Trials@uspto.gov
`571-272-7822
`
`
`
`
` Paper 41
`Entered: April 23, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`STANDARD INNOVATION CORPORATION,
`Petitioner,
`
`v.
`
`LELO, INC,
`Patent Owner.
`_______________
`
`Case IPR2014-00148
`Patent 7,749,178 B2
`_______________
`
`
`
`Before PHILLIP J. KAUFFMAN, JACQUELINE WRIGHT BONILLA,
`and CHRISTOPHER L. CRUMBLEY, Administrative Patent Judges.
`
`KAUFFMAN, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
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`Case IPR2014-00148
`Patent 7,749,178 B2
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`
`I. BACKGROUND
`
`A.
`
`Procedural History
`Standard Innovation Corporation (“Petitioner”) filed a Petition (Paper
`2, “Pet.”) to institute an inter partes review of claims 1–20 and 22–27 of
`U.S. Patent No. 7,749,178 B2 (Ex. 1001, “the ’178 patent”) pursuant to
`35 U.S.C. §§ 311–319. Lelo, Inc., (“Patent Owner”) waived its preliminary
`response (Paper 6). In a May 6, 2014, Decision to Institute (Paper 7,
`“Dec.”), we instituted trial on claims 1–8, 10–12, 14–20, and 22–24 based
`on the following grounds:
`1. Claims 1–8, 14–20, and 22–24 based on obviousness over
`LILY1, Dahl2, and Kontos3; and
`2. Claims 10–12 based on obviousness over LILY, Dahl, Kontos,
`and McCambridge4.
`Patent Owner filed a Patent Owner Response (Paper 12, “PO Resp.”),5
`and Petitioner filed a Reply (Paper 22, “Pet. Reply”). Patent Owner did not
`file a motion to amend.
`Patent Owner also filed a Motion to Exclude (Paper 28) certain
`evidence, which we discuss in Section II below.
`
`
`1 Ex. 1002, Specification Sheet, LELOi AB, Introducing LILY,
`http://www.lelo.com/staticPage.php?page=10years screenshots.
`2 Ex. 1006, U.S. Patent 3,938,018 (Feb. 10, 1976).
`3 Ex. 1003, U.S. Patent 6,350,230 B1 (Feb. 26, 2002).
`4 Ex. 1008, U.S. Patent 6,217,533 B1 (Apr. 17, 2001).
`5 Patent Owner filed its Patent Owner Response (Paper 12) less than an hour
`after Due Date 1 passed. Paper 14, 1. After consideration of Patent Owner’s
`Motion to deem the filing of its Response timely (Paper 14) and Petitioner’s
`Opposition (Paper 15), we determined it was in the interests of justice to
`deem the Patent Owner Response as timely filed. Paper 19.
`
`2
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`Case IPR2014-00148
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`
`At the request of both parties, oral hearing was held on January 9,
`2015. Papers 26, 27, and 32. A transcript of the oral hearing is included in
`the record. Paper 38 (“Tr.”).
`
`After the oral hearing, Petitioner contacted the Board seeking
`authorization to file a motion to submit supplemental information under
`37 C.F.R. § 42.123. After a conference call on the matter, we denied
`Petitioner’s request for authorization to file such motion. Paper 39; see also
`Paper 40 (related errata).
`
`B.
`
`The ’178 patent
`The ’178 patent relates to a massager with an inductively chargeable
`power source. Ex. 1001, 1:13–15.
`As background, the ’178 patent describes that massagers are typically
`either battery powered or run on conventional alternating current (“AC”)
`electricity. Id. at 1:23–25; 7:58. A drawback of prior art massagers is that
`internally contained disposable batteries have limited operating time, and
`replacement of the batteries has been associated with inconvenience and
`expense. Id. at 1:26–35. Additionally, massagers that operate on AC power
`tend to be unsafe for internal use or use in damp environments, and have the
`inconvenience of requiring proximity to a wall plug. Id. at 1:36–40.
`The ’178 patent also discloses as background that wireless controls for
`prior art massagers are limited in function. Id. at 2:32–33. To overcome
`these and other drawbacks, the ’178 patent describes a vibrating massager
`that includes inductive charging and a highly functional radio frequency
`wireless control system. Id. at 2:40–49. In one embodiment, massager
`
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`Case IPR2014-00148
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`system 10 includes inductively chargeable vibrating massager 12 and
`supportive, inductive charging base 14. Id. at 3:4–5, 9–10, 41–44.
`Figures 1 and 4 of the ’178 patent are reproduced below:
`
`
`
`
`Figure 1 is a perspective view of inductively chargeable massager 12 on
`charging base 14, and Figure 4 is an assembly view of the vibrating
`massager of Figure 1.
`Massager 12 includes: one of a plurality of different motive sources
`(e.g., vibrating motors 46A, 46B), an energetic coupler (e.g., inductive
`
`4
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`Case IPR2014-00148
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`charging coil 42), and a rechargeable battery 48. Id. at 5:60–63; 16:19–22.
`Vibrating massager 12 is sealed by ultrasonic welding and further by thin
`bio-compatible “skin” 13. Id. at 3:52–55. Controls, in the form of two
`buttons 20 and 22, are positioned underneath, but are visible and operable
`through, skin 13. Id. at 4:3–6.
`Charging base 14 includes: AC power source 16, power converter 66
`(converting AC to direct current (“DC”)), and inductive coil 64 for
`inductively coupling the converted power to inductive coil 42 of massager
`12 to charge battery 48. Id. at 7:56–67. Upper surface 14C of charging base
`14 includes a pair of ovoid indentations 14A and 14B for receiving the ends
`of vibrating massager 12 in a supportive, stable relationship while being
`inductively charged. Id. at 4:24–31
`
`C.
`
`Illustrative Claim
`Of the instituted claims, claim 1, is the sole independent claim, and is
`reproduced below:
`1. A massager apparatus, comprising:
`[i] a massager including
`
`a first electric motive source,
`
`a rechargeable battery connected to the first electric motive
`
`
`source, and
`
`a first coupler connected to the battery;
`
`a massager housing adapted to receive at least the first
`
`
`electric motive source, the rechargeable battery, and
`
`
`the first coupler,
`
`a soft surface overlaying at least a charging area of
`
`
`the massager housing so as to provide a substantially
`
`
`smooth operative portion for massaging application to a
`
`
`part of the human body;
`
`
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`[ii] a base including
`
`a base housing,
`
`
`a power connector at least partially contained within the
`
`
`
`base housing,
`
`a second coupler contained within the base housing
`
`
`connected to the power connector, and
`
`the base housing including a receiving surface
`
`
`formed to support the massager housing with the first
`
`
`coupler energetically coupled to the second coupler
`
`
`through the receiving surface, wherein the operative
`
`
`portion is in contact with the receiving surface;
`whereby the battery in the massager can be charged using the
`base.
`Ex. 1001, claim 1 (numbering designations added.)
`
` D
`
`
`
` Overview
`Each asserted ground of unpatentability relies in part on LILY.6 We
`
`address a Motion to Exclude as it relates to LILY (Ex. 1002) and associated
`exhibits, and then address whether Petitioner has demonstrated that LILY is
`prior art as a printed publication under 35 U.S.C. § 102.
`
`
`II. MOTION TO EXCLUDE
`
`A.
`
`Introduction
`As mentioned above, Patent Owner filed a Motion to Exclude
`Exhibits 1002, 1010, 1013–1023, and 1026–1029 under the Federal Rules of
`Evidence (“Fed. R. Evid.”). Paper 28 (“Mot.”). Petitioner filed an
`Opposition to the Motion (Paper 30, “Opp.”), and Patent Owner filed a
`
`
`6 We use “LILY” to reference to Exhibit 1002, and “Lily” to refer to the
`massager described in Exhibit 1002.
`
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`Reply to the Opposition (Paper 31, “Opp. Reply”). For the following
`reasons, Patent Owner’s motion is granted-in-part and denied-in-part.
`Prior to filing its Motion to Exclude, Patent Owner objected to
`Exhibits 1002 and 1010 within the required ten business days of institution
`of trial (“first set of objections”).7 37 C.F.R. § 42.64(b)(1); Ex. 2020, 2–3.
`Patent Owner objected to Exhibits 1013–1023 and 1026–1029 within the
`required five business days of service of the exhibits (“second set of
`objections”).8 37 C.F.R. §42.64(b)(1); Ex. 2030, 2–5. Petitioner did not
`respond to the first set of objections, and responded to some of the second
`set of objections. See Ex. 2031.
`Patent Owner preserved both sets of objections by filing its Motion to
`Exclude Exhibits 1002, 1010, 1013–1023, and 1026–1029. The Motion
`identifies and explains the objections. Mot. 1–15; 37 C.F.R. §42.64(c). As
`noted above, Petitioner filed an Opposition to that Motion (“Opp.”), and
`Patent Owner filed a Reply to that Opposition (“Opp. Reply”). As moving
`party, Patent Owner bears the burden of proof to establish that it is entitled
`to the requested relief. See 37 C.F.R. §§ 42.20(c), 42.62(a).
`Before addressing the merits of the Motion to Exclude, we address an
`interrelated procedural issue.
`
`
`
`
`7 Trial was instituted on May 6, 2014, and Patent Owner served the
`objections on May 20, 2014. Dec.; Ex. 2030, 3.
`8 The original versions of Exhibits 1013–1023, and 1026–1029 were served
`on October 23, 2014, and Patent Owner served the objections to these
`Exhibits on October 30, 2014. Ex. 2030, 6.
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`Case IPR2014-00148
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`B.
`
`Exhibits 1013–1022, 1031, 1032 as Supplemental Evidence9
`Petitioner contends that Patent Owner first challenged the publication
`date of Exhibit 1002 (LILY) in its Patent Owner Response, after the ten
`business day deadline of 37 C.F.R. § 42.64(b). Pet. Reply 14. As detailed
`below, this contention conflates different deadlines, and the issues of a
`challenge to the sufficiency of evidence in a Patent Owner’s response and
`that of a challenge to the admissibility of evidence under 37 C.F.R.
`§ 42.64(b). See generally Groupon Inc. v. Blue Calypso, LLC, Case
`CBM2013-00033, slip op. at 25 (PTAB May 12, 2013) (Paper 29)
`(distinguishing admissibility of evidence from sufficiency of evidence).
`The Patent Owner Response challenges the sufficiency of proof that
`Exhibit 1002 is prior art as a printed publication under 35 U.S.C. § 102. PO
`Resp. 9–23 (challenging the publication date and accessibility of the
`reference). The time limit of 37 C.F.R. § 42.64(b) does not apply to a Patent
`Owner’s response. Separately, Patent Owner also challenged the
`admissibility of Exhibit 1002 in its first set of objections. As noted above,
`Patent Owner served those objections within the required ten business days
`of institution of trial. 37 C.F.R. § 42.64(b)(1); Ex. 2020, 2–3.
`Consequently, both Patent Owner’s challenge to the sufficiency of the
`evidence in its Patent Owner Response and its challenge to the admissibility
`of the evidence in its objections are proper and timely.
`Although Patent Owner has complied with 37 C.F.R. § 42.64(b),
`Petitioner has not. Petitioner submitted Exhibits 1013–1022, 1031, and
`
`9 Exhibit 1023 is similarly situated to these exhibits; however, Petitioner did
`not rely on Exhibit 1023 to support the contention that Exhibit 1002 is
`admissible. Opp., passim. None of the exhibits at issue were submitted as
`supplemental information under 37 C.F.R. § 42.123.
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`1032 with its Reply, arguably in response to arguments raised in the Patent
`Owner Response. See Pet. Reply iii, iv, 12–15; 37 C.F.R. § 42.23(b); PO
`Resp. 9 (contending that Exhibit 1002 is not a printed publication). In its
`Reply, Petitioner relies upon each of these exhibits in support of the
`admissibility of Exhibit 1002, but only after it chose not to submit those
`exhibits as supplemental evidence within ten business days of Patent
`Owner’s first set of objections. See Opp. 1–5; 37 C.F.R. § 42.64(b)(2).
`Patent Owner’s challenge to the sufficiency of proof that Exhibit 1002 is a
`printed publication does not create a second window for Petitioner to submit
`supplemental evidence. See Opp. Reply 4–5 (arguing that the Exhibits at
`issue should have been submitted in response to Patent Owner’s objections).
`Interpreting 37 C.F.R. § 42.23(b) to permit consideration of these
`exhibits with regard to the admissibility of Exhibit 1002 would eviscerate
`the requirement that supplemental evidence be served within ten business
`days. See 37 C.F.R. §§ 42.23(b), 42.64(b)(1). Such an interpretation would
`not promote the just, speedy, and inexpensive resolution of this proceeding.
`See 37 C.F.R. § 42.1(b). If Petitioner wanted consideration of those exhibits
`with regard to the admissibility of Exhibit 1002, Petitioner could have
`served Patent Owner with the exhibits as supplemental evidence in a timely
`manner, in accordance with § 42.64(b)(2). If it had done so, thereafter,
`Petitioner could have filed and relied upon such evidence appropriately in its
`Opposition to the Motion to Exclude.
`Accordingly, our determination regarding the admissibility of Exhibit
`1002 will not consider Exhibits 1013–1022, 1031, and 1032 as supplemental
`evidence.
`
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`C.
`
`
`
`Exhibits 1013–1023
`These exhibits are inadmissible for the reasons that follow.
`1. Authentication
`a. Exhibits 1013–1022
`In its Opposition to the Motion to Exclude, Petitioner indicates that
`each of these exhibits are printouts of webpages. Opp. 7–12.
`Patent Owner contends that these exhibits were not properly
`authenticated under Federal Rules of Evidence 901 and 902. Mot. 5–11.
`Petitioner responds that each exhibit has distinct characteristics that
`authenticate it under Federal Rule of Evidence 901(b)(4), but does not
`identify any such characteristics. Opp. 7–13.
`Federal Rule of Evidence 901 requires that the proponent produce
`evidence sufficient to support a finding that an item is what the proponent
`claims it is. When offering a printout of a webpage into evidence to prove
`the website’s contents, the proponent of the evidence must authenticate the
`information from the website itself, not merely the printout. See Victaulic
`Co. v. Tieman, 499 F.3d 227, 236 (3d Cir. 2007), as amended (Nov. 20,
`2007) (citing United States v. Jackson, 208 F.3d 633, 638 (7th Cir. 2000)).
`For this reason, the Board has stated that “[t]o authenticate printouts from a
`website, the party proffering the evidence must produce some statement or
`affidavit from someone with knowledge of the website . . . for example a
`web master or someone else with personal knowledge would be sufficient.”
`EMC Corp. v. Personalweb Techs., LLC, Case IPR2013-00084, slip op. 45
`(PTAB May 15, 2014) (Paper 64) (quoting St. Luke’s Cataract & Laser
`Inst., P.A. v. Sanderson, No. 8:06˗CV˗223˗T˗MSS, 2006 WL 1320242, at *2
`(M.D. Fla. May 12, 2006)); see also Victaulic Co. v. Tieman, 499 F.3d 227,
`
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`236 (3d Cir. 2007) (citing with approval the holding in In re Homestore.com,
`Inc. Sec. Litig., 347 F.Supp.2d 769, 782–83 (C.D. Cal. 2004), that printouts
`of webpages must be authenticated by a witness).
`Petitioner has not provided the testimony of any witness with personal
`knowledge of the information on the website or the associated printouts for
`any of the exhibits at issue.10
`Exhibits 1015, 1016, and 1022 appear to be printouts of webpages
`retrieved from the Internet Archive’s “Wayback Machine,” which shows
`archived versions of other websites. Our reviewing court has held that
`printouts of webpages from the Wayback Machine were admissible under
`Federal Rule of Evidence 901(b)(1) where the proponent provided one of
`two types of supporting evidence: one, a witness that testified regarding how
`the Wayback Machine worked and how reliable its contents were, or two, a
`witness having personal knowledge that the printouts were authentic. U.S. v.
`Bansal, 663 F.3d 634, 667–68 (Fed. Cir. 2011). Here, in contrast to Bansal,
`Petitioner has not provided either form of supporting evidence.
`Consequently, Exhibits 1013–1022 are inadmissible under Federal
`Rule of Evidence 901 because Petitioner has not put forth sufficient
`evidence to support a finding that these exhibits are what Petitioner claims,
`or that any of these exhibits is self-authenticating under Federal Rule of
`Evidence 902.
`
`
`
`
`
`10 In response to Patent Owner’s second set of objections, Petitioner served
`a Declaration on Patent Owner attesting to the authenticity of Exhibits 1015,
`1016, and 1022. Ex. 2031, 4. This Declaration was identified as Exhibit
`1030, but never filed, and therefore is not considered here. See Paper 33, 4
`(Petitioner’s final exhibit list showing Exhibit 1030 as unassigned).
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`b. Exhibit 1023
`Petitioner contends that Exhibit 1023 “is a screenshot showing a PDF
`copy of Exhibit 1002 as it was found online and its automatically computer
`generated document properties.” Opp. 12; Pet. Reply 13. The left side of
`Exhibit 1023 is titled “Document Properties,” and the right side of the
`exhibit shows a document similar in appearance to page 1 of Exhibit 1002.
`Ex. 1023. The Document Properties section indicates a created date of
`October 13, 2005, and a modified date of October 15, 2005. Id.
`Patent Owner argues that Exhibit 1023 is not properly authenticated
`under Federal Rules of Evidence 901 and 902. Mot. 12. Petitioner responds
`that the authenticity of this exhibit is corroborated by the distinct
`characteristics of the LELO name and description of LELO’s product (Lily)
`as presented the exhibit, in conjunction with the circumstances. Opp. 13.
`Petitioner does not elaborate on those circumstances. Id.
`Petitioner has provided no evidence regarding the significance and
`reliability of the created and modified dates in Exhibit 1023. Petitioner has
`provided insufficient evidence linking Exhibit 1023 to Exhibit 1002. For
`example, Petitioner has not provided testimony of any witness with personal
`knowledge of the information on the website(s) or the associated printouts at
`issue. Indeed, Petitioner has not identified the website(s) from which
`Exhibits 1023 and 1002 were downloaded. The fact that Exhibit 1023 bears
`the “LELO” name and properties of the Lily device provides little support
`regarding the authenticity of Exhibit 1002 or Exhibit 1023.
`Consequently, Exhibit 1023 is inadmissible under Federal Rule of
`Evidence 901 because Petitioner has not put forth sufficient evidence to
`
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`support a finding that this exhibit is what Petitioner claims, or that the
`exhibit is self-authenticating under Federal Rule of Evidence 902.
`2. Hearsay
`Patent Owner contends that the dates in Exhibits 1013–1023 are
`hearsay under Federal Rule of Evidence 802. Mot. 6–12. Petitioner’s
`contentions vary by exhibit as detailed below. If an exception does not
`apply, the rule against hearsay operates to prohibit out-of-court statements
`from being offered to prove the truth of the matter asserted. Fed. R. Evid.
`801–803.
`
`a. Exhibit 1013
`Petitioner represents that Exhibit 1013 consists of printouts of the
`webpages that tell the full story of LELO’s 10-year history.11 Opp. 2, 7.
`The first page of Exhibit 1013 includes the statements: “LELO,” “10
`YEARS OF PLEASURE,” “A VIRTUAL TOUR OF HOW LELO
`BEGAN,” and “© 2003-2013 LELOi AB.” Id. at 1. The exhibit describes
`that in Stockholm in 2003, LELO team members initially sought to create a
`massager. Id. at 3. The story goes on to state that this led to development
`and marketing of the massagers “IDA” and “LILY.” Id. at 19.
`Petitioner relies upon the dates indicated on Exhibit 1013, i.e.,
`“(2003)” (Ex. 1013, 1), “© 2003–2014” (id. at 2), as proof of a date that
`Exhibit 1002 was disseminated publicly. Opp. 2–312, 7; Pet. Reply 13.
`Petitioner contends the dates in Exhibit 1013 are not hearsay because
`they are party admissions. Opp. 8; Fed. R. Evid. 801(d)(2). For the reasons
`
`11 Petitioner states that pages 2–4 of Exhibit 1002 are a subset of that full
`story.
`12 Because Exhibit 1002 is a subset of Exhibit 1013, Petitioner’s contentions
`regarding Exhibit 1002 have application to Exhibit 1013 and vice versa.
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`that follow, Petitioner has not presented sufficient evidence to establish that
`the admissions of Leloi AB should be attributed to Petitioner (Lelo, Inc.).
`Exhibit 1013 refers to Leloi AB and makes no reference to Patent
`Owner (Lelo, Inc.). Ex. 1013. Leloi AB is not the parent company of Patent
`Owner. Opp. Reply 1 (citing Ex. 2040). Patent Owner was not incorporated
`until 2006 (Opp. Reply 1; Ex. 2032), three years after the beginning of the
`LELO story told in Exhibit 1013. According to Patent Owner’s counsel,
`Leloi AB is a Swedish company that is not a party to these proceedings, and
`“Lelo.com” (the website Exhibit 1013 recites) is Leloi AB’s website. Ex.
`1032, 3; Tr. 29, 30.
`Petitioner contends that Patent Owner is in the best position to verify
`the publication date of Exhibit 1002, and therefore, by extension, Exhibit
`1013.13 Opp. 4. First, as the proponent of Exhibit 1013, it is Petitioner’s
`burden to establish admissibility. Second, Petitioner submitted a request to
`Patent Owner to depose a corporate representative of Leloi AB and Lelo Inc.
`regarding the publication date of Exhibit 1002. Ex. 1032, 3–4. Patent
`Owner refused to comply with the deposition requests for several reasons.
`Id. at 2–3. In particular, Patent Owner asserted that the depositions sought
`were not part of routine discovery, and had not been authorized as additional
`discovery. Id.; 37 C.F.R. §§ 42.51(b)(1), 42.51(b)(2), 42.52. Following
`this, Petitioner did not seek a conference call with the Board on the matter,
`nor did Petitioner otherwise seek authorization to file a motion for additional
`discovery. Petitioner indicates it based its inaction, at least in part, on the
`belief that the evidence of record was sufficient to demonstrate that Exhibit
`
`
`13 This assertion applies to Exhibit 1013 because Petitioner contends that
`Exhibit 1002 is subset of the webpage printouts shown in Exhibit 1013.
`
`14
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`1002 was a printed publication. Tr. 65–68. Under these circumstances,
`Petitioner’s contentions do not persuade us that the dates in Exhibit 1013
`constitute party admissions.
`Petitioner contends that even if the dates in Exhibit 1013 are hearsay,
`they are admissible under Federal Rule of Evidence 807. Opp. 8.
`Federal Rule of Evidence 807 provides a “residual exception” to the
`hearsay rule, which may apply even if no specific exception of Federal Rule
`of Evidence 803 applies. To fall under this exception, the statement must: 1)
`have equivalent circumstantial guarantees of trustworthiness; 2) be offered
`as evidence of a material fact; 3) be more probative on the point for which it
`is offered than any other evidence that the proponent can obtain through
`reasonable efforts; and 4) be in the interests of justice to admit. Fed. R.
`Evid. 807. The residual exception to the hearsay rule is to be reserved for
`“exceptional cases,” and is not “a broad license on trial judges to admit
`hearsay statements that do not fall within one of the other exceptions.”
`Conoco Inc. v. Dep’t of Energy, 99 F.3d 387, 392 (Fed. Cir. 1996), as
`amended on reh’g in part (Jan. 2, 1997) (internal quotations omitted).
`Petitioner provides the conclusory assertion that Exhibit 1013 has
`equivalent circumstantial guarantees of trustworthiness warranting
`admissibility under Federal Rule of Evidence 807, but does not provide
`persuasive supporting reasoning. See Opp. 8. Based on our review of
`Petitioner’s arguments, we do not consider this case to be an exceptional one
`that would merit application of the residual exception.
`Accordingly, we determine that to the extent that the dates presented
`in Exhibit 1013 are relied upon as proof of dates relevant to the creation or
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`Patent 7,749,178 B2
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`publication date of Exhibits 1013 or 1002 itself, those dates are inadmissible
`hearsay.14
`
`b. Exhibits 1014–1022
`Exhibit 1014 appears to be Google search results for the phrase “Lelo
`Lily pdf” during the time period January 1, 2004, to December 31, 2006.
`One of the search results listed is “INTRODUCING LILY LILY is a
`delicate and discrete. . . ,” beneath this is listed the website,
`“www.loverouge.com.au/images/prod-images/LEL.../lel_lily.pdf” and the
`date October 18, 2005.
`Exhibits 1015, 1016, 1022 appear to be printouts of the webpage
`“Internet Archive Wayback Machine” and include search results having
`product reviews of the Lily massager.
`Exhibits 1017 and 1018 appear to be some form of advertisement for
`the Lily massager.
`Exhibits 1019–1021 appear to be Google search results for the phrase
`“Lelo Lily,” for the time period January 1, 2004 to February 1, 2006.
`Petitioner argues that the dates in these exhibits are not hearsay
`because they are not being offered for the truth of the matter asserted. Opp.
`10–12. As support, Petitioner cites a District Court case holding that a prior
`art document submitted as a “printed publication” under 35 U.S.C. § 102(a)
`is not hearsay when offered simply as evidence of what it describes. Opp 2;
`Joy Tech., Inc. v. Manbeck, 751 F.Supp. 225, 233 (D.D.C. 1990), judgment
`aff’d by 959 F.2d 226 (Fed. Cir. 1992). In contrast to Joy Tech., here
`
`
`14 For this Exhibit and each date in other exhibits relied upon as hearsay, the
`entirety of the exhibit is not inadmissible, just the dates to the extent they are
`offered as proof of that date.
`
`16
`
`
`SYNCHRONOSS Exhibit 2016
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`Case IPR2014-00148
`Patent 7,749,178 B2
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`Petitioner submits the copyright date as proof of the publication date (the
`matter asserted). See Pet. Reply 14.
`Our reviewing court provides more applicable guidance. In Epstein,
`the Federal Circuit held that the Board did not err in relying upon dates in an
`abstract as prior art because, although the dates were hearsay, the Board was
`not bound by the Federal Rules of Evidence in ex parte proceedings and
`could reply upon hearsay. In re Epstein, 32 F.3d 1559 (Fed. Cir. 1994). In
`contrast, the Federal Rules of Evidence are applicable to an inter partes
`review such as the case at hand. See 37 C.F.R. § 42.62. Other Federal
`Courts have similarly held that dates are hearsay when, as here, offered to
`prove the truth of the matter asserted. See, e.g., Hilgraeve, Inc. v. Symantex
`Corp., 271 F.Supp.2d 964, 974 (E.D. Mich. 2003) (copyright “dates
`imprinted on . . . documents are hearsay when offered to prove the truth of
`the matter asserted”).
`With regard to Exhibit 1014 only, Petitioner additionally asserts that if
`the dates relied on are hearsay, the residual exception of Federal Rule of
`Evidence 807 applies because of the distinct characteristics of the exhibit.
`Opp. 10. As with Exhibit 1013, Petitioner does not elaborate on those
`distinct characteristics, and our analysis of this assertion with regard to
`Exhibit 1013 is applicable here.
`Accordingly, we determine that to the extent that the dates displayed
`on Exhibits 1014–1022 are relied upon as proof of creation or publication
`dates of the exhibits themselves, these dates are inadmissible hearsay.
`
`
`
`17
`
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`SYNCHRONOSS Exhibit 2016
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`Case IPR2014-00148
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`
`c. Exhibit 102315
`Patent Owner contends that the “created” and “modified” dates of
`Exhibit 1023 are hearsay under Federal Rule of Evidence 802. Petitioner’s
`sole response is that these dates are not hearsay because they are not a
`statement uttered by a person. Opp. 13 (citing U.S. v. Khorozian, 333 F.3d
`498, 506 (Fed. Cir. 2003)). In Khorozian, the court observed that a fax
`machine automatically date-stamped a transmission, and therefore, that date
`was the statement of a machine rather than a person. Khorozian, 333 F.3d at
`506. Here, in contrast, Petitioner presents only attorney argument that the
`created and modified dates of Exhibit 1023 were automatically generated.
`See Opp. 8; Opp. Reply 5 (arguing that Petitioner has not established that the
`dates are automatically generated).
`Accordingly, we determine that to the extent that the dates displayed
`in Exhibit 1023 are relied upon as proof of dates of creation, modification, or
`publication of Exhibit 1023 itself, these dates are inadmissible hearsay.
`3. Conclusion
`Exhibits 1013–1023 are inadmissible for lack of sufficient
`authentication under Federal Rules of Evidence 901 and 902, and to the
`extent dates of these exhibits are relied upon to prove dates, they are
`inadmissible hearsay. Given these determinations, we need not reach Patent
`Owner’s other objections to these exhibits.
`
`Exhibit 1002
`Before addressing the admissibility of Exhibit 1002 we restate that as
`detailed above, Exhibits 1013–1022, 1031, 1032 were not served in
`
`15 Exhibit 1023 is described above.
`
`D.
`
`18
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`SYNCHRONOSS Exhibit 2016
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`Case IPR2014-00148
`Patent 7,749,178 B2
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`compliance with 37 C.F.R. §42.64(b)(2), and cannot be relied upon in
`support of the admissibility of Exhibit 1002. Further, Exhibits 1013–1023
`are inadmissible for the reasons discussed above, and cannot provide support
`for the admissibility of Exhibit 1002.
`1. Authentication
`a. Specification Sheet (Page 1 of Ex. 1002)
`
`Page 1 of Exhibit 1002, titled “LELO,” depicts and describes the Lily
`massager, and includes the recitation “LELOi AB © 2005-2006. ALL
`RIGHTS RESERVED.” Ex. 1002, 1.
`Patent Owner contends that page 1 of Exhibit 1002 has not been
`properly authenticated under Federal Rule of Evidence 901 and is not self-
`authenticating under Federal Rule of Evidence 902. Mot. 2–3.
`Petitioner responds that Exhibit 1002 is authenticated by
`circumstantial evidence such as the consistent look and feel of LELO’s
`branding as seen on LELO’s website. Opp. 3–4 (citing SAP America, Inc. v.
`Lakshmi Arunachalam, Case IPR2013-00195, slip op. at 22 (PTAB Sept. 18,
`2014) (Paper 60)). We disagree.
`SAP America provided two examples of webpages that were
`sufficiently authenticated: one, where the printout included circumstantial
`indicia of authenticity such as the date and web address, and two, where
`there were circumstantial indicia of authenticity such as date and web
`addresses and the Declaration of a witness attesting that the printouts were
`true and correct copies. SAP America at 1–2 (citations omitted). The case at
`hand does not fit either of these examples. Page 1 of Exhibit 1002 is a
`document that refers to the website