com
`SUGHRUE MION PLLC
`2100 Pennsylvania Ave NW
`Suite 800
`Washington, DC 20037
`Tel: (202) 663-7957
`Fax: (202) 293-7860
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`Backup Counsel
`Nathan Cristler (Reg. No. 61,736)
`ncristler@cristlerip.com
`Cristler IP, PLLC
`1801 21st Road North
`Arlington, VA 22209
`Tel: (512) 576-5166
`Fax: (877) 401-8855
`Backup Counsel
`Peter S. Park (Reg. No. 60,719)
`pspark@sughrue.com
`SUGHRUE MION PLLC
`2100 Pennsylvania Ave NW
`Suite 800
`Washington, DC 20037
`Tel: (202) 857-3358
`Fax: (202) 293-7860
`Backup Counsel
`Fadi N. Kiblawi (Reg. No. 61,973)
`fkiblawi@sughrue.com
`SUGHRUE MION PLLC
`2100 Pennsylvania Ave NW
`Suite 800
`Washington, DC 20037
`Tel: (202) 663-7386
`Fax: (202) 293-7860
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`By: /Robert Steinberg/
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`Case IPR2015-01173
`U.S. Patent No. 7,329,970
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`Robert Steinberg (Reg. No. 33,144)
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`Counsel for Petitioner Apple Inc.
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`2
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