UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`MICROSOFT CORPORATION,
`Petitioner
`
`v.
`
`BRADIUM TECHNOLOGIES LLC,
`Patent Owner
`____________________
`
`CASE IPR2015-01432
`Patent 7,139,794
`____________________
`
`PATENT OWNER BRADIUM TECHNOLOGIES LLC’S
`OPPOSITION TO MOTION TO EXCLUDE EVIDENCE
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`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`MICROSOFT CORPORATION,
`Petitioner
`
`v.
`
`BRADIUM TECHNOLOGIES LLC,
`Patent Owner
`____________________
`
`CASE IPR2015-01432
`Patent 7,139,794
`____________________
`
`PATENT OWNER BRADIUM TECHNOLOGIES LLC’S
`OPPOSITION TO MOTION TO EXCLUDE EVIDENCE
`
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`
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`I.
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`II.
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`Contents
`It Was Appropriate to Introduce and Use Exhibits 2002–2005 and 2010 at
`the Cross Examination of Dr. Michalson. ....................................................... 1
`
`The Permissible Scope of Cross Examination of Dr. Michalson Is Broad
`and Includes the Subject Matter of Both of His Declarations. ........................ 3
`
`III. Each Challenged Exhibit Is Proper Evidence in This Inter Parte Review. .... 5
`
`A.
`
`Exhibit 2002: C. Bajaj, Visualization Paradigms, DATA
`VISUALIZATION TECHNIQUES (Page Proofs); and Exhibit 2003: C.
`Bajaj, Topology Preserving Data Simplification with Error
`Bounds (Preprint) .................................................................................. 5
`
`1. Exhibits 2002, 2003 Are Relevant and Contradict Petitioner’s
`Argument that Dr. Bajaj’s Experience Is Overly Narrow. .................... 5
`
`2. Exhibits 2002, 2003 Should Not Be Excluded as Hearsay and Are
`Sufficiently Authenticated. .................................................................... 7
`
`B.
`
`Exhibit 2004: Expert Report of Dr. William R. Michalson; and
`Exhibit 2005: GEOGRAPHICAL INFORMATION SYSTEMS,
`PRINCIPLES AND APPLICATIONS ............................................................. 8
`
`1. Exhibits 2004, 2005 Are Relevant and Contradict Petitioner’s
`Alleged Motivation to Combine Petitioner’s Asserted References. ..... 9
`
`2. Exhibits 2004, 2005 Are Not Excludable as Hearsay. ........................ 12
`
`C.
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`Exhibit 2010: United States Patent No. 6,169,549 to Burr ............... 13
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`IV. CONCLUSION .............................................................................................. 15
`
`i
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`
`
`TABLE OF AUTHORITIES
`
`
`Cases
`Irons v. FBI,
`880 F.2d 1446 (1st Cir. 1989) ................................................................................ 4
`
`Page(s)
`
`Macaulay v. Anas,
`321 F.3d 45 (1st Cir. 2003) .................................................................................... 4
`
`NLRB v. Vangas, Inc.,
`517 F.2d 747 (9th Cir. 1975) ................................................................................ 12
`
`United States v. Arnott,
`704 F.2d 322 (6th Cir. 1983), cert. denied,
`464 U.S. 948 (1983) ............................................................................................... 4
`
`United States v. Moore,
`917 F.2d 215 (6th Cir. 1990) .................................................................................. 4
`
`United States v. Safavian,
`435 F. Supp. 2d 36 (D.D.C. 2006),
`rev’d on other grounds, 528 F.3d 957 (D.C. Cir. 2008) ......................................... 8
`
`United States v. Tomblin,
`46 F.3d 1369 (5th Cir. 1995) .................................................................................. 4
`
`Other Authorities
`
`1-6 FEDERAL EVIDENCE PRACTICE GUIDE .................................................................. 8
`
`Kenneth M. Mogill & Lia N. Ernst, EXAMINATION OF WITNESSES (Thomson
`Reuters 2014) ......................................................................................................3, 4
`
`MCCORMICK ON EVIDENCE
`(7th ed. 2014, Student Edition) ................................................................... 3, 7, 12
`
`Rules
`
`37 C.F.R. § 42.53(d)(5)(ii) ......................................................................................... 4
`
`
`
`ii
`
`
`
`
`
`Fed. R. Evid. 104 ....................................................................................................... 7
`
`Fed. R. Evid. 607 Advisory Committee Notes,
`1972 Proposed Rules ....................................................................................... 6, 12
`
`Fed. R. Evid. 611(b) ................................................................................................... 4
`
`Fed. R. Evid. 801(d)(1) ............................................................................................ 12
`
`Fed. R. Evid. 803 Advisory Committee Notes,
`1972 Proposed Rules, Note to Paragraph (18) ..................................................... 13
`
`Fed. R. Evid. 803(16) ............................................................................................... 13
`
`Fed. R. Evid. 803(18) ................................................................................................. 7
`
`Fed. R. Evid. 803(8) ................................................................................................. 15
`
`Fed. R. Evid. 807 ....................................................................................................... 7
`
`Fed. R. Evid. 901(b)(1) .............................................................................................. 8
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`Fed. R. Evid. 901(b)(4) .............................................................................................. 8
`
`iii
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`Patent Owner Bradium Technologies LLC (“Bradium”) hereby responds in
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`opposition to Petitioner’s Motion to Exclude Evidence (Paper 43) regarding five
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`Patent Owner exhibits, Exhibits 2002–2005 and 2010.
`
`Bradium conducted a cross-examination deposition of Dr. Michalson on
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`August 5, 2016, and introduced and served Exhibits 2002–2006 and 2010 at that
`
`deposition.1 Dr. Michalson was questioned regarding each exhibit. Microsoft took
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`no re-direct testimony. Exhibit 2011, 99:8–22. As authorized by the Board,
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`Bradium filed a Motion for Observations regarding Dr. Michalson’s cross-
`
`examination on August 15, 2016 (Paper 40).
`
`As explained below, Microsoft’s motion to exclude should be denied.
`
`Bradium’s cross examination of Dr. Michalson, including the use of Exhibits
`
`2002–2005 and 2010, was proper and within the scope of his direct testimony,
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`including because Dr. Michalson incorporated his entire 183-page opening
`
`declaration (Exhibit 1008) and all 30 of its exhibits into his reply declaration
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`(Exhibit 1015), thus broadening the subject matter of his reply. Exhibit 1015, ¶3
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`(pp. 1–2). Also, Bradium has a proper evidentiary basis for each challenged
`
`exhibit.
`
`I.
`
`It Was Appropriate to Introduce and Use Exhibits 2002–2005 and 2010
`at the Cross Examination of Dr. Michalson.
`
`The introduction of exhibits in Dr. Michalson’s August 5, 2016 deposition
`
`1 Petitioner does not challenge Exhibit 2006.
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`
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`1
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`
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`was proper because each of the challenged exhibits 2002-2005 and 2010
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`demonstrates knowledge that a POSA would have had that is relevant to material
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`issue(s) in this inter partes review. The exhibits, and testimony regarding the
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`exhibits, also impeach the credibility of Dr. Michalson’s testimony which relies so
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`heavily on claimed knowledge of a POSA and unsupported assertions of
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`“common” knowledge.
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`Dr. Michalson placed the scope of knowledge of a POSA in the field of GIS
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`at issue in his reply. His reply declaration included two new exhibits for the
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`purpose of explaining the knowledge of a POSA. Exhibit, 1015 ¶10. His reply
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`declaration emphasizes that a POSA would “consider the full scope of knowledge
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`within the GIS field at the time,” Exhibit 1015, ¶16 (6:2–3), and the declaration
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`repeatedly relies on claimed knowledge of a POSA and/or common knowledge.
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`Id., ¶49 (21:6–8), ¶68 (30:4–6), ¶82 (35:20), ¶103 (44:8–9), ¶114 (50:3), ¶123
`
`(55:20), ¶135 (65:20–66:4), ¶161 (78:14–15), ¶174 (83:17–18) (“based on
`
`common sense and the common knowledge in the art”); see id., ¶72 (unsupported
`
`assertion that, “[a]s was common in GIS systems…”), ¶116 (51:7) (unsupported
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`reference to “a commonly known solution to this problem”), ¶116 (51:15)
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`(unsupported reference to “a commonly identified solution”).2
`
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`2 Although Bradium believes that Dr. Michalson’s reply declaration goes beyond
`the bounds of a proper reply, Bradium does not attempt to parse out the portions of
`the declaration that are proper for purposes of this opposition.
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`
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`2
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`
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`Because the challenged exhibits are relevant, they are admissible. The
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`admission into evidence of relevant extrinsic evidence used in cross examination to
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`dispute a witness’s direct examination testimony is proper. MCCORMICK ON
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`EVIDENCE 110 § 49 (7th ed. 2014, Student Edition) (“When the matter is not
`
`collateral, extrinsic evidence may be introduced to dispute the witness’s testimony
`
`on direct examination or cross.”); see id., 112–113; Kenneth M. Mogill & Lia N.
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`Ernst, EXAMINATION OF WITNESSES 501 § 8:41 (2014) (if relevant to a material
`
`issue and not solely to contradict the witness, “extrinsic evidence is admissible” on
`
`cross examination). Only “collateral” extrinsic evidence, which is evidence
`
`directed towards irrelevant or peripheral topics, is typically not admitted through
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`cross examination. MCCORMICK ON EVIDENCE 110, 112 (7th ed. 2014) (“the
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`matter is non-collateral and extrinsic evidence consequently admissible if the
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`matter is itself relevant to a fact of consequence on the historical merits of the
`
`case.”)
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`Although Bradium asserts that all the exhibits are within the scope of the
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`reply declaration (see Section III below), as explained in the next section, Dr.
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`Michalson also broadened the scope of his reply testimony by incorporating his
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`opening declaration into his reply declaration, and by repeatedly citing and relying
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`upon his opening declaration in his reply.
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`II. The Permissible Scope of Cross Examination of Dr. Michalson Is Broad
`and Includes the Subject Matter of Both of His Declarations.
`
`
`
`3
`
`
`
`
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`The proper subject matter of the August 5, 2016 cross-examination of Dr.
`
`Michalson is liberally construed to include all inferences and implications arising
`
`from his testimony. United States v. Tomblin, 46 F.3d 1369, 1386 (5th Cir. 1995)
`
`(citing United States v. Arnott, 704 F.2d 322, 324 (6th Cir. 1983), cert. denied, 464
`
`U.S. 948 (1983)); United States v. Moore, 917 F.2d 215, 222 (6th Cir. 1990). A
`
`cross examination need only be reasonably related to the subject matter of direct
`
`examination. Macaulay v. Anas, 321 F.3d 45, 53–54 (1st Cir. 2003) (citing Irons v.
`
`FBI, 880 F.2d 1446, 1462 (1st Cir. 1989) (en banc opinion)). His reply testimony
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`includes both his entire opening declaration (Exhibit 1008) and his reply
`
`declaration (Exhibit 1015),3 because Dr. Michalson incorporated his entire opening
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`declaration, including all exhibits, into his reply declaration. Exhibit 1015, ¶3 (pp.
`
`1–2). Dr. Michalson’s reply declaration repeatedly relies on his opening
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`declaration (Exhibit 1008, sometimes referred to as “my 2015 Declaration”). E.g.,
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`Exhibit 1015, ¶¶ 6, 10, 11, 14, 19, 24, 26, 30, 46, 86, 112, 123, 126, 140, 174, 181.
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`Bradium’s cross-examination was entitled to inquire as to all facts which modify or
`
`explain the assertions raised in direct examination. Kenneth M. Mogill, et al.,
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`EXAMINATION OF WITNESSES 425 n.4, n.6 § 8:9 (2014).
`
`Microsoft’s argument that the cross examination exhibits should be excluded
`
`
`3 See 37 C.F.R. § 42.53(d)(5)(ii); see also Fed. R. Evid. 611(b) (“Cross-examination
`should not go beyond the subject matter of the direct examination and matters
`affecting the witness’s credibility.”)
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`
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`4
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`
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`as beyond the scope of Dr. Michalson’s “reply” declaration, exhibit 2015, therefore
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`fails.
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`III. Each Challenged Exhibit Is Proper Evidence in This Inter Parte Review.
`The challenged exhibits are admissible in this inter partes review. Each
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`exhibit is relevant to the subject matter of Dr. Michalson’s direct testimony.
`
`Accordingly, Microsoft’s cursory evidentiary objections fail.
`
`A. Exhibit 2002: C. Bajaj, Visualization Paradigms, DATA
`VISUALIZATION TECHNIQUES (Page Proofs); and Exhibit 2003: C.
`Bajaj, Topology Preserving Data Simplification with Error Bounds
`(Preprint)
`
`Exhibits 2002 and 2003 are relevant, and are proper evidence because the
`
`exhibits are non-hearsay and have been sufficiently authenticated.
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`1.
`
`Exhibits 2002, 2003 Are Relevant and Contradict Petitioner’s
`Argument that Dr. Bajaj’s Experience Is Overly Narrow.
`
`Exhibits 2002 and 2003 are relevant because they contradict Dr. Michalson’s
`
`assertion that the scope of Dr. Bajaj’s expertise and opinion are overly narrow.4 Dr.
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`Michalson asserts that Dr. Bajaj’s perception of the relevant state of the art is
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`overly narrow, and that Dr. Bajaj disregarded Geographical Information Systems
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`(“GIS”) art. E.g., Exhibit 1015, ¶¶19–25. Dr. Michalson further asserts that Dr.
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`Bajaj has an improperly narrow view of a POSA. Exhibit 1015, ¶¶20–25. Exhibits
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`4 Exhibit 2005 also contradicts Dr. Michalson and Petitioner’s attempt to narrow
`the definition of a POSA to exclude Dr. Bajaj. Dr. Michalson confirmed that, as
`stated in Exhibit 2005, Geographic Information Systems (GIS) is a
`multidisciplinary field of study. Exhibit 2011, 27:3–17.
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`
`
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`5
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`
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`2002 and 2003 are offered to contradict this testimony and its implications, as each
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`is an example of an academic writing by Dr. Bajaj that includes discussion of GIS
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`integrated into his field of study. This cross-examination testimony also
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`impeaches Dr. Michalson’s credibility as to his opinions regarding Dr. Bajaj, see
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`Fed. R. Evid. 607, because Dr. Michalson admitted that he had not located or
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`reviewed either of these exhibits in rendering his opinion. Exhibit 2011, 13:18–
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`14:8, 15:9–14.
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`Exhibit 2002 is a set of page proofs for the book DATA VISUALIZATION
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`TECHNIQUES, authored by Dr. Bajaj that also lists Dr. Bajaj as editor. Dr.
`
`Michalson confirmed at deposition that he is familiar with page proofs through his
`
`academic work, and that Exhibit 2002 is an example of such page proofs. Exhibit
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`2011, 10:9–17. Dr. Michalson confirmed that Chapter 1, which lists Dr. Bajaj as
`
`author, refers to GIS as “a driving application for reduction of height field” in a
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`subsection “data reduction.” Id., 11:3–14. Further, Dr. Michalson confirmed that
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`one of the four subfigures within Figure 1.13 depicts a “pressure distribution
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`around the earth globe.” Id., 11:15–12:16; see Exhibit 2002, 16.
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`Exhibit 2003 is a preprint article, listing Dr. Bajaj as the first author. The
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`exhibit refers to “Geographical Information Systems (GIS)” in the “related work”
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`section. Exhibit 2011, 14:20–15:8.
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`Collectively, Exhibits 2002 and 2003 show that Dr. Bajaj’s area of expertise
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`6
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`encompass GIS. The fact that Dr. Bajaj treats GIS as integrated with other
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`technical areas in his prior work shows that Dr. Michalson’s strained requirement
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`that a POSA have “personal experience” is not meaningful or credible. Exhibit
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`1015, ¶16 (5:18–20).
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`2.
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`Exhibits 2002, 2003 Should Not Be Excluded as Hearsay and
`Are Sufficiently Authenticated.
`
`Exhibits 2002 and 2003 should not be excluded as hearsay, and each exhibit
`
`has been sufficiently authenticated.
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`The content of Exhibits 2002 and 2003 should not be excluded as hearsay
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`because there is no danger of insincerity in these pre-litigation, pre-IPR academic
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`writings, especially as they merely show that the subject matter of Dr. Bajaj’s
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`scholarly works encompasses GIS, and that his field included GIS. See Fed. R.
`
`Evid. 807; see generally MCCORMICK ON EVIDENCE 543 § 246 (7th ed. 2014)
`
`(noting that when a writing is not intended as an assertion, the danger of insincerity
`
`is significantly reduced). This is especially appropriate where Dr. Michalson has
`
`been confronted with these academic writings and Microsoft had the opportunity to
`
`ask follow-up questions on re-direct, but did not. See Fed. R. Evid. 803(18).
`
`Further, the exhibits should at least be considered by the Board as an impeachment
`
`of Dr. Michalson’s attempt to assert that Dr. Bajaj’s experience is somehow overly
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`narrow. See Fed. R. Evid. 104.
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`Both exhibits are also sufficiently authenticated. Dr. Michalson
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`7
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`
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`authenticated Exhibit 2002 by confirming that he is familiar with page proofs from
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`his academic work and that Exhibit 2002 are page proofs listing Dr. Bajaj as author.
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`Exhibit 2011, 10:9–17; Fed. R. Evid. 901(b)(1). And Dr. Michalson did not
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`disagree with the characterization of Exhibit 2003 as an article with Dr. Bajaj listed
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`as first author. Exhibit 2011, 12:20–13:23. The content, appearance, and
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`distinctive characteristics of Exhibits 2002 and 2003 are also, standing alone,
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`sufficient to meet the low bar for authentication. Fed. R. Evid. 901(b)(4); see 1–6
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`Matthew Bender, FEDERAL EVIDENCE PRACTICE GUIDE § 6.08 (2016) (evidence
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`need only indicate the document is what the proponent claims, proponent does not
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`have to prove the document is authentic); United States v. Safavian, 435 F. Supp.
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`2d 36, 40 (D.D.C. 2006), rev’d on other grounds, 528 F.3d 957 (D.C. Cir. 2008)
`
`(finding e-mails were authenticated by the e-mail address “@” symbols, “To”
`
`“From” headings, formatting, and signature blocks). The format and content of the
`
`first page of Exhibit 2002, including title, author, abstract, editor, and copyright
`
`date, and the dated indication of “PAGE PROOFS” at the bottom of the second
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`page, are sufficient. See Safavian, 435 F. Supp. 2d at 40. Similarly, as to Exhibit
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`2003, the format and content of the first page, including title, authors, abstract,
`
`listed keywords, and date are sufficient. See id.
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`B.
`
`Exhibit 2004: Expert Report of Dr. William R. Michalson; and
`Exhibit 2005: GEOGRAPHICAL INFORMATION SYSTEMS, PRINCIPLES
`AND APPLICATIONS
`
`
`
`8
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`
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`Exhibits 2004 and 2005 are relevant not subject to exclusion as hearsay.
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`Exhibit 2004 is an excerpt of an expert report signed by Dr. Michalson. Exhibit
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`2005 is an excerpt of the Geographical Information Systems text that was cited and
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`relied upon by Dr. Michalson Exhibit 2004. Exhibit 2011, 18:1–17. Dr.
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`Michalson vouched for the accuracy and completeness of Exhibit 2004 at
`
`deposition. Exhibit 2011, 19:23–20:6.
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`1.
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`Exhibits 2004, 2005 Are Relevant and Contradict Petitioner’s
`Alleged Motivation to Combine Petitioner’s Asserted
`References.
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`Exhibits 2004 and 2005 contradict the asserted motivation to combine
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`references on which Petitioner and Dr. Michalson rely in asserting obviousness.
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`As explained below, the exhibits show that the alleged motivation to improve
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`efficiency and speed was long recognized in the technical field that includes GIS,
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`and yet despite active and ongoing active development efforts to improve GIS
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`systems over at least a decade that resulted in numerous failures, no one developed
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`the invention of the ’794 Patent. The exhibits thus are relevant to show that the
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`motivation put forward by Petitioners and Dr. Michalson is generic and did not in
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`fact result in the invention for at least a decade.
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`Petitioner asserts that a POSA would have been motivated to combine
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`references in order to improve efficiency and speed, Paper 2 (Petition), 18:5–19:5,
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`29:4–5 (avoiding “waste” of bandwidth), 31:2–5, 43:9–12, 44:18–20, 54:1–4
`
`
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`9
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`
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`
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`(reducing memory/processor requirements), 57:7–10, 60:1–3 (reduced-memory
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`implementation); Paper 27 (Reply), 7–8 (“efficient solution”; “efficiently”; “reduce
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`visual latency”), 11:7–9 (“conserve bandwidth”), 15:2–8 (“reduced I/O and CPU
`
`utilization” “efficient use of network bandwidth” “reduced visual latency”); 18:3–5
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`(optimize use of power and bandwidth), 20:12–15 (save CPU and I/O resources),
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`22:7–9 (avoid wasted bandwidth), and also because the references address
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`common technical issues. E.g., Paper 2, 17:11–19:5, 24:18–25:1, 41:16–19.
`
`Dr. Michalson likewise asserts that a POSA would have been motivated to
`
`seek improved efficiency and speed. Exhibit 1008, ¶200 (114:1 (efficient used of
`
`bandwidth), (114:6 (optimized I/O bandwidth use), 114:10 (reduced visual latency),
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`115:1–3 (reduced I/O and CPU utilization)), ¶252 (129:14–18 (efficient use of
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`network bandwidth), ¶¶264–72 (132:3–133:18) (memory-efficient), ¶273
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`(improved memory use/bandwidth efficiency); Exhibit 1015, ¶122 (55:2–6)
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`(reduced visual latency and optimized bandwidth utilization), ¶127 (59:8–12)
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`(optimize bandwidth usage), ¶171 80:16–20 (efficiency of bandwidth utilization),
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`¶174 (83:14–84:1), ¶175 (84:15–85:9) (citing “reduced CPU use and I/O utilization”
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`language of Paper 15).
`
`These exhibits show that for many years prior to the invention, there was an
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`intense interest in developing GIS systems in the field. Dr. Michalson admits in
`
`his prior report, Exhibit 2004, that (i) computer based Geographic Information
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`10
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`
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`Systems (GIS) have been used since the late 1960’s; and (ii) by the mid 1980’s, it
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`was known that there were many ways that GIS data could be stored, and that the
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`manner in which data are stored impacts the time and computer resources required
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`to effectively use the data. Exhibit 2011, 16:6–20, 19:7–20:6, 21:16–22, Exhibit
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`2004, 26. As the text he cited in his prior report, Exhibit 2005, shows, by the late
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`1980’s GIS were widely accepted, with acceptance of GIS accelerating to the point
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`that “GIS” was considered to be a buzzword by 1991. Exhibit 2005, 33; Exhibit
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`2011, 31:8–32:1.
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`As shown by Exhibit 2005, the same “desire for greater speed or efficiency”
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`that Petitioners now allege in hindsight would have motivated a POSA to combine
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`references was a well-known motivation in the development of GIS prior to 1991,
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`almost a decade before the filing date of the ’794 Patent. Exhibit 2005, 23; see
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`Exhibit 2011, 29:13–30:16. Even with intensive GIS-related development activity,
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`Exhibit 2005, 33, and the documented motivation for improved speed/efficiency,
`
`id., 23, the “History of GIS” chapter of Exhibit 2005 explains that failures “have
`
`been numerous” and that implementation of GIS was a “mixture of failures, set-
`
`backs, diversions and successes.” Id., 23; Exhibit 2011, 28:8–29:7.
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`The development history of GIS, documented in a reference that Dr.
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`Michalson previously relied upon, therefore contradicts Petitioner’s claim that a
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`POSA, based on “common sense” or “knowledge of the POSA,” (see Section I)
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`
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`11
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`
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`would have been motivated to combine disparate references to arrive at the
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`claimed invention of the ’794 Patent in the interest of improving speed and
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`efficiency. Exhibits 2004 and 2005 support Patent Owner’s argument that
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`Petitioner’s purported motivation to combine is generic and therefore insufficient.
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`See Paper 24 (Patent Owner response), 32.
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`2.
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`Exhibits 2004, 2005 Are Not Excludable as Hearsay.
`
`Exhibits 2004 and 2005 are not excludable as hearsay. Exhibit 2004 is a
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`prior statement signed by Dr. Michalson. Exhibit 2011, 16:6–20. Dr. Michalson
`
`vouched for the accuracy and completeness of Exhibit 2004 and authenticated it
`
`during cross-examination. Exhibit 2011, 16:6–20, 19:23–20:6, 21:3–11.
`
`Therefore, Exhibit 2004 is not hearsay. Fed. R. Evid. 801(d)(1); Fed. R. Evid. 607
`
`Advisory Committee Notes, 1972 Proposed Rules (“If the impeachment is by prior
`
`statement, it is free from hearsay dangers and is excluded from the category of
`
`hearsay under Rule 801(d)(1).”) A prior signed statement, shown to a witness who
`
`admits to having made the statement, and regarding which the witness’s counsel
`
`has an opportunity for re-direct testimony, is properly admitted into evidence. See
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`NLRB v. Vangas, Inc., 517 F.2d 747, 748–49 (9th Cir. 1975); see also MCCORMICK
`
`ON EVIDENCE 111 § 49 (7th ed. 2014) (Modern authority supports confronting a
`
`witness during cross-examination with any contrary writing that the witness would
`
`be competent to authenticate.)
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`
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`12
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`
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`Exhibit 2005, the text that was relied upon by Dr. Michalson in Exhibit 2004,
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`should not be excluded as hearsay because it was published in 1991 and therefore
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`is over 20 years old and an ancient document such that the hearsay rule does not
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`apply. Fed. R. Evid. 803(16); Exhibit 2004, 26 (Dr. Michalson listing a 1991 date
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`for the text that is Exhibit 2005); see also copyright page and spine label of Exhibit
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`2005.
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`Exhibit 2005 also should not be excluded as hearsay because, by Dr.
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`Michalson’s own admission (as set forth in Exhibit 2004), the text is a reliable
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`authority, and thus the learned treaties exception applies. Fed. R. Evid. 803(18).
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`Exhibit 2005 was called to the attention of Dr. Michalson, Exhibit 2011, 20:7–
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`23:17, and Dr. Michalson affirmed that Exhibit 2005 is the text that he reviewed
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`and relied upon in his prior expert report (Exhibit 2005), Exhibit 2011, 21:3–11,
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`and that he owns several copies of the text in his personal library. Exhibit 2011,
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`23:3–17; see Fed. R. Evid. 803(18). As contemplated by Fed. R. Evid. 803(18), Dr.
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`Michalson was also “available to explain and assist in the application of the treatise
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`if desired,” although Microsoft conducted no re-direct. Fed. R. Evid. 803 Advisory
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`Committee Notes, 1972 Proposed Rules, Note to Paragraph (18).
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`C. Exhibit 2010: United States Patent No. 6,169,549 to Burr
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`Exhibit 2010 is the patent that issued from a patent application no.
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`09/003863 that is referenced in Cooper: “preferably, the mesh technique used in
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`this invention is that described in co-pending application No. 09/003863.” Exhibit
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`2011, 37:18–22, 41:17–42:3. Dr. Michalson affirmed this. Exhibit 2011, 42:2–3
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`(“Yes. This is the application that’s being cited in the Cooper patent.”)
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`Exhibit 2010 is relevant because, as Dr. Michalson affirmed, it describes a
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`progressive mesh technique, whereby a highly detailed mesh M is reduced into a
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`coarse approximation M0 (base mesh) along with a sequence of n detail records,
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`M1, M2, M3, and so on up to Mn, that must be combined in a fixed sequence to
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`build up the mesh to its fully-detailed form. Exhibit 2011, 42:17–44:4; Exhibit
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`2011, 1:44–60, 13:31–46. This disclosure contradicts Dr. Michalson’s implication
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`that Cooper teaches that data within an object is sorted into a priority order: “the
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`priority features of Cooper…do utilize the priority queue in order to retrieve
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`successive data updates within the same object (i.e., progressive regional resolution
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`enhancement).” Exhibit 1015, ¶184 (p. 90). As Dr. Michalson affirmed at
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`deposition, to reconstruct each object, the “detail records” for that object must be
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`downloaded in a specific and invariant order. Exhibit 2011, 38:5–39:9, 42:17–43:6,
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`43:17–44:4. Thus, as Patent Owner has explained (Paper 24, 52), Cooper does not
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`prioritize the order of polygons that go into building up the resolution within any
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`individual object.
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`Exhibit 2010 is not hearsay because it is offered to show what it states, not
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`the truth of what it states. It shows the preferred mesh technique that Cooper, a
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`14
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`patent on which Dr. Michalson relies, references. Exhibit 2010 is a U.S. Patent,
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`see Fed. R. Evid. 803(8), and furthermore this exhibit was authenticated by Dr.
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`Michalson at deposition. It is proper evidence that may be considered by the
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`Board.
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`IV. CONCLUSION
`It was proper to cross-examine Dr. Michalson using exhibits that are
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`relevant to material issues in this inter partes review and that contradict the
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`assertions made by Dr. Michalson in his opening and reply declarations. Further,
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`to the extent Microsoft challenges admissibility, the exhibits used at deposition are
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`not excludable as hearsay and have been sufficiently authenticated. Microsoft’s
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`motion to exclude Exhibits 2002–2005 and 2010 should be denied.
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`15
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`Dated: August 29, 2016
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`/Chris Coulson/
`Chris Coulson (Reg. No. 61,771)
`Lead Counsel for Patent Owner
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004-1007
`Tel.: (212) 425-7200
`Fax: (212) 425-5288
`CCoulson@kenyon.com
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`16
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on August 29,
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`2016, the foregoing Patent Owner’s Opposition to Petitioner’s Motion to Exclude
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`were served via electronic mail upon the following counsel of record for the
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`Petitioner:
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`Bing Ai (Reg. No. 43,312) (Ai-ptab@perkinscoie.com)
`Matthew Bernstein (pro hac vice) (MBernstein@perkinscoie.com)
`Vinay Sathe (Reg. No. 55,595) (VSathe@perkinscoie.com)
`Patrick McKeever (Reg. No. 66,019) (PMcKeever@perkinscoie.com)
`Evan S. Day (pro hac vice) (EDay@perkinscoie.com)
`PerkinsServiceBradiumIPR@perkinscoie.com
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`/Chris Coulson/
`Chris Coulson
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004-1007
`Tel.: (212) 425-7200
`Fax: (212) 425-5288
`CCoulson@kenyon.com
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`i
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