UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MICROSOFT CORPORATION,
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`Petitioner,
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`v.
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`BRADIUM TECHNOLOGIES LLC,
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`Patent Owner.
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`__________________
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`Case IPR2015-01432
`Patent No. 7,139,794 B2
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`__________________
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`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
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`Paper No. 43
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MICROSOFT CORPORATION,
`
`Petitioner,
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`v.
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`BRADIUM TECHNOLOGIES LLC,
`
`Patent Owner.
`
`__________________
`
`
`
`Case IPR2015-01432
`Patent No. 7,139,794 B2
`
`__________________
`
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`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
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`Paper No. 43
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`TABLE OF CONTENTS
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`I.
`II.
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`INTRODUCTION .......................................................................................... 1
`ARGUMENT .................................................................................................. 1
`A.
`Bradium’s Exhibits 2002-2005 and 2010 Should be Excluded ........... 1
`Exhibits 2002-2003 .................................................................... 5
`1.
`Exhibits 2004-2005 .................................................................... 7
`2.
`Exhibit 2010 ............................................................................... 8
`3.
`III. Conclusion ...................................................................................................... 8
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`i
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`PTAB Case IPR2015-01432
`Patent 7,139,794 B2
`Petitioner’s Motion to Exclude Evidence
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`INTRODUCTION
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`Pursuant to 37 C.F.R. § 42.64(c) and the Federal Rules of Evidence,
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`I.
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`Petitioners Microsoft Corporation (“Microsoft” or “Petitioner”) hereby submits its
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`Motion to Exclude inadmissible evidence proffered by Patent Owner Bradium
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`5
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`Technologies, LLC (“Bradium”) (Exhibits 2002-2005 and 2010) which Bradium
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`attempted to introduce for the first time in a deposition of Dr. William Michalson
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`on August 5, 2016. Microsoft filed timely objections to these new exhibits on
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`August 12, 2016. ( Paper 36.) Microsoft further objected to these exhibits, and to
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`deposition testimony based on these exhibits, during the deposition itself. (Ex.
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`10
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`2011 at 13:15-17, 15:12, 16:12, 18:10, 22:10, 22:22, 23:9, 23:22, 24:3, 25:5.)
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`Bradium’s new exhibits are improper because they are no more than an attempt to
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`introduce evidence that Bradium failed to raise in its Patent Owner Response
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`(Paper 24) by using Dr. Michalson’s deposition as a vehicle to circumvent the
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`Board’s rules.
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`15
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`II. ARGUMENT
`A. Bradium’s Exhibits 2002-2005 and 2010 Should be Excluded
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`Exhibit Nos. 2002-2005 and 2010 should be excluded because they are
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`untimely under the Board’s rules. Bradium did not submit any of these exhibits in
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`1
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`PTAB Case IPR2015-01432
`Patent 7,139,794 B2
`Petitioner’s Motion to Exclude Evidence
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`support of its Patent Owner response (Paper 24). Bradium instead attempted to
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`introduce these exhibits during the deposition of Dr. William Michalson.
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`However, 37 C.F.R. § 42.53(d)(5)(ii) specifically limits cross-examination to
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`the scope of the direct examination. For cross-examination testimony of a reply
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`5
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`witness, the scope of the direct examination should be limited to the direct
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`testimony submitted in support of the reply.
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`The Office Trial Practice Guide provides two discovery periods for a patent
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`owner, the first occurring between the decision to institute and the filing of the
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`patent owner response and the second occurring after the petitioner’s reply to the
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`patent owner’s response.1 Office Trial Practice Guide, 77 Fed. Reg. 48757-8 (Aug.
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`14, 2012).
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`In the event that cross-examination occurs after a party
`has filed its last substantive paper on an issue, such cross-
`examination may result in testimony that should be called
`to the Board’s attention . . . .
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`The Board may authorize the filing of observations to
`identify such testimony and responses to observations . . .
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`Id. at 78767-8.
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`1 No motion to amend has been filed in this case.
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`2
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`PTAB Case IPR2015-01432
`Patent 7,139,794 B2
`Petitioner’s Motion to Exclude Evidence
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`In this case, Bradium had the opportunity to depose Dr. Michalson prior to
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`submitting its Patent Owner Response and to introduce new exhibits in its Patent
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`Owner Response. However, Bradium chose not to take Dr. Michalson’s deposition
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`during this first discovery period. Bradium now attempts to move in new exhibits
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`5
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`through a post-reply deposition of Dr. Michalson and observations on cross-
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`examination regarding that deposition. This is improper. Under similar
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`circumstances in Respironics, Inc. v. Zoll Medical Corp., IPR2013-00322, Paper
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`26 at 3-4 (PTAB May 7, 2014), the Board authorized the Patent Owner to file a
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`motion for observations on cross-examination of Petitioner’s reply witness, but
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`10
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`limited the observations to testimony concerning Petitioner’s Reply to the Patent
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`Owner Response.
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`In this case, Bradium attempted to introduce six new exhibits through the
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`deposition of Dr. Michalson. None of these exhibits relate to issues raised in Dr.
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`Michalson’s reply testimony. In fact, Bradium’s Motion for Observations on
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`Cross-Examination (Paper 40) does not even assert that any of Exhibits 2002-2005
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`is relevant to any issue raised in Dr. Michalson’s reply declaration (Ex. 1015), nor
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`does the motion for observations mention Ex. 2010 at all. Without such
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`foundation, there is no other procedural basis for Bradium to introduce new
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`evidence at this late stage of the proceedings, and Microsoft is prejudiced by this
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`3
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`PTAB Case IPR2015-01432
`Patent 7,139,794 B2
`Petitioner’s Motion to Exclude Evidence
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`new evidence because it does not have any additional opportunity to respond to
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`this evidence, which it would have if Bradium had filed these new exhibits in
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`support of its Patent Owner Response.
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`In addition to the procedural impropriety of these exhibits, the contents of
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`5
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`Exhibits 2002-2005 are inadmissible as hearsay. Federal Rule of Evidence (FRE)
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`802. The challenged exhibits meet FRE 801’s definition of hearsay as each is
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`being offered by Bradium for the truth of the matter asserted therein. Many of the
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`challenged exhibits are not only hearsay, but hearsay within hearsay. FRE 801,
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`805. Because Bradium cannot establish any exceptions to the hearsay rule for the
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`challenged exhibits, they are inadmissible. FRE 801-03, 805.
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`Exhibits 2002 and 2003 are also inadmissible because they are not properly
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`authenticated. FRE 901, 902, 903. To satisfy the requirement of authenticating or
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`identifying an item of evidence, the proponent must produce evidence to support a
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`finding that the item is what the proponent claims it is. FRE 901(a). None of these
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`exhibits are self-authenticating, and they thus required Bradium to authenticate
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`them, which it failed to do. FRE 902.
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`4
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`PTAB Case IPR2015-01432
`Patent 7,139,794 B2
`Petitioner’s Motion to Exclude Evidence
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`1.
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`Exhibits 2002-2003
`a.
`As discussed above, depositions of a reply witness are not a vehicle to
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`Inadmissible as Untimely
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`introduce new exhibits that could have been submitted earlier. Bradium’s Motion
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`5
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`for Observations on Cross-Examination (Paper 40, observation nos. 1-3) does not
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`relate these exhibits to any of Dr. Michalson’s reply testimony in Ex. 1015. These
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`exhibits are not cited in any other substantive paper or expert declaration filed by
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`either side. Therefore, these exhibits are untimely and should not be considered by
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`the Board.
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`b.
`Exhibits 2002 and 2003 are copies of purported preprints or page proofs of
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`Inadmissible Hearsay under FRE 801, 802 and 805
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`papers or book chapters written by Bradium’s technical expert, Dr. Bajaj.
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`Bradium’s explanation for offering these exhibits are that they are “relevant to
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`Petitioner’s argument that Dr. Bajaj does not have geographic information systems
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`(GIS) experience.” Paper 40 at 1-2. Therefore, these articles are presumably
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`offered because they make some statement that Dr. Bajaj has experience with GIS,
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`despite the lack of any such experience mentioned in Dr. Bajaj’s declaration in
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`support of the Patent Owner Response (Ex. 2001). Therefore, these Exhibits
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`appear to be offered for the truth of the matter asserted therein and thus are
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`hearsay. FRE 801(c). Bradium cannot point to any hearsay exception that these
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`PTAB Case IPR2015-01432
`Patent 7,139,794 B2
`Petitioner’s Motion to Exclude Evidence
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`preprints fall into, nor are they even close. These documents also may not be
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`disclosed under FRE 702 because there is no indication that Dr. Bajaj relied on
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`them in forming the opinions submitted as Ex. 2001.
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`5
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`c.
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`Inadmissible as Unauthenticated under FRE 901, 902
`and 903
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`The contents of Exhibits 2002 and 2003 are also inadmissible because these
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`exhibits have not been properly authenticated under FRE 901, 902, and 903.
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`Exhibits 2002 and 2003 are not self-authenticating under FRE 902. Bradium has
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`10
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`offered no testimonial or other supporting evidence in the record to authenticate
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`the integrity of these purported non-published preprints. Bradium’s Patent Owner
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`Response offered no testimony from Dr. Bajaj to authenticate these documents.
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`There is no other evidence in the record to show that these exhibits are what
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`Bradium claims that they are. As such, Exhibits 2002 and 2003 are inadmissible as
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`not authenticated.
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`d.
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`Inadmissible as Irrelevant Under FRE 401 and 402
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`Exhibits 2002 and 2003 are also inadmissible as irrelevant because they do
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`not relate to direct testimony of Dr. Michalson in the reply declaration. Bradium’s
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`Motion for Observations (Nos. 1-3) makes no attempt to relate these exhibits to
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`statements made in Dr. Michalson’s Reply Declaration (Ex. 1015).
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`6
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`PTAB Case IPR2015-01432
`Patent 7,139,794 B2
`Petitioner’s Motion to Exclude Evidence
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`2.
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`Exhibits 2004-2005
`a.
`As discussed above, depositions of a reply witness are not a vehicle to
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`Inadmissible as Untimely
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`introduce new exhibits that could have been submitted earlier. Bradium’s Motion
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`5
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`for Observations on Cross-Examination (Paper 40, observation nos. 6-8, 11-18)
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`does not relate these exhibits to any of Dr. Michalson’s reply testimony in Ex.
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`1015. These exhibits are not cited in any other substantive paper or expert
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`declaration filed by either side. Therefore, these exhibits are untimely and should
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`not be considered by the Board.
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`10
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`b.
`Exhibits 2004-2005 are an expert report submitted by Dr. Michalson in an
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`Inadmissible as Irrelevant Under FRE 401 and 402
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`unrelated matter and a book chapter cited by Dr. Michalson in Ex. 2004. None of
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`these exhibits were cited by Bradium in its Patent Owner Response. None of
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`Bradium’s motions for observation on cross-examination argue that these exhibits
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`15
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`are relevant to any issue raised in Dr. Michalson’s reply declaration (Ex. 1015).
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`Paper 40, Observation Nos. 6-8, 11-18. Ex. 2004 appears to be offered only to lay
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`foundation for Ex. 2005. Paper 40, Observation No. 7. While Bradium argues
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`that Ex. 2005 “was not provided to [Dr. Michalson] by Microsoft,” and that such
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`testimony “is relevant to Petitioner’s argument that Dr. Bajaj does not have
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`20
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`geographic information systems (GIS) experience,” this argument is a non
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`PTAB Case IPR2015-01432
`Patent 7,139,794 B2
`Petitioner’s Motion to Exclude Evidence
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`sequitur, because there is no logical relationship between whether counsel provided
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`Dr. Michalson with a specific reference and whether Dr. Bajaj has relevant
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`experience. Therefore, these exhibits are irrelevant and should be excluded.
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`Exhibit 2010
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`3.
`Exhibit 2010, U.S. Patent No. 6,169,549 to Burr, was never cited or
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`5
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`otherwise relied on by Bradium. Neither Bradium’s Patent Owner Response nor
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`Dr. Bajaj’s declaration cited this document, nor was it cited in any of the testimony
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`discussed in Bradium’s Motion for Observations on Cross-Examination. Bradium
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`has failed to establish how these exhibits are relevant to the issues of this
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`10
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`proceeding. Accordingly, these exhibits are inadmissible under Fed. R. Evid. 401
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`and 402 and this Board’s case law, and thus should be excluded. See SK
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`Innovation Co., Ltd. v Celgard, LLC, IPR2014-00679, Paper 58 at 49 (excluding
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`exhibits not cited by Patent Owner).
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`III. CONCLUSION
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`For the forgoing reasons, Petitioner Microsoft respectfully requests that the
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`Board grant the present motion and exclude Patent Owner Bradium’s inadmissible
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`evidence.
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`PTAB Case IPR2015-01432
`Patent 7,139,794 B2
`Petitioner’s Motion to Exclude Evidence
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`Respectfully submitted,
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`
`
` /Bing Ai/
`Lead Counsel
`Bing Ai, Reg. No. 43,312
`
`Back-up Counsel
`Matthew C. Bernstein, Pro Hac Vice
`Vinay Sathe, Reg. No. 55,595
`Patrick J. McKeever, Reg. No. 66,019
`Evan S. Day, Pro Hac Vice
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`Attorneys for Microsoft Corporation
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`9
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`Dated: August 15, 2016
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`
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`PERKINS COIE LLP
`11988 El Camino Real, Suite 350
`San Diego, CA 92130
`(858) 720-5700
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`
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`PTAB Case IPR2015-01432
`Patent 7,139,794 B2
`Petitioner’s Motion to Exclude Evidence
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a true copy of the foregoing
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`PETITIONER’S MOTION TO EXCLUDE has been served in their entirety this
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`15th day of August, 2016 by electronic mail on the Patent Owner via its attorneys
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`of record:
`
`Chris Coulson (ccoulson@kenyon.com)
`Michael Zachary (mzachary@kenyon.com)
`Clifford Ulrich (culrich@kenyon.com)
`Bradiumiprservice@kenyon.com
`KENYON & KENYON LLP
`One Broadway
`New York, NY 10004
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`Respectfully submitted,
`
`
`
` /Bing Ai/
`Lead Counsel
`Bing Ai, Reg. No. 43,312
`
`Back-up Counsel
`Matthew C. Bernstein, Pro Hac Vice
`Vinay Sathe, Reg. No. 55,595
`Patrick J. McKeever, Reg. No. 66,019
`Evan S. Day, Pro Hac Vice
`
`Attorneys for Microsoft Corporation
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`
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`
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`1
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`Dated: August 15, 2016
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`
`
`PERKINS COIE LLP
`11988 El Camino Real, Suite 350
`San Diego, CA 92130
`(858) 720-5700
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