trials@uspto.gov
`571-272-7822
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`IPR2016-00794, Paper No. 31
`July 11, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
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`v.
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`CHESTNUT HILL SOUND INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00794
`Patent 8,090,309 B2
`____________
`
`Held: April 20, 2017
`____________
`
`
`
`BEFORE: RAMA G. ELLURU, DAVID C. McKONE, and
`JOHN F. HORVATH, Administrative Patent Judges.
`
`
`The above-entitled matter came on for hearing on Thursday,
`April 20, 2017, commencing at 1:03 p.m., at the U.S. Patent and
`Trademark Office, 600 Dulany Street, Alexandria, Virginia.
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`571-272-7822
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`IPR2016-00794, Paper No. 31
`July 11, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`CHESTNUT HILL SOUND INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00794
`Patent 8,090,309 B2
`____________
`
`Held: April 20, 2017
`____________
`
`
`
`BEFORE: RAMA G. ELLURU, DAVID C. McKONE, and
`JOHN F. HORVATH, Administrative Patent Judges.
`
`
`The above-entitled matter came on for hearing on Thursday,
`April 20, 2017, commencing at 1:03 p.m., at the U.S. Patent and
`Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`
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`JOSHUA A. GRISWOLD, ESQUIRE
`DAN SMITH, ESQUIRE
`Fish & Richardson P.C.
`1717 Main Street
`Suite 5000
`Dallas, Texas 75201
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`--and—
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`Case IPR2016-00794
`Patent 8,090,309 B2
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`APPEARANCES:
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`ON BEHALF OF THE PETITIONER:
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`ON BEHALF OF PATENT OWNER:
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`W. KARL RENNER, ESQUIRE
`Fish & Richardson P.C.
`901 15th Street, N.W.
`7th Floor
`Washington, D.C. 20005
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`ALEXIS MOSSER, ESQUIRE
`JASON D. CASSADY, ESQUIRE
`Caldwell Cassady & Curry, P.C.
`2101 Cedar Springs Road
`Suite 1000
`Dallas, Texas 75201
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`Case IPR2016-00794
`Patent 8,090,309 B2
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`P R O C E E D I N G S
`- - - - -
`JUDGE ELLURU: Good afternoon. We're here for the
`final hearing in IPR2016-00794, Apple Inc., against Chestnut Hill
`Sound Inc. I'm Judge Elluru and appearing remotely today are
`Judge McKone and Judge Horvath.
`Let's, please, begin with appearances of counsel starting
`with Petitioner.
`MR. GRISWOLD: Thank you, Your Honor. I'm Josh
`Griswold and I have with me my colleagues, Dan Smith and Karl
`Renner, and I'm pleased to also have in-house counsel for Apple
`in the gallery. This is Jennifer Yokoyama.
`JUDGE ELLURU: Thank you.
`And for Patent Owner?
`MS. MOSSER: Good afternoon, Your Honors. I'm
`Alexis Mosser. I have with me Jason Cassady. We're from
`Caldwell Cassady & Curry and Mr. Robert Friedman is here on
`behalf of Chestnut Hill Sound, Inc. Thank you.
`JUDGE ELLURU: Thank you.
`I'd like to go over how we'll proceed today. Each side
`will have 60 minutes of time to present its arguments. Please
`keep in mind that we have two panel members appearing
`remotely today. They can see you but not the screens in the
`hearing room. So if you're using demonstratives, please be sure
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`to identify slide numbers for their benefit as well as the benefit of
`the transcript.
`Petitioner has the burden to show that the challenged
`claims are unpatentable and on its Motion to Exclude and, thus,
`will proceed, present its case first. Patent Owner will then argue
`its opposition to Petitioner's case. If Petitioner so chooses, it can
`reserve any time -- reserve time for rebuttal. I'll give you a
`warning when you're reaching the end of your argument time.
`And I was wondering if counsel has any questions
`starting with Petitioner.
`MR. GRISWOLD: No questions, Your Honor.
`JUDGE ELLURU: Thank you.
`Ms. Mosser?
`MS. MOSSER: No, Your Honor. Thank you.
`JUDGE ELLURU: Thank you.
`Mr. Griswold, you may begin when you're ready.
`MR. GRISWOLD: Thank you, Your Honor. We'd like
`to reserve 25 minutes for our rebuttal, please.
`And if you're ready, Your Honors.
`JUDGE ELLURU: Yes.
`MR. GRISWOLD: Thank you, Your Honors.
`So as I said, I'm Josh Griswold and I have my
`colleagues, Dan Smith and Karl Renner, with me and we have
`Jennifer Yokoyama with Apple in the gallery. Mr. Smith, Mr.
`Renner and I will be arguing today.
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`Just as an aside, you've heard of the Next Gen
`movement in the District Courts. It's where they encourage
`younger attorneys to be given time to argue. At Fish this is an
`important movement for us. We really strongly encourage it.
`We'd like to encourage it at the PTAB. So to that end, I'm
`pleased to offer up Mr. Smith. He's a young and upcoming
`associate at our firm and this is his first argument at an oral
`hearing.
`JUDGE ELLURU: Welcome.
`MR. SMITH: Thank you.
`MR. GRISWOLD: I'm sure he'll do a great job.
`So you'll recall that we filed a Motion to Exclude on
`much of the evidence that Patent Owner is offering for secondary
`considerations. In a bit Mr. Smith will address the Motion to
`Exclude. Mr. Renner and I will address the remainder of the
`argument and I'll begin.
`JUDGE ELLURU: Thank you.
`MR. GRISWOLD: So slide 4 please, Dan.
`So I want to start off and just put things kind of in
`perspective here. The '309 patent is fairly recent. It's CIP filed in
`2007 and I have a car older than 2007. I remember 2007. It
`wasn't that long ago. And at best it claims priority back to 2004,
`which isn't that much further back.
`One of the primary references that we rely on,
`Baumgartner, is a set top box with a DVR and I think we can all
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`remember DVRs and we've had them for a while. This is old
`technology. The Baumgartner patent is 2001.
`And, of course, the DVR works by playing local content
`that's been recorded to its hard drive and also playing remote
`content that it would get across the cable network. So, again,
`kind of just talking really high level, Patent Owner's repeated
`insistence that there are first and second modes and playing local
`and remote content are somehow unique, it holds no water.
`Barton that we cited in the Petition and Dr. Mercer has
`also cited is also a DVR that plays local and remote content.
`These two modes of operation in general have been around for
`some time.
`Our other primary reference, AbiEzzi, it's also a set top
`box and in it is a proxy for a DVD changer. AbiEzzi is also quite
`old, 2003.
`In the center of the dispute between the parties is
`whether it would have been obvious to include the capabilities of
`AbiEzzi in the same box as Baumgartner's. In other words,
`whether it's obvious to make a DVR that had capability to access
`DVDs and this is something that existed, too. Barton that I
`mentioned before, again cited by Dr. Mercer and cited in the
`petitions and even cited in the Institution Decision, is a DVR with
`a DVD drive.
`So with this in mind, let's dig into the details of the
`claims and the Patent Owner's disputes. Notably given time
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`constraints, we're not going to hit every argument that we put
`forward in the Petition or every argument that we put forward in
`the Reply, but we don't mean to waive any of these arguments.
`And as we talk, feel free to stop me and ask questions about any
`portion of the record.
`So, Dan, could you give me slide 5, please?
`MR. GRISWOLD: So despite the Patent Owner's lofty
`claims that the '309 patent revolutionized the audio world, it does
`not dispute most features of the independent claims nor does it
`dispute most of the dependent claims.
`The dispute with respect to the independent claims on
`features is whether or not there was a processor unit as required
`by Claim 9.
`JUDGE ELLURU: Mr. Griswold, what does Claim 9
`require about that processor?
`MR. GRISWOLD: So let's read the claim. It's a
`processor unit adapted to execute computer instructions. Let me
`give you the short version and you can read the claim yourself.
`It's a processor unit that causes the media device to operate in
`said first mode or said second mode and so I think that “or” is
`instructive here. The processor doesn't have to operate only -- it
`doesn't have to operate both in the first mode and the second
`mode. The claim doesn't say “and.” It says “or,” “first mode or
`second mode.”
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`So our opposing counsel here, Patent Owner, has
`asserted that there is some additional unrecited limitation to the
`recitation of a processor unit with this language that follows
`behind it that's necessarily enabled to be able to operate both in
`the first mode and the second mode and, frankly, we don't see
`where that comes from.
`JUDGE ELLURU: So your position is that the
`processor just has to operate in one of those modes and the claim
`is met?
`
`MR. GRISWOLD: Yes, that's correct, that's correct.
`The position, though, I think is --
`JUDGE McKONE: And to be clear, is it your position
`that a device that is only capable of operating in the first mode
`would still meet the claim limitations?
`MR. GRISWOLD: With respect to the processor, yes,
`that's correct, yes. And our position on the processor unit is a
`little bit more nuanced than that. I think that the way we present
`it in the Petition, I think it meets any reading that you could
`present of Claim 9.
`So just assuming that we're talking about a processor
`that is required to operate in both the first mode and the second
`mode, the Petition -- let me see if I can find the slide on that.
`Let's go to slide 15, Dan. Yeah, let's go to slide 17.
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`So in the Petition we argue that it would have been
`obvious to employ AbiEzzi's processor to employ both the first
`mode and the second mode.
`JUDGE ELLURU: And what is that argument? Patent
`Owner points to page 26 of your Petition and so for that processor
`unit limitation of Claim 9, all the Petitioner cites is reference --
`the reference is AbiEzzi.
`MR. GRISWOLD: That's correct, that's correct. And
`so what the Petition is saying is that AbiEzzi has a processor.
`And as I can get into right here, the '309 doesn't place any
`specific importance on this processor. It says that the processor
`can be implemented in any convenient way.
`It gives the example of a programmable microprocessor,
`but it says that that example is not to be limiting and I think most
`telling, and this is very quite right, it says, any other form of
`processing device can be the processor unit. So any other form of
`processing device.
`So I think the takeaway in this is this -- these unrecited
`features that the Patent Owner is pointing to in the claims are that,
`unrecited. This is reading limitations into the claims. And in
`their briefing they haven't offered up what these unrecited
`features or other unrecited components would be nor was I able to
`find what these unrecited components are in the specification of
`the '309 patent and, in fact, it's quite the contrary.
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`It says, any processing device will do. There are no
`flow charts. There are no details of the processor, no model
`numbers, no internal diagrams, nothing to suggest that the
`processor in the '309 patent is important.
`JUDGE ELLURU: But you have agreed that the
`processor has to operate in the first mode or the second mode.
`MR. GRISWOLD: That's correct, or the second mode.
`JUDGE ELLURU: And where is that in the quote cited
`on page 26?
`MR. GRISWOLD: Well, so the processor -- on page 26
`it describes that the processor of AbiEzzi meets that limitation of
`the claim. We're pointing to AbiEzzi's processor as being a
`processor that embodies the patent.
`And the test for obviousness isn't whether you would
`bodily incorporate the elements into one another. This is what
`more generally the prior art would teach to one of skill in the art.
`And so one skilled in the art who saw Baumgartner and AbiEzzi
`and seeing that other people had done similar devices like Barton
`would combine the features from AbiEzzi and Baumgartner
`together and know what processor that person needs, would know
`that the teaching of the generic processor in AbiEzzi is a generic
`processer and would be capable of doing the required functions.
`JUDGE ELLURU: But where is that in your argument
`on page 26?
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`MR. GRISWOLD: I think you have to read the
`argument in whole. The argument says that a person of ordinary
`skill in the art would start from the premise that I have the
`functionality of AbiEzzi and I have the functionality of
`Baumgartner and the two fit very well.
`And I think Dan is pulling up the discussion for us. But
`the functionality of the two fit very well and it's like prior art
`devices that have come before and so he would know that to
`implement that functionality he has to implement it in a processor
`and that processor we suggest is the processor of AbiEzzi. And
`clearly AbiEzzi performs the operations in the second mode
`because that's expressly disclosed in AbiEzzi and there could be
`no dispute that Baumgartner discloses a processor. We cited
`Figure 8 I believe and associated discussion in the specification.
`And so processors existed. And, in fact, if you look
`back at Barton and Klements, the corroborating references we
`cite that apply these dual-mode functionalities, those processors
`existed and so there's no specificity in the processor of Claim 9
`that I think beyond saying that one would implement this on a
`device with a processor is needed to meet the claim.
`JUDGE HORVATH: Does the device of Claim 9 need
`to be capable of operating in both the first and second modes?
`MR. GRISWOLD: Well, so with respect to the
`processor, the processor doesn't need to be --
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`JUDGE HORVATH: Not the processor. The device
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`itself.
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`MR. GRISWOLD: Can we bring up the entirety of
`Claim 9, Dan? So while Dan is bringing this up and maybe I can
`continue on and I'll come back to a --
`JUDGE McKONE: I guess you could start with a yes
`or no to the question.
`MR. GRISWOLD: Yes, and you're asking me a
`question that I hadn't prepared for, but I'm looking at Claim 9 as
`we speak right now and I don't see any reason why the device has
`to be able to operate in both modes. There's an “or” I think in the
`critical sections.
`JUDGE HORVATH: Well, the “or” is for the
`processor, correct, the processor causing the media device to
`operate in the first mode or the second mode.
`MR. GRISWOLD: That's right.
`JUDGE HORVATH: So is it your contention that a
`device, for example, that only operated in the first mode would
`fully meet this limitation of Claim 9?
`MR. GRISWOLD: I believe that's correct. Standing
`here right now I see, for example, the clause that describes the
`detail of the operation, what entails the first mode and the second
`mode begins wherein when and the second clause also begins
`wherein when, and so it's not saying wherein the device operates
`here. It's saying, in a conditional instance when the device is
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`operating in this mode, then it would entail these functions. So it
`doesn't necessarily have to meet both wherein clauses either.
`JUDGE ELLURU: But the claim starts with a media
`device operable in first and second modes.
`MR. GRISWOLD: And I would point that to you out as
`preamble, for example. So that aside, I think that regardless, the
`proof that we've pressed forward meets the claim in both readings
`of the claim. I think that, as we said, a person of ordinary skill in
`the art if you look at, for example, the beginning of our
`discussion on page 8 of the Petition, we say that Baumgartner and
`AbiEzzi teaches a method of using a media device in these first
`and second modes. And in implementing it, we pointed out with
`respect to Claim 9 that you would implement it with a processor
`and a person of ordinary skill in the art would know to combine
`the two, the functionalities onto a processor.
`If we had a processor, for example, that performed these
`two functionalities with the remaining limitations of the claims,
`we wouldn't be here in an obviousness combination.
`JUDGE ELLURU: Thank you.
`MR. GRISWOLD: Does that answer your question?
`JUDGE ELLURU: I think so, at least it does for now.
`MR. GRISWOLD: Okay. So let me move on.
`JUDGE HORVATH: Well, before you do, let me ask
`the question a different way. I mean, as I understand your
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`argument, it's that when you read this processor limitation, it only
`requires the processor to act in the first mode or the second mode.
`MR. GRISWOLD: Yes.
`JUDGE HORVATH: Is that your interpretation?
`MR. GRISWOLD: I think that's a correct reading of the
`claim, yes.
`JUDGE HORVATH: Okay. And so my understanding
`of Patent Owner's argument, and they'll have an opportunity to
`present that, is that they say that causing the media device to
`operate in first and second mode really means allowing the -- or,
`you know, causing the media device to be able to switch in the
`first and second mode. And so my question to you is, why is
`Patent Owner wrong?
`MR. GRISWOLD: I think, again, because the claim
`doesn't require -- can you give me that portion of the Petition?
`I think because the claim doesn't require the device be
`operable in the two modes. It is a processor. It's a device and it
`operates in one of the first mode or the second mode and the
`limitations that discuss first and second mode are preamble. But,
`I mean, so I think --
`JUDGE McKONE: Is that an argument that you made
`in the Petition or is that an argument that we just sort of clued you
`in on here?
`MR. GRISWOLD: That's an argument that I think that
`we have gotten to because you've asked me a specific question
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`about the language in the claim. I think that it hasn't been fully
`played out in the Petition. So you're drawing me to this
`argument.
`Another point that I would make is I don't think that it's
`accurate to characterize AbiEzzi as a processor that doesn't
`operate in a first mode and a second mode. So in the Petition,
`and my colleague Dan is bringing up the section of the Petition,
`we cite the paragraph and I believe this is on page 26 of the
`Petition where we describe the processor of AbiEzzi.
`And it describes the processor as a processor that would
`be in a networked PC or a mainframe, right? And I don't think
`that anyone can dispute that a networked PC would be able to
`operate -- excuse me, there you go -- in a -- we're looking at page
`26 of the Petition right now, Section 9.1.
`I don't think anyone would be able to dispute that a PC
`could operate in a first mode and a second mode because a PC,
`particularly at this time, is capable of playing media content from
`its hard drive as well as -- Dan -- excuse me, as well as playing
`media content that's streaming. And, in fact, what AbiEzzi
`teaches is that their device would be embodied on a PC in some
`instances.
`So, Your Honors, do you have further questions?
`JUDGE ELLURU: Not here.
`MR. GRISWOLD: Okay. So I think that's what I have
`to say about the processor at this point. I think that the
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`combination of AbiEzzi and Baumgartner as presented in the
`Petition, I think it directly addresses the processor limitation
`under any reading of the claim and so I would move on to the
`Dependent Claims 6 and 14.
`Slide 40, please, Dan.
`And so 6 and 14 relates to two dependent claims that
`are nearly identical and they depend from different claims in the
`patent. One is Claim 1 and one is Claim 9 and it describes that
`the media source that's identified in Claim 1, the remote media
`source, it is a server.
`Slide 44, please.
`So the Petition points to the media server 100 and the
`DVD jukebox together as being the server, and I think the Patent
`Owner disagrees that this can be characterized as a server.
`And the basis of their argument I believe is that AbiEzzi
`has a thing that's called a media server, but as we all know
`mapping claim limitations to a piece of prior art or a product isn't
`a word search analysis. You have to look more at the
`functionality of it.
`And as we identified in the Petition, as Dr. Mercer
`testified in his expert report and as Dr. Mercer, in fact, testified in
`his deposition, the media server 100 and the jukebox 80 would be
`treated as a single unit. Because in AbiEzzi, the thing that they
`call a media server isn't a traditional server. Without the attached
`jukebox, without incorporating the jukebox, it isn't -- it doesn't
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`have any data to serve up. It doesn't include the DVDs that are
`played. So collectively they operate as a more traditional server.
`JUDGE ELLURU: Could you address Patent Owner's
`claim differentiation argument?
`MR. GRISWOLD: I can. I think that -- the thing to
`take away from that is, yes, claim differentiation applies, but it
`doesn't stand for the purpose that the same thing cannot meet both
`the independent claim and the dependent claim. We have an
`instance here where there is -- we've pointed to a thing that
`operates as a server and it is a media source that is a server.
`JUDGE ELLURU: And so your position is you read on
`Claims 6 and 14 and thus --
`MR. GRISWOLD: With the same reading, that's
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`correct.
`
`So the Patent Owner's word games obviously, thus, fall
`and I think when you take a step back and you look at this
`intelligently, AbiEzzi and Baumgartner, they disclose this media
`server that we've identified in the Petition is -- collectively should
`be evaluated as the media server and that media server is --
`excuse me, that media source is a server because it serves up the
`DVD content.
`If there are no further questions, I'll move on to the next
`topic and this is the reasons analysis for combination of AbiEzzi
`and Baumgartner. So slide 20, please, Dan.
`All right. That's not an eventful slide. Let's do slide 6.
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`So I think the important point to start off our analysis is
`Patent Owner doesn't challenge the substance of our analysis.
`They only challenge the form of it. They challenge things
`peripheral to the substance of our analysis. They also don't offer
`their own counterevidence. So at this point the record stands
`uncontroverted.
`We have expert testimony and we have these additional
`corroborating references we refer to them supporting our position
`in the record and, of course, we have the burden of persuasion,
`but we have weight of evidence in our court. They have
`absolutely nothing, attorney argument.
`So slide 24, please.
`So Mercer's declaration itself is evidence regardless of
`what I think Patent Owner says. There's a long line of cases
`explaining that expert testimony is evidence. And just off the top
`of my head, just think Phillips, I mean, that explained where in
`the hierarchy extrinsic evidence lands, but it is evidence
`nonetheless.
`Dr. Mercer --
`JUDGE McKONE: Now, if that evidence -- and I agree
`that expert opinion is ordinarily evidence, but we're trying to
`decide how much weight to give that evidence. And if it does
`nothing more than repeat what is in the Petition, why is that
`something that we should give significant weight to?
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`MR. GRISWOLD: So I think that assumes that it
`repeats the Petition and it's not the other way around. So think of
`it this way, you sit with an expert and you get their opinions and
`the deck is put together. And then when you're writing the
`Petition, the Petition has to track that declaration or else it would
`be unsupported or it may go into a direction the expert hasn't
`agreed to support.
`So necessarily the process drives these two documents
`that look very much alike and there's a slide I think that the Patent
`Owner is going to put up later on where they show similarities
`between the declaration and the Petition, and what they don't --
`the point they're not going to make, and this is the point that I
`would make on that slide, is those are sections of the Petition
`where it is paraphrasing what the expert has said. So it's not that
`the declaration copies the Petition. It's the other way around.
`JUDGE McKONE: Now, in the case where all the
`expert is doing is, you know, telling us what is in the references,
`is this a case where the technology is complicated enough where
`we are not expected to understand the references without an
`expert explaining what is in them?
`MR. GRISWOLD: I don't think this is. I think this is
`technology that's for the most part simple enough that you don't
`need expert testimony to do this, but, nonetheless, Dr. Mercer
`was willing to provide the relevant expert testimony and I think
`that it supports the opinion -- excuse me, supports the Petition.
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`Any further questions?
`(No response.)
`MR. GRISWOLD: So as I explained, Dr. Mercer
`testified why it would have been obvious to combine AbiEzzi and
`Baumgartner and why a person of ordinary skill in the art would
`have reasonable expectation of success in that combination.
`Can we go back to -- oh, you're at slide 24.
`So here are the reasons that Dr. Mercer testified to. It
`eliminates the need for two separate devices, reduces the amount
`of equipment a user would have to maintain, reduces the space
`consumption in the user's television furniture. It facilities things
`like a common remote control and one set of connections and a
`single interface, like a graphical interface that the user would use,
`and it just provides a more unified, user-friendly viewing
`experience.
`And these I think are axiomatic to consumer electronics.
`These are things that even a layperson would realize, but we have
`expert testimony from Dr. Mercer on that and that expert
`testimony is uncontroverted. And if there's an issue of credibility
`of Dr. Mercer, I don't see how credibility on such simplistic
`motivations to combine could hold any weight.
`Moreover, his testimony is backed up with additional
`third-party references, this Barton and Klements -- actually let's
`go to that slide right now.
`Slide 26 please, Dan.
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`So Barton, as we pointed out, is a dual-mode device that
`operates in a first mode and a second mode and it is a DVR
`system that advocates putting a DVD drive into the same box,
`and that's analogous to what we're presenting in the combination
`of AbiEzzi and Baumgartner.
`And it's relied on for an expectation of success, but I
`think it also shows that this is a combination that a POSITA, a
`person of ordinary skill in the art, would readily make. And I
`think it's also important to be noted here that in the written record
`the Patent Owner has offered no argument against the value of
`Barton and Klements' analogs to the combination of AbiEzzi and
`Baumgartner and that, of course, was clearly articulated in the
`Petition.
`So, as I pointed out, Dr. Mercer's testimony is just one
`point in the body of evidence that we supplied for rationale to
`combine, and I think we're going to hear a little bit from the
`Patent Owner on why they think that his testimony should be
`discounted, but, nonetheless, there is testimony on our side, there
`is no testimony on their side and the burden is preponderance of
`evidence.
`I also encourage you to, as they're giving their
`presentation, look at the questions they ask because I think that
`they didn't ask the right questions. I mean, typed, fingers on
`keys. That's not instructive of how the declaration came about
`and, in fact, Dr. Mercer says he types a portion of his declaration.
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`Nor did they deal -- and this is really the important part.
`Nor did they deal with deposition testimony that they elicited that
`embraces his opinion and his declaration as his own.
`JUDGE ELLURU: Counsel, I just want to let you
`know you have seven minutes left and we would like to hear your
`argument on secondary considerations and we'd like to hear from
`your colleague on the Motion to Exclude.
`MR. GRISWOLD: Yes.
`So at the end of it I think that Mercer has a signed
`declaration, a declaration signed under threat of perjury, and he
`owns it in his deposition and so I think Mercer's declaration is
`supportive of our Petition.
`Secondary considerations I think is actually fairly easy
`to address. So secondary considerations, at the outset the Patent
`Owner has the burden of production and the burden of proof to
`prove a prima facie case and part of that proof is to prove not
`only does the commercial embodiment that they're advancing
`evidence for embody the claim, each and every limitation of the
`claim, but also a nexus between the novel feature of the claim and
`the commercial embodiment.
`And they've offered these conclusory statements, like
`the George system embodies part of the challenged claims. At
`least some of the inventions in the '309 patent are embodied by
`the Patent Owner's commercial product. I don't see an
`element-by-element work-through of the limitations. I don't see
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`any detail on what they thought was the novel feature in the
`claim.
`
`It certainly can't be this first and second mode. Because
`as we've pointed out, this is -- this exists in Baumgartner, one of
`the primary references. And as you recall in the Preliminary
`Patent Owner Response here, in the Preliminary Patent Owner
`Response in the prior Petition that we've all been involved in,
`they argued the deep, deep, deep nuances of the claims and they
`haven't even tried to show that these deep, deep nuances of the
`claims exist in the George product that they put forward.
`So with that, you know, I don't think that they have
`even attempted to make a showing on nexus and I think that's
`fatal to their secondary considerations argument. It's incomplete
`and unsupported.
`So taking a step back, on processor they're talking about
`these unrecited components that are clearly reading limitations in
`the claims. The rationale to combine I think is smoke and
`mirrors. They never really get to the substance of our reasons
`analysis, particularly with respect to Barton and Klements and
`nor the specific things that Dr. Mercer has said, and on secondary
`considerations I think that they lack on nexus and they can't win
`without this.
`So I'll turn the podium over to my colleague, Dan
`Smith, and he's going to tell us about the Motion to Exclude.
`MR. SMITH: Thank you, Josh.
`
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