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`Paper No. 39
`Filed October 10, 2017
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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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`ZTE (USA) Inc., HTC Corporation, HTC America, Inc.,
`Samsung Electronics Co., Ltd., and
`Samsung Electronics America, Inc.,
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`Petitioner,
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`v.
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`Evolved Wireless LLC,
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`Patent Owner.
`
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`Case IPR2016-007571
`Patent 7,881,236 B2
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`
`
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`Before WILLIAM V. SAINDON, PATRICK M. BOUCHER, and
`TERRENCE W. MCMILLIN, Administrative Patent Judges.
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`
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`OPPOSITION TO PATENT OWNER’S MOTION FOR
`SUBMISSION OF SUPPLEMENTAL INFORMATION
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`
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`1 IPR2016-01345 has been consolidated with this proceeding.
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`
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`Case IPR2016-00757
`Patent 7,881,236 B2
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`
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`In its motion (Paper 38), Patent Owner (“PO”) seeks to enter an excerpted
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`deposition transcript in which Samsung’s district court non-infringement expert, Dr.
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`John Villasenor, was questioned on the meaning of the word “if.” PO’s motion is an
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`eleventh-hour effort to replace a defective declaration submitted together with PO’s
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`Response. The Board should deny the motion for two reasons: (1) PO already had an
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`opportunity to submit expert opinion on its “only if ” interpretation; and
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`(2) considering Dr. Villasenor’s testimony at this late stage would not serve the
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`interests of justice. Each reason provides a separate basis for denying the motion.
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`I.
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`
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`PO had an opportunity to submit expert opinion on its “only if ”
`interpretation.
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`PO’s motion fails unless it establishes “why the supplemental information
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`reasonably could not have been obtained earlier.” See 37 C.F.R. § 42.123(b). PO cannot
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`make that showing because it already submitted earlier expert opinion on its “only if ”
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`interpretation. Specifically, along with its Response, PO submitted Dr. Cooklev’s
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`“declaration” offering his opinion that “if ” means “only if.” See Ex. 2006, Cooklev
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`Decl. As Petitioners’ Reply explained, Dr. Cooklev’s “declaration” is defective because
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`it: (i) is unsworn, (ii) applies the clear and convincing standard of invalidity, and
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`(iii) compares the preferred embodiment to the prior art. See Paper 28, Reply, at 6-7.
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`
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`Now, after the oral hearing, PO seeks to cure this defect through Dr. Villasenor’s
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`testimony. As PO confirmed, it offers Dr. Villasenor’s testimony for the same reason it
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`offered Dr. Cooklev’s unsworn “declaration”—to show “how one of ordinary skill in
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`1
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`Case IPR2016-00757
`Patent 7,881,236 B2
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`the art construes claim term ‘if’ in the ’236 patent.” See Paper 38, Motion, at 2. The
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`Board should reject PO’s eleventh-hour do-over. PO had ample opportunity to submit
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`a proper declaration from Dr. Cooklev—or any other expert—but it failed to do so.
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`
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`PO argues that it lacked access to Dr. Villasenor’s opinions (see id. at 2), but that is
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`irrelevant. The issue is not whether PO could have reasonably obtained earlier expert
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`opinion from somebody who has no connection whatsoever with this IPR. The issue
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`is whether PO could have earlier obtained expert opinion on its “only if ”
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`interpretation—and here it plainly did have an opportunity to obtain such opinion
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`from Dr. Cooklev. For this reason, the Board should deny PO’s motion.
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`II. Consideration of Dr. Villasenor’s testimony does not serve justice.
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`
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`The Board should also deny PO’s motion because it does not establish that
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`“consideration of the supplemental information would be in the interests-of-justice.”
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`See 37 C.F.R. § 42.123(b). Considering Dr. Villasenor’s testimony would not serve
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`justice because it is irrelevant, prejudicial, and inadmissible hearsay.
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`
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`A. Dr. Villasenor’s testimony is not relevant.
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`Under 37 C.F.R. § 42.123(b), “supplemental information must be relevant to a
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`claim for with the trial has been instituted.” 77 Fed. Reg. at 48707. Dr. Villasenor’s
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`testimony is irrelevant here for two reasons. First, extrinsic evidence “cannot be relied
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`on to change the meaning of the claims when that meaning is made clear by those
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`documents.” Southwall Tech., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1578 (Fed. Cir. 1995).
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`2
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`Case IPR2016-00757
`Patent 7,881,236 B2
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`PO admits “[t]he patent is clear”—thus conceding that its resort to extrinsic evidence
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`is improper. See Paper 22, Response, at 45.
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`
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`Second, Dr. Villasenor provided his testimony under the Phillips standard, not
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`the BRI standard that governs these IPR proceedings. See PPC Broadband, Inc. v. Corning
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`Optical Commc’ns RF, LLC, 815 F.3d 734, 740 (Fed. Cir. 2016). PO incorrectly insists the
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`different claims construction standards have “no bearing” here. Compare Paper 38,
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`Motion, at 4, with PPC Broadband, 815 F.3d a 741 (recognizing that a case can “hinge[]
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`on the claim construction standard applied”). Dr. Villasenor did not analyze or provide
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`an opinion regarding the construction of any claim terms under the BRI standard. Ex.
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`1048 at 313:11-15, errata. Cf. InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327,
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`1352-54 (Fed. Cir. 2014) (rejecting expert testimony that applied incorrect legal
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`standard and reversing district court). In fact, in his written report, Dr. Villasenor did
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`not provide any opinions on claim construction. The scope of his report was limited to
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`non-infringement of certain accused products based on PO’s arguments made in this
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`IPR. Ex. 1048 at 54:11-13, 83:25-84:6, 85:8-11, 85:15-23, 86:6-13. He provided no
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`independent analysis on the question of “if ” versus “only if.” Ex. 1048 at 313:11-15.
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`See 37 CFR § 42.65 (“Expert testimony that does not disclose the underlying facts or
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`data . . . is entitled to little or no weight.”). PO employs circular reasoning to suggest
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`this testimony supports its claim construction argument, particularly where the
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`testimony began with Dr. Villasenor’s assumption that PO’s argument is correct.
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`3
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`Case IPR2016-00757
`Patent 7,881,236 B2
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`
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`With misplaced reliance on Ultratec, Inc. v. CaptionCall, LLC, 2017 U.S. App.
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`LEXIS 16363, at *10 (Fed. Cir. Aug. 28, 2017), PO incorrectly asserts that
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`Dr. Villasenor’s testimony is relevant because it is “conflicting testimony” of how a
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`skilled artisan would interpret the claim term “if.” See Paper 38, Motion, at 3. In
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`Ultratec, an expert offered district court testimony that conflicted with his own testimony
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`in a related IPR. See id. at *4-5 (The expert’s “trial testimony conflicted with written
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`declarations he made in the IPRs.”). Dr. Villasenor has not presented any testimony in
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`this IPR, so there is no “conflict” to justify consideration of his district court
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`testimony in this proceeding.
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`Indeed, Petitioners did not offer any expert testimony on the interpretation of
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`“if,” and have consistently argued that “if ” should be given its plain and ordinary
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`meaning consistent with the intrinsic evidence. See Paper 3, Petition, at 16; Paper 28,
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`Reply, at 5. In the Institution Decision, the Board agreed and rejected PO’s “only if ”
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`interpretation. See Paper 12, ID, at 9. Even if the reasoning of Ultratec could be
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`extended to cover “conflicting testimony” between two different experts—and it
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`cannot—there still is no testimony from any expert in this IPR with which
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`Dr. Villasenor’s testimony would conflict.
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`
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`B. Dr. Villasenor’s testimony is inadmissible hearsay.
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`Dr. Villasenor’s testimony meets both prongs of the hearsay rule: (1) his
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`testimony was not taken in this IPR (i.e., it contains statements “not ma[de] while
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`4
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`Case IPR2016-00757
`Patent 7,881,236 B2
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`testifying at the current trial or hearing”); and (2) PO offers it solely to prove “how one
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`of ordinary skill in the art construes claim term ‘if ’ in the ’236 patent” (i.e., to prove
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`the truth of its assertions). See FED. R. EVID. 801(c). His testimony does not qualify for
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`any hearsay exclusion or exception, and PO, as its proponent, has not demonstrated
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`otherwise. Thus, under FED. R. EVID. 802, Dr. Villasenor’s testimony is inadmissible
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`hearsay. Considering this inadmissible hearsay would not serve justice.
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`
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`C.
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`PO’s submission violates FRE 106 and would unfairly prejudice the
`IPR2016-00757 Petitioners.
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`ZTE and HTC, the Petitioners in IPR2016-00757 (“the ’757 Petitioners”),2
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`object to entry of Dr. Villasenor’s testimony under FED. R. EVID. 106. The ’757
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`Petitioners had no notice of that deposition, did not attend the deposition, and do not
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`even have access to the full deposition transcript because it involves confidential
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`Samsung information. Thus, the ’757 Petitioners had no opportunity to question Dr.
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`Villasenor and have no way to know whether the transcript contains relevant testimony
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`beyond the cherry-picked excerpts that PO submitted. PO asserts the ’757 Petitioners
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`face no prejudice because Samsung has had an opportunity to review the full
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`transcript, but Samsung’s review does not substitute for a review of the full transcript
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`by all Petitioners. For this additional reason, considering Dr. Villasenor’s testimony at
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`this late stage would not serve justice.
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`The Board should deny PO’s motion.
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`2 Samsung is a petitioner to IPR2016-01345, consolidated with IPR2016-00757.
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`5
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`Case IPR2016-00757
`Patent 7,881,236 B2
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`October 10, 2017
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`Respectfully submitted,
`/Charles M. McMahon/
`Charles M. McMahon (Reg. 44,926)
`Hersh H. Mehta (Reg. 62,336)
`MCDERMOTT WILL & EMERY LLP
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`Attorneys for Petitioner
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`6
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`Case IPR2016-00757
`Patent 7,881,236 B2
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`CERTIFICATE OF SERVICE
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`I certify that I sent a copy of the foregoing OPPOSITION TO PATENT OWNER’S
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`MOTION FOR SUBMISSION OF SUPPLEMENTAL INFORMATION on October 10, 2017 by
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`electronic mail to the attorneys of record for the Patent Owner at the following e-mail
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`addresses:
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`cmorton@robinskaplan.com
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`rschultz@robinskaplan.com
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`mfinn@robinskaplan.com
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`Evolved_RK_Team@robinskaplan.com
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`/Hersh H. Mehta/
`Hersh H. Mehta (Reg. 62,336)
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