UNITED STATES PATENT AND TRADEMARK OFFICE
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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.
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`CASE: IPR2016-00449
`Patent No. 8,924,506 B2
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`PETITIONER’S OPPOSITION TO MOTION TO EXCLUDE EVIDENCE
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`Paper No. 46
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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.
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`CASE: IPR2016-00449
`Patent No. 8,924,506 B2
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`PETITIONER’S OPPOSITION TO MOTION TO EXCLUDE EVIDENCE
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`Paper No. 46
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`PTAB Case IPR2016-00449, Patent No. 8,924,506 B2
`Petitioner’s Opposition to Motion to Exclude Evidence
`TABLE OF CONTENTS
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`I.
`INTRODUCTION .......................................................................................... 1
`II. MR. LAVI’S TESTIMONY (EXHIBIT 1017) SHOULD NOT BE
`EXCLUDED ................................................................................................... 1
`A.
`Summary of Facts ................................................................................. 1
`B.
`Discussion ............................................................................................ 4
`III. DOCUMENTS CONSIDERED BY DR. MICHALSON ARE
`ADMISSIBLE UNDER FRE 703 .................................................................. 7
`A.
`Exhibit 1020 ......................................................................................... 9
`B.
`Exhibit 1022 ....................................................................................... 10
`C.
`Exhibit 1023 ....................................................................................... 10
`D.
`Exhibits 1027-1028 ............................................................................ 11
`E.
`Exhibits 1029 and 1031 ...................................................................... 12
`F.
`Exhibit 1030 ....................................................................................... 13
`IV. DR. MICHALSON’S REDIRECT TESTIMONY WAS FAIR AND
`PERMISSIBLE ............................................................................................. 14
`CONCLUSION ............................................................................................. 15
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`V.
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`-i-
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`PTAB Case IPR2016-00449, Patent No. 8,924,506 B2
`Petitioner’s Opposition to Motion to Exclude Evidence
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`I.
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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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`Petitioner Microsoft provides its Opposition to Patent Owner Bradium’s Motion to
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`Exclude Microsoft’s evidence.
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`5
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`II. MR. LAVI’S TESTIMONY (EXHIBIT 1017) SHOULD NOT BE
`EXCLUDED
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`Given the unique circumstances present in this case, the Board should not
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`exclude Mr. Lavi’s testimony.
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`Summary of Facts
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`A.
`The ‘506 Patent names two inventors. The first, Isaac Levanon, owns 50%
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`10
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`of Bradium through a family trust, while the other, Yonatan Lavi, is an Israeli
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`citizen who has no relationship with either party or interest in the outcome of this
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`proceeding. The allegedly inventive activity relating to the ‘506 Patent claims took
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`place around 1999 and 2000 while Mr. Lavi worked at 3DVU, Inc., a small
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`15
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`company which Mr. Levanon admits that he closed “around 2010.” Ex. 2004, ¶
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`94. Delaware public records confirm that 3DVU’s (formerly Flyover
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`Technologies) corporate status has been “void” since 2011. Ex. 2022 (Flyover
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`Technologies and 3DVU, Inc. Delaware Secretary of State records search results).
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`Even though he is the co-inventor on the challenged patent, Bradium did not
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`20
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`disclose Mr. Lavi as a person with knowledge of facts relevant to the case in its
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`F.R.Civ.P. 26 initial disclosures. Bradium also informed District Judge Andrews
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`PTAB Case IPR2016-00449, Patent No. 8,924,506 B2
`Petitioner’s Opposition to Motion to Exclude Evidence
`that neither it nor its counsel had any relationship with Mr. Lavi. Ex. 1034 (C.A.
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`15-31-RGA, Plaintiff Bradium’s Feb. 25, 2016 Rule 16(a)(1) Initial Disclosures);
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`Ex. 1035 (C.A. 15-31-RGA, Feb. 3, 2016 hearing transcript) at 5:24-7:9. Upon
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`learning that Bradium had no relationship with Mr. Lavi, and that Bradium’s
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`5
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`counsel was not representing Mr. Lavi, Microsoft’s counsel located him in Israel at
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`its own expense. Mr. Lavi signed a declaration (Ex. 1017) after Microsoft’s
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`counsel informed Mr. Lavi about standard Board discovery procedures including
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`depositions of declarants.
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`After Microsoft filed Mr. Lavi’s declaration, Bradium threatened retaliation
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`against Mr. Lavi. Bradium accused Mr. Lavi of disclosing unspecified 3DVU
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`confidential information, despite the fact that Mr. Lavi testified on the same topics
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`Mr. Levanon did in his public declaration, and despite 3DVU having been out of
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`business for about seven years, and nonexistent as a corporate entity for six. Ex.
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`1039 (C. Coulson Feb. 9, 2017 letter to C. Ng). Bradium insisted that Microsoft’s
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`15
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`counsel send Bradium’s threat letter be sent to Mr. Lavi. Id.
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`Allegations of confidentiality breaches are serious, and Microsoft took them
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`seriously from the beginning. Microsoft agreed to work with Bradium on the issue
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`and asked Bradium to identify, with specificity, the confidential information they
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`claimed Mr. Lavi had disclosed, and the basis for the alleged confidentiality. Ex.
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`20
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`1040 (E. Day Feb. 9, 2017 email to C. Coulson). To date, Bradium still has not
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`PTAB Case IPR2016-00449, Patent No. 8,924,506 B2
`Petitioner’s Opposition to Motion to Exclude Evidence
`identified any allegedly confidential information that Mr. Lavi’s declaration
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`disclosed.1
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`Microsoft also promptly communicated Bradium’s deposition request to Mr.
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`Lavi, who indicated that did not want to travel to the United States to be deposed
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`because he was concerned about legal and other retaliation from Mr. Levanon.
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`Microsoft informed Bradium about Mr. Levanon’s unwillingness to testify and
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`proposed that the parties jointly seek a Letter of Request to take Mr. Lavi’s
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`deposition in Israel, a process which normally takes 60-75 days, but can be
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`accomplished in considerably less time using expedited procedures. Microsoft also
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`offered to reimburse Bradium for reasonable travel costs associated with its
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`counsel’s travel to take the deposition. Ex. 1041 (E. Day Feb. 27, 2017 email to C.
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`Coulson). Bradium rejected this proposal.
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`When the parties sought Board guidance, the Board requested that the
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`parties discuss an agreement to address Mr. Lavi’s concerns about retaliation.
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`Bradium then sent Microsoft a proposal which did the opposite. Bradium’s
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`proposal would have required Mr. Lavi to agree that Bradium, Levanon, and
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`1 Bradium later raised an issue relating to a Denso license, but Mr. Lavi did not
`discuss the Denso license in his declaration, and has never seen this license. Mr.
`Lavi mentioned Denso in his declaration in no more detail or specificity than Mr.
`Levanon did in his public declaration. Compare Ex. 1017, ¶¶ 20-22 with Ex.
`2004/2072, ¶¶ 43-47, 50-61. Bradium never responded to Microsoft’s request to
`explain how Mr. Lavi’s testimony concerning Denso could be confidential in light
`of Mr. Levanon’s public declaration. Ex. 1044 (E. Day Feb. 14, 2017 letter to C.
`Coulson).
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`-3-
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`PTAB Case IPR2016-00449, Patent No. 8,924,506 B2
`Petitioner’s Opposition to Motion to Exclude Evidence
`3DVU retained “the right to bring a legal action against Lavi relating to his
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`provision of information to Microsoft or the public filing of Exhibit 1017.” Ex.
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`1042 (C. Coulson Mar. 12 2017 email to E. Day and attached proposed “limited
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`waiver agreement”). Microsoft promptly sent Bradium a revised version of this
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`proposal which insulated Mr. Lavi from being sued for providing testimony in this
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`proceeding, but Bradium never responded to this proposal. Ex. 1045 (E. Day.
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`Mar. 13, 2017 email to C. Coulson, with attachment).
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`B. Discussion
`While Microsoft diligently attempted to obtain a deposition of Mr. Lavi, a
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`third-party witness outside of Microsoft’s control, the circumstances of this case do
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`not warrant the wholesale exclusion of Mr. Lavi’s testimony. While the Board’s
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`rules authorize cross-examination of declarants as routine discovery (37 CFR 42.51
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`(b)(1)(ii)), there is no per se rule that declarations must, in all cases, be excluded
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`from the record in the event that the declarant refuses to be cross-examined. In this
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`case, Microsoft respectfully submits that in view of the totality of the
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`circumstances, as discussed above, the Board should exercise its discretion not to
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`exclude Mr. Lavi’s declaration.
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`Microsoft only contacted Mr. Lavi after Bradium failed to disclose a co-
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`inventor (i.e., a key witness) in the litigation, and only after Bradium said Mr. Lavi
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`was not associated with Bradium and was not represented by their counsel. When
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`PTAB Case IPR2016-00449, Patent No. 8,924,506 B2
`Petitioner’s Opposition to Motion to Exclude Evidence
`Bradium first requested a deposition of Mr. Lavi, that request was accompanied by
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`a threat of legal action against Mr. Lavi if he testified in this proceeding—even
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`though Mr. Lavi’s declaration discussed the same things that Mr. Levanon did in
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`his declaration. Mr. Lavi is not testifying in this proceeding because of Bradium’s
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`threats. Given the facts discussed above, Bradium’s allegations are baseless, but
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`they were successful in scaring Mr. Lavi into not willingly testifying.
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`None of the cases cited by Bradium involves such conduct by the party
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`seeking to exclude the evidence. For example, the Petitioner in HTC Corp. et al v.
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`NFC Technology, LLC, IPR2014-01198, Paper 41 (PTAB Nov. 6, 2015) did not
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`threaten the witness whose declaration testimony it sought to exclude with a
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`meritless lawsuit in retaliation for his testimony. Rather, the Petitioner in HTC
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`Corp. only sought to strike the testimony at issue after the parties worked together
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`extensively to seek the declarant’s testimony through the provisions of the Hague
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`Convention. IPR2014-01198, Paper 34 (PTAB Sep. 2, 2015).2 Bradium has made
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`no such efforts to cooperate to obtain the witness’ testimony in this case; instead, it
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`actively opposed Microsoft’s efforts to do so. After the Board asked the parties to
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`discuss a possible solution to persuade Mr. Lavi to testify voluntarily, Bradium
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`2 Obtaining testimony in France, the residence of the witness at issue in HTC
`Corp., is also considerably more difficult than obtaining testimony in Israel, Mr.
`Lavi’s residence, because France has a “blocking” statute, while Israel does not.
`IPR2014-01198, Paper 41 at 1-2 (discussing French blocking statute); compare
`Instradent USA, Inc. v. Nobel Biocare Services AG, IPR2015-01786, Paper
`61(PTAB Aug. 25, 2016) (ordering deposition in Israel over objection).
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`PTAB Case IPR2016-00449, Patent No. 8,924,506 B2
`Petitioner’s Opposition to Motion to Exclude Evidence
`made sure he would not testify by including an explicit threat to sue Mr. Lavi in
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`its proposed “limited waiver.” Excluding Mr. Lavi’s testimony under these
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`circumstances rewards and incentivizes such behavior.
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`The Board has broad discretion to determine the proper course of conduct in
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`a proceeding for any situation not otherwise covered by the Board’s rules. 37
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`C.F.R. 42.5(a). Under the unique circumstances in this case, Microsoft
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`respectfully proposes that the appropriate course of conduct is not exclusion, but
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`that the Board should consider the full scope of the circumstances surrounding Mr.
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`Lavi, including the absence of a deposition as well as Bradium’s own role in
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`dissuading Mr. Lavi from testifying, when deciding what weight to give Mr. Lavi’s
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`testimony.
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`Even if the Board is inclined to exclude Mr. Lavi’s declaration, the relief
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`requested by Bradium is overbroad and unreasonable. Bradium argues that nine
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`pages of Petitioner’s Reply and fifteen paragraphs of Ex. 1016 should be
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`“excluded, struck, and expunged.” Yet most of this discussion contains only
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`passing references to Ex. 1017 (or no reference at all, e.g. Ex. 1016, ¶ 50) along
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`with extensive discussion of other independent evidence. For example, Ex. 1016,
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`paragraph 52 addresses Ex. 1017 only in a footnote, while paragraphs 109, 111,
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`and 131 each contain only a single sentence citing Mr. Lavi’s testimony in addition
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`to other evidence (much of it offered by Bradium) which independently supports
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`PTAB Case IPR2016-00449, Patent No. 8,924,506 B2
`Petitioner’s Opposition to Motion to Exclude Evidence
`Dr. Michalson’s opinions. Bradium gives no reason in its motion why Mr. Lavi’s
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`unavailability for deposition should be grounds for excluding independent
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`evidence or arguments or expert opinion relying on independent evidence—and no
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`legal rationale exists for such exclusion. Because the Board is perfectly capable of
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`disregarding excluded evidence, there is no need to strike, redact, or expunge all
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`citations to such evidence, particularly when such measures would create a risk of
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`improperly excluding discussion based at least in part on other evidence whose
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`admissibility is undisputed. As to Ex. 1017 itself, Dr. Michalson need only have
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`reasonably relied on Mr. Lavi’s testimony for Dr. Michalson’s opinions about this
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`testimony to be considered. See discussion of FRE 703, infra.
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`III. DOCUMENTS CONSIDERED BY DR. MICHALSON ARE
`ADMISSIBLE UNDER FRE 703
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`Patent Owner’s remaining hearsay objections ignore the fact that the
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`challenged exhibits explain the bases of some of Dr. Michalson’s opinions, and
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`therefore may be considered by the Board under Federal Rule of Evidence 703
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`even if otherwise inadmissible.3 FRE 703 provides that “[i]f experts in the
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`particular field would reasonably rely on those kinds of facts or data in forming an
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`opinion on the subject, they need not be admissible for the opinion to be admitted.”
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`Bradium does not dispute that Dr. Michalson relied on these exhibits in forming
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`3 This statement should not be considered as an admission that the challenged
`exhibits are otherwise inadmissible, as discussed further in this Opposition.
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`PTAB Case IPR2016-00449, Patent No. 8,924,506 B2
`Petitioner’s Opposition to Motion to Exclude Evidence
`his opinions, nor does Bradium dispute whether an expert in the field would
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`reasonably rely on these types of facts or data to form his opinions. Therefore,
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`Bradium’s Motion to Exclude provides no reason to exclude Dr. Michalson’s
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`opinions relying on Exhibits 1020, 1022, 1023, and 1027-1031.
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`Additionally, the documents themselves may be admitted to explain the
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`basis of Dr. Michalson’s opinions. In a jury trial, FRE 703 allows for even
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`otherwise inadmissible evidence to be disclosed if its “probative value in helping
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`the jury evaluate the opinion substantially outweighs their prejudicial effect.”
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`However, in an IPR, because the Federal Rules of Evidence applicable to jury trials
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`do not apply, the FRE 703 balancing test does not apply and the facts relied upon
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`by the expert are generally admissible. Nestle Healthcare Nutrition, Inc. v.
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`Steuben Foods, Inc., IPR2015-00249, Paper 76 at 13-14 (PTAB June 2, 2016),
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`citing 37 C.F.R. § 42.62(b). Because the Board “is not a lay jury, and has
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`significant experience in evaluating expert testimony, the danger of prejudice in
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`[an inter partes review] is considerably lower than in a conventional district court
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`trial.” SK Innovation Co., Ltd. v. Celgard, LLC, IPR2014-00680, Paper 57 at 28
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`(PTAB Sep. 25, 2015). Here, even if the FRE 703 balancing test is applicable,
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`Bradium fails to articulate any prejudice due to the admission of the challenged
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`exhibits, nor does Bradium dispute their probativeness. None of Exhibits 1020,
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`1022, 1023, and 1027-1031 were prepared for purposes of litigation, and Bradium
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`PTAB Case IPR2016-00449, Patent No. 8,924,506 B2
`Petitioner’s Opposition to Motion to Exclude Evidence
`had ample opportunity to cross-examine Dr. Michalson regarding any of these
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`exhibits, had it chosen to do so. See generally Ex. 2078. Bradium’s objections are
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`purely procedural, and Bradium does not raise any actual question as to the
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`authenticity or reliability of these documents. As explained further below, all of
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`these challenged exhibits are highly probative to explain the basis of Dr.
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`Michalson’s reply testimony.
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`A. Exhibit 1020
`Ex. 1020 is a Fujitsu technical manual describing a “pen tablet” capable of
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`running various Windows operating systems, including Windows NT. Dr.
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`Michalson discussed this exhibit in response to (1) Bradium’s proposed
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`construction for “limited communication bandwidth computer device” which
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`includes “a small client… such as PDAs [Personal Digital Assistants]” (Paper 16 at
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`13-14), (2) Bradium’s argument that one specific embodiment of the Reddy
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`reference, the TerraVision II program, could not operate on such a “limited
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`communication bandwidth computer device” (Id. at 24-25), and (3) Bradium’s
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`citation of another SRI webpage (Ex. 2066, cited by Paper 16 at 2, 24, 27-28)
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`noting that TerraVision II itself had been ported to Windows NT (Ex. 2066 at 2).
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`Dr. Michalson testified that even if the Board considered only TerraVision II
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`software rather than the full scope of the teachings of Reddy, it would have still
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`been obvious to a POSITA that even that exact software could still operate on a
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`PTAB Case IPR2016-00449, Patent No. 8,924,506 B2
`Petitioner’s Opposition to Motion to Exclude Evidence
`laptop or tablet computer (PDA) because operating systems necessary to run the
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`TerraVision software could have been and were in fact installed on such systems.
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`Ex. 1016, ¶¶ 50-54. Ex. 1020 is probative on this point because Dr. Michalson
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`reasonably relied on it to support his opinion that such tablet systems capable of
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`running TerraVision were not just hypothetically plausible, but actually existed.
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`Exhibit 1022
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`B.
`Ex. 1022 is a website published by the National Geospatial-Intelligence
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`Agency explaining the operation of certain coordinate systems (e.g. UTM)
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`discussed in the Reddy reference. See Ex. 1004, p. 31, ¶ 27. Dr. Michalson
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`reasonably utilized Ex. 1022 to explain well-known concepts relating to map
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`coordinate systems and rebut Bradium’s arguments that using an “X, Y”
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`coordinate system was somehow a novel invention in 1999 or 2000. Ex. 1016, ¶¶
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`86-93.
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`C. Exhibit 1023
`Ex. 1023 is a webpage from before the alleged invention of the ‘506 patent
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`explaining the operation and origins of the “FXT1” file format which Bradium’s
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`own exhibits admit that 3DVU used in the alleged prototype. See, e.g. Ex. 2020 at
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`7/110; Ex. 1043. Dr. Michalson reasonably relied on Ex. 1023- in combination
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`with Bradium’s own evidence- as a basis for his opinions that the file format used
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`by 3DVU was not novel.
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`PTAB Case IPR2016-00449, Patent No. 8,924,506 B2
`Petitioner’s Opposition to Motion to Exclude Evidence
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`D. Exhibits 1027-1028
`Exs. 1027 and 1028 are product information pages for (1) the Bing Maps
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`Preview application accused by Bradium in related litigation, and (2) the Windows
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`8.1 operating system required to operate that application. Dr. Michalson
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`reasonably considered both exhibits to place Bradium’s infringement contentions
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`accusing “all versions of the Bing Maps Preview app” in context and support his
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`opinion that Bradium’s infringement allegations are inconsistent with its arguments
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`in this litigation. Ex. 1016, ¶ 30, citing Ex. 1026 at 1.
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`Exs. 1027 and 1028 are also admissible non-hearsay. Both exhibits pre-date
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`10
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`the filing of Bradium’s complaint against Microsoft and were easily publicly
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`accessible on the main product pages for (1) the accused Bing Maps Preview
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`application and (2) the operating system necessary to run it. Ex. 1043 (Butler
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`Decl.). Prior to filing its case against Microsoft, Bradium had a duty to conduct a
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`reasonable inquiry based on available information to determine if its infringement
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`allegations were well grounded in fact. Judin v. United States, 110 F.3d 780, 784
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`(Fed. Cir. 1997). Therefore, Exs. 1027 and 1028 demonstrate that Bradium knew
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`or should have known when it filed its Complaint and its infringement contentions
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`that it was accusing software having the performance requirements shown in these
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`exhibits, which are inconsistent with its arguments in the Patent Owner Response.
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`Indeed, Bradium should have submitted such evidence itself in accordance with 37
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`PTAB Case IPR2016-00449, Patent No. 8,924,506 B2
`Petitioner’s Opposition to Motion to Exclude Evidence
`C.F.R. 42.51(b)(1)(iii) when it served its Patent Owner Response containing its
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`“limited communication bandwidth computer device” arguments.
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`Exhibits 1029 and 1031
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`E.
`Ex. 1031 is an Intel Corp. reference guide listing the performance
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`characteristics of Intel processors over time. Dr. Michalson explained that a
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`POSITA would reasonably rely on such a summary to evaluate the capabilities of
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`processors at a given time, and that such summaries are generally reflective of the
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`state of the art over time due to Intel’s well-known dominant position in the
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`microprocessor market. Ex. 1016, p. 33, n. 6. Dr. Michalson further explained
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`that Ex. 1031 supports his opinions that a POSITA could have implemented
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`TerraVision II software on a laptop or tablet, even if the Board accepts Bradium’s
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`erroneous proposed claim construction and distinction between different
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`embodiments of Reddy’s teachings, because the exhibit demonstrates that adequate
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`processors were available for such devices at the time of the alleged invention. Ex.
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`1016, ¶¶ 51, 132. Dr. Michalson also considered Ex. 1031 to support his opinions
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`that Bradium’s infringement accusations are inconsistent with its positions in this
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`IPR. Id., ¶ 30. Dr. Michalson considered Ex. 1029- which illustrates typical
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`speeds of common desktop PCs at the time, for a similar purpose. Therefore, Exs.
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`1029 and 1031 are probative and admissible under FRE 703. While it is not
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`necessary to show a hearsay exception, Ex. 1031 is also admissible under FRE
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`803(17) as a list or compilation that the public or a reasonable person in the
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`computer industry would reasonably rely on regarding processor speeds, in view of
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`Dr. Michalson’s unchallenged testimony that a POSITA would rely on such lists.
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`Exhibit 1030
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`F.
`Dr. Michalson reasonably considered Ex. 1030 to show, in response to
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`Bradium’s arguments that the data structure claimed by the ‘506 Patent was novel
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`and non-obvious, that the same data structure was already well-known and in use
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`prior to the alleged invention date. Ex. 1016, ¶¶ 74-75, citing Ex. 1030, p. 5. Ex.
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`1030 is a technical paper describing the operation of the Microsoft TerraServer
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`system first introduced in 1998. Dr. Michalson considered Ex. 1030 for its
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`description of the 1998 TerraServer system itself to show the state of the art.
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`Therefore, Bradium’s arguments regarding revision and copyright dates of Ex.
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`1030 (all of which are still before the ‘506 Patent’s December 2000 earliest
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`claimed priority filing date) only go to weight, not admissibility.
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`Bradium asserts (in a lengthy footnote, presumably to avoid the Board’s
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`page limits) that Bradium may rely on Ex. 1030 even if the Board excludes it,
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`citing FRE 801(d)(2). Paper 44 at 11, n. 5. However, while FRE 801(d)(2) allows
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`a party to admit a statement of a party-opponent, statements so admitted become
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`part of the evidentiary record and may be relied upon by all parties. The rule does
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`not allow a party to selectively cite an exhibit for its own benefit while precluding
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`the other side from relying on it. Bradium cites no authority for its position that
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`the Board should simultaneously exclude Ex. 1030, yet still consider Bradium’s
`
`arguments based on cherry-picked portions of the same exhibit.
`
`IV. DR. MICHALSON’S REDIRECT TESTIMONY WAS FAIR AND
`PERMISSIBLE
`
`5
`
`Bradium’s effort to exclude Dr. Michalson’s redirect testimony is similarly
`
`meritless. As a general matter, unlike the jury trial case law cited by Bradium,
`
`narrow procedural objections such as the form and foundation of questions posed
`
`to experts are of little value in an inter partes review where “the Board, sitting as a
`
`10
`
`non-jury tribunal with administrative expertise, is well-positioned to determine and
`
`assign appropriate weight to evidence presented.” Gnosis S.P.A. et al v. South
`
`Alabama Medical Science Found., IPR2013-00118, Paper 64 at 43 (PTAB June 20,
`
`2014), citing Donnelly Garment Co. v. NLRB, 123 F.2d 215, 224 (8th Cir. 1941).
`
`Here, Bradium seeks to exclude Dr. Michalson’s entire redirect testimony
`
`15
`
`(which contains numerous questions to which no objection was made) based on a
`
`handful of supposedly leading questions, such as whether Dr. Michalson applied
`
`the broadest reasonable interpretation (BRI) standard to his analysis. Paper 47 at
`
`13, citing Ex. 2078 at 80:22-81:11. Bradium fails to explain why the entire
`
`redirect should be struck, other than an unsupported assertion that a handful of
`
`20
`
`exemplary questions “infected” the remaining redirect testimony. Paper 44 at 14.
`
`FRE 611 allows leading questions to be used to focus a witness’ attention to
`
`-14-
`
`
`
`PTAB Case IPR2016-00449, Patent No. 8,924,506 B2
`Petitioner’s Opposition to Motion to Exclude Evidence
`particular subject matter, in this case to relevant portions of lengthy exhibits from
`
`an unrelated proceeding introduced by Patent Owner for the first time during cross-
`
`examination of Dr. Michalson. In this case, Microsoft directed Dr. Michalson’s
`
`attention to relevant portions of the document, ignored by Bradium during cross-
`
`5
`
`examination, to establish background for non-leading questions explaining the
`
`differences between Bradium’s deficient secondary indicia arguments in this case
`
`and Dr. Michalson’s more extensive discussion in the unrelated IPR. See, e.g. Ex.
`
`2078 at 91:17-92:1. Such questioning was fair redirect to rebut Bradium’s attempt
`
`to misleadingly characterize Dr. Michalson’s prior testimony in that unrelated
`
`10
`
`matter as inconsistent with his reply testimony in Ex. 1016.
`
`Bradium’s “foundation” objection (Paper 44, pp. 14-15) is not only trivial,
`
`but wrong because it ignores Dr. Michalson’s testimony that he was personally
`
`familiar with the TerraServer reference at the time it was introduced in the late
`
`1990s. Ex. 2078 at 76:11-78:6.
`
`15
`
`V. CONCLUSION
`
`For the forgoing reasons, Petitioner Microsoft respectfully requests that the
`
`Board deny Bradium’s Motion to Exclude.
`
`
`
`-15-
`
`
`
`PTAB Case IPR2016-00449, Patent No. 8,924,506 B2
`Petitioner’s Opposition to Motion to Exclude Evidence
`Respectfully submitted,
` /Chun M. Ng/
`Lead Counsel
`Chun M. Ng, Reg. No. 36,878
`
`Back-up Counsel
`Matthew C. Bernstein, Pro Hac Vice
`Patrick J. McKeever, Reg. No. 66,019
`Vinay Sathe, Reg. No. 55,595
`Evan S. Day, Pro Hac Vice
`
`Attorneys for Microsoft Corporation
`
`-16-
`
`Dated: March 31, 2017
`
`
`
`PERKINS COIE LLP
`11988 El Camino Real, Suite 350
`San Diego, CA 92130
`(858) 720-5700
`
`
`
`PTAB Case IPR2016-00449, Patent No. 8,924,506 B2
`Petitioner’s Opposition to Motion to Exclude Evidence
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a true copy of the foregoing
`
`PETITIONER’S OPPOSITION TO MOTION TO EXCLUDE EVIDENCE has
`
`been served in its entirety this 31st day of March, 2017 by electronic mail on the
`
`BACK-UP COUNSEL
`Michael N. Zachary
`mzachary@kenyon.com
`KENYON & KENYON, LLP
`1801 Page Mill Road, Ste 210
`Palo Alto, CA 94304
`Clifford Ulrich
`culrich@kenyon.com
`KENYON & KENYON, LLP
`One Broadway
`New York, NY 10004-1007
`
`
`
`
`
`Respectfully submitted,
` /Chun M. Ng/
`Lead Counsel
`Chun M. Ng, Reg. No. 36,878
`
`Back-up Counsel
`Matthew C. Bernstein, Pro Hac Vice
`Patrick J. McKeever, Reg. No. 66,019
`Vinay Sathe, Reg. No. 55,595
`Evan S. Day, Pro Hac Vice
`
`Attorneys for Microsoft Corporation
`
`Patent Owner via its attorneys of record:
`
`LEAD COUNSEL
`Christopher J. Coulson
`ccoulson@kenyon.com
`KENYON & KENYON, LLP
`One Broadway
`New York, NY 10004-1007
`
`Bradiumiprservice@kenyon.com
`
`Dated: March31, 2017
`
`
`
`PERKINS COIE LLP
`11988 El Camino Real, Suite 350
`San Diego, CA 92130
`(858) 720-5700
`
`-1-
`
`
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