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`Paper No. 17
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
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`VALVE CORPORATION,
`Petitioner,
`
`v.
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`IRONBURG INVENTIONS LTD.,
`Patent Owner.
`
`____________________
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`Cases:
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`IPR2016-00948 (Patent 8,641,525 B2)
`IPR2016-00949 (Patent 9,089,770 B2)
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`____________________
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`PETITIONER’S RESPONSE TO
`PATENT OWNER’S OBJECTIONS TO EVIDENCE
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`1
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`I.
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`Ironburg’s belated objections to evidence should be rejected as
`untimely.
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`On 01 November 2016, after the two-day deadline set by the Board (in the
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`Conduct of Proceedings promulgated by the Board on 27 October 2016 as Paper
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`13), the Patent Owner (hereinafter “Ironburg”) raised three different belated
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`objections to Petitioner’s Exhibit 1007 of IPR petitions IPR2016-00948 and
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`IPR2016-00949.
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`This was the second time that Ironburg missed its deadline for objections to
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`Petitioner’s Exhibit 1007. Ironburg previously missed the deadline for objections
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`(ten business days after institution of the trial, under rule 37 C.F.R. § 42.64(b)(1)),
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`and had to seek special leave from the Board to authorize a new and additional
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`time period to file its objections. Ironburg then failed to meet the second deadline,
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`as well.
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`Ironburg’s excuse for missing the Board’s second deadline was that,
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`although the Board emailed the order authorizing the additional time period to the
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`proper address of Ironburg’s attorney of record, the email arrived while such
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`attorney was traveling – presumably for the entire second two-day period
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`authorized for objections. This excuse fails for at least two reasons. Firstly,
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`Petitioner’s counsel did not explain how his travel justified the tardiness of the
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`submission, in view of the many communication tools ubiquitously available to the
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`modern traveler. Secondly, the Board had verbally warned both parties of the
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`2
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`likelihood that its order would be forthcoming – just days prior, during an official
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`teleconference.
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`II.
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`Petitioner’s substantive responses to Ironburg’s objections to evidence.
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`If the Board permits Ironburg’s belated evidentiary objections despite their
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`untimeliness, then the Petitioner offers the following substantive responses, which
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`include and refer to an Exhibit 1013 containing supplemental evidence, filed
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`herewith under 37 C.F.R. § 42.64(b)(2).
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`Ironburg objects that Petitioner’s Exhibit 1007 allegedly contains hearsay
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`inadmissible under Fed. R. Evid. 802. See Paper # 13 filed by Ironburg on 01
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`November 2016, at pages 1-3. Ironburg also objects that Petitioner’s Exhibit 1007
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`is allegedly irrelevant under Fed. R. Evid. 402. See id., at page 3. Petitioner
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`disagrees with both of these belated objections, and reserves the right to rebut them
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`in an opposition if Ironburg is allowed to bring a motion to exclude based upon
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`them.
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`Ironburg also objects to Petitioner’s Exhibit 1007 as allegedly lacking
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`authentication under Fed. R. Evid. 901. See id., at page 3. However, that objection
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`fails immediately, at least because Petitioner identified the source of Exhibit 1007
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`in each of the IPR petitions in IPR2016-00948 and IPR2016-00949 as being the
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`“UK Search and Examination Report for Patent App. No. GB1011078.1, 16 May
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`3
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`2011,” and because each of the pertinent IPR petitions was signed by a registered
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`U.S. patent attorney.
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`The source identification for Exhibit 1007 that was included in the IPR
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`petitions over the signature of a registered U.S. patent attorney, already legally
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`sufficed as authentication in the present forum. After all, every registered U.S.
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`patent attorney has a continuing ethical duty of honesty and candor to the USPTO,
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`that is expressly binding under criminal penalty under 18 U.S.C. § 1001. See, e.g.,
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`37 CFR § 11.18.
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`Specifically, 37 CFR § 11.18(b)(1) expressly describes the legal significance
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`of a practitioner’s signature on documents filed in the present IRB proceedings, as
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`certifying that:
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`All statements made therein of the party’s own knowledge are true, all
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`statements made therein on information and belief are believed to be
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`true, and all statements made therein are made with the knowledge
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`that whoever, in any matter within the jurisdiction of the Office,
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`knowingly and willfully falsifies, conceals, or covers up by any trick,
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`scheme, or device a material fact, or knowingly and willfully makes
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`any false, fictitious, or fraudulent statements or representations, or
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`knowingly and willfully makes or uses any false writing or document
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`knowing the same to contain any false, fictitious, or fraudulent
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`statement or entry, shall be subject to the penalties set forth under 18
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`U.S.C. 1001 and any other applicable criminal statute, and violations
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`4
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`of the provisions of this section may jeopardize the probative value of
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`the paper […]
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`Therefore, the source identification for Exhibit 1007 that was included in
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`each of the IPR petitions over the signature of a registered U.S. patent attorney,
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`already legally sufficed as authentication in the present forum.
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`However, in an abundance of caution, and respecting the Board’s
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`approaching deadline for submission of any contemplated supplemental evidence
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`relevant to the foregoing objections to evidence, Petitioner submits herewith
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`Exhibit 1013 as supplemental evidence under 37 C.F.R. § 42.64(b)(2). Exhibit
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`1013 is a factual declaration from undersigned U.S. Patent attorney Joshua C.
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`Harrison, confirming the authenticity of Petitioner’s Exhibit 1007 as filed with and
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`described by the IPR petitions in the instituted IPR2016-00948 and IPR2016-
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`00949 trials.
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`Respectfully submitted,
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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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`Dated: 14 November 2016
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`5
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`CERTIFICATE OF SERVICE
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`The undersigned certifies, in accordance with 37 C.F.R. § 42.205, that on
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`14 November 2016 a true copy of the foregoing PETITIONER’S RESPONSE TO
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`PATENT OWNER’S OBJECTIONS TO EVIDENCE, and Exhibit 1013 thereto
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`under 37 C.F.R. § 42.64(b)(2), was served in its entirety on the Patent Owner via
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`electronic mail and electronically via PTAB E2E to:
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`Ehab Samuel
`Reg. No. 57,905
`Email: esamuel@manatt.com
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`Danielle Mihalkanin
`Reg. No. 69,506
`Email: dmihalkanin@manatt.com
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`Manatt, Phelps & Phillips, LLP
`11355 W. Olympic Blvd.
`Los Angeles, CA 90064
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`
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`Attorneys for Ironmonger Inventions Ltd., a UK Limited Company
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`Dated: 14 November 2016
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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
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`2901 West Coast Hwy, Suite 200
`Newport Beach, CA 92663
`(949) 340-9736
`
`Attorneys for Petitioner, Valve Corporation
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`6
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