UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_____________________
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`APPLE, INC., HTC CORPORATION, HTC AMERICA, INC.,
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`MICROSOFT CORPORATION, MICROSOFT MOBILE OY,
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`MICROSOFT MOBILE, INC., SAMSUNG ELECTRONICS CO., LTD.,
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`SAMSUNG ELECTRONICS AMERICA, INC., AND ZTE (USA) INC.,
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`Petitioners
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`v.
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`EVOLVED WIRELESS LLC,
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`Patent Owner.
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`_____________________
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`Cases IPR2016-00757, IPR2016-01228, IPR2016-01229, IPR2016-01345
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`Patent 7,881,236 B2
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`_____________________
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`PATENT OWNER’S MOTION FOR SUBMISSION OF
`SUPPLEMENTAL INFORMATION UNDER 37 C.F.R. § 42.123(b)
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`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_____________________
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`APPLE, INC., HTC CORPORATION, HTC AMERICA, INC.,
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`MICROSOFT CORPORATION, MICROSOFT MOBILE OY,
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`MICROSOFT MOBILE, INC., SAMSUNG ELECTRONICS CO., LTD.,
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`SAMSUNG ELECTRONICS AMERICA, INC., AND ZTE (USA) INC.,
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`Petitioners
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`v.
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`EVOLVED WIRELESS LLC,
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`Patent Owner.
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`_____________________
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`Cases IPR2016-00757, IPR2016-01228, IPR2016-01229, IPR2016-01345
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`Patent 7,881,236 B2
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`_____________________
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`PATENT OWNER’S MOTION FOR SUBMISSION OF
`SUPPLEMENTAL INFORMATION UNDER 37 C.F.R. § 42.123(b)
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`IPR2016-00757
`Patent 7,881,236B2
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`Patent Owner Evolved Wireless, LLC submits this motion for submission
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`of supplemental information to the above-captioned Inter Partes Reviews of U.S.
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`Patent No. 7,811,236 pursuant to 37 C.F.R. § 42.123(b).
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`I. The supplemental information was not reasonably available to Patent
`Owner prior filing its Patent Owner Responses in the proceedings.
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`
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`The transcript of Samsung’s expert, Dr. Villasenor, was not available until
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`Sept. 12, 2017. As such, it was not reasonably available when Patent Owner
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`submitted its Patent Owner Responses in these proceedings. In the pending
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`district court litigation, opposition expert reports were due on June 26, 2017,
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`which is when Samsung served the report for Dr. Villasenor. Ex. 2012. Dr.
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`Villasenor’s deposition was timely conducted on Aug. 25, 2017, wherein he
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`provided, for the first time, his opinions regarding claim construction of the ’236
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`Patent. Ex. 2011. Patent Owner received the final transcript on Sept. 12, 2017.
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`At Dr. Villasenor’s deposition, counsel for Samsung designated the
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`deposition transcript confidential under the district court protective order.
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`Immediately upon receiving the final transcript on September 12, Patent Owner
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`requested that Samsung consent that the excerpted pages of Dr. Villasenor’s
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`transcript included only public information. Samsung waited until September 22
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`to inform Patent Owner that the excerpts of Dr. Villasenor’s testimony that Patent
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`Owner sought to supplemental were not confidential.
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`88426063.1
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`IPR2016-00757
`Patent 7,881,236B2
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`On Sept. 25, Patent Owner informed Petitioners of its request for a
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`conference call with the Board to seek authorization to file this Motion. Upon
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`receipt of Petitioners’ objections, Patent Owner submitted its request via email on
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`September 27 requesting the teleconference with the Board.
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`Patent owner was fully diligent in seeking discovery and promptly
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`requested authorization from the Board to submit supplemental information. Due
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`to the scheduling order of the district court litigation, Patent Owner could not
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`have obtained a transcript of Dr. Villasenor’s deposition testimony prior to
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`September 12. Ultratec, Inc. v. CaptionCall, LLC, 2017 U.S. App. LEXIS 16363
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`at *10 (Fed. Cir. Aug. 28, 2017). As such, this information was not available to
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`Patent Owner when it submitted its final response to the Board in these
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`proceedings.
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`II. Consideration of the supplemental information is in the interests-of-
`justice.
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`A. The supplemental information is highly relevant to the central issue
`of claim construction present in all proceedings.
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`The proposed deposition testimony of Dr. Villasenor demonstrates how
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`
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`one of ordinary skill in the art construes claim term “if” in the ’236 patent. All
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`Petitioners have raised this claim construction issue in the pending IPRs. See
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`IPR2016-00757, Paper 1 at 16-19, Paper 28 at 3-8; IPR2016-01345, Paper 1 at
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`88426063.1
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`17-20, Paper 28 at 3-8; IPR2016-01228, Paper 2 at 17-21, Paper 16 at 3-20;
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`IPR2016-00757
`Patent 7,881,236B2
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`IPR2016-01229, Paper 15-18, Paper 16 at 3-20.
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`Indeed, it was a significant issue presented at both oral arguments related
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`to the ’236 Patent. In Apple and Microsoft’s demonstrative exhibits submitted for
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`oral hearing of IPR2016-01228 and IPR2016-01229, 51 of 67 slides directly
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`related to the issue of claim construction in light of prior art, with 20 slides
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`devoted entirely to the interpretation of “if.” Petitioners ZTE, HTC and Samsung
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`in IPR2016-00757 and IPR2016-01345 similarly emphasized the issue of claim
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`construction in light of prior art by having 24 of 36 slides relate to the issue of
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`claim construction; and ten slides interpreting “if.”
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`Dr. Villasenor’s interpretation of the term “if” is probative of a key issue
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`raised by all petitioners. Expert testimony may be received as extrinsic evidence
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`by the court at its discretion to better reach a correct conclusion as to the true
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`meaning of a disputed term. Markman v. Westview Instruments, Inc., 52 F.3d
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`967, 980 (Fed. Cir. 1995). Indeed, Apple and Microsoft rely on expert testimony
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`for in support of their positions on claim construction. IPR2016-01228, 1229,
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`Ex. 1003. The fact that other petitioners did not rely on expert testimony does
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`not preclude the Board from receiving this evidence, especially when these
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`Petitioners are suggesting that the intrinsic record is not clear as to the proper
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`construction by offering alternative constructions. Nevertheless, Samsung is
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`IPR2016-00757
`Patent 7,881,236B2
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`under a duty of candor to present such evidence to the Board, such that its lack
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`of expert testimony with its petition does not preclude entry of this evidence into
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`the record. 37 C.F.R. § 42.11. At a minimum, the supplemental evidence must
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`be included in the record for IPR2016-01345.
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`The Federal Circuit recently reversed a PTAB decision to exclude
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`contradictory testimony that was sought to be introduced pursuant to 37 C.F.R.
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`42.123(b). Ultratec, Inc., 2017 U.S. App. LEXIS 16363 at *11-12. In Ultratec,
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`the Federal Circuit noted that conflicting testimony would be highly relevant to
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`the Board’s analysis. Id. at *11. Dr. Villasenor’s deposition testimony is
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`inconsistent with position taken by Samsung and the other Petitioners in these
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`IPR proceedings as to this claim construction issue. Thus, consideration of this
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`supplemental information is in the interests-of-justice.
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`B. The different claim construction standards has no bearing on the
`relevance of this testimony.
`During the teleconference, Petitioners’ argued that the testimony is
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`irrelevant because the expert was applying a different claim construction
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`standard. That argument is without merit. Petitioners have never advanced that
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`the claim construction of “if” is different under broadest reasonable interpretation
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`as compared to the Philips standard. Indeed, Petitioners have advanced the same
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`construction here and in the district court litigation.
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`88426063.1
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`IPR2016-00757
`Patent 7,881,236B2
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`C. Samsung’s interest in the outcome adequately represents the
`interests of all Petitioners.
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`Petitioners’ arguments that they needed to be present at the deposition or
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`need access to the entire transcript are nothing more than red herring arguments.
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`Samsung has the exact same incentive as the other Defendants. Samsung was
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`present, and even conducted re-direct on this issue. Samsung asked the same or
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`similar questions that any of the other Petitioners’ likely would have asked
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`regarding this claim construction issue. Indeed, Petitioners have not identified
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`anything that would have been different had they been present. The testimony
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`was under oath, and Samsung had every reason to seek the same testimony as the
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`other Petitioners as they seek the same claim construction of the term “if.” Thus,
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`no Petitioner is not prejudiced by entering this evidence in all proceedings.
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`The remaining portions of the transcript do not relate to this claim
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`construction issue in the ’236 patent. To the extent that Samsung believes there
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`are additional testimony on this issue, the Board has provided Samsung an
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`opportunity to include such testimony. Thus, there is no prejudice to any of the
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`Petitioners.
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`III. Conclusion
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`
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`For the reasons stated above, the Board should grant Patent Owner’s
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`motion for submission of supplemental information under 37 C.F.R. § 42.123(b).
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`IPR2016-00757
`Patent 7,881,236B2
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`Dated: October 6, 2017
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`
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`For Patent Owner:
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`/Ryan M. Schultz/
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`
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`Cyrus A. Morton
`cmorton@robinskaplan.com
`Ryan M. Schultz
`rschultz@robinskaplan.com
`Robins Kaplan LLP
`2800 LaSalle Center
`800 LaSalle Ave
`Minneapolis, MN 55402
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`Miles A. Finn
`mfinn@robinskaplan.com
`Robins Kaplan LLP
`399 Park Avenue
`Suite 3600
`New York, NY 10022
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`88426063.1
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`IPR2016-00757
`Patent 7,881,236B2
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this October 6, 2017, a copy Motion for Submission of
`Supplemental Information under 37 CFR 42.123(b) has been served in its entirety by electronic
`mail to the petitioners:
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`For ZTE petitioners:
`Charles M. McMahon
`cmcmahon@mwe.com
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`Hersh H. Mehta
`hmehta@mwe.com
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`For HTC petitioners:
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`Stephen S. Korniczky
`skorniczky@sheppardmullin.com
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`Martin Bader
`mbader@sheppardmullin.com
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`Ericka J. Schulz
`eschulz@sheppardmullin.com
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`For Samsung petitioners:
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`James M. Glass
`jimglass@quinnemanuel.com
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`Kevin P.B. Johnson,
`kevinjohnson@quinnemanuel.com
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`Todd M. Briggs
`toddbriggs@quinnemanuel.com
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`John T. McKee
`johnmckee@quinnemanuel.com
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`88426063.1
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`IPR2016-00757
`Patent 7,881,236B2
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`Dated: October 6, 2017
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`Respectfully submitted,
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`/Ryan M. Schultz/
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`Registration No. 65,134
`Attorney for Patent Owner
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`88426063.1
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