UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`Petitioner
`
`v.
`
`
`
`IMMERSION CORPORATION
`Patent Owner
`
`U.S. Patent No. 8,773,356
`Filing Date: January 31, 2012
`Issue Date: July 8, 2014
`Title: Method and Apparatus for Providing Tactile Sensations
`
`
`Case IPR2016-01381
`
`
`
`PETITIONER’S MOTION TO EXCLUDE PATENT OWNER’S EVIDENCE
`UNDER 37 C.F.R. § 42.64
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
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`WEST\277975188.1
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`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`Petitioner
`
`v.
`
`
`
`IMMERSION CORPORATION
`Patent Owner
`
`U.S. Patent No. 8,773,356
`Filing Date: January 31, 2012
`Issue Date: July 8, 2014
`Title: Method and Apparatus for Providing Tactile Sensations
`
`
`Case IPR2016-01381
`
`
`
`PETITIONER’S MOTION TO EXCLUDE PATENT OWNER’S EVIDENCE
`UNDER 37 C.F.R. § 42.64
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`WEST\277975188.1
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`
`
`
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`I.
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`INTRODUCTION
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`Petitioner moves to exclude Exhibits 2011, 2012 and the August 14, 2017
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`deposition testimony of Dr. Baudisch’s regarding those exhibits Exhibit 2013 at
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`54:24-56:3; 57:1-58:13. The evidence that is the subject of this motion is not
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`mentioned in any of the Petition, Patent Owner’s Response, Petitioner’s Reply, or
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`any expert declaration. The evidence was first raised by attorneys for Patent
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`Owner during their cross examination of Petitioner’s expert regarding his reply
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`declaration on August 14, 2017. Petitioner properly objected during the deposition
`
`to those exhibits as beyond the scope of the expert’s declaration and on grounds of
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`relevance, authentication, foundation, and hearsay. Patent Owner failed to address
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`the objections with supplemental evidence during the deposition as required by 37
`
`C.F.R. §42.64(a). Accordingly, this evidence should be excluded for the reasons
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`discussed herein.
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`II. RELIEF REQUESTED
`Pursuant to 35 C.F.R. § 42.64, Petitioner hereby moves to exclude Exhibits
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`2011, 2012 in their entirety, along with the related deposition testimony of Dr.
`
`Baudisch’s August 14, 2017 deposition transcript, Exhibit 2013 at 54:24-56:3;
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`57:1-58:13. Petitioner’s motion is based on the Federal Rules of Evidence
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`(“FRE”), which are applicable to this proceeding. See C.F.R. § 42.62.
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`WEST\277975188.1
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`III. AUTHORIZATION FOR THIS MOTION
`A “motion to exclude evidence” may be filed without prior authorization
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`from the Board. 37 C.F.R. § 42.64(c).
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`IV. STATEMENT OF MATERIAL FACTS
`Exhibit 2011 is a document purporting to describe a “StarCraft” video game.
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`Exhibit 2012 is a document purporting to describe a “Super Smash Bros.”
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`video game.
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`On July 28, 2017, Petitioner filed its Reply, Paper No. 18, which was
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`accompanied by the declaration of Petitioner’s expert, Dr. Baudisch. Exhibit 1025
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`(Baudisch reply declaration). Neither Paper No. 18, nor Exhibit 1025 (nor any
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`other previous paper or declaration in this IPR) discussed Exhibits 2011 and 2012
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`or the subject matter of those documents.
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`On August 14, 2017, Patent Owner took Dr. Baudisch’s deposition. Despite
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`the fact that Exhibits 2011 or 2012 were outside the scope of Dr. Baudisch’s direct
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`testimony, PO asked him several questions about their contents, to which Petitioner
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`properly objected. Exhibit 2013 at 55:21-24 (“MR. WILLIAMS: Objection.
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`Scope. Also object to [Exhibit 2011] on the grounds of foundation and
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`authenticity and relevance. Perhaps hearsay.”); 57:15-19 (“MR. WILLIAMS:
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`Object to the scope. And with respect to [Exhibit 2012], I’ll object to the exhibit
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`on the grounds of authenticity, foundation, relevance. And to the extent it’s being
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`relied on for the truth of any statement herein, hearsay.”).
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`Patent Owner did not attempt to provide any supplemental evidence during
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`the deposition as required by 37 C.F.R. §42.64(a) to address Petitioner’s
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`objections.
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`V.
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`STATEMENT OF THE REASONS FOR THE REQUESTED RELIEF
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`Petitioner timely objected to Exhibits 2011 and 2012 on the grounds that
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`these Exhibits contain inadmissible hearsay under FRE 801(c), are irrelevant under
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`FRE 401-403, are unauthenticated under FRE 901(a), and lack foundation under
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`FRE 602. Exhibit 2013 at 55:21-24; 57:15-19. Dr. Baudisch’s testimony
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`regarding those exhibits should be excluded for the same reasons. PO failed to
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`provide any supplemental evidence to address these objections during the
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`deposition as required by 37 C.F.R. §42.64(a) .
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`A. Exhibits 2011 and 2012 Should be Excluded as Inadmissible
`Hearsay under FRE 801(c)
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`Hearsay is an out of court statement offered into evidence to prove the truth
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`of the matter asserted in the statement. FRE 801(c). The entire contents of
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`Exhibits 2011 and 2012 consist of written statements by unidentified third parties
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`not testifying in this proceeding. Patent Owner did not at the deposition, and has
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`not otherwise identified any hearsay exception that applies to any of the content of
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`these Exhibits. Thus, each of these exhibits should be excluded as inadmissible
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`hearsay under FRE 801(c).
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`Specifically, Exhibits 2011 purports to be a document describing a
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`“StarCraft” video game. Patent Owner relies on Exhibit 2011 to establish the truth
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`of its contents, i.e., that the description of the video game is accurate. Immersion
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`Corporation’s Motion for Observation on Cross Examination, Paper 27
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`(Observation 3).
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`Similarly, Exhibit 2012 purports to be a document describing a “Super
`
`Smash Bros.” video game. Patent Owner relies on Exhibit 2012 to establish the
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`truth of its contents, i.e., that the description of the video game is accurate.
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`Immersion Corporation’s Motion for Observation on Cross Examination, Paper 27
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`(Observation 4).
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`Because each of these Exhibits consists entirely of written statements by
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`unidentified third parties not testifying in this proceeding, and Patent Owner relies
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`on the content of these documents for the truth of the matter asserted, the Exhibits
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`should be 3excluded as inadmissible hearsay under FRE 801(c).
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`B.
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`Exhibits 2011 and 2012 Should be Excluded as Irrelevant Under
`FRE 401-403
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`Evidence that lacks “any tendency to make a fact more or less probable than
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`in would be without the evidence” is irrelevant and inadmissible. FRE 401, 402.
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`FRE 403 further provides that the Board may exclude otherwise relevant evidence
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`“if its probative value is substantially outweighed by a danger of one or more”
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`factors including unfair prejudice and waste of time.
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`Exhibits 2011 and 2012 should be excluded as irrelevant under FRE 401 and
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`402. Patent Owner has made no showing that either of these exhibits has “any
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`tendency to make a fact more or less probable than it would be without the
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`evidence.” Patent Owner withheld these documents from its response and its own
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`expert’s declaration, such that Patent Owner has failed to offer any explanation
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`regarding how they could possibly be relevant. Petitioner and its expert have
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`similarly offered no argument or testimony explaining any relevance of these
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`documents. Accordingly, there is no showing of relevance and the exhibits should
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`be excluded.
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`Exhibits 2011 and 2012 are also inadmissible under FRE 403. To the extent
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`any of these Exhibits include relevant information, such information is
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`substantially outweighed by undue prejudice to Petitioner and/or a waste of time.
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`FRE 403. Admission of these Exhibits would unduly prejudice Petitioner and be a
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`waste of time for the Petitioner and the Board, because Patent Owner has provided
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`no description of how the Exhibits are relevant to any issue in this proceeding.
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`Thus, these Exhibits are also inadmissible under FRE 403.
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`C. Exhibits 2011 and 2012 Should be Excluded as Lacking
`Authentication under FRE 901
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`FRE 901(a) states that “to satisfy the requirement of authenticating or
`
`identifying an item of evidence, the proponent must provide evidence sufficient to
`
`support a finding that the item is what the proponent claims it is.” Exhibits 2011
`
`and 2012 lack authentication, and are therefore inadmissible under FRE 901(a),
`
`because PO has failed to provide evidence sufficient to support a finding that the
`
`Exhibits are what Patent Owner claims them to be. For example, Patent Owner has
`
`not provided testimony of any witness with knowledge that any of these documents
`
`are authentic. Nor has Patent Owner provided evidence that any of these Exhibits
`
`are self-authenticating under FRE 902.
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`Because Patent Owner has not provided sufficient evidence to authenticate
`
`Exhibits 2011 and 2012, these Exhibits should be excluded under FRE 901(a).
`
`D. Dr. Baudisch’s testimony Regarding Exhibits 2011 and 2012
`Should be Excluded as Outside the Scope of His Direct and
`Opinion Testimony and for Lacking Foundation under FRE602
`
`Dr. Baudisch’s testimony regarding Exhibits 2011 and 2012 during his
`
`August 14, 2017 deposition (Tr. at 54:24-56:3 and 57:1-58:13) should be excluded
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`because it is beyond the scope of his direct testimony and because it lacks
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`foundation because it is outside the scope of Dr. Baudisch’s personal knowledge
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`and opinion testimony.
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`In IPRs, cross examination is limited to the scope of the direct testimony. 37
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`C.F.R.53(d)(5)(ii) (“For cross-examination testimony, the scope of the examination
`
`is limited to the scope of the direct testimony.”). Dr. Baudisch’s direct testimony
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`was provided in his reply declaration, and does not address either Exhibit 2011 or
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`2012, or the particular video games purportedly described therein. Accordingly,
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`this testimony should be excluded as outside the allowed scope of the deposition.
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`Additionally, FRE 602 states that a “witness may testify to a matter only if
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`evidence is introduced sufficient to support a finding that the witness has personal
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`knowledge of the matter.” Patent Owner failed to introduce any evidence to
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`support a finding that Dr. Baudisch had personal knowledge of Exhibits 2011 and
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`2012 or that any exception applies.
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`FRE 602 by its own terms does not apply to certain expert testimony offered
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`under FRE 703, but none of the testimony at issue satisfies FRE 703 because Dr.
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`Baudisch has not based any opinion on Exhibits 2011 and 2012. Dr. Baudisch did
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`not provide any opinions related to Exhibits 2011 and 2012 in his direct testimony,
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`and Dr. Baudisch was not asked, and did not provide, any opinion testimony
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`regarding those exhibits at his deposition. Dr. Baudisch was only asked to confirm
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`what the inadmissible exhibits said. Tr. at 54:24-56:3 and 57:1-58:13. If fact, in
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`response to one question, Dr. Baudisch expressly testified that he had no opinion
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`regarding the subject matter of the question, and that his testimony depended solely
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`on the objectionable exhibits provided to him by Patent Owner. Exhibit 2013 at
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`57:1-7. Thus, the testimony at issue should be excluded because it lacks
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`foundation.
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`VI. CONCLUSION
`For the foregoing reasons, Petitioner requests that the Board preclude Patent
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`Owner from using Exhibits 2011, 2012, and the August 14, 2017 deposition
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`testimony of Dr. Baudisch, Exhibit 2013 at 54:24-56:3 and 57:1-58:13 at any
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`hearing or in any paper in this proceeding.
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`Dated: August 28, 2017
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`Respectfully Submitted,
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`
`
`
`
` /James M. Heintz/
`James M. Heintz
`Reg. No. 41,828
`DLA Piper LLP (US)
`11911 Freedom Drive, Suite 300
`Reston, VA 20190
`Apple-Immersion-IPRs@dlapiper.com
`Phone: 703-773-4148
`Fax: 703-773-5200
`
`Brian Erickson
`Reg. No. 48,895
`DLA Piper LLP (US)
`401 Congress Avenue, Suite 2500
`Austin, TX 78701
`Brian.erickson@dlapiper.com
`Phone: 512-457-7059
`Fax: 512-721-2263
`
`Attorneys for Petitioner Apple Inc.
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Petitioner’s
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`Motion to Exclude Patent Owner’s Evidence Under 35 C.F.R. § 42.64 was served
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`on August 28, 2017, via electronic mail, per agreement of the parties, to counsel at
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`the following addresses:
`
`Michael R. Fleming
`IRELL & MANELLA LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, CA 90067-4276
`
`mfleming@irell.com
`ImmersionIPR@irell.com
`
`Crawford Maclain Wells
`IRELL & MANELLA LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, CA 90067
`
`mwells@irell.com
`
`Babak Redjaian
`IRELL & MANELLA LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, CA 90067-4276
`
`bredjaian@irell.com
`ImmersionIPR@irell.com
`
`
`
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`Dated: August 28, 2017
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`Respectfully Submitted,
`
`
`
` /James M. Heintz/
`James M. Heintz
`Reg. No. 41,828
`DLA Piper LLP (US)
`11911 Freedom Drive, Suite 300
`Reston, VA 20190
`Apple-Immersion-IPRs@dlapiper.com
`Phone: 703-773-4148
`Fax: 703-773-5200
`
`Brian Erickson
`Reg. No. 48,895
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`WEST\277975188.1
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`DLA Piper LLP (US)
`401 Congress Avenue, Suite 2500
`Austin, TX 78701
`Brian.erickson@dlapiper.com
`Phone: 512-457-7059
`Fax: 512-721-2263
`
`Attorneys for Petitioner Apple Inc.
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