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`Paper No. 48
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`WEATHERFORD INTERNATIONAL, LLC;
`WEATHERFORD/LAMB, INC.;
`WEATHERFORD US, LP; and WEATHERFORD
`ARTIFICIAL LIFT SYSTEMS, LLC
`Petitioners
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`v.
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`PACKERS PLUS ENERGY SERVICES, INC.,
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`Patent Owner
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`Inter Partes Review No. IPR2016-01509
`Patent 7,861,774
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`PETITIONERS’ OPPOSITION TO PATENT OWNER’S MOTION
`TO EXCLUDE EVIDENCE UNDER 37 C.F.R. § 42.64(c)
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`IPR2016-01509
`Patent 7,861,774
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`TABLE OF CONTENTS
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`TABLE OF AUTHORITIES ...................................................................................... iii
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`I.
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`II.
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`The Exhibits Have Been Authenticated .............................................................. 1
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`The Exhibits Are Not Hearsay ............................................................................ 2
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`ii
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`TABLE OF AUTHORITIES
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`Cases
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`A.N. Deringer, Inc. v. United States, 287 F.Supp. 1016 (Cust.Ct.1968). ........................ 6
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`Akro Corp. v. Luker, 45 F.3d 1541 (Fed. Cir. 1995) ....................................................... 7
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`Northern Nat. Gas Co. v. Approximately 9117 Acres, 2013 U.S. Dist. LEXIS 180922
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`(D. Kan. Dec. 27, 2013) ............................................................................................... 2
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`Pfizer Inc. v. Teva Pharms. USA, Inc., 2006 U.S. Dist. LEXIS 77970 (D.N.J. Oct. 26,
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`2006) ......................................................................................................................... 3, 5
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`Taylor-Reed Corp. v. Mennen Food Products, Inc., 324 F.2d 108 (7th Cir. 1963) ......... 7
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`Rules
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`37 C.F.R. § 42.20 ..................................................................................................... 2, 3, 6
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`Federal Rule of Evidence 801 .................................................................................. 3, 4, 5
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`Federal Rule of Evidence 901 .......................................................................................... 1
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`iii
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`IPR2016-01509
`Patent 7,861,774
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`Patent Owner’s (“PO”) Motion to Exclude (Paper 46) lacks a basis in facts or
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`law and should be denied. PO moves to exclude Petitioners’ Exhibits 1008 and 1011-
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`1014 as allegedly lacking authentication and as allegedly being hearsay. Neither
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`argument has any merit.
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`I. The Exhibits Have Been Authenticated
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`As PO’s Motion acknowledges, each of Exhibits 1008 and 1011-1014 is
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`supported by a declaration of Carrie Anderson. Ex. 1027 at 1. In that declaration,
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`Ms. Anderson explains that she is a paralegal for the law firm of Heim, Payne &
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`Chorush, LLP and that Heim, Payne & Chorush, LLP represented Halliburton
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`Energy Services, Inc. in the litigation styled, Halliburton Energy Services, Inc., et
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`al. v. Packers Plus Energy Services, Inc., et al., No. CV-44,964, in the 238th Judicial
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`District Court in Midland County, Texas (“Halliburton Litigation”). Id. She
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`explains that her declaration is “based on personal knowledge.” Id. And as she
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`explains, each of Exhibits 1008 and 1011-1014 were provided by PO during that
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`litigation. Id. FRE 901 requires nothing more. FRE 901(b)(1) (stating that evidence
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`that satisfies authenticity including testimony of a witness with knowledge that an
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`item is what it is claimed to be). Thus, Ms. Anderson’s declaration establishes a
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`basis for her personal knowledge regarding the documents and establishes that they
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`are what they purport to be.
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`1
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`Moreover, PO does not assert that any of these exhibits are not authentic. PO
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`offers no challenge to any of Ms. Anderson’s testimony or any reason to question
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`any of the facts asserted in her declaration. PO also does not explain why these facts,
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`if true, are insufficient to establish authenticity. PO’s sole allegation is that Ms.
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`Anderson’s declaration is insufficient, but PO provides no factual or legal arguments
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`in support of that bare allegation. PO has failed to carry its burden as movant to
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`establish that it is entitled to exclusion of these exhibits under 37 C.F.R. § 42.20(c).
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`PO’s motion to exclude on the basis of lack of authentication under FRE 901 should
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`be denied.
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`II. The Exhibits Are Not Hearsay
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`PO next challenges each of Exhibits 1008 and 1011-1014 as hearsay not
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`falling within any exception to the hearsay rules. PO makes no effort to address the
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`fact that each of these statements were made or adopted by PO in the Halliburton
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`Litigation as attested by Ms. Anderson. Each of these exhibits is not hearsay because
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`under FRE 801(d)(2), it is the opposing party’s own statement. Northern Nat. Gas
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`Co. v. Approximately 9117 Acres, 2013 U.S. Dist. LEXIS 180922, at *28 (D. Kan.
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`Dec. 27, 2013) (refusing to exclude a party’s expert reports and testimony from a
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`prior case because “Northern’s prior use of these expert opinions” satisfies the
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`standard that a party “‘manifested that it . . . believed [those statements] to be true’”
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`2
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`under FRE 801(d)(2)); Pfizer Inc. v. Teva Pharms. USA, Inc., 2006 U.S. Dist. LEXIS
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`77970, at *12-15 (D.N.J. Oct. 26, 2006) (“Pfizer cannot use the expert affidavits to
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`support its European patent application and then deny that it accepts the truth of the
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`information contained herein.”). PO’s failure to even attempt to address the fact that
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`each of these exhibits is its own statement and thus is not hearsay should be fatal to
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`its motion since PO bears the burden of establishing its right to relief under 37 C.F.R.
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`§ 42.20(c).
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`First, Exhibits 1008 and 1011-1014 are statements made by PO in a
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`representative capacity under FRE 801(d)(2)(A), and are thus not hearsay. Exhibit
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`1008 is the deposition transcript of Mr. Themig, a named inventor of the patents at
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`issue in these IPRs. Ex. 1027 at 1; 1001 at 1. He testified in Exhibit 1008 as a
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`representative of PO (i.e., Packers Plus Energy Services, Inc.). Ex. 1008 at 443:17-
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`19 (identifying Ex. 62 as a deposition notice of Packers Plus Energy Services, Inc.),
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`444:13-20 (Mr. Themig agreeing that he is testifying as a representative of Packers
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`Plus Energy Services, Inc.). In fact, Petitioner previously provided PO with a copy
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`of the deposition notice in response to which Mr. Themig's deposition was taken that
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`clarifies that Mr. Themig was designated by real party in interest Packers Plus
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`Energy Services, Inc. to address the "technology identified in the ['774 patent]."1
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`1 The deposition was for real party in interest Packers Plus Energy Services,
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`3
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`The notice was served on PO as exhibit 1032 on March 22, 2017 along with
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`Petitioner's timely Reply to Patent Owner's Evidentiary Objections (filed herewith
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`as Ex. 1047), in which Petitioner explained why Mr. Themig's testimony was not
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`hearsay pursuant to FRE 801(d)(2).
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`Similarly, each of Exhibits 1011-1014 are expert reports submitted by PO
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`during the Halliburton Litigation, which shows that PO allowed these experts to
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`testify as its representatives. Ex. 1027 at 1 (testifying that each of Exhibits 1011-
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`1014 were submitted by PO during the Halliburton Litigation); 1011 at 1, ¶ 2 (“I
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`have been retained by Packers Plus Energy Services in connection with the above
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`referenced lawsuit.”); Ex. 1012 at 4 (“I have been retained by the defendants
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`[including Packers Plus Energy Services, Inc.] in the above-referenced lawsuit to
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`serve as an expert witness.”); Ex. 1013 at 3 (“This supplemental report is being
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`submitted in addition to my original report dated April 27, 2007 [Exhibit 1012] and
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`my Affidavit dated May 19, 2008.”); Ex. 1014 at 3 (“This report is meant to
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`supplement my original report dated April 27, 2007.”). Thus, PO authorized each
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`Inc. to designate "one or more individuals to testify on its behalf" on issues that
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`included "the technology identified in U.S. Patent Nos. 6,907,936 and 7,108,067."
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`Ex. 1032 at 2, 5. The '774 patent claims priority to and shares its disclosure with
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`U.S. Patent No. 6,907,936.
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`4
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`of Messrs. Trahan and Britton to testify as its representative, and as such, their
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`statements are not hearsay under FRE 801(d)(2)(A), a fact that PO was made aware
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`of in Petitioner's Reply to Patent Owner's Evidentiary Objections.
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`Second, PO also manifested that it adopted or believed the statements in
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`Exhibits 1008 and 1011-1014 to be true, rendering them not hearsay under FRE
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`801(d)(2)(B). As the evidence recited above shows, PO authorized each of Messrs.
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`Themig, Trahan, and Britton to testify on its behalf in the Halliburton Litigation.
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`Thus, PO manifested a belief in the statements those persons made during the
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`Halliburton Litigation. Pfizer Inc., 2006 U.S. Dist. LEXIS 77970, at *12-15
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`(holding that Pfizer’s submission of expert affidavits in a prior patent prosecution
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`was a manifestation that it accepted the truth of the information in the affidavits and
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`satisfied FRE 801(d)(2)(B)).
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`Third, PO also authorized each of Messrs. Themig, Trahan, and Britton to
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`make a statement on the subjects on which they testified as the evidence identified
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`above shows based on PO identifying them as representative witnesses and experts
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`to testify on its behalf in the Halliburton Litigation. Thus, these statements are not
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`hearsay under FRE 801(d)(2)(C).
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`Finally, the statements are not hearsay because they were each made by the
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`party’s agent or employee on a matter within the scope of that relationship and while
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`it existed rendering them not hearsay under FRE 801(d)(2)(D). Each of Messrs.
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`Themig, Trahan, and Britton were PO’s agent or employee acting within the scope
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`of the relationship while testifying on its behalf.
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`To the extent PO is arguing that Messrs. Themig, Trahan, and Britton were
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`agents of Packer Plus Energy Services and not Rapid Completions,2 Petitioner notes
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`that PO designated Packers Plus Energy Services as a real party in interest to the
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`present proceeding. Paper 4 at 1. It is an "established principle that admissions by
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`the beneficial party or real party in interest (i.e., the consignee) are admissible in
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`evidence against the nominal plaintiff representing his interests." A.N. Deringer,
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`Inc. v. United States, 287 F.Supp. 1016, 1023 n. 6 (Cust.Ct.1968). Furthermore, PO
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`is by its own admission "the exclusive licensee of all substantial interests in the ’774
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`patent." Paper 4 at 1. As such, Packers Plus' admissions are still admissible against
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`its Exclusive Licensee pursuant to FRE 801(d)(2). See. e.g., Akro Corp. v. Luker,
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`45 F.3d 1541, 1546-47 (Fed. Cir. 1995) (citing FRE 801(d)(2) as a reason to admit
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`statements of licensor against exclusive licensee of the patent at issue); see also, e.g.,
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`2 Petitioner notes that this argument has not been set forth with any clarity by
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`PO, and therefore, PO fails to meet its burden with regard to any argument based
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`upon this reasoning. See, e.g., 37 C.F.R. § 42.20(c). Petitioner nevertheless
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`addresses this argument should PO attempt to remedy its deficient argument in its
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`reply.
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`6
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`IPR2016-01509
`Patent 7,861,774
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`Taylor-Reed Corp. v. Mennen Food Products, Inc., 324 F.2d 108, 112 (7th Cir. 1963)
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`(Admissions made by assignee of patent on behalf of and as agent for the inventor
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`were binding upon plaintiff as a subsequent assignee).
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`For the foregoing reasons, PO’s motion to exclude Exhibits 1008 and 1011-
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`1014 should be denied.
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`Dated: October 12, 2017
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`Respectfully submitted,
`/Jason Shapiro/
`Jason Shapiro
`Reg. No. 35,354
`Counsel for Petitioners
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`7
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`CERTIFICATE OF SERVICE
`I certify that the foregoing PETITIONERS’ OPPOSITION TO PATENT
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`OWNER’S MOTION TO EXCLUDE EVIDENCE UNDER 37 C.F.R. § 42.64(c),
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`the ACCOMPANYING EXHIBIT and the present CERTIFICATE OF SERVICE
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`were served October 12, 2017 via electronic mail, as previously consented to by Patent
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`Owner, upon the following counsel of record:
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`HAMAD M. HAMAD (LEAD COUNSEL)
`BRADLEY W. CALDWELL (BACK-UP COUNSEL)
`JUSTIN NEMUNAITIS (BACK-UP COUNSEL)
`CALDWELL CASSADY CURRY P.C.
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`hhamad@caldwellcc.com
`bcaldwell@caldwellcc.com
`jnemunaitis@caldwellcc.com
`rapid@caldwellcc.com
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`DR. GREGORY J. GONSALVES (BACK-UP COUNSEL)
`GONSALVES LAW FIRM
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`gonsalves@gonsalveslawfirm.com
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`Dated: October 12, 2017
`EDELL, SHAPIRO & FINNAN, LLC
`9801 Washingtonian Blvd., Suite 750
`Gaithersburg, MD 20878
`Customer No. 27896
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`Respectfully submitted:
`/Mark J. DeBoy/
`Mark J. DeBoy, Reg. No. 66,983
`Telephone: 301.424.3640
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`