`(309101-2121)
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`IPR2016-01159
`U.S. Patent No. 8,694,657
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FACEBOOK, INC.
`Petitioner
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`v.
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`WINDY CITY INNOVATIONS, LLC
`Patent Owner
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`
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`Case IPR2016-01159
`U.S. Patent No. 8,694,657
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`PETITIONER FACEBOOK, INC.’S OBJECTIONS TO PATENT
`OWNER’S EVIDENCE PURSUANT TO 37 C.F.R. § 42.64(b)(1)
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`
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`Atty Docket FABO-041/00US
`(309101-2121)
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`IPR2016-01159
`U.S. Patent No. 8,694,657
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`Pursuant to 37 C.F.R. § 42.64(b)(1), Petitioner Facebook, Inc. (“Petitioner”)
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`objects to the admissibility of the following evidence submitted by Patent Owner
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`Windy City Innovations LLC (“Patent Owner”) with its Response to Petition
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`(Paper No. 22), filed March 31, 2017. These objections are made within five
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`business days from the filing and service of the Patent Owner’s Response to
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`Petition. Petitioner objects to the following documents on the following bases:
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`Ex. 2005, Declaration of Jaime G. Carbonell, Ph.D.
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`Petitioner objects to the exhibit because the opinions presented in the
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`declaration are conclusory, there has not been an adequate showing that the
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`testimony is the product of sufficient facts or data, or reliable principles or
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`methods, and there is no indication that the testimony will help the Board
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`understand the evidence or determine a fact in issue. FRE 401, 403, 702.
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`Petitioner objects to this exhibit because the declarant is unqualified as an
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`expert to provide technical opinions of a person having ordinary skill in the art.
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`Thus, the declarant’s opinions present in the exhibit are inadmissible. FRE 702.
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`Petitioner objects to the exhibit to the extent the Declaration relies on
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`Exhibits 2008-2012 because they are inadmissible as discussed herein. FRE 401,
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`402, 403, 801, 802, 901, 902. Moreover, the relied-upon exhibits are inadmissible
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`as not qualified to be the basis for an expert opinion. FRE 703. Patent Owner has
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`Atty Docket FABO-041/00US
`(309101-2121)
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`not established that these exhibits reasonably would be relied upon by experts in
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`IPR2016-01159
`U.S. Patent No. 8,694,657
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`the field.
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`Petitioner objects to this exhibit as containing inadmissible hearsay that does
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`not fall under any exception. FRE 801, 802, 803, 804, 805, 807. To the extent
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`Patent Owner relies on the contents of this exhibit for the truth of the matter
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`asserted, Petitioner objects to such contents as inadmissible hearsay. To the extent
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`Patent Owner relies on the exhibits cited therein for the truth of the matter asserted,
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`Petitioner objects to such contents as inadmissible hearsay under FRE 801 and 802.
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`Petitioner objects to this exhibit as irrelevant and inadmissible. FRE 401,
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`402. The contents of the exhibit are not relevant to claim construction, novelty,
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`obviousness, or any issue related to the instituted ground. Nor do they correspond
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`to any particular argument, and are thus not probative of any particular fact at
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`issue.
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`Petitioner objects to this exhibit as confusing the issues, misleading the fact-
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`finders, and/or a waste of time because the contents of this exhibit are of minimal
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`probative value and do not relate to claim construction, novelty, obviousness, or
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`any issue related to the instituted ground. FRE 403. Petitioner objects to this
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`exhibit as unfairly prejudicial. FRE 403.
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`Atty Docket FABO-041/00US
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`IPR2016-01159
`U.S. Patent No. 8,694,657
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`Ex. 2008, IDS filed Jan. 14, 2017 for U.S. Patent Application No.
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`14/246,965
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`Petitioner objects to this exhibit as inadmissible hearsay because it includes
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`out of court statements offered for their truth and does not fall within any
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`exception to the rule against hearsay. FRE 801, 802. To the extent that the
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`authors(s) of the underlying document comment on the perception of others, opine
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`on the functionalities of a product or process, and/or comment on the purported
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`state of the art, the exhibit is objected to as inadmissible hearsay. FRE 801, 802.
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`The document purports to be a copy and the purported authors are not under oath
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`and are not subject to cross-examination in this proceeding.
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`Petitioner objects to this exhibit as irrelevant and inadmissible. FRE 401,
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`402. The contents of the exhibit are not relevant to claim construction, novelty,
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`obviousness, or any issue related to the instituted ground. The contents of the
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`exhibit do not correspond to any particular argument, and are thus not probative of
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`any particular fact at issue. Further, this exhibit is irrelevant because Patent Owner
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`and/or Dr. Carbonell have not established that this exhibit reasonably would be
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`relied upon by experts in the field. FRE 401, 402, 702.
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`Petitioner objects to this exhibit as confusing the issues, misleading the fact-
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`finders, and/or a waste of time because the cited portions are of minimal probative
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`value and do not relate to claim construction, novelty, obviousness, or any issue
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`3
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`related to the instituted ground. FRE 403. Petitioner objects to this exhibit as
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`IPR2016-01159
`U.S. Patent No. 8,694,657
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`unfairly prejudicial. FRE 403.
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`Petitioner objects to this exhibit as not properly authenticated and not self-
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`authenticating. FRE 901, 902. For at least these reasons, Petitioner objects to this
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`exhibit.
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`Ex. 2009, Bob Metcalfe, Predicting the Internet’s catastrophic collapse
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`and ghost sites galore in 1996, InfoWorld, p.61 (Dec. 4, 1995)
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`Petitioner objects to this exhibit as inadmissible hearsay because it includes
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`out of court statements offered for their truth and does not fall within any
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`exception to the rule against hearsay. FRE 801, 802. To the extent that the
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`authors(s) of the underlying document comment on the perception of others, opine
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`on the functionalities of a product or process, and/or comment on the purported
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`state of the art, the exhibit is objected to as inadmissible hearsay. FRE 801, 802.
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`The document purports to be a copy and the purported authors are not under oath
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`and are not subject to cross-examination in this proceeding.
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`Petitioner objects to this exhibit as irrelevant and inadmissible. FRE 401,
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`402. The contents of the exhibit are not relevant to claim construction, novelty,
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`obviousness, or any issue related to the instituted ground. The contents of the
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`exhibit do not correspond to any particular argument, and are thus not probative of
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`any particular fact at issue. Further, this exhibit is irrelevant because Patent Owner
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`4
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`Atty Docket FABO-041/00US
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`and/or Dr. Carbonell have not established that this exhibit reasonably would be
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`IPR2016-01159
`U.S. Patent No. 8,694,657
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`relied upon by experts in the field. FRE 401, 402, 702.
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`Petitioner objects to this exhibit as confusing the issues, misleading the fact-
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`finders, and/or a waste of time because the cited portions are of minimal probative
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`value and do not relate to claim construction, novelty, obviousness, or any issue
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`related to the instituted ground. FRE 403. Petitioner objects to this exhibit as
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`unfairly prejudicial. FRE 403.
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`Petitioner objects to this exhibit as not properly authenticated and not self-
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`authenticating. FRE 901, 902. For at least these reasons, Petitioner objects to this
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`exhibit.
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`Ex. 2010, AOL could strike gold with IM patent, CNN.com. (Dec. 19,
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`2002)
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`Petitioner objects to this exhibit as inadmissible hearsay because it includes
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`out of court statements offered for their truth and does not fall within any
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`exception to the rule against hearsay. FRE 801, 802. To the extent that the
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`authors(s) of the underlying document comment on the perception of others, opine
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`on the functionalities of a product or process, and/or comment on the purported
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`state of the art, the exhibit is objected to as inadmissible hearsay. FRE 801, 802.
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`The document purports to be a copy and the purported authors are not under oath
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`and are not subject to cross-examination in this proceeding.
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`Atty Docket FABO-041/00US
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`IPR2016-01159
`U.S. Patent No. 8,694,657
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`Petitioner objects to this exhibit as irrelevant and inadmissible. FRE 401,
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`402. The contents of the exhibit are not relevant to claim construction, novelty,
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`obviousness, or any issue related to the instituted ground. The contents of the
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`exhibit do not correspond to any particular argument, and are thus not probative of
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`any particular fact at issue. Further, this exhibit is irrelevant because Patent Owner
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`and/or Dr. Carbonell have not established that this exhibit reasonably would be
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`relied upon by experts in the field. FRE 401, 402, 702.
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`Petitioner objects to this exhibit as confusing the issues, misleading the fact-
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`finders, and/or a waste of time because the cited portions are of minimal probative
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`value and do not relate to claim construction, novelty, obviousness, or any issue
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`related to the instituted ground. FRE 403. Petitioner objects to this exhibit as
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`unfairly prejudicial. FRE 403.
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`Petitioner objects to this exhibit as not properly authenticated and not self-
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`authenticating. FRE 901, 902. For at least these reasons, Petitioner objects to this
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`exhibit.
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`Ex. 2011, U.S. Patent No. 6,449,344 to Yair Goldfinger et al.
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`Petitioner objects to this exhibit as inadmissible hearsay because it includes
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`out of court statements offered for their truth and does not fall within any
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`exception to the rule against hearsay. FRE 801, 802. To the extent that the
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`authors(s) of the underlying document comment on the perception of others, opine
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`6
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`Atty Docket FABO-041/00US
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`on the functionalities of a product or process, and/or comment on the purported
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`IPR2016-01159
`U.S. Patent No. 8,694,657
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`state of the art, the exhibit is objected to as inadmissible hearsay. FRE 801, 802.
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`The document purports to be a copy and the purported authors are not under oath
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`and are not subject to cross-examination in this proceeding.
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`Petitioner objects to this exhibit as irrelevant and inadmissible. FRE 401,
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`402. The contents of the exhibit are not relevant to claim construction, novelty,
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`obviousness, or any issue related to the instituted ground. The contents of the
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`exhibit do not correspond to any particular argument, and are thus not probative of
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`any particular fact at issue. Further, this exhibit is irrelevant because Patent Owner
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`and/or Dr. Carbonell have not established that this exhibit reasonably would be
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`relied upon by experts in the field. FRE 401, 402, 702.
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`Petitioner objects to this exhibit as confusing the issues, misleading the fact-
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`finders, and/or a waste of time because the cited portions are of minimal probative
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`value and do not relate to claim construction, novelty, obviousness, or any issue
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`related to the instituted ground. FRE 403. Petitioner objects to this exhibit as
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`unfairly prejudicial. FRE 403. For at least these reasons, Petitioner objects to this
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`exhibit.
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`Ex. 2012, The Computer and Information Science and Technology
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`Abbreviations and Acronyms Dictionary, David W. South, CRC Press (6 May
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`1994)
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`7
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`Atty Docket FABO-041/00US
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`IPR2016-01159
`U.S. Patent No. 8,694,657
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`Petitioner objects to this exhibit as inadmissible hearsay because it includes
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`out of court statements offered for their truth and does not fall within any
`
`exception to the rule against hearsay. FRE 801, 802. To the extent that the
`
`authors(s) of the underlying document comment on the perception of others, opine
`
`on the functionalities of a product or process, and/or comment on the purported
`
`state of the art, the exhibit is objected to as inadmissible hearsay. FRE 801, 802.
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`The document purports to be a copy and the purported authors are not under oath
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`and are not subject to cross-examination in this proceeding.
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`Petitioner objects to this exhibit as irrelevant and inadmissible. FRE 401,
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`402. The contents of the exhibit are not relevant to claim construction, novelty,
`
`obviousness, or any issue related to the instituted ground. The contents of the
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`exhibit do not correspond to any particular argument, and are thus not probative of
`
`any particular fact at issue. Further, this exhibit is irrelevant because Patent Owner
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`and/or Dr. Carbonell have not established that this exhibit reasonably would be
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`relied upon by experts in the field. FRE 401, 402, 702.
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`Petitioner objects to this exhibit as confusing the issues, misleading the fact-
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`finders, and/or a waste of time because the cited portions are of minimal probative
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`value and do not relate to claim construction, novelty, obviousness, or any issue
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`related to the instituted ground. FRE 403. Petitioner objects to this exhibit as
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`unfairly prejudicial. FRE 403.
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`Atty Docket FABO-041/00US
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`IPR2016-01159
`U.S. Patent No. 8,694,657
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`Petitioner objects to this exhibit as not properly authenticated and not self-
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`authenticating. FRE 901, 902. For at least these reasons, Petitioner objects to this
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`exhibit.
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`Respectfully submitted,
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`
`/Heidi L. Keefe/
`Heidi L. Keefe
`Reg. No. 40,673
`Counsel for Petitioner
`Facebook, Inc.
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`By:
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`Dated: April 7, 2017
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`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
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`Atty Docket FABO-041/00US
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`IPR2016-01159
`U.S. Patent No. 8,694,657
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`CERTIFICATE OF SERVICE
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`
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`I hereby certify, pursuant to 37 C.F.R. § 42.6, that a complete copy of the
`attached PETITIONER FACEBOOK, INC.’S OBJECTIONS TO PATENT
`OWNER’S EVIDENCE PURSUANT TO 37 C.F.R. § 42.64(B)(1) and related
`documents, are being served on the 7th day of April, 2017, by electronic mail on
`counsel of record for the Patent Owner as follows:
`
`Vincent J. Rubino, III
`vrubino@brownrudnick.com
`Alfred R. Fabricant
`afabricant@brownrudnick.com
`Peter Lambrianakos
`plambrianakos@brownrudnick.com
`Shahar Harel
`sharel@brownrudnick.com
`Brown Rudnick LLP
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`DATED: APRIL 7, 2017
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`COOLEY LLP
`ATTN: Patent Docketing
`1299 Pennsylvania Avenue NW
`Suite 700
`Washington, D.C. 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
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`143984450 v1
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`
`
`/ Heidi L. Keefe /
`Heidi L. Keefe
`Reg. No. 40,673
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`10
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