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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.
`Petitioner
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`v.
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`PERSONALIZED MEDIA COMMUNICATIONS LLC
`Patent Owner
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`Case No.: IPR2016-00754
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`Patent No.: 8,559,635
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`PATENT OWNER’S OBJECTIONS TO EVIDENCE SUBMITTED BY THE
`PETITIONER WITH ITS OPPOSITION TO THE MOTION TO AMEND
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Patent Owner Personalized Media Communications LLC (“PMC”) hereby
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`objects pursuant to 37 C.F.R. § 42.64(b)(1) and the Federal Rules of Evidence
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`(“FRE”) to the admissibility of certain purported evidence served by Petitioner
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`Apple Inc. on March 13, 2017 in connection with its Petitioner’s Opposition to
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`Patent Owner’s Contingent Motion to Amend. The exhibits objected to, and
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`grounds for PMC’s objections, are listed below. PMC also objects to Petitioner’s
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`reliance on or citations to any objected evidence in its papers.
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`PMC objects to the Petitioner’s exhibits as follows:
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`Exhibit
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`Basis of Objection
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`1046
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`FRE 401-403 (Relevance, No probative value) – This exhibit is
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`irrelevant as it was allegedly published in 1986 and, therefore,
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`cannot be informative to what the person of ordinary skill in the art
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`would have known by the relevant invention date of November 3,
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`1981.
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`1047
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`FRE 401-403 (Relevance, No probative value) – This exhibit is
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`irrelevant as it was allegedly published in 1985 and, therefore,
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`cannot be informative to what the person of ordinary skill in the art
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`would have known by the relevant invention date of November 3,
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`1981.
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`1
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`1048
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`FRE 401-403 (Relevance, No probative value) – This exhibit is
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`irrelevant as it was allegedly published in 1983 and, therefore,
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`cannot be informative to what the person of ordinary skill in the art
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`would have known by the relevant invention date of November 3,
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`1981.
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`1051
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`FRE 401-403 (Relevance, No probative value) – This exhibit is
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`irrelevant as it was allegedly published in 1986 and, therefore,
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`cannot be informative to what the person of ordinary skill in the art
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`would have known by the relevant invention date of November 3,
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`1981.
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`1055
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`FRE 401-403 (Relevance, No probative value) – PMC objects to
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`this exhibit to the extent it includes or relies on irrelevant or
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`inadmissible information and to the extent that it includes or relies
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`on information the probative value of which is substantially
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`outweighed by the danger of unfair prejudice, wasting time, or
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`needlessly presenting cumulative evidence.
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`2
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`In addition to the above objections, PMC objects to specific paragraphs in Mr.
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`Wechselberger’s Declaration in Support of Petitioner’s Opposition to the Motion
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`to Amend (Ex. 1055) as set forth below:
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`Paragraph(s) Basis of Objection
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`27-28
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`Fed. R. Evid. 702/703 (Bases/Reliability of an Expert’s Opinion
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`Testimony); Fed. R. Evid. 705 and 37 C.F.R. § 42.65 (Failure to
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`Disclose Facts or Underlying Data).
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`30
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`Fed. R. Evid. 702/703 (Bases/Reliability of an Expert’s Opinion
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`Testimony); Fed. R. Evid. 705 and 37 C.F.R. § 42.65 (Failure to
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`Disclose Facts or Underlying Data). Attempting to construe ‘a
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`transmission’ without support.
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`31-32
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`Fed. R. Evid. 702/703 (Bases/Reliability of an Expert’s Opinion
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`Testimony); Fed. R. Evid. 705 and 37 C.F.R. § 42.65 (Failure to
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`Disclose Facts or Underlying Data). Attempting to construe the
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`term ‘processor’ more narrowly than the Board’s prior
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`construction.
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`39-40
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`Fed. R. Evid. 702/703 (Bases/Reliability of an Expert’s Opinion
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`Testimony); Fed. R. Evid. 705 and 37 C.F.R. § 42.65 (Failure to
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`Disclose Facts or Underlying Data). Conclusory statements about
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`Campbell and Guillou capable of revising operating code without
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`3
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`44
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`support from the references.
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`Fed. R. Evid. 702/703 (Bases/Reliability of an Expert’s Opinion
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`Testimony); Fed. R. Evid. 705 and 37 C.F.R. § 42.65 (Failure to
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`Disclose Facts or Underlying Data). Conclusory statements about
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`the presence or absence of any non-digital information in the
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`upstream link.
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`50-51
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`Fed. R. Evid. 702/703 (Bases/Reliability of an Expert’s Opinion
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`Testimony); Fed. R. Evid. 705 and 37 C.F.R. § 42.65 (Failure to
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`Disclose Facts or Underlying Data). Attempts to construe
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`‘information particular to a customer’ without support.
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`57-58
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`Fed. R. Evid. 702/703 (Bases/Reliability of an Expert’s Opinion
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`Testimony); Fed. R. Evid. 705 and 37 C.F.R. § 42.65 (Failure to
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`Disclose Facts or Underlying Data). Attempts to construe ‘unique
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`identification codes’ without support. Conclusory statements about
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`the operation of Campbell’s upstream system.
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`60
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`Fed. R. Evid. 702/703 (Bases/Reliability of an Expert’s Opinion
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`Testimony); Fed. R. Evid. 705 and 37 C.F.R. § 42.65 (Failure to
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`Disclose Facts or Underlying Data). This reference does not
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`disclose a query, but rather “the subscriber interacts through his
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`keyboard and a "tree search" to obtain the information he desires.”
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`4
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`(Ex. 1023 at 29:37 – 30:2).
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`66-67
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`Fed. R. Evid. 702/703 (Bases/Reliability of an Expert’s Opinion
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`Testimony); Fed. R. Evid. 705 and 37 C.F.R. § 42.65 (Failure to
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`Disclose Facts or Underlying Data). Conclusory statements about
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`‘unique digital codes identifying … a source of said data unit’
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`without support from the reference.
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`Fed. R. Evid. 702/703 (Bases/Reliability of an Expert’s Opinion
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`Testimony); Fed. R. Evid. 705 and 37 C.F.R. § 42.65 (Failure to
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`Disclose Facts or Underlying Data).
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`Fed. R. Evid. 702/703 (Bases/Reliability of an Expert’s Opinion
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`Testimony); Fed. R. Evid. 705 and 37 C.F.R. § 42.65 (Failure to
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`Disclose Facts or Underlying Data).
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`70
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`90
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`94-97
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`Fed. R. Evid. 702/703 (Bases/Reliability of an Expert’s Opinion
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`Testimony); Fed. R. Evid. 705 and 37 C.F.R. § 42.65 (Failure to
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`Disclose Facts or Underlying Data).
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`Contradicts the reference’s explicit teachings. Seth-Smith
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`discloses, “Conventional communications facilities such as the
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`telephone system or the mails are suited for this function, as
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`indicated schematically at 8. In this way, no uplink facility at the
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`user's station need be provided.” (Ex. 1064 at 10:24-27, emphasis
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`5
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`added).
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`113
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`Fed. R. Evid. 702/703 (Bases/Reliability of an Expert’s Opinion
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`Testimony); Fed. R. Evid. 705 and 37 C.F.R. § 42.65 (Failure to
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`Disclose Facts or Underlying Data).
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`126
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`Fed. R. Evid. 702/703 (Bases/Reliability of an Expert’s Opinion
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`Testimony); Fed. R. Evid. 705 and 37 C.F.R. § 42.65 (Failure to
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`Disclose Facts or Underlying Data).
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`131-132
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`Fed. R. Evid. 702/703 (Bases/Reliability of an Expert’s Opinion
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`Testimony); Fed. R. Evid. 705 and 37 C.F.R. § 42.65 (Failure to
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`Disclose Facts or Underlying Data).
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`Contradicts the reference’s explicit teachings. Seth-Smith
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`discloses, “Conventional communications facilities such as the
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`telephone system or the mails are suited for this function, as
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`indicated schematically at 8. In this way, no uplink facility at the
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`user's station need be provided.” (Ex. 1064 at 10:24-27, emphasis
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`added).
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`6
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`Dated: March 20, 2017
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`Respectfully submitted,
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`/ Thomas J. Scott, Jr. /
`By
`Thomas J. Scott, Jr.
`Registration No.: 27,836
`Senior Vice President & General Counsel
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`Personalized Media
`Communications, LLC
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`11491 Sunset Hills Road, Suite 340
`Reston, Virginia 20190
`Telephone: (281) 201-2213
`tscott@pmcip.com
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`7
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`Certificate of Service
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`The undersigned hereby certifies that a copy of the:
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`PATENT OWNER’S OBJECTIONS TO EVIDENCE SUBMITTED BY THE
`PETITIONER WITH ITS OPPOSITION TO THE MOTION TO AMEND
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`was served, pursuant to 37 C.F.R. §42.6(e)(1) and the consent found in Section
`III.D of the Petition (Paper No. 1), by electronic mail on counsel for Petitioner at
`the electronic mail addresses set forth below:
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`Marcus E. Sernel, Joel R. Merkin, and Eugene Goryunov
`KIRKLAND & ELLIS LLP
`300 North LaSalle Street
`Chicago, Illinois 60654
`P: (312) 862-2000; F: (312) 862-2200
`marc.sernel@kirkland.com
`joel.merkin@kirkland.com
`eugene.goryunov@kirkland.com
`Apple-PMC-PTAB@kirkland.com
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`Gregory S. Arovas
`KIRKLAND & ELLIS LLP
`601 Lexington Avenue
`New York, New York 10022
`P: (212) 446-4800; F: (212) 446-4900
`greg.arovas@kirkland.com
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`
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`By:
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` / Thomas J. Scott /
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`Date: March 20, 2017
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`8
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