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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
`PETITIONER’S DEMONSTRATIVE EXHIBITS
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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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`Pursuant to 37 C.F.R. § 42.70 and Paper 38, Patent Owner Personalized
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`Media Communications LLC (“PMC”) hereby submits the following objections to
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`Petitioner’s demonstrative exhibits. Petitioner and PMC met and conferred on
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`June 1-2, 2017 but were unable to reach a resolution regarding the following
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`objections.
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`PMC objects to Petitioner’s Slide 7 for the statement that the “Board
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`properly rejected PMC’s reliance on ‘disclaimers’ in file history,” and its quotation
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`of an “Examiner’s Response,” Ex. 2016 at 1362. Petitioner has not previously
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`cited to the “Examiner’s Response” in any of its papers for the argument set forth
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`on Slide 7 (see Paper 23 (Reply) at 3; Paper 38 at 3 (“Demonstrative exhibits …
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`may not introduce new evidence or arguments.”)), and furthermore, the Board’s
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`Institution Decision did not reject any PMC reliance on “disclaimers” in the file
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`history of the ’635 Patent (see Paper 8 at 8). PMC therefore requests that the
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`statement and the quotation of the “Examiner’s Response” be stricken from Slide
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`7.
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`PMC objects to Petitioner’s Slides 8 and 26 for their extensive citations to,
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`and block-quotes of, entire paragraphs from the Board’s Institution Decision
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`(Paper No. 8) as if they were supporting evidence. The Institution Decision,
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`reflecting the Board’s preliminary findings, is neither “evidence in the record” nor
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`Petitioner’s own arguments as presented in its papers. See Paper 38 at 3
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`(“demonstrative exhibits should cite to evidence in the record.”); CBS Interactive
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`Inc. v. Wireless Scis. LLC, Case IPR2013-00033 (PTAB Oct. 23, 2013) (Paper 118)
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`at 3 (“Whatever a party desires to present, for whatever reason, should have
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`already been presented in the party’s [filings], or other exhibits”). PMC therefore
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`requests that the block-quotes of Paper No. 8 be stricken from those slides.
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`PMC objects to Petitioner’s Slides 50-55 in their entireties because they are
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`directed solely to issues related to PMC’s Contingent Motion to Amend (Paper 16)
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`on which PMC will not present anything during the oral hearing. See Paper 38 at
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`2-3 (“On rebuttal, each party will be restricted to only those matters raised by the
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`other party in its initial presentation.”). PMC therefore requests that Slides 50-55
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`be deleted in their entireties from Petitioner’s demonstrative exhibits.
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`Dated: June 2, 2017
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`Respectfully submitted,
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`/ Douglas J. Kline /
`By
`Douglas J. Kline
`Registration No.: 35,574
`GOODWIN PROCTER LLP
`100 Northern Avenue
`Boston, MA 02210
`(617) 570-1209
`Attorney for Patent Owner Personalized
`Media Communications, LLC
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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
`PETITIONER’S DEMONSTRATIVE EXHIBITS
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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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`By:
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` / Douglas J. Kline /
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`Date: June 2, 2017
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`4
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