Trials@uspto.gov Paper No. 13
`571-272-7822
`
`Entered: October 26, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC., HTC CORPORATION, HTC AMERICA, INC.,
`MICROSOFT CORPORATION, MICROSOFT MOBILE OY,
`MICROSOFT MOBILE, INC., SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and ZTE (USA) INC.,
`Petitioners,
`
`v.
`
`EVOLVED WIRELESS LLC,
`Patent Owner.
`____________
`
`Cases IPR2016-00757, IPR2016-01228, IPR2016-01229, IPR2016-01345
`Patent 7,881,236 B2
`____________
`
`
`
`Before WILLIAM V. SAINDON, PATRICK M. BOUCHER, and
`TERRENCE W. McMILLIN, Administrative Patent Judges.
`
`McMILLIN, Administrative Patent Judge.
`
`
`ORDER
`Patent Owner’s Motion to Submit Supplemental Information
`37 C.F.R. § 42.123(b)
`
`
`
`
`
`
`571-272-7822
`
`Entered: October 26, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC., HTC CORPORATION, HTC AMERICA, INC.,
`MICROSOFT CORPORATION, MICROSOFT MOBILE OY,
`MICROSOFT MOBILE, INC., SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and ZTE (USA) INC.,
`Petitioners,
`
`v.
`
`EVOLVED WIRELESS LLC,
`Patent Owner.
`____________
`
`Cases IPR2016-00757, IPR2016-01228, IPR2016-01229, IPR2016-01345
`Patent 7,881,236 B2
`____________
`
`
`
`Before WILLIAM V. SAINDON, PATRICK M. BOUCHER, and
`TERRENCE W. McMILLIN, Administrative Patent Judges.
`
`McMILLIN, Administrative Patent Judge.
`
`
`ORDER
`Patent Owner’s Motion to Submit Supplemental Information
`37 C.F.R. § 42.123(b)
`
`
`
`
`
`
`
`IPR2016-00757, IPR2016-01228, IPR2016-01229, IPR2016-01345
`Patent 7,881,236 B2
`
`
`Pursuant to our authorization, Patent Owner filed a Motion for
`Submission of Supplemental Information Under 37 C.F.R. § 42.123(b)
`(Paper 38, “Mot.”), which Petitioners oppose (Paper 39, “Opp.”). For the
`reasons set forth below, the motion is denied.
`I. BACKGROUND
`Trial in IPR2016-00757 was instituted on December 2, 2016. Paper
`11. Trial in IPR2016-01228 was instituted on December 27, 2016.
`IPR2016-01228, Paper 8. Trial in IPR2016-01229 was instituted on
`December 27, 2016. IPR2016-01229, Paper 8. Trial in IPR2016-01345 was
`instituted on December 2, 2016, and was consolidated with IPR2016-00757.
`IPR2016-01345, Paper 8. Oral argument in these proceedings was held on
`August 8, 2017.
`In the instant motion, Patent Owner requests entry into the record of
`these proceedings excerpts from the deposition transcript of Dr. Villasenor,
`Exhibit 2011 (“Patent Owner’s Submission of Proposed Supplemental
`Information Pursuant to Motion filed Under 37 C.F.R. § 42.123(b)”). The
`deposition of Dr. Villasenor was taken in Evolved Wireless, LLC v. Samsung
`Electronics Co. Ltd., and Samsung Electronics America, Inc., C.A. 15-545-
`SLR-SRF (N.D. Cal.). Ex. 2011, 2. Pursuant to the Order in which Patent
`Owner was granted leave to file the instant motion, Petitioners were
`“authorized to file as an exhibit excerpts from the same deposition transcript
`from which Patent Owner submits excerpts in order that the testimony
`proffered by Patent Owner may be understood in context and for
`completeness.” Paper 37, 2. Petitioners filed Exhibit 1048 (“Samsung
`Petitioners’ Submission in Response to Proposed Supplemental Information
`from Patent Owner Pursuant to Motion filed Under 37 C.F.R. § 42.123(b)”).
`
`2
`
`
`
`IPR2016-00757, IPR2016-01228, IPR2016-01229, IPR2016-01345
`Patent 7,881,236 B2
`
`Although submission of these exhibits was authorized, Exhibit 2011 and
`Exhibit 1048 have not been entered as evidence of record in these
`proceedings.1
`These proceedings involve challenges to the claims of US 7,881,236
`B2 (“the ’236 patent,” Ex. 1001). A central issue in these proceedings
`relates to construction of the word “if” as recited in the claims of the ’236
`patent. See Mot. 2–3. Patent Owner contends, “[t]he supplemental
`information is highly relevant to the central issue of claim construction
`present in all proceedings” and “[t]he proposed deposition testimony of Dr.
`Villasenor demonstrates how one of ordinary skill in the art construes the
`term ‘if’ in the ’236 patent.” Id. at 2.
`II. ANALYSIS
`Patent Owner’s motion is filed under 37 C.F.R. § 42.123(b) which
`governs “Late submission of supplemental information” defined as
`submission of supplemental information “more than one month after the date
`the trial is instituted.” 37 C.F.R. § 42.123(b) provides: “[t]he motion to
`submit supplemental information must show why the supplemental
`information reasonably could not have been obtained earlier, and that
`consideration of the supplemental information would be in the interests-of-
`justice.”
`
`
`1 Paper 37, 3 (“FURTHER ORDERED that any Proposed Supplemental
`Information submitted in exhibits in support of papers filed in accordance
`with this Order are provided merely for consideration of the Motion for
`Submission of Supplemental Information and is not entered as evidence of
`record and shall not be cited as evidence in any paper other than papers filed
`in accordance with this Order, unless later entered by explicit order of the
`Board.”).
`
`3
`
`
`
`IPR2016-00757, IPR2016-01228, IPR2016-01229, IPR2016-01345
`Patent 7,881,236 B2
`
`
`A. Timeliness of the Submission of Supplemental Information
`Patent Owner’s Motion comes very late in these proceedings. Patent
`Owner has submitted its responses to the petitions, discovery has been
`conducted and is closed, the Petitioners have submitted their replies, and oral
`argument has been held. All that remains is for the final written decisions to
`be entered.
` Along with its responses, Patent Owner submitted the Declaration of
`Todor Cooklev, Ph.D. See Exhibit 2006. Patent Owner relied on the
`Cooklev Declaration in the claim construction section of its response. Paper
`22, 15–17. In the replies, Petitioners argued the Cooklev Declaration was
`defective because it was unsworn and compares the preferred embodiment to
`the prior art. See Paper 28 at 6–7. Thus, earlier in these proceedings, Patent
`Owner had the opportunity to obtain and submit testimony on the issue of
`claim construction. To the extent Patent Owner’s efforts in this regard were
`lacking, these circumstances do not establish any lack of opportunity.
`Patent Owner contends that the supplemental information reasonably
`could not have been obtained earlier because “[t]he transcript of Samsung’s
`expert, Dr. Villasenor, was not available until Sept. 12, 2017.” Mot. 1.
`Petitioners argue that Patent Owner’s Motion “is an eleventh-hour effort to
`replace a defective declaration submitted together with PO’s Response.”
`Opp. 1. According to Petitioners, the issue is not whether Patent Owner had
`earlier access to Dr. Villasenor’s opinions but whether Patent Owner “could
`have obtained earlier expert opinion” on claim construction. Id. at 2. We
`agree with Petitioners.
`All parties, including Patent Owner, have had a full and fair
`opportunity to be heard on claim construction. Patent Owner could have
`
`4
`
`
`
`IPR2016-00757, IPR2016-01228, IPR2016-01229, IPR2016-01345
`Patent 7,881,236 B2
`
`earlier obtained and submitted testimony or other evidence on claim
`construction.
`B. Interests-of-Justice
`Patent Owner’s primary argument in support of its contention that
`consideration of the proffered supplemental information is in the interests-
`of-justice is that Dr. Villasenor’s testimony is highly relevant to the central
`issue of claim construction. Mot. 2–4. Petitioners oppose consideration on
`the basis that Dr. Villasenor’s testimony is not relevant because it is
`“extrinsic evidence” and because Dr. Villasenor used the wrong claim
`construction standard.2 Opp. 2–4.
`“A claim in an unexpired patent that will not expire before a final
`written decision is issued shall be given its broadest reasonable construction
`in light of the specification of the patent in which it appears.” 37 C.F.R.
`§42.100(b). See also Cuozzo Speed Technologies, LLC v. Lee, 136 S.Ct.
`2131, 2144 (2016) (“the regulation represents a reasonable exercise of the
`rulemaking authority that Congress delegated to the Patent Office”). Under
`the broadest reasonable interpretation standard, claim terms are given their
`ordinary and customary meaning, as would be understood by one of ordinary
`skill in the art in the context of the entire disclosure. In re Translogic Tech.
`Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Expert testimony is considered
`extrinsic evidence, which is less relevant than the intrinsic evidence of the
`claims, the specification, and the file history when the meaning is clear from
`this intrinsic evidence. Southwall Technologies, Inc. v. Cardinal IG Co., 54
`
`
`2 In District Court litigation, claims are construed in accordance with
`Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc)).
`
`
`5
`
`
`
`IPR2016-00757, IPR2016-01228, IPR2016-01229, IPR2016-01345
`Patent 7,881,236 B2
`
`F.3d 1570, 1578 (Fed. Cir. 1195) (“evidence extrinsic to the patent and
`prosecution history, such as expert testimony, cannot be relied on to change
`the meaning of the claims when that meaning is made clear by those
`documents”). And, we note that Petitioners Apple and Microsoft have
`submitted expert testimony relating to the claim construction issue. See,
`e.g., IPR2016-01228, Ex. 1003 ¶¶60–64.
`Petitioners argue that Dr. Villasenor’s testimony is inadmissible
`hearsay under Fed. R. Evid. 801(c) and 802.3 Opp. 5. Dr. Villasenor’s
`testimony is hearsay as it was not made while testifying in any of the current
`proceedings and is offered to prove the truth of the matter asserted.
`However, hearsay may be admitted under certain circumstances including
`whether admitting it will serve the interests-of-justice. See Fed. R. Evid.
`807.
`
`Petitioners argue Dr. Villasenor’s testimony should not be admitted in
`these proceedings because the Petitioners, other than Samsung, “had no
`notice of that deposition, did not attend the deposition, and do not even have
`access to the full deposition transcript because it involves confidential
`Samsung information.” Opp. 5. Patent Owner contends this is a “red
`herring” argument as Samsung has the same incentives as the other
`Petitioners and Samsung was present and questioned the witness on the
`claim construction issue. Mot. 5.
` We have also considered the submissions of Dr. Villasenor’s
`testimony, Exhibits 2011 and 1048. Dr. Villasenor’s testimony was offered
`in the Samsung litigation on the issue of non-infringement. Ex. 2011, 3.
`
`
`3 The Federal Rules of Evidence apply to these proceedings. 37 C.F.R. §
`42.62(a).
`
`6
`
`
`
`IPR2016-00757, IPR2016-01228, IPR2016-01229, IPR2016-01345
`Patent 7,881,236 B2
`
`The opinions of Dr. Villasenor on the scope of the claims were based on
`review of the claims and the ’236 patent and Patent Owner’s claim
`construction contention in these proceedings. Id. at 10–13. However, the
`Board is in a position to evaluate these materials for itself.
`Taking into consideration these arguments of the parties and the
`submissions of the parties, we do not conclude that the interests-of-justice
`are served by admitting Dr. Villasenor’s testimony.
`III. CONCLUSION
`Patent Owner has failed to show why the supplemental information
`
`reasonably could not have been obtained earlier and that consideration of the
`supplemental information would be in the interests-of-justice. Therefore, we
`deny the instant Motion.
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Patent Owner’s Motion for Submission of
`Supplemental Information Under 37 C.F.R. § 42.123(b) is denied; and
`FURTHER ORDERED that Exhibit 2011 (Patent Owner’s
`Submission of Proposed Supplemental Information Pursuant to Motion filed
`Under 37 C.F.R. § 42.123(b)) and Exhibit 1048 (Samsung Petitioners’
`Submission in Response to Proposed Supplemental Information Pursuant to
`Motion filed Under 37 C.F.R. § 42.123(b)) are not entered as evidence of
`record and shall not be cited as evidence in any paper.
`
`
`
`
`
`
`7
`
`
`
`IPR2016-00757, IPR2016-01228, IPR2016-01229, IPR2016-01345
`Patent 7,881,236 B2
`
`PETITIONERS
`James M. Glass
`John T. McKee
`Kevin P.B. Johnson
`Todd M. Briggs
`Quinn Emanuel Urquhart & Sullivan, LLP
`jimglass@quinnemanuel.com
`kevinjohnson@quinnemanuel.com
`toddbriggs@quinnemanuel.com
`johnmckee@quinnemanuel.com
`
`PATENT OWNER
`Cyrus Morton
`Ryan Schultz
`ROBINS KAPLAN LLP
`cmorton@robinskaplan.com
`rschultz@robinskaplan.com
`
`8
`
`
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