`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`APPLE INC.,
`Petitioner
`
`v.
`
`REALTIME DATA, LLC D/B/A/ IXO,
`Patent Owner
`
`_______________
`
`Case IPR2016-01737
`Patent 8,880,862
`
`_______________
`
`PATENT OWNER REALTIME DATA, LLC D/B/A IXO’S MOTION TO
`EXCLUDE EVIDENCE PURSUANT TO 37 C.F.R. § 42.64(c)
`
`
`
`Pursuant to 37 C.F.R. § 42.64, Patent Owner Realtime moves to exclude
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`Petitioner Apple’s Exhibits 1038, 1040, 1048, and 1049. Apple submitted Exhibits
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`1038 and 1040 in support of its Reply (Paper 23) and Realtime timely objected
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`(Paper 25) on September 7, 2017. Apple submitted Exhibits 1048 and 1049 in
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`support of its supplemental Reply (Paper 43) and Realtime timely objected (Paper
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`44) on December 20, 2017.
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`I.
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`EXHIBIT 1038 SHOULD BE EXCLUDED AS INADMISSIBLE AND
`IRRELEVANT HEARSAY.
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`Exhibit 1038 is hearsay and lacks relevance. Apple appears to offer Exhibit
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`1038 to establish that the Zwiegincew prior art reference (Exhibit 1010) discloses a
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`scenario file operational during a boot cycle.1 As such, Apple offers Exhibit 1038
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`to prove the truth of the matter being asserted here regarding the disclosures of
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`Zwiegincew. This constitutes impermissible hearsay without an applicable
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`exception.
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`Specifically, Apple asserts in its Reply:
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`[E]vidence [in Exhibit 1038] shows scenario files, such as [Exhibit
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`1010] Zwiegincew’s, are operational and useful during operating
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`system boot. Thus… a POSITA would have found it obvious to use
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`
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`1 Reply (Paper 23) at 12-13.
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`1
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`
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`[Exhibit 1010] Zwiegincew’s scenario file for boot and, when used for
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`boot, [Exhibit 1010] Zwiegincew’s scenario file is a boot data list.”2
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`Apple is therefore offering Exhibit 1038 to prove that Zwiegincew teaches
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`“scenario files” are useful to manage the boot-up process of an operating system in
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`order to render obvious the challenged claims. But Apple does not provide any
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`evidence to establish that the information cited in Exhibit 1038 refers to the same
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`“scenario files” and “boot” relied upon in Zwiegincew. Nor does Apple establish
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`that the information cited in Exhibit 1038 was publicly available and accessible
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`prior to the earliest priority date of the ‘862 Patent. No known hearsay exceptions
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`are offered by Apple and indeed, none is applicable pursuant to FRE 802. As such,
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`this constitutes inadmissible hearsay requiring exclusion of Exhibit 1038.
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`
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`The Board has excluded similar evidence as being inadmissible hearsay
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`when the evidence constitutes an out-of-court statement offered to prove the truth
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`of a fact in dispute in that proceeding. In Smart Microwave Sensors GmbH v.
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`Wavetronix LLC, for example, the Board excluded exhibits as inadmissible hearsay
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`
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`2 Id. (citing Exhibit 1038 at Abstract, 2:65-3:16, 11:59-12:4, 14:20-43).
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`2
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`
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`when those exhibits constituted out-of-court statements regarding the disputed
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`publication date of a prior art reference.3
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`Exhibit 1038 is also not relevant under FRE 402. No evidence exists that
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`Exhibit 1038’s “scenario files” and “boot” refer to the same “scenario files” and
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`“boot” on which Apple relies in Zwiegincew. Exhibit 1038 is a continuation-in-
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`part of the application that issued as Zwiegincew.4 By virtue of it being a
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`continuation-in-part, Exhibit 1038 necessarily “add[s] new matter not disclosed in
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`the said earlier nonprovisional application” issued as Zwiegincew.5 Apple has
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`therefore failed to establish that the cited evidence in Exhibit 1038 is relevant to
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`this proceeding. Apple does not establish that the information cited in Exhibit 1038
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`was publicly available and accessible prior to the earliest priority data of the ‘862
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`Patent. Because Exhibit 1038 does not tend to make a fact of consequence in this
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`
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`3 IPR2016-00488, Paper 57 at 27-28, 30-31 (PTAB July 17, 2017); see also
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`Microsoft Corp. v. Bradium Techs. LLC, IPR2016-00448, Paper 67 at 2-7 (PTAB
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`July 24, 2017) (excluding as inadmissible hearsay certain exhibits regarding
`
`alleged prior art systems and the state of the industry); Shimano Inc. v. Globeride,
`
`Inc., IPR2015-00273, Paper 40 at 26-27 (PTAB June 16, 2016) (similar).
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`4 Exhibit 1038 at cover; Exhibit 1010 at cover.
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`5 MPEP 201.08.
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`3
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`
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`proceeding more or less probable than it would be without the exhibit, Exhibit
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`1038 is irrelevant and inadmissible under FRE 401 and 402.
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`II. EXHIBIT 1040 SHOULD BE EXCLUDED BECAUSE APPLE DOES
`NOT RELY UPON THIS EXHIBIT IN THIS PROCEEDING.
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`Exhibit 1040 is inadmissible under FRE 402 for failing the test for relevance
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`set forth in FRE 401. Apple refers to Exhibit 1040 as “Transcript of June 20, 2017
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`Deposition of Dr. Back.”6 Apple, however, does not cite to any portions of Exhibit
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`1040 in this proceeding. Nor does Apple explain the significance Exhibit 1040 has
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`to any issue here. Exhibit 1040 is therefore irrelevant to this proceeding and should
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`be excluded. The Board has excluded similar evidence as being irrelevant when
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`such evidence is not cited by the offering party or expert declarants. In Shimano
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`Inc. v. Globeride, Inc., for example, the Board excluded 22 exhibits because the
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`offering party did not rely on those exhibits in its filings.7 Here, Exhibit 1040 does
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`
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`6 Reply (Paper 23) at v.
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`7 IPR2015-00273, Paper 40 at 26-28 (PTAB June 16, 2016); see also Google Inc.
`
`v. Performance Price Holdings, LLC, CBM2016-00049, Paper 37 at 36-40 (Sept.
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`13, 2017) (excluding as irrelevant three exhibits that were not cited in patent
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`owner’s response or by its expert); Apple Inc. v. Smartfish LLC, CBM2015-00017,
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`Paper 46 at 23 (PTAB Mar. 30, 2016) (excluding as irrelevant an exhibit that was
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`4
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`
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`not tend to make a fact of consequence more or less probable than it would be
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`without this exhibit. Exhibit 1040, therefore, is irrelevant and inadmissible under
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`FRE 401 and 402.
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`It appears that Exhibit 1040 relates to U.S. Patent Nos. 7,181,608 and
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`8,090,936, which are not at issue here.8 Because testimony in Exhibit 1040 relates
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`to patents not at issue in this proceeding and is not cited in Apple’s Reply, any
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`probative value of Exhibit 1040 is substantially outweighed by a danger of
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`confusing the issues and wasting time.9 This exhibit is thus additionally
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`inadmissible under FRE 403.
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`
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`not cited or relied on for any analysis in petition, expert declaration, decision to
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`institute, or final written decision).
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`8 The ‘862 Patent is a continuation of the applications that issued as the ‘608 and
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`‘936 Patents.
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`9 Bose Corp. v. JBL, Inc., 274 F.3d 1354, 1360 (Fed. Cir. 2001) (affirming
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`exclusion of evidence under FRE 403 during a bench trial because consideration of
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`that evidence would unfairly prejudice the patentee).
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`5
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`
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`III. EXHIBITS 1048 AND 1049 SHOULD BE EXCLUDED BECAUSE
`THEY ARE NOT AUTHENTICATED AND ARE INADMISSIBLE
`AND IRRELEVANT HEARSAY.
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`Exhibits 1048 and 1049 are unauthenticated, inadmissible hearsay, and
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`irrelevant. Apple offers Exhibits 1048 and 1049 without any evidence sufficient to
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`support a finding that those exhibits are what Apple claims them to be.10 Neither
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`exhibit qualifies as self-authenticating because each’s source is unknown.
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`Apple provides nothing more than a citation to these two exhibits—this is
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`insufficient to authenticate. In TRW Auto. U.S. L.L.C. v. Magna Elect. Inc., the
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`Board held that where the only identifying information provided by the proponent
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`was a purported bibliographic reference for the exhibit, there was insufficient
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`evidence to support a finding that the exhibit was properly authenticated.11 In that
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`case, the proponent argued that the exhibit was self-authenticating because of its
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`alleged source, without citing additional evidence to support its source.12 The
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`Board rejected the argument as “circular” and excluded the exhibit for a lack of
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`
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`10 Supplemental Reply (Paper 43) at 5.
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`11 IPR2014-01348, Paper 25 at 5-6 (PTAB Jan. 15, 2016).
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`12 Id. at 7-8.
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`6
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`
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`proper authentication.13 Because Apple has not proffered any evidence to
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`authenticate Exhibits 1048 and 1049, these exhibits should be excluded under FRE
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`901 and 902.
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`To the extent Apple asserts Exhibits 1048 and 1049 are webpages, neither
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`exhibit bears a URL address from which the exhibit was purportedly found. The
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`Board has excluded similar webpage-based evidence for failing to authenticate
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`information regarding the website itself. In Standard Innovation Corp. v. Lelo,
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`Inc., for example, the Board excluded exhibits as lacking authentication when the
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`13 Id.; see also Contra Biomarin Pharm., Inc. v. Genzyme Therapeutic Prod., Ltd.
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`P’ship., IPR2013-00534, Paper 81 at 23-24 (PTAB Feb. 23, 2015) (holding that a
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`press release was sufficiently authenticated because it was accompanied by
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`additional evidence in the form of a newspaper article discussing the press release,
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`an affidavit from the individual whom obtained a copy of the press release with a
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`trade inscription); Valeo N. Am., Inc. v. Magna Elec., Inc., IPR2014-00222, Paper
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`55 at 11-12 (PTAB May 28, 2015) (allowing evidence to be admitted as properly
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`authenticated where accompanied by a declaration of the senior director of
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`publishing for the source of the exhibit).
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`7
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`
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`proponent of the evidence provided only a printout of the webpage without
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`providing authentication information from the website itself.14
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`Exhibits 1048 and 1049 should also be excluded as inadmissible hearsay.
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`Apple appears to offer both exhibits to show that it was known by a POSITA that
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`flash memory was more expensive than RAM memory in February 2000.15
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`Without an applicable hearsay exception, such out-of-court statements cannot be
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`admitted pursuant to FRE 802. Because Exhibits 1048 and 1049 are offered to
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`prove the truth of the matter asserted, i.e., the prices and trends in cost contained
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`within them to establish the understanding and motivation of a POSITA during the
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`relevant time period, these exhibits are inadmissible hearsay per FRE 801.
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`Moreover, Exhibits 1048 and 1049 are irrelevant to the current proceedings.
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`The test for relevance requires that evidence tends to make a fact of consequence
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`in the action more or less probable than it would be without the evidence.16 First,
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`Apple’s expert Dr. Neuhauser does not rely on either exhibit in forming his
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`opinion; nor does Apple rely on any specific contents of either exhibit.17 Second,
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`
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`14 IPR2014-00148, Paper 42 at 10 (PTAB Apr. 23, 2015).
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`15 Supplemental Reply (Paper 43) at 5.
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`16 FRE 401.
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`17 Supplemental Reply (Paper 43) at 5.
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`8
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`
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`because they were purportedly published in 2005 and 2007, respectively, the
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`exhibits fail to relate to the understanding of a POSITA in February 2000. Exhibits
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`1048 and 1049, therefore, are irrelevant and inadmissible under FRE 401 and 402.
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`It appears that Apple further offers Exhibits 1048 and 1049 to support
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`Apple’s expert Dr. Neuhauser’s opinions regarding Realtime’s Motion to Amend.
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`Exhibits 1048 and 1049, however, were not relied on by Dr. Neuhauser (nor
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`Realtime’s expert Dr. Back). Because these exhibits were not relied upon by
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`Apple’s expert, and because they were produced years after the relevant time
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`period, any probative value of Exhibits 1048 and 1049 is substantially outweighed
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`by a danger of confusing the issues and wasting time.18 Thus, these exhibits are
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`also inadmissible under FRE 403.
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`IV. CONCLUSION
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`Apple’s Exhibits 1038, 1040, 1048, and 1049 fail to comply with 37 C.F.R.
`
`§ 42.64(b) and the Federal Rules of Evidence, and should be excluded.
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`18 Bose Corp., 274 F.3d at 1360.
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`9
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`
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`Respectfully Submitted,
`
`Date: December 22, 2017
`
`
`
`
`
`
`
` /Joseph F. Edell/
`Joseph F. Edell (Reg. No. 67,625)
`Richard Z. Zhang (Reg. No. 73,397)
`Fisch Sigler LLP
`5301 Wisconsin Avenue NW
`Fourth Floor
`Washington, DC 20015
`Phone: (202) 362-3527
`Fax: (202) 362-3501
`Email: Joe.Edell.IPR@fischllp.com
`Email: Richard.Zhang.IPR@fischllp.com
`
`Desmond S. Jui (pro hac vice)
`Fisch Sigler LLP
`96 North Third Street
`Suite 260
`San Jose, CA 95112
`Phone: (650) 362-8209
`Email: Desmond.Jui.IPR@fischllp.com
`
`William P. Rothwell (Reg. No. 75,522)
`Noroozi PC
`2245 Texas Drive, Suite 300
`Sugar Land, TX 77479
`Phone: (281) 566-2685
`Email: William@noroozipc.com
`
`Kayvan B. Noroozi (pro hac vice)
`Noroozi PC
`1299 Ocean Avenue, Suite 450
`Santa Monica, CA 90401
`Phone: (310) 975-7074
`Email: Kayvan@noroozipc.com
`
`10
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`
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`CERTIFICATE OF SERVICE
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`I hereby certify that on December 22, 2017, a true and correct copy of the
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`foregoing Patent Owner’s Motion to Exclude is being served electronically to the
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`Petitioner at the correspondence email addresses of record provided in the Petition
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`as follows:
`
`W. Karl Renner (Lead Counsel) IPR39521-0025IP1@fr.com
`
`
`
`Respectfully Submitted,
`
`Date: December 22, 2017
`
`
`
` /Joseph F. Edell/
`Joseph F. Edell (Reg. No. 67,625)
`Fisch Sigler LLP
`5301 Wisconsin Avenue NW
`Fourth Floor
`Washington, DC 20015
`Phone: (202) 362-3527
`Fax: (202) 362-3501
`Email: Joe.Edell.IPR@fischllp.com
`
`
`
`