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`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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`VALVE CORPORATION,
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`Petitioner,
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`v.
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`IRONBURG INVENTIONS LTD.,
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`Patent Owner.
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`____________
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`Cases
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`IPR2016-00948 (Patent 8,641,525 B2)
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`IPR2016-00949 (Patent 9,089,770 B2)
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`PATENT OWNER’S REPLY TO MOTION TO EXCLUDE
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`PURSUANT TO 37 C.F.R. § 42.64(c)
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`TABLE OF CONTENTS
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`2.
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`2.
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`Page
`INTRODUCTION .......................................................................................... 1
`I.
`II. ARGUMENT .................................................................................................. 2
`A.
`Exhibit 1007 ......................................................................................... 2
`1.
`Exhibit 1007 is not self-authenticating and Petitioner’s
`sole reliance on the IPR Petition and the Harrison
`declaration is fatal ...................................................................... 2
`Exhibit 1007 is Inadmissible Hearsay ....................................... 4
`a.
`The public records hearsay exception is
`inapplicable ...................................................................... 4
`The exception of documents that affect an interest
`in property is inapplicable ............................................... 5
`3. Mr. Donohoe’s purported “expert” opinions are irrelevant ....... 6
`4.
`FRE 403 is applicable in this case and the Board
`routinely makes evidentiary rulings based on F.R.E 403 .......... 7
`Exhibits 1025-1028 .............................................................................. 7
`1.
`Petitioner admits that Exhibits 1025 and 1026 are moot,
`and offers no explanation of how Exhibits 1027 and 1028
`support the admissibility of Exhibit 1007 .................................. 7
`Exhibits 1027 and 1028 are inadmissible because
`unauthenticated and irrelevant ................................................... 8
`Petitioner’s Response ........................................................................... 8
`C.
`III. CONCLUSION ............................................................................................... 9
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`b.
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`B.
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`-i-
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`TABLE OF AUTHORITIES
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`Page
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`CASES
`Belden Techs., Inc. v. Superior Essex Commc'ns, LP,
`802 F.Supp.2d 555 (D.Del. 2011) ......................................................................... 7
`Callaway Golf v. Acushnet Co.,
`576 F.3d 1331 (Fed. Cir. 2009) ............................................................................ 7
`EMC Corp. v. Personalweb Techs., LLC,
`Case IPR2013-00084, slip op. 45 (PTAB May 15, 2014) ........................ 1, 2, 3, 8
`Gen. Mills Operations, LLC v. Five Star Custom Foods, Ltd.,
`703 F.3d 1104 (8th Cir. 2013) .............................................................................. 5
`IA Labs CA, LLC v. Nintendo Co., Ltd.,
`857 F.Supp.2d 550 (D. Md., Feb. 14, 2012) ......................................................... 6
`Loraine v. Markel Am. Ins. Co.,
`241 F.R.D. 534 (D. Md. 2007) ............................................................................. 4
`St. Luke's Cataract & Laser Inst., P.A. v. Sanderson,
`2006 WL 1320242 (M.D. Fla. May 12, 2006) ..................................................... 3
`Transamerica Life Ins. v. Lincoln Nat'l Life Ins. Co.,
`597 F.Supp.2d 897 (N.D.Iowa 2009) ................................................................... 7
`United States v. Jackson,
`208 F.3d 633 (7th Cir. 2000) ................................................................................ 3
`United States v. Mackey,
`117 F.3d 24 (1st Cir. 1997) ................................................................................... 5
`United States v. Ortiz,
`125 F.3d 630 (8th Cir. 1997) ................................................................................ 5
`Victaulic Co. v. Tieman,
`499 F.3d 227 (3d Cir. 2007) ................................................................................. 3
`STATUTES
`37 C.F.R. § 42.65 ....................................................................................................... 6
`RULES
`F.R.E. 401 .................................................................................................................. 6
`F.R.E. § 403 ............................................................................................................... 7
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`-ii-
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`TABLE OF AUTHORITIES
`(continued)
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`Page
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`Fed. R. Evid. 403 ....................................................................................................... 7
`Fed. R. Evid. 803(8) ................................................................................................... 5
`Fed. R. Evid. 803(8)(A)(iii) ....................................................................................... 5
`Fed. R. Evid. 803(15) ................................................................................................. 6
`Fed. R. Evid. 803(15) ................................................................................................. 5
`Fed. R. Evid. 902(3) ............................................................................................... 4, 8
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`-iii-
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`

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`I.
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`INTRODUCTION
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`IPR2016-00948
`IPR2016-00949
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`Petitioner’s Exhibit 1007 should be excluded as lacking authentication,
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`inadmissible hearsay, irrelevant to the present action, and/or confusing or
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`misleading.
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`First, Petitioner has taken a shifting sand approach to its use of the U.K.
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`Examiner’s statements. Clearly, the Petitioner’s statements in the Petition and
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`Petitioner’s Reply show that Petitioner is using the U.K. examiner’s statements to
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`argue and support Petitioner’s obviousness challenge, but now Petitioner appears
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`to change position and assert that it is using the U.K. Examiner’s statements
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`merely to show the “state of the art.” Tellingly, this mischaracterization of the
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`record is a silent admission that Petitioner’s use of Exhibit 1007 is inadmissible
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`hearsay. Further, none of the hearsay exceptions are applicable here.
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`Second, Petitioner recognizes that Exhibit 1007 is not self-authenticating,
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`and relies solely on the Harrison Declaration and the IPR Petition for
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`authentication. However, both are grossly deficient and do not meet the standard
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`set forth in Nestle Oil OYJ, v. REG Synthetic Fuels, LLC, IPR2013-00578, Paper
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`53 at 4 (PTAB March 12, 2015) and its progeny. Notably, Petitioner has failed to
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`address Nestle Oil or any of the cases raised by Patent Owner in the Motion to
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`Exclude.
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`1
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`Third, although Petitioner contends that Exhibits 1025-1027, and now
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`IPR2016-00948
`IPR2016-00949
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`Exhibit 1028, were submitted only to support the admissibility of Exhibit 1007,
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`Petitioner has failed to explain how Exhibits 1025-1028 actually support the
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`admissibility of Exhibit 1007. Not surprisingly, Petitioner now acknowledges that
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`“admissibility of Exhibits 1025 and 1026 is moot because those exhibits are not
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`being relied upon in this proceeding” (Opp. at 12), and thus, could not have
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`supported admissibility of Exhibit 1007. Exhibit 1027, and now Exhibit 1028,
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`should also be expunged for the same reasons.
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`Finally, Petitioner did not oppose the exclusion of Petitioner’s Response
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`(dated April 13, 2017), and therefore, it should be excluded in its entirety.
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`
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`II. ARGUMENT
`A. Exhibit 1007
`1.
`Exhibit 1007 is not self-authenticating and Petitioner’s sole
`reliance on the IPR Petition and the Harrison declaration is
`fatal
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`Recognizing that Exhibit 1007 is not self-authenticating, Petitioner relies
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`instead on the IPR Petition and the Harrison Declaration. However, Petitioner’s
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`reliance is misplaced as both are grossly deficient and do not meet the standard set
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`forth in Nestle Oil OYJ, v. REG Synthetic Fuels, LLC, IPR2013-00578, Paper 53 at
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`4 (PTAB March 12, 2015) and its progeny.
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`In Nestle Oil, the Board explained:
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`2
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`Ms. Queler’s testimony may establish that the exhibits are true and
`correct printouts of the identified webpages, but this is beside the
`point. Nestle wishes to rely on the dates reflected in the printouts to
`establish that the Kubíčka reference was publicly available prior to
`December 10, 2007. Paper 24, 15. 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 required 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, 2006
`WL 1320242, at *2 (M.D. Fla. May 12, 2006)).
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`Nest;e has not provided the testimony of any witness with personal
`knowledge of the websites depicted in the printouts; nor do we have
`any other basis for concluding that the contents of the website are
`authentic. For this reason, Exhibits 1101, 1070, and 1129 lack
`authentication and are inadmissible.
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`IPR2013-00578, Paper 53 at 4.
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`Here, the signature of Petitioner’s attorney in connection with the IPR
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`Petition as well as the Harrison Declaration, at best, merely establish that EX1007
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`is a true and correct printouts of the U.K. website. Neither the Petitioner nor the
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`Harrison Declaration authenticate the information from the website itself.
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`Petitioner has not provided the testimony of any witness with personal knowledge
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`of the U.K. website depicted in the printouts; nor do we have any other basis for
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`concluding that the contents of the website are authentic.
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`3
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`Notably, despite Petitioner’s attempts to authenticate Exhibit 1007 by simply
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`saying-so, merely providing a URL and an attorney declaration from Petitioner’s
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`counsel is insufficient, as the requirements of F.R.E. 902(3) and the cases cited in
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`Ironburg’s Motion to Exclude are clear and unequivocal. Nowhere does
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`Petitioner’s attorney declaration or the Petition offer evidence that “provide[s]
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`factual specificity about the process by which the electronically stored information
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`is created, acquired, maintained, and preserved without alteration or change, or the
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`process by which it is produced if the result of system or process that does so.”
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`Loraine v. Markel Am. Ins. Co., 241 F.R.D. 534, 545 (D. Md. 2007). Indeed, Mr.
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`Harrison is neither someone with knowledge of the website, like a webmaster, nor
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`a custodian of the information in Exhibit 1007. And as such, he cannot
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`authenticate Exhibit 1007. Because Petitioner provides insufficient authenticating
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`testimony, Exhibit 1007 should be excluded.
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`2.
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`Exhibit 1007 is Inadmissible Hearsay
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` Petitioner did not refute that Exhibit 1007 is hearsay. Opp. at 5. Instead,
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`Petitioner relied on two exceptions to the hearsay rule, none of which is applicable
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`here.
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`a.
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`The public records hearsay exception is inapplicable
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`Exhibit 1007 is not admissible under the public records hearsay exception
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`just because it appears within public records. Nothing in Mr. Donohoe’s report
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`4
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`provides any factual findings, nor has Petitioner established that there are any
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`“factual findings resulting from a legally authorized investigation” within Mr.
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`Donohoe’s statements, that may qualify as public records under the public records
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`exception. See Gen. Mills Operations, LLC v. Five Star Custom Foods, Ltd., 703
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`F.3d 1104, 1108 (8th Cir. 2013) (quoting Fed. R. Evid. 803(8)(A)(iii)) (The public-
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`records hearsay exception “provides that a ‘record or statement of a public office’
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`is not hearsay if it sets out, in a civil case, ‘factual findings from a legally
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`authorized investigation.’”); see, e.g., United States v. Ortiz, 125 F.3d 630, 632
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`(8th Cir. 1997); United States v. Mackey, 117 F.3d 24, 28–29 (1st Cir. 1997)
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`(holding that “hearsay statements by third persons ... are not admissible under this
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`exception [FRE 803(8) ] merely because they appear within public records”).
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`Not only are there no factual findings in Exhibit 1007, but also Petitioner
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`relies on the U.K. Examiner’s statements as a purported expert opinion to support
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`its obviousness challenge. Therefore, Mr. Donohoe’s statements do not qualify
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`under the public records exception to the hearsay rule.
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`b.
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`The exception of documents that affect an interest in
`property is inapplicable
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`Exhibit 1007 is also not admissible as a document that affects an interest in
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`property. Under Rule 803(15), a hearsay statement is admissible if: (1) it is
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`“contained within a document that affects an interest in property;” (2) it is
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`“relevant to the purport of the document;” and (3) “if dealings with the property
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`5
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`since the document was made have not been inconsistent with the truth of the
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`IPR2016-00948
`IPR2016-00949
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`statement.” F.R.E. § 803(15).
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`Exhibit 1007 in no way affects any interest in any property relevant to this
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`case. Nor is any U.K. intellectual property interest relevant to this case.
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`Therefore, Exhibit 1007 is not admissible as a document that affects any interest in
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`any property.
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`3. Mr. Donohoe’s purported “expert” opinions are irrelevant
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`Regardless of whether Mr. Donohoe’s statements are presented to support
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`Petitioner’s obviousness arguments or now for the purported “state of the art,” they
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`are nevertheless presented as those of a person skilled in the art, and as such, must
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`meet the PTAB rules on expert declarations. 37 C.F.R. § 42.65. As previously
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`stated in the Motion to Exclude, Petitioner failed to establish that Mr. Donohoe
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`qualifies as an expert. This is critical to the underlying issue of relevance, and
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`therefore, Mr. Donohoe’s statements should be excluded under F.R.E. 401.
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`Even if Mr. Donohoe qualifies as an expert, which he does not, his
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`statements have no relevance to factual issues underlying the question of
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`obviousness in the present case. Patent Owner has cited to numerous cases on this
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`issue, none of which were ever addressed or acknowledged by Petitioner. See IA
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`Labs CA, LLC v. Nintendo Co., Ltd., 857 F.Supp.2d 550 (D. Md., Feb. 14, 2012)
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`(holding that evidence relating to PTO reexamination be excluded because the
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`6
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`probative value was outweighed by its potential for undue prejudice) (citing
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`IPR2016-00949
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`Callaway Golf v. Acushnet Co., 576 F.3d 1331, 1343 (Fed. Cir. 2009); Belden
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`Techs., Inc. v. Superior Essex Commc'ns, LP, 802 F.Supp.2d 555, 569 (D.Del.
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`2011); Transamerica Life Ins. v. Lincoln Nat'l Life Ins. Co., 597 F.Supp.2d 897,
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`907 (N.D.Iowa 2009)). As such, Exhibit 1007 is irrelevant and should be excluded
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`on that basis as well.
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`4.
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`FRE 403 is applicable in this case and the Board routinely
`makes evidentiary rulings based on F.R.E 403
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`Not only is F.R.E. § 403 germane to Exhibit 1007, the Board routinely
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`considers evidence exclusion based on F.R.E. 403 and Petitioner has not
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`established or made any argument to refute Ironburg’s original assertion that
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`Exhibit 1007 is confusing and misleading. Providing evidence of obviousness
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`based on an examination of patentability by a non-U.S. patent examiner that is
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`based on non-U.S. patent law, is in fact misleading and confusing for the same
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`reasons that were enumerated in Ironburg’s Motion to Exclude.
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`B.
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`Exhibits 1025-1028
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`1.
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`Petitioner admits that Exhibits 1025 and 1026 are moot, and
`offers no explanation of how Exhibits 1027 and 1028
`support the admissibility of Exhibit 1007
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`Although Petitioner contends that Exhibits 1025-1027, and now Exhibit
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`1028, were submitted only to support the admissibility of Exhibit 1007, Petitioner
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`has not provided any explanation in its Opposition or otherwise, of how these
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`7
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`supplemental Exhibits 1025-1028 support the admissibility of Exhibit 1007. Not
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`IPR2016-00949
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`surprisingly, Petitioner now acknowledges that “admissibility of Exhibits 1025 and
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`1026 is moot because those exhibits are not being relied upon in this proceeding”
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`(Opp. at 12), and thus, could not have supported admissibility of Exhibit 1007.
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`Exhibit 1027 and now Exhibit 1028 also fail to support the admissibility of Exhibit
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`1007. As such, Exhibits 1025-1028 should be expunged from the record.
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`2.
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`Exhibits 1027 and 1028 are inadmissible because
`unauthenticated and irrelevant
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`As discussed above with respect to Exhibit 1007, Exhibits 1027/1028 also
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`require a final certification to be authenticated under F.R.E. 902(3). Exhibits
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`1027/1028 are also not properly authenticated by self-serving statements made by
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`an interested party, namely Petitioner’s counsel, who is not a custodian or a person
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`with personal knowledge of such a record. Nestle Oil OYJ, v. REG Synthetic
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`Fuels, LLC, IPR2013-00578, Paper 53 at 4 (PTAB March 12, 2015). As such,
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`Exhibit 1027/1028 are unauthenticated. They are also irrelevant to this proceeding.
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`Petitioner’s Response
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`C.
`Petitioner did not oppose the exclusion of Petitioner’s Response (dated April
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`13, 2017), and therefore, it should be excluded in its entirety.
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`III. CONCLUSION
`For the reasons discussed above, Patent Owner respectfully requests that
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`IPR2016-00949
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`Exhibits 1007, 1025-1028 be excluded from this proceeding, and the April 13,
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`2017 Response, including Exhibits 1025-1027, and Exhibit 1028 submitted on
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`May 18, 2017, be expunged from the record.
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`Date: May 25, 2017
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`Respectfully submitted,
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`By: /s/ Danielle Mihalkanin
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`Ehab Samuel
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`Attorney for Patent Owner
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`Reg. No. 57,905
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`Danielle Mihalkanin
`Attorney for Patent Owner
`Reg. No. 69,506
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(b), the undersigned certifies
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`that on May 5, 2017, a complete and entire electronic copy of this PATENT
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`OWNER’S REPLY TO MOTION TO EXCLUDE PURSUANT TO 37 C.F.R. §
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`42.64(c), was served via PTAB E2E to Petitioner’s counsel of record at the
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`following address:
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`Joshua C. Harrison, Reg. No. 45,686, josh@bhiplaw.com
`Reynaldo C. Barcelo, Reg. No. 42,290, rey@bhiplaw.com
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`Respectfully submitted,
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`By: /s/ Danielle Mihalkanin
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`Ehab Samuel
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`Attorney for Patent Owner
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`Reg. No. 57,905
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`Danielle Mihalkanin
`Attorney for Patent Owner
`Reg. No. 69,506
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`Date: May 25, 2017
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