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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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`APPLE INC., MICROSOFT CORPORATION, MICROSOFT MOBILE OY,
`AND MICROSOFT MOBILE INC. (F/K/A/ NOKIA INC.),
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`Petitioner
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`v.
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`EVOLVED WIRELESS LLC,
`Patent Owner.
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`____________
`Case IPR2016-01229
`Patent 7,881,236
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`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION FOR
`SUBMISSION OF SUPPLEMENTAL INFORMATION UNDER 37 C.F.R. §
`42.123(b)
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`Proceeding No.: IPR2016-01229
`Attorney Docket: 00035-0009IP2
`Petitioners submit this Opposition to Patent Owner’s Motion for Submission
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`of Supplemental Information (Paper 24, hereinafter the “Motion”). With its
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`Motion, Patent Owner (“PO”) attempts to remedy its own failure to submit a
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`proper expert declaration (see Paper 16, pp.2-3) by introducing the deposition
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`testimony of an expert that is in no way connected to the Petitioners or to the
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`present IPR. As described in greater detail below, the Board should deny the
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`Motion because: (a) consideration of the proposed supplemental information is not
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`in the interest-of-justice because: (1) the information is not relevant to the present
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`IPR; and (2) submission of the information violates the Federal Rules of Evidence
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`(FRE) 106, 802 and 901, and would unfairly prejudice Petitioners; and (b) the
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`proposed supplemental information reasonably could have been obtained earlier.
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`I.
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`Consideration of the supplemental information would not be in the
`interests-of-justice
`A. Dr. Villasenor’s testimony is not relevant because it applies a
`different legal framework
`Despite PO’s insistence that different claim construction standards have “no
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`bearing” on the relevance of testimony, the fact remains that any statements that
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`Dr. Villasenor, Samsung’s expert, made regarding his interpretation of the claims
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`in the related district court proceeding do not represent his interpretation under the
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`broadest reasonable interpretation (BRI) standard used in IPR. See Motion, p. 4.
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`PO offers no explanation or evidence that Dr. Villasenor’s testimony would be the
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`same if he analyzed the claims under BRI rather than the Phillips standard used in
`1
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`Proceeding No.: IPR2016-01229
`Attorney Docket: 00035-0009IP2
`district court. PO’s contention that Dr. Villasenor would interpret the claims the
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`same way under both standards is pure speculation, and thus his testimony is
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`irrelevant to the present IPR.
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`B. Dr. Villasenor’s testimony is not “conflicting testimony”
`PO also argues that Dr. Villasenor’s testimony is relevant because it is
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`“conflicting testimony” on how a skilled artisan would interpret the claim term
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`“if.” Motion, p. 3. The Motion states that “[i]n Ultratec, the Federal Circuit noted
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`that conflicting testimony would be highly relevant to the Board’s analysis.” Id. at
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`4 (citing Ultratec, Inc. v. CaptionCall, LLC, 2017 U.S. App. LEXIS 16363 at *10
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`(Fed. Cir. Aug. 28, 2017). The testimony in question in Ultratec, however, was
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`district court testimony by an expert that conflicted with testimony by the same
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`expert in a related IPR proceeding. See Ultratec at *4-5 (the expert’s “trial
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`testimony conflicted with written declarations he made in the IPRs.”). Dr.
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`Villasenor has not presented any testimony in the present IPR, so there is nothing
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`with which this district court testimony could “conflict.” See id. Further, the party
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`that retained Dr. Villasenor in the district court case (Samsung) is not involved in
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`the present IPR. It is thus unclear how Dr. Villasenor’s testimony can be
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`“inconsistent” with Petitioners’ position in the present IPR (as alleged by PO),
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`when Dr. Villasenor is not representing Petitioners in the district court.
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`2
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`C.
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`Proceeding No.: IPR2016-01229
`Attorney Docket: 00035-0009IP2
`PO’s submission violates FRE 106, 802 and 901, and would
`unfairly prejudice Petitioners
`As PO admits in its Motion, Petitioners have not had an opportunity to
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`review the full transcript of Dr. Villasenor’s deposition. Motion, pp. 4-5.
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`Petitioners have no way of knowing whether there is additional relevant testimony
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`beyond that PO seeks to submit, and, therefore, object to entry of this testimony
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`under FRE 106. Moreover, PO’s submission is hearsay and has not been
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`authenticated, and, therefore, its entry further violates FRE 802 and 901. As to the
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`former, both prongs of the hearsay definition are satisfied because: (1) the
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`submission is a partial deposition transcript from another case- not a statement
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`made while testifying in this IPR; and (2) PO offers the submission in evidence to
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`prove the matter asserted in the statement. See FRE 801(c). Importantly, in its
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`Motion, PO failed to identify an exclusion or exception to the hearsay rule.
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`PO also declares that there is no prejudice against Petitioners because
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`Samsung, which is not a party to the present IPR, has had an opportunity to review
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`the full transcript. Samsung’s review is no substitute for Petitioners’ review of the
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`full transcript, as Samsung does not represent the Petitioners’ interests. Nor does a
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`non-party’s review overcome Petitioners’ objections under FRE 106, 802 and 901.
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`In addition, as PO again admits Petitioners have had no opportunity to cross-
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`examine Dr. Villasenor on the testimony in the proposed submission. Motion, pp.
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`4-5. PO explains away this prejudice by concluding, without support or
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`3
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`Proceeding No.: IPR2016-01229
`Attorney Docket: 00035-0009IP2
`explanation, that Samsung, who was present at the deposition, “has the exact same
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`incentive as” Petitioners and “asked the same or similar questions that any of the
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`other Petitioners’ likely would have asked regarding this claim construction issue.”
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`Id. at 5. PO does not explain or cite any case law for the proposition that the
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`participation of a non-party (Samsung) in the deposition extinguishes Petitioners’
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`right to cross-examine Dr. Villasenor on the testimony in the proposed submission.
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`D. Late entry of Dr. Villasenor’s testimony at this time does not serve
`justice because evidence regarding claim construction was
`available to PO when it filed its Response
`PO asserts that Dr. Villasenor’s testimony is relevant because it
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`“demonstrates how one of ordinary skill in the art construes claim term ‘if’ in the
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`’236 patent.” Motion, p. 2. As discussed below, however, PO has had ample
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`opportunity to submit evidence of how a skilled artisan would construe the term
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`“if.” Even if Dr. Villasenor’s testimony addresses this point (which it does not
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`under the standard of this forum), entry of such evidence in lieu of an expert
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`declaration, as noted below, would allow POs to gain an unjust advantage over
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`Petitioners by allowing them to game the system.
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`II.
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`PO could have obtained evidence regarding a POSITA’s interpretation
`of the claims earlier and submitted it with its PO Response
`The Motion asserts that the excerpts from deposition testimony of Dr. John
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`Villasenor, Samsung’s expert in the counterpart district court proceeding,
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`“demonstrate[] how one of ordinary skill in the art construes [the] claim term ‘if’
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`4
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`Proceeding No.: IPR2016-01229
`Attorney Docket: 00035-0009IP2
`in the ’236 patent.” Motion, p. 2. PO fails, however, to explain why it could not
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`have submitted evidence of a skilled artisan’s interpretation of the claims earlier in
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`the present proceeding, such as with its PO Response. Instead, PO merely attempts
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`to justify submitting additional evidence at this late stage of the proceeding by
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`arguing that “[t]he transcript of Samsung’s expert, Dr. Villasenor, was not
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`available until Sept. 12, 2017.” Motion, p. 1. But PO provides no explanation as
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`to why the unavailability of this specific deposition transcript prevented it from
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`previously obtaining and submitting similar evidence of a skilled artisan’s
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`interpretation of the claims. PO could have obtained and submitted with its PO
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`Response proper declarations regarding claim construction from any number of
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`experts, but failed to do so. Indeed, to allow entry of this type of evidence would
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`allow a PO to forego filing an expert declaration with its PO response in lieu of
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`cherry-picking from among all expert deposition testimony of possibly dozens of
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`defendants (who are unrelated to Petitioners) in a counterpart district court
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`proceeding. And, in doing so, the PO reaps the dual benefit of obtaining entry of
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`only the most favorable testimony while also insulating that testimony from
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`Petitioners’ cross-examination.
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`III. Conclusion
`For the reasons noted above, Petitioners submit that PO’s motion fails to
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`satisfy the requirements under 37 CFR §42.123(b) and, thus, should be denied.
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`5
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`Date:10/10/2017
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`Proceeding No.: IPR2016-01229
`Attorney Docket: 00035-0009IP2
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`Respectfully submitted,
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`/Dan Smith/
`W. Karl Renner, Reg. No. 41,265
`Roberto J. Devoto, Reg. No. 55,108
`Dan Smith, Reg. No. 71,278
`Fish & Richardson P.C.
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`Attorneys for Petitioner
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`6
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`Proceeding No.: IPR2016-01229
`Attorney Docket: 00035-0009IP2
`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(1) and 42.6(e)(4)(iii), the undersigned
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`certifies that on October 10, 2017, a complete and entire copy of this Petitioner’s
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`Opposition to Patent Owner’s Motion for Submission of Supplemental Information
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`Under 37 C.F.R. § 42.123(b) was provided via email to the Patent Owner by
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`serving the email correspondence addresses of record as follows:
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`Cyrus A. Morton, Ryan M. Schultz
`Robins Kaplan LLP
`2800 LaSalle Plaza, 800 LaSalle Ave
`Minneapolis, MN 55402
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`CMorton@robinskaplan.com
`RSchultz@robinskaplan.com
` Evolved_RK_Team@robinskaplan.com
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`Email:
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`/Diana Bradley/
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`Diana Bradley
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(858) 678-5667
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