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`Paper No. 32
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`
`VALVE CORPORATION,
`Petitioner,
`
`v.
`
`IRONBURG INVENTIONS LTD.,
`Patent Owner.
`
`____________________
`
`Cases:
`
`IPR2016-00948 (Patent 8,641,525 B2)
`IPR2016-00949 (Patent 9,089,770 B2)
`
`____________________
`
`
`OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE
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`
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`OPPOSITION TO PATENT OWNER’S MOTION TO EXCLUDE
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`I.
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`II.
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`TABLE OF CONTENTS
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`Page
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`Exhibit List ……………………………………………………...….iii
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`INTRODUCTION .............................................................................. 1
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`
`
`LEGAL STANDARDS ...................................................................... 2
`
`A.
`
`B.
`
`Public records are excepted from the rule against
`hearsay. ..................................................................................... 2
`
`Statements in documents that affect an interest in
`property are excepted from the rule against
`hearsay. ..................................................................................... 2
`
`III. ARGUMENT ...................................................................................... 3
`
`A.
`
`Ironburg has not met its burden for exclusion of
`Exhibit 1007. ............................................................................ 3
`
`1.
`
`2.
`
`3.
`
`4.
`
`Exhibit 1007 has been amply
`authenticated. ................................................................. 3
`
`Exhibit 1007 qualifies under at least one
`hearsay exception. .......................................................... 5
`
`Exhibit 1007 is admissible under FRE
`§ 401. .............................................................................. 6
`
`Exhibit 1007 is admissible under FRE
`§ 403. .............................................................................. 8
`
`B.
`
`Exhibits 1025-1028. ............................................................... 11
`
`1.
`
`Exhibits 1025-1027 are not supplemental
`information, but rather comprise
`supplemental evidence, timely-served after
`Ironburg’s objection to the admissibility of
`Exhibit 1007. ................................................................ 11
`
`2.
`
`The admissibility of Exhibits 1025 and
`1026 is moot, because that supplemental
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`- i -
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`OPPOSITION TO PATENT OWNER’S MOTION TO EXCLUDE
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`3.
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`4.
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`evidence is not relied upon in this
`proceeding. ................................................................... 12
`
`Exhibits 1025-1027 comprise timely-
`served supplemental evidence that was
`harmlessly prematurely filed. ...................................... 12
`
`Duplicate Exhibit 1028 comprises only
`supplemental evidence that was timely
`served (as Exhibit 1027) and admissible
`over Ironburg’s objections, and is now
`timely filed herewith. ................................................... 12
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`IV. CONCLUSION ................................................................................ 15
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`- ii -
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`OPPOSITION TO PATENT OWNER’S MOTION TO EXCLUDE
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`Exhibit No.
`1001
`1002
`1003
`1004
`1005
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`1006
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`1012
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`1013
`1014
`(not filed)
`1015
`(not filed)
`1016
`(not filed)
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`EXHIBIT LIST
`
`
`Description
`U.S. Patent 8,641,525 to Burgess et al. (“ ’525 patent”)
`U.S. Patent 5,989,123 to Tosaki et al. (“Tosaki”)
`U.S. Patent App. Pub. 2010/0073283 to Enright (“Enright”)
`U.S. Patent App. Pub. 2001/0025778 to Ono
`“Rapid Fire Mod for Wireless Xbox 360 Controller, Step by Step
`Tutorial with Pictures,” posts 341-346 by Jimakos Sn, published
`08 July 2008 at http://forums.xbox-
`scene.com/index.php?/topic/643928-rapid-fire-mod-for-wireless-
`xbox-360-controller/page-23.
`U.S. Patent 4,032,728 to Oelsch (“Oelsch”)
`UK Search and Examination Report for Patent App. No.
`GB1011078.1, 16 May 2011, at 2.
`Expert Declaration of David Rempel, M.D., in Support of Valve
`Corporation’s Petition for Inter-Partes Review of U.S. Patent
`8,641,525.
`Curriculum Vitae of David Rempel, M.D. (also denominated as
`Ex. 1 to Ex. 1012).
`Photo of the Wireless Xbox 360 Controller, published on 13 May
`2005 at http://www.ign.com/articles/2005/05/13/xbox-360-
`wireless-controller-tour.
`U.S. Patent 9,089,770 to Burgess et al. (“ ’770 patent”)
`Expert Declaration of David Rempel, M.D., in Support of Valve
`Corporation’s Petition for Inter-Partes Review of U.S. Patent
`9,089,770.
`Declaration of Joshua C. Harrison.
`Diagram used in deposition of Dr. Glen Stevick, 09 March 2017.
`
`Shape 1, used in deposition of Dr. Glen Stevick, 09 March 2017.
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`Shape 2, used in deposition of Dr. Glen Stevick, 09 March 2017.
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`Exhibit No.
`1017
`(not filed)
`1018
`(not filed)
`1019
`(not filed)
`1020
`(not filed)
`1021
`
`1022
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`1023
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`1024
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`1025
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`1026
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`1027
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`1028
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`EXHIBIT LIST (CONTINUED)
`
`
`Description
`Shape 3, used in deposition of Dr. Glen Stevick, 09 March 2017.
`
`Institution Decision in IPR2016-0949 (filed as Paper 10, but
`not filed as an exhibit).
`Annotated Fig. 1 of U.S. Patent 7, 859,514 to Park.
`
`Annotated Fig. 23 of U.S. Patent 5,989,123 to Tosaki et al.
`
`Expert Declaration of David Rempel, M.D., Regarding the PO
`Responses in cases IPR2016-00948 and IPR2016-00949.
`(“Rempel Reply Decl.”)
`Transcript of Deposition of Dr. Glen Stevick on 09 March 2017.
`(“Stevick Depo., Vol. I”)
`Transcript of Deposition of Dr. Glen Stevick on 15 March 2017.
`(“Stevick Depo., Vol. II”)
`Excerpt from USPTO Manual of Classification, January 2011,
`Class 463 Amusement Devices: Games.
`www.uspto.gov/web/patents/classification/uspc463/sched463.pdf
`Prosecution history of Patent App. No. GB1011078.1, from the
`Online Patent Information and Document Inspection Service
`(Ipsum) of the U.K. Intellectual Property Office.
`www.ipo.gov.uk/p-ipsum/Case/PublicationNumber/GB2481633
`“Study on Inventive Step,” 06 July 2015, World Intellectual
`Property Organization (WIPO), 22nd Session of the Standing
`Committee on the Law of Patents, Geneva.
`www.wipo.int/edocs/mdocs/scp/en/scp_22/scp_22_3.pdf
`Abstracts (and corresponding search reports) of three published
`patent documents officially examined by Mr. Brendan Donohoe
`of the U.K. Intellectual Property Office.
`Abstracts (and corresponding search reports) of three published
`patent documents officially examined by Mr. Brendan Donohoe
`of the U.K. Intellectual Property Office.
`(duplicate of Exhibit 1027 served on 13 April 2017)
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`OPPOSITION TO PATENT OWNER’S MOTION TO EXCLUDE
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`I.
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`INTRODUCTION
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`Although none of Petitioner’s challenges depends upon the content of
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`Petitioner’s Exhibit 1007, it provides a relevant description of the international
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`state of the hand-held controller art at the most pertinent time in this case (just
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`before the filing date of the challenged patents). That description was written by
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`an experienced patent examiner, Mr. Brendan Donohoe, who was then-employed
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`by the U.K. Intellectual Property Office to examine patent applications in the
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`applicable hand-held controller art. His description of the international state of the
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`hand-held controller art was prompted by examining a U.K. patent application
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`having a common inventor and disclosure as that of the challenged patents in this
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`case.
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`Instead of addressing the merits or substance of Examiner Donohoe’s timely
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`and relevant description of the international state of the hand-held controller art,
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`the Patent Owner (hereinafter “Ironburg”) instead tries to exclude the description
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`altogether from the record. See, “Motion to Exclude Pursuant to 37 C.F.R.
`
`§ 42.64(c),” filed 05 May 2017 (hereinafter, the “Motion to Exclude”).
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`The Petitioner respectfully requests that the Board deny Ironburg’s Motion
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`to Exclude for the reasons set forth herein.
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`OPPOSITION TO PATENT OWNER’S MOTION TO EXCLUDE
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`II.
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`LEGAL STANDARDS
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`The party moving to exclude evidence has the burden of proof. See, 37
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`C.F.R. § 42.20(c). Hence, Exhibit 1007 is properly assumed to be admissible,
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`unless Ironburg meets its burden to prove otherwise.
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`Section 803 of the Federal Rules of Evidence (“FRE”) establishes several
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`exceptions to the rule against hearsay, including the following two that are not
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`mentioned or analyzed anywhere in Ironburg’s motion:
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`A.
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`Public records are excepted from the rule against hearsay.
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`FRE § 803(8) excepts from the rule against hearsay a “record or statement of
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`a public office if: (A) it sets out: (i) the office’s activities; (ii) a matter observed
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`while under a legal duty to report, but not including, in a criminal case, a matter
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`observed by law-enforcement personnel; or (iii) in a civil case or against the
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`government in a criminal case, factual findings from a legally authorized
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`investigation; and (B) the opponent does not show that the source of information or
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`other circumstances indicate a lack of trustworthiness.”
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`B.
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`Statements in documents that affect an interest in property are
`excepted from the rule against hearsay.
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`FRE § 803(15) excepts from the rule against hearsay statements in
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`documents “that purports to establish or affect an interest in property if the matter
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`stated was relevant to the document’s purpose — unless later dealings with the
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`OPPOSITION TO PATENT OWNER’S MOTION TO EXCLUDE
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`property are inconsistent with the truth of the statement or the purport of the
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`document.”
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`III. ARGUMENT
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`A.
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`Ironburg has not met its burden for exclusion of Exhibit 1007.
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`1.
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`Exhibit 1007 has been amply authenticated.
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`Ironburg moves to exclude Petitioner’s Exhibit 1007 as allegedly lacking
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`authentication under FRE 901. See, Motion to Exclude at 2-4. However, that
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`allegation is meritless for either of the following two reasons.
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`First, Petitioner identified the source of Exhibit 1007 in each of the IPR
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`petitions in IPR2016-00948 and IPR2016-00949 as being the “UK Search and
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`Examination Report for Patent App. No. GB1011078.1, 16 May 2011,” with each
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`such petition being signed by a registered U.S. patent attorney. Such signature
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`legally sufficed as authentication in the present forum, because every registered
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`U.S. patent attorney has a continuing ethical duty of honesty and candor to the
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`USPTO that is expressly binding under criminal penalty under 18 U.S.C. § 1001.
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`See, e.g., 37 CFR § 11.18. See also, 37 CFR § 11.18(b)(1) (describing the legal
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`significance of a practitioner’s signature on documents filed in IPR proceedings, so
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`as to be legally sufficient for authentication).
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`Second, Petitioner further served Exhibit 1013 as supplemental evidence
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`under 37 C.F.R. § 42.64(b)(2). Exhibit 1013 is a factual declaration from
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`undersigned U.S. Patent attorney Joshua C. Harrison, confirming the authenticity
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`OPPOSITION TO PATENT OWNER’S MOTION TO EXCLUDE
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`of Petitioner’s Exhibit 1007 as part of the public record of the official prosecution
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`history of Patent App. No. GB1011078.1. Accordingly, the Board can readily
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`confirm that Exhibit 1007 is a true copy of content that is publicly available for
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`download from the Online Patent Information and Document Inspection Service
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`(Ipsum) of the U.K. Intellectual Property Office, at www.ipo.gov.uk/p-
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`ipsum/Case/PublicationNumber/GB2481633. The character and availability of
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`Exhibit 1007 from an official U.K. government web domain evidence its
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`authenticity under FRE § 901(a), FRE § 901(b)(1), FRE § 901(b)(4), and FRE
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`§ 901(b)(7)(B). As the moving party, Ironburg has the burden to prove otherwise,
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`and has not done so.
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`Although Ironburg includes lengthy argument in the Motion to Exclude that
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`Exhibit 1007 is not self-authenticating under FRE § 902, that is unnecessary and
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`irrelevant in this case because Petitioner has clearly authenticated it twice
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`extrinsically under FRE § 901(a). There can be no serious doubt that Exhibit 1007
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`is authentic, and readily obtainable and verifiable by the same source and method
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`as used routinely by the USPTO to obtain similar documents from the U.K.
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`Intellectual Property Office.
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`Such simple authentication via a link to the direct and official source at the
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`U.K. Intellectual Property Office has been provided and available to Ironburg for
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`months. Hence, continuing to deny the authenticity of Exhibit 1007 represents an
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`unnecessary judicial burden. See, 37 CFR § 42.12(a)(2).
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`2.
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`Exhibit 1007 qualifies under at least one hearsay exception.
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`Ironburg alleges that Petitioner’s Exhibit 1007 contains hearsay inadmissible
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`under FRE § 802. See, Motion to Exclude at 4-5. However, Exhibit 1007 qualifies
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`under at least one hearsay exception set forth in FRE § 803.
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`For example, Exhibit 1007 qualifies under the FRE § 803(8) hearsay
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`exception, as a record of a public office (the U.K. Intellectual Property Office) that
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`sets out the office’s activities (patent application examination). Ironburg has not
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`shown that the source of information or other circumstances indicate a lack of
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`trustworthiness.
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`Also, for example, Exhibit 1007 qualifies under the FRE § 803(15) hearsay
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`exception, as a document that purports to affect an interest in property (U.K.
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`intellectual property). The matter stated by Examiner Donohoe (patentability over
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`the prior art) was relevant to the document’s purpose (a record of the U.K. patent
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`application examination to determine an intellectual property right). Also, no later
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`dealings with that U.K. intellectual property are inconsistent with the truth of the
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`statements by Examiner Donohoe, or with the “purport of the document” (that of
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`the U.K. patent application examination record). FRE § 803(15)
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`3.
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`Exhibit 1007 is admissible under FRE § 401.
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`Ironburg also alleges that Petitioner’s Exhibit 1007 is allegedly “irrelevant”
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`and therefore inadmissible under FRE § 401. See, Motion to Exclude at 6-7. The
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`test for relevance set forth in FRE § 401 is (emphasis added):
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`Evidence is relevant if: (a) it has any tendency to make a fact more or
`less probable than it would be without the evidence; and (b) the fact is
`of consequence in determining the action.
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`Here the state of the international hand-held controller art is clearly “of
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`consequence” in determining obviousness in this action, and although Petitioner
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`does not rely upon Examiner Donohoe’s description of the international state of the
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`art, still it clearly tends to make obviousness “more probable” in this action.
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`Therefore, Exhibit 1007 is unquestionably relevant under FRE § 401.
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`Ironburg also alleges that Exhibit 1007 is irrelevant under the assumption
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`that FRE § 401 creates a “burden” for Petitioner to establish that the U.K.
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`Examiner qualifies as a person of ordinary skill in the art (“POSITA”). See,
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`Motion to Exclude at 6-7. However, the standard for relevance set by FRE § 401
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`should not be confused with the so-called Daubert standard for testimony by
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`scientific experts. See, Daubert v. Merrell Dow Pharmaceuticals, 509 U.S. 579
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`(1993).
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`By contrast, relevance under FRE § 401 does not require a showing that
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`Examiner Donohoe is a POSITA, rather only that Examiner Donohoe’s statement
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`creates “any tendency” to make it “more probable” that the international state of
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`the art is as described. As a patent examiner officially charged by the U.K.
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`Intellectual Property Office to examine patent applications in the hand-held
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`controller art, Examiner Donohoe’s statement easily qualifies as relevant under the
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`“any tendency” test of FRE § 401.
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`Even assuming arguendo and counter-factually that FRE § 401 relevance
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`requires that Examiner Donohoe be qualified as a POSITA, that is not a problem
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`under Ironburg’s definition of POSITA.1
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`For example, Ironburg asserts that the training and experience required to
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`qualify as a POSITA in pertinent art is: “less than a year of experience or other
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`training in controller assembly or tooling.” PO Response, p. 34 (emphasis added).
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`Assuming that Ironburg’s POSITA criteria is a minimum requirement, any of
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`Examiner Donohoe’s relevant prior experience (e.g., his work to summarize the
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`international state of the art in hand-held controllers in Exhibit 1007) surely meets
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`or exceeds that minimum criteria.
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` Therefore, not only is Exhibit 1007 unquestionably relevant under the actual
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`standard of FRE § 401, but it is also evidently relevant even under Ironburg’s
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`incorrect interpretation of FRE § 401.
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`1 Since Ironburg is moving to exclude Exhibit 1007, it is proper to apply
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`Ironburg’s own definition of POSITA in deciding the present motion.
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`OPPOSITION TO PATENT OWNER’S MOTION TO EXCLUDE
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`Further evidence of Examiner Donohoe’s ample relevant prior experience in
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`the hand-held controller art may be helpful to show FRE § 401 relevance, but is
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`not necessary for such a showing. Accordingly, reliance on the supplemental
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`evidence filed herewith as Exhibit 1028 is optional; relevance under FRE § 401 has
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`been demonstrated without it (though it tends to further show relevance). Note:
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`The duplicate supplemental evidence of Exhibit 1028 was timely served on
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`Ironburg (then as Exhibit 1027) on 13 April 2017.
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`4.
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`Exhibit 1007 is admissible under FRE § 403.
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`Ironburg also alleges that Petitioner’s Exhibit 1007 is allegedly “misleading
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`and confusing” – and therefore inadmissible under FRE § 403. See, Motion to
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`Exclude at 6. In pertinent part, FRE § 403 permits a court to “exclude relevant
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`evidence if its probative value is substantially outweighed by a danger of […]
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`confusing the issues, misleading the jury […]” etc. See, FRE § 403 (emphasis
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`added).
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`a.
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`FRE § 403 does not apply to Exhibit 1007 in this case.
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`As a preliminary matter, FRE § 403 is inapplicable to Exhibit 1007 in this
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`case, because an inter-partes review is not a jury trial. The Federal Courts have
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`held that FRE § 403 does not apply to bench trials. See, e.g., U.S. v. Preston, 706
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`F.3d 1106, 1117 (9th Cir. Feb. 5, 2013) (No. 11-10511) (“Rule 403 is inapplicable
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`to bench trials.”); see also, e.g., Advanced Magnetic Closures, Inc. v. Rome
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`Fastener Corp., 607 F.3d 817, 831 (Fed. Cir. June 11, 2010) (“the Federal Rules of
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`Evidence do not generally apply when the judge is acting as a fact-finder because a
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`judge can presumably exclude improper inferences”); EEOC v. Farmer Bros. Co.,
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`31 F.3d 891, 898 (9th Cir. 1994) (“in a bench trial, the risk that a verdict will be
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`affected unfairly and substantially by the admission of irrelevant evidence is far
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`less than in a jury trial”); Schultz v. Butcher, 24 F.3d 626, 632 (4th Cir. 1994)
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`(“Rule 403 was designed to keep evidence not germane to any issue outside the
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`purview of the jury's consideration. For a bench trial, we are confident that the
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`district court can hear relevant evidence, weigh its probative value and reject any
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`improper inferences.”).
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`b.
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`Even if FRE § 403 applies, the value/risk comparison
`for admissibility of Exhibit 1007 is satisfied.
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`Even if Exhibit 1007 were subject to value/risk comparison for admissibility
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`under FRE § 403 in this IPR proceeding, still the exhibit would be properly
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`admissible. After all, Exhibit 1007 is valuably probative of the international state
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`of the art at the most relevant time2 in this case, yet the dangers of admitting
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`Exhibit 1007 are minimal for several reasons.
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`2 The date of Examiner Donohoe’s search report for the U.K. Intellectual
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`property office (16 May 2011) was just before the filing date of the patents
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`challenged herein (June 2011).
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`First, Ironburg specifically alleges that the reason why Exhibit 1007 is
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`“misleading and confusing” is that Examiner Donohoe’s description of the
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`international state of the art was “not made in the context of the challenged claims
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`nor in the context of applicable U.S. law.” See, Motion to Exclude at 6.
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`However, the international state of the art does not depend upon “applicable
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`U.S. law.” Examiner Donohoe’s search report reflects a search that was
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`international in scope (including references published in the U.S.), and so his
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`resulting summary of the international state of the art has probative value
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`anywhere. Indeed, a summary of the state of the art is most valuably probative
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`under applicable U.S. law if it is based on a search that is international in scope.
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`Second, an inter-partes review is not a jury trial, but rather is decided by a
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`panel of experienced patent practitioners on the PTAB. Such experienced patent
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`professionals are unlikely to be confused by a U.K. international search report and
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`summary. Indeed, many U.S. patent examiners routinely review U.K. international
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`search reports and summaries (e.g., when examining PCT applications that enter
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`the national phase in the U.S.).
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`Third, the Petitioner has clearly stated (everywhere that Exhibit 1007 has
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`been referenced in Petitioner’s papers) that Examiner Donohoe’s timely
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`description of the international state of the hand-held controller art is from a U.K.
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`OPPOSITION TO PATENT OWNER’S MOTION TO EXCLUDE
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`patent examiner. The Petitioner has never implied that Exhibit 1007 is anything
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`that it is not, and so there is very little risk that the PTAB will be “misled.”
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`For the foregoing reasons, even if FRE § 403 is applicable here, Exhibit
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`1007 is admissible because its probative value is not substantially outweighed by
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`its risks.
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`B.
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`Exhibits 1025-1028.
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`1.
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`Exhibits 1025-1027 are not supplemental information, but
`rather comprise supplemental evidence, timely-served after
`Ironburg’s objection to the admissibility of Exhibit 1007.
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`The Board explained the difference between supplemental information and
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`supplemental evidence, in Handi-Quilter, Inc. v. Bernina Int’l AG, IPR2013-
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`00364, Paper 30 at 3 (PTAB June 12, 2014), as follows:
`
`[S]upplemental evidence—served in response to an evidentiary
`objection and filed in response to a motion to exclude—is offered
`solely to support admissibility of the originally filed evidence and to
`defeat a motion to exclude that evidence, and not to support any
`argument on
`the merits (i.e., regarding
`the patentability or
`unpatentability of a claim). Supplemental information, on the other
`hand, is evidence a party intends to support an argument on the merits.
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`Pursuant to the Board’s order dated 27 October 2016 (Paper 13, at p. 4), the
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`Petitioner was entitled to serve the supplemental evidence of Exhibits 1025-1027 in
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`response to the Patent Owner’s evidentiary objections filed 04 April 2017, before
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`the ten-business-day deadline which expired on 18 April 2017.
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`Therefore, 37 C.F.R. § 42.123(b), which governs supplemental information
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`and which Ironburg expends substantial energy discussing in its Motion to
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`- 11 -
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`OPPOSITION TO PATENT OWNER’S MOTION TO EXCLUDE
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`Exclude, is simply not applicable to the supplemental evidence of Exhibits 1025-
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`1027. Likewise, the requirement of 37 C.F.R. § 42.123(b) to seek Board
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`authorization prior to filing supplemental information, is simply not applicable to
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`the supplemental evidence of Exhibits 1025-1027.
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`2.
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`The admissibility of Exhibits 1025 and 1026 is moot,
`because that supplemental evidence is not relied upon in
`this proceeding.
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`The admissibility of Exhibits 1025 and 1026 is moot because those exhibits
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`are not being relied upon in this proceeding.
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`3.
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`Exhibits 1025-1027 comprise timely-served supplemental
`evidence that was harmlessly prematurely filed.
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`The Petitioner timely served Exhibits 1025-1027 on 13 April 2017, under 37
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`C.F.R. § 42.64(b)(2), and expressed intent to use them only to support the
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`admissibility of Exhibit 1007. Exhibits 1025-1027 were also prematurely filed on
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`13 April 2017. However, because the content of Exhibits 1025-1027 is either i)
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`not used, or else ii) used only to properly support the admissibility of Exhibit 1007
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`in response to Ironburg’s motion to exclude, the premature filing was harmless and
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`Exhibits 1025-1027 need not be expunged.
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`4.
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`Duplicate Exhibit 1028 comprises only supplemental
`evidence that was timely served (as Exhibit 1027) and
`admissible over Ironburg’s objections, and is now timely
`filed herewith.
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`Exhibit 1028 is timely filed now with the present opposition, and is a
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`duplicate of the supplemental evidence of Exhibit 1027 that was timely served on
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`- 12 -
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`OPPOSITION TO PATENT OWNER’S MOTION TO EXCLUDE
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`13 April 2017 under 37 C.F.R. § 42.64(b)(2). Since identical supplemental
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`evidence was timely served on Ironburg as Exhibit 1027, Ironburg is not
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`prejudiced by the filing herewith of duplicate Exhibit 1028.
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`a.
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`Exhibit 1027 (and duplicate Exhibit 1028) is
`sufficiently authenticated.
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`Ironburg alleges that the supplemental evidence of Exhibit 1027 (and
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`therefore also that of duplicate Exhibit 1028) “was unauthenticated and did not
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`have the required certification per F.R.E. 902(3).” Motion to Exclude at 11.
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`However, Petitioner’s timely service of Exhibit 1027 on 13 April 2017 included
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`the following extrinsic authentication of that supplemental evidence (hereby re-
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`declared):
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`The undersigned attorney declares under penalty of perjury,
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`pursuant to 28 U.S.C. § 1746 and 18 U.S.C. § 1001, that duplicate
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`Exhibit 1028 (like the prematurely-filed Exhibit 1027 before it) is a
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`true and correct copy of a selection of three publicly available
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`abstracts (with corresponding search reports) of published patent
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`documents officially examined by Mr. Brendan Donohoe of the U.K.
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`Intellectual Property Office, and match in all material aspects the
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`abstracts and search reports that are publicly available for download
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`from the Online Patent Information and Document Inspection Service
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`- 13 -
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`OPPOSITION TO PATENT OWNER’S MOTION TO EXCLUDE
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`(Ipsum) of the U.K. Intellectual Property Office, at the following three
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`Internet-accessible locations:
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`• https://www.ipo.gov.uk/p-ipsum/Case/ApplicationNumber/GB0816492.3
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`• https://www.ipo.gov.uk/p-ipsum/Case/ApplicationNumber/GB0816482.4
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`• https://www.ipo.gov.uk/p-ipsum/Case/ApplicationNumber/GB0816493.1
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`The foregoing declaration, and the character and availability of the
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`supplemental evidence of Exhibit 1028 from the official web domain
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`www.ipo.gov.uk, are sufficient extrinsic authentication under FRE § 901(a), FRE
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`§ 901(b)(1), FRE § 901(b)(4), and FRE § 901(b)(7)(B). Therefore, self-
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`authentication of Exhibit 1027 (and duplicate Exhibit 1028) is unnecessary and
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`FRE § 902(3) is inapplicable.
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`b.
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`Exhibit 1027 (and duplicate Exhibit 1028) is relevant
`and not properly excluded under FRE § 403.
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`Ironburg alleges that the supplemental evidence of Exhibit 1027 (and
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`therefore also that of duplicate Exhibit 1028) is inadmissible under FRE § 403
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`because “it is irrelevant to this U.S. proceeding and its inclusion into the record
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`merely serves to confuse the issues before the Board.” Motion to Exclude at 11.
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`However, FRE § 403 is inapplicable here, because an inter-partes review is
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`not a jury trial. See, section III.A.4.a. herein, supra. Furthermore, the last
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`paragraph of section III.A.3. herein, supra, describes how the supplemental
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`evidence of Exhibit 1027 (and therefore also that of duplicate Exhibit 1028) is
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`- 14 -
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`OPPOSITION TO PATENT OWNER’S MOTION TO EXCLUDE
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`relevant and probative of the admissibility of evidence objected to by Ironburg.
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`Such probative value is not substantially outweighed by a danger of confusion,
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`because an inter-partes review is decided by a panel of experienced patent
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`practitioners who will understand the limited utility of the supplemental evidence
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`in question.
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`IV. CONCLUSION
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`The Petitioner requests that the Board deny Ironburg’s Motion to Exclude
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`for the reasons set forth in this opposition.
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`Dated: May 18, 2017
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`Respectfully submitted,
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`By:
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`/Joshua C. Harrison, USPTO Reg. #45,686/
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`Joshua C. Harrison, USPTO Reg.# 45,686
`BARCELÓ, HARRISON & WALKER, LLP
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`- 15 -
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`OPPOSITION TO PATENT OWNER’S MOTION TO EXCLUDE
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`CERTIFICATE OF SERVICE
`The undersigned certifies, in accordance with 37 C.F.R. § 42.205, that on
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`18 May 2017 a true copy of the foregoing OPPOSITION TO PATENT OWNER’S
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`MOTION TO EXCLUDE was served in its entirety on the Patent Owner
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`electronically via PTAB E2E to:
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`Ehab M. Samuel, Reg. No. 57,905
`MANATT, PHELPS & PHILLIPS. LLP
`11355 W. Olympic Blvd. Los Angeles, CA 90064
`Tel: (310) 312-4000 Fax: (310) 312-4224
`ESamuel@manatt.com
`Danielle Mihalkanin, Reg. No. 69,506
`MANATT, PHELPS & PHILLIPS, LLP
`1841 Page Mill Road, Suite 200, Palo Alto, CA 94304
`Tel: (650) 812-1300 Fax: (650) 213-0260
`DMihalkanin@manatt.com
`Yasser El-Gamal, Reg. No. 45,339
`MANATT, PHELPS & PHILLIPS, LLP
`695 Town Center Drive, 14th Floor, Costa Mesa, CA 92626
`Tel: (714) 371-2500 Fax: (714) 371-2550
`YElGamal@manatt.com
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`Attorneys for Ironmonger Inventions Ltd., a UK Limited Company
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`Dated: 18 May 2017
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`By: /Joshua C. Harrison, USPTO Reg. # 45,686/
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`Joshua C. Harrison, USPTO Reg. # 45,686
`BARCELÓ, HARRISON & WALKER, LLP
`2901 West Coast Hwy, Suite 200
`Newport Beach, CA 92663
`(949) 340-9736
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`Attorneys for Petitioner, Valve Corporation
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`- 16 -
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`OPPOSITION TO PATENT OWNER’S MOTION TO EXCLUDE
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