Filed on behalf of Securus Technologies, Inc.
`By:
`Justin B. Kimble (JKimble-IPR@bcpc-law.com)
`
`Jeffrey R. Bragalone (jbragalone@bcpc-law.com)
`
`Daniel F. Olejko (dolejko@bcpc-law.com)
`
`Terry A. Saad (tsaad@bcpc-law.com)
`
`Nicholas C. Kliewer (nkliewer@bcpc-law.com)
`
`Bragalone Conroy PC
`
`2200 Ross Ave., Suite 4500W
`
`Dallas, TX 75201
`
`Tel: 214.785.6670
`
`Fax: 214.786.6680
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GLOBAL TEL*LINK CORPORATION,
`Petitioner,
`
`v.
`
`SECURUS TECHNOLOGIES, INC.,
`Patent Owner.
`
`
`Case IPR2016-01362
`U.S. Patent No. 9,083,850
`
`
`
`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
`UNDER 37 C.F.R. §§ 42.64(B)(1) AND 42.64(C)
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`
`By:
`Justin B. Kimble (JKimble-IPR@bcpc-law.com)
`
`Jeffrey R. Bragalone (jbragalone@bcpc-law.com)
`
`Daniel F. Olejko (dolejko@bcpc-law.com)
`
`Terry A. Saad (tsaad@bcpc-law.com)
`
`Nicholas C. Kliewer (nkliewer@bcpc-law.com)
`
`Bragalone Conroy PC
`
`2200 Ross Ave., Suite 4500W
`
`Dallas, TX 75201
`
`Tel: 214.785.6670
`
`Fax: 214.786.6680
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GLOBAL TEL*LINK CORPORATION,
`Petitioner,
`
`v.
`
`SECURUS TECHNOLOGIES, INC.,
`Patent Owner.
`
`
`Case IPR2016-01362
`U.S. Patent No. 9,083,850
`
`
`
`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
`UNDER 37 C.F.R. §§ 42.64(B)(1) AND 42.64(C)
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ............................................................................................... 1
`
`II. PROCEDURAL BACKGROUND ..................................................................... 1
`
`III. ARGUMENTS AND AUTHORITIES ............................................................... 2
`A. Exhibit 1008 Is Irrelevant and Inadmissible Under Federal Rules of
`Evidence 401-403 Because It Does Not Qualify as Prior Art Under Any
`Subsection of 35 U.S.C. § 102. .................................................................... 2
`B. Exhibits 1008 and 1009 Should Be Excluded as Hearsay Under Federal
`Rules of Evidence 801-802. ......................................................................... 5
`
`IV. CONCLUSION ................................................................................................... 6
`
`
`
`
`
`
`
`
`i
`
`
`
`I.
`
`INTRODUCTION
`
`Pursuant to 37 C.F.R. § 42.64(c) and the Board’s Scheduling Order (as
`
`modified by stipulation in Paper 19), Patent Owner Securus Technologies, Inc.
`
`(“Securus”) hereby files this motion to exclude Exhibits 1008 and 1009.
`
`Exhibit 1008 is irrelevant and inadmissible under Federal Rules of Evidence 401-
`
`403 because Petitioner Global Tel*Link Corporation (“GTL”) has not demonstrated
`
`that the exhibit was actually published or publicly accessible before the filing date
`
`of the ’850 patent. Thus, Exhibit 1008 does not qualify as prior art under any
`
`subsection of 35 U.S.C. § 102 and cannot be used by GTL to support any ground of
`
`the Petition. Further, both Exhibits 1008 and 1009 are submitted for the truth of the
`
`matter asserted and should therefore be excluded as hearsay under Federal Rules of
`
`Evidence 801-802. Accordingly, the Board should exclude Exhibits 1008 and 1009.
`
`II. PROCEDURAL BACKGROUND
`
`GTL filed the Petition against the ’850 patent on July 5, 2016. Paper 1. GTL
`
`relies on Exhibit 1008 to support Grounds 3 and 4 of the Petition, which relate to its
`
`allegations of obviousness against claims 6, 7, 10, 11, 12, 19 and 20. Id. at 4. GTL
`
`relies on Exhibit 1009 in an attempt to support its interpretation of the claim term
`
`“f-stop.” Id. at 45-46.
`
`Exhibit 1008 purports to be an excerpt of the European DSP in Education and
`
`Research Conference Proceedings, which contains a paper titled Remote Controlled
`
`1
`
`
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`Case IPR2016-01362
`Patent 9,083,850
`
`DSP Based Image Capturing and Processing System Featuring Two-Axis Motion by
`
`M. Gotsopoulos. Ex. 1008 at 32. Exhibit 1009 purports to be a copy of The American
`
`Heritage Dictionary of the English Language, Fifth Edition. Ex. 1009 at 1-4.
`
`Securus filed timely objections to Exhibits 1008 and 1009 on January 24,
`
`2017, pursuant to 37 C.F.R. § 42.64(b)(1), after the Board instituted this proceeding
`
`on January 9, 2017. See Papers 11 and 13. Securus objected to Exhibits 1008
`
`and 1009 because, inter alia, Exhibit 1008 is irrelevant and inadmissible under
`
`Federal Rules of Evidence 401-403 and Exhibits 1008 and 1009 are hearsay under
`
`Federal Rules of Evidence 801-802. Paper 13 at 1-4.
`
`III. ARGUMENTS AND AUTHORITIES
`
`A. Exhibit 1008 Is Irrelevant and Inadmissible Under Federal Rules of
`Evidence 401-403 Because It Does Not Qualify as Prior Art Under Any
`Subsection of 35 U.S.C. § 102.
`
`Federal Rule of Evidence 401 provides that “[e]vidence 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.” Fed. R.
`
`Evid. 401. “Relevancy is not an inherent characteristic of any item of evidence but
`
`exists only as a relation between an item of evidence and a matter properly provable
`
`in the case.” Fed. R. Evid. 401, advisory committee note. “Whether the relationship
`
`exists depends upon principles evolved by experience or science, applied logically
`
`to the situation at hand.” Id.
`
`2
`
`
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`Case IPR2016-01362
`Patent 9,083,850
`
`While GTL relies on Exhibit 1008 in support of its grounds of unpatentability,
`
`it fails to demonstrate that the exhibit qualifies as prior art to the ’850 patent under
`
`any subsection of 35 U.S.C. § 102. Exhibit 1008, therefore, lacks a relationship to
`
`the patentability of the ’850 patent and is irrelevant and inadmissible under Federal
`
`Rules of Evidence 401-403. See 35 U.S.C. § 311(b) (stating that a petition for inter
`
`partes review can request cancellation of a claim “only on a ground that could be
`
`raised under section 102 or 103 and only on the basis of prior art consisting of
`
`patents or printed publications”) (emphasis added).
`
`Whether a reference qualifies as a “printed publication” depends on whether
`
`the reference was “sufficiently accessible to the public interested in the art” before
`
`the critical date. Smart Microwave Sensors GmbH v. Wavetronix LLC,
`
`IPR2016-00488, Paper 57 at 23-24 (PTAB July 17, 2017) (citing In re Cronyn, 890
`
`F.2d 1158, 1160 (Fed. Cir. 1989)). “A given reference is ‘publicly accessible’ upon
`
`a satisfactory showing that such document has been disseminated or otherwise made
`
`available to the extent that persons interested and ordinarily skilled in the subject
`
`matter or art exercising reasonable diligence, can locate it.” Id. (citing SRI Int’l, Inc.
`
`v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008)).
`
`GTL contends that Exhibit 1008 “is at least prior art under [§] 102(a)(1)
`
`because it published at least of December 1, 2010, prior to the earliest priority date
`
`of the ’850 patent.” Paper 1 at 4. Yet the Petition includes no evidence that
`
`3
`
`
`
`Case IPR2016-01362
`Patent 9,083,850
`
`Exhibit 1008 was actually published or publicly accessible before the filing date of
`
`the ’850 patent—June 29, 2013. Although Exhibit 1008 suggests that the
`
`EDERC2010 conference occurred from December 1-2, 2010 (Ex. 1008 at 4), those
`
`dates are inadmissible hearsay and thus cannot be relied upon to prove publication
`
`or public accessibility of the exhibit. See Standard Innovation Corp. v. Lelo, Inc.,
`
`IPR2014-00148, Paper 42 at 15-16 (PTAB Apr. 23, 2015) (“[W]e determine that to
`
`the extent the dates presented in Exhibit 1013 are relied upon as proof of dates
`
`relevant to the creation or publication date of Exhibits 1013 or 1002 itself, those
`
`dates are inadmissible hearsay.”) (footnote omitted).
`
`Moreover, Exhibit 1008 does not establish that the Gotsopoulos paper was
`
`actually presented at the EDERC2010 conference or actually disseminated to the
`
`conference attendees. See generally Ex. 1008. Indeed, Exhibit 1008 does not state
`
`when, or even if, the Gotsopoulos paper was actually published or made publicly
`
`accessible before June 29, 2013. Thus, Exhibit 1008 fails to meet the criteria for
`
`prior art under § 102. See Norian Corp. v. Stryker Corp., 363 F.3d 1321, 1330 (Fed.
`
`Cir. 2004) (affirming a district court’s finding that an abstract, which was taken to a
`
`conference, given to the conference organizer, and presented at the conference, did
`
`not meet the criteria for prior art under § 102 because the record lacked substantial
`
`evidence of actually availability and dissemination of the abstract at the conference,
`
`despite evidence that it was the general practice at the conference for presenters to
`
`4
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`Case IPR2016-01362
`Patent 9,083,850
`
`hand out abstracts to interested attendees).
`
`Because Exhibit 1008 does not qualify as prior art under § 102, it does not
`
`have the tendency to make any fact that is of consequence to patentability of the
`
`’850 patent more or less probable than it would be without the exhibit. The Board
`
`should therefore exclude Exhibit 1008 as irrelevant. Exhibit 1008 should also be
`
`excluded as inadmissible under Federal Rule of Evidence 403, since the probative
`
`value of the exhibit is substantially outweighed by the danger of unfair prejudice,
`
`confusing the issues, misleading the Board, undue delay, and wasting time. Securus,
`
`for example, would be severely prejudiced if the Board were to evaluate the
`
`obviousness of the challenged claims based on evidence that has not been proven to
`
`be prior art.
`
`B.
`
`Exhibits 1008 and 1009 Should Be Excluded as Hearsay Under Federal
`Rules of Evidence 801-802.
`
`Hearsay is a statement that is made by a declarant while not “testifying at [a]
`
`current trial or hearing,” where that statement is “offer[ed] in evidence to prove the
`
`truth of the matter asserted in the statement.” Fed. R. Evid. 801. “Hearsay is not
`
`admissible,” unless it falls under one of the exclusions in Rule 801, or some
`
`exception applies, such as those provided in Federal Rules of Evidence 803-07. Fed.
`
`R. Evid. 802.
`
`GTL offers each of Exhibits 1008 and 1009 for the truth of the matters asserted
`
`therein without any evidence that the statements made fall outside of the rules against
`
`5
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`Case IPR2016-01362
`Patent 9,083,850
`
`admitting hearsay. Specifically, GTL relies upon Exhibit 1008 for its alleged
`
`disclosure that a “depth of field parameter is remotely controllable by a third party”
`
`along with other allegedly supportive teachings in the exhibit. See Paper 1 at 50-54.
`
`GTL relies upon Exhibit 1009 for its definition of “f-stop” or “f-number” as being
`
`“[t]he ratio of the focal length of a lens or lens system to the effective diameter of
`
`its aperture.” See Paper 1 at 46.
`
`Furthermore, neither of these exhibits qualifies under any of the hearsay
`
`exceptions. For example, the cited statements from the exhibits are not a present
`
`sense impression, an excited utterance, or a then-existing mental, emotional, or
`
`physical condition. Fed. R. Evid. 803(1)-(3). And neither exhibit meets the
`
`requirements of a “learned treatise” under Federal Rule of Evidence 803(18) because
`
`the publications have not been “established as a reliable authority by [an] expert’s
`
`admission or testimony.”
`
`IV. CONCLUSION
`
`For the foregoing reasons, Securus respectfully requests that the Board
`
`exclude Exhibits 1008 and 1009 because Exhibit 1008 is irrelevant and inadmissible
`
`under Federal Rule of Evidence 401-403 and both exhibits constitute inadmissible
`
`hearsay.
`
`6
`
`
`
`Case IPR2016-01362
`Patent 9,083,850
`
`Date: August 14, 2017
`
`Respectfully submitted,
`
`
`
`_____________________________
`Justin B. Kimble
`Attorney for Patent Owner
`Registration No. 58,591
`Bragalone Conroy PC
`2200 Ross Ave., Suite 4500W
`Dallas, TX 75201
`
`7
`
`
`
`Case IPR2016-01362
`Patent 9,083,850
`
`CERTIFICATE OF SERVICE
`
`
`
`The undersigned hereby certifies that document was served via electronic mail
`
`on August 14, 2017, to Petitioner via counsel, mspecht-PTAB@skgf.com, jmutsche-
`
`PTAB@skgf.com, and PTAB@skgf.com, pursuant to Petitioner’s consent in its
`
`Petition at page 2.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`_____________________________
`Justin B. Kimble
`Attorney for Patent Owner
`Registration No. 58,591
`Bragalone Conroy PC
`2200 Ross Ave., Suite 4500W
`Dallas, TX 75201
`
`8
`
`
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