UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`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)
`
`
`
`_______________
`
`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
`
`Petitioner Apple’s Exhibits 1038, 1040, 1048, and 1049. Apple submitted Exhibits
`
`1038 and 1040 in support of its Reply (Paper 23) and Realtime timely objected
`
`(Paper 25) on September 7, 2017. Apple submitted Exhibits 1048 and 1049 in
`
`support of its supplemental Reply (Paper 43) and Realtime timely objected (Paper
`
`44) on December 20, 2017.
`
`I.
`
`EXHIBIT 1038 SHOULD BE EXCLUDED AS INADMISSIBLE AND
`IRRELEVANT HEARSAY.
`
`Exhibit 1038 is hearsay and lacks relevance. Apple appears to offer Exhibit
`
`1038 to establish that the Zwiegincew prior art reference (Exhibit 1010) discloses a
`
`scenario file operational during a boot cycle.1 As such, Apple offers Exhibit 1038
`
`to prove the truth of the matter being asserted here regarding the disclosures of
`
`Zwiegincew. This constitutes impermissible hearsay without an applicable
`
`exception.
`
`Specifically, Apple asserts in its Reply:
`
`[E]vidence [in Exhibit 1038] shows scenario files, such as [Exhibit
`
`1010] Zwiegincew’s, are operational and useful during operating
`
`system boot. Thus… a POSITA would have found it obvious to use
`
`
`
`1 Reply (Paper 23) at 12-13.
`
`1
`
`
`
`[Exhibit 1010] Zwiegincew’s scenario file for boot and, when used for
`
`boot, [Exhibit 1010] Zwiegincew’s scenario file is a boot data list.”2
`
`Apple is therefore offering Exhibit 1038 to prove that Zwiegincew teaches
`
`“scenario files” are useful to manage the boot-up process of an operating system in
`
`order to render obvious the challenged claims. But Apple does not provide any
`
`evidence to establish that the information cited in Exhibit 1038 refers to the same
`
`“scenario files” and “boot” relied upon in Zwiegincew. Nor does Apple establish
`
`that the information cited in Exhibit 1038 was publicly available and accessible
`
`prior to the earliest priority date of the ‘862 Patent. No known hearsay exceptions
`
`are offered by Apple and indeed, none is applicable pursuant to FRE 802. As such,
`
`this constitutes inadmissible hearsay requiring exclusion of Exhibit 1038.
`
`
`
`The Board has excluded similar evidence as being inadmissible hearsay
`
`when the evidence constitutes an out-of-court statement offered to prove the truth
`
`of a fact in dispute in that proceeding. In Smart Microwave Sensors GmbH v.
`
`Wavetronix LLC, for example, the Board excluded exhibits as inadmissible hearsay
`
`
`
`2 Id. (citing Exhibit 1038 at Abstract, 2:65-3:16, 11:59-12:4, 14:20-43).
`
`2
`
`
`
`when those exhibits constituted out-of-court statements regarding the disputed
`
`publication date of a prior art reference.3
`
`Exhibit 1038 is also not relevant under FRE 402. No evidence exists that
`
`Exhibit 1038’s “scenario files” and “boot” refer to the same “scenario files” and
`
`“boot” on which Apple relies in Zwiegincew. Exhibit 1038 is a continuation-in-
`
`part of the application that issued as Zwiegincew.4 By virtue of it being a
`
`continuation-in-part, Exhibit 1038 necessarily “add[s] new matter not disclosed in
`
`the said earlier nonprovisional application” issued as Zwiegincew.5 Apple has
`
`therefore failed to establish that the cited evidence in Exhibit 1038 is relevant to
`
`this proceeding. Apple does not establish that the information cited in Exhibit 1038
`
`was publicly available and accessible prior to the earliest priority data of the ‘862
`
`Patent. Because Exhibit 1038 does not tend to make a fact of consequence in this
`
`
`
`3 IPR2016-00488, Paper 57 at 27-28, 30-31 (PTAB July 17, 2017); see also
`
`Microsoft Corp. v. Bradium Techs. LLC, IPR2016-00448, Paper 67 at 2-7 (PTAB
`
`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).
`
`4 Exhibit 1038 at cover; Exhibit 1010 at cover.
`
`5 MPEP 201.08.
`
`3
`
`
`
`proceeding more or less probable than it would be without the exhibit, Exhibit
`
`1038 is irrelevant and inadmissible under FRE 401 and 402.
`
`II. EXHIBIT 1040 SHOULD BE EXCLUDED BECAUSE APPLE DOES
`NOT RELY UPON THIS EXHIBIT IN THIS PROCEEDING.
`
`Exhibit 1040 is inadmissible under FRE 402 for failing the test for relevance
`
`set forth in FRE 401. Apple refers to Exhibit 1040 as “Transcript of June 20, 2017
`
`Deposition of Dr. Back.”6 Apple, however, does not cite to any portions of Exhibit
`
`1040 in this proceeding. Nor does Apple explain the significance Exhibit 1040 has
`
`to any issue here. Exhibit 1040 is therefore irrelevant to this proceeding and should
`
`be excluded. The Board has excluded similar evidence as being irrelevant when
`
`such evidence is not cited by the offering party or expert declarants. In Shimano
`
`Inc. v. Globeride, Inc., for example, the Board excluded 22 exhibits because the
`
`offering party did not rely on those exhibits in its filings.7 Here, Exhibit 1040 does
`
`
`
`6 Reply (Paper 23) at v.
`
`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.
`
`13, 2017) (excluding as irrelevant three exhibits that were not cited in patent
`
`owner’s response or by its expert); Apple Inc. v. Smartfish LLC, CBM2015-00017,
`
`Paper 46 at 23 (PTAB Mar. 30, 2016) (excluding as irrelevant an exhibit that was
`
`4
`
`
`
`not tend to make a fact of consequence more or less probable than it would be
`
`without this exhibit. Exhibit 1040, therefore, is irrelevant and inadmissible under
`
`FRE 401 and 402.
`
`It appears that Exhibit 1040 relates to U.S. Patent Nos. 7,181,608 and
`
`8,090,936, which are not at issue here.8 Because testimony in Exhibit 1040 relates
`
`to patents not at issue in this proceeding and is not cited in Apple’s Reply, any
`
`probative value of Exhibit 1040 is substantially outweighed by a danger of
`
`confusing the issues and wasting time.9 This exhibit is thus additionally
`
`inadmissible under FRE 403.
`
`
`
`not cited or relied on for any analysis in petition, expert declaration, decision to
`
`institute, or final written decision).
`
`8 The ‘862 Patent is a continuation of the applications that issued as the ‘608 and
`
`‘936 Patents.
`
`9 Bose Corp. v. JBL, Inc., 274 F.3d 1354, 1360 (Fed. Cir. 2001) (affirming
`
`exclusion of evidence under FRE 403 during a bench trial because consideration of
`
`that evidence would unfairly prejudice the patentee).
`
`5
`
`
`
`III. EXHIBITS 1048 AND 1049 SHOULD BE EXCLUDED BECAUSE
`THEY ARE NOT AUTHENTICATED AND ARE INADMISSIBLE
`AND IRRELEVANT HEARSAY.
`
`Exhibits 1048 and 1049 are unauthenticated, inadmissible hearsay, and
`
`irrelevant. Apple offers Exhibits 1048 and 1049 without any evidence sufficient to
`
`support a finding that those exhibits are what Apple claims them to be.10 Neither
`
`exhibit qualifies as self-authenticating because each’s source is unknown.
`
`Apple provides nothing more than a citation to these two exhibits—this is
`
`insufficient to authenticate. In TRW Auto. U.S. L.L.C. v. Magna Elect. Inc., the
`
`Board held that where the only identifying information provided by the proponent
`
`was a purported bibliographic reference for the exhibit, there was insufficient
`
`evidence to support a finding that the exhibit was properly authenticated.11 In that
`
`case, the proponent argued that the exhibit was self-authenticating because of its
`
`alleged source, without citing additional evidence to support its source.12 The
`
`Board rejected the argument as “circular” and excluded the exhibit for a lack of
`
`
`
`10 Supplemental Reply (Paper 43) at 5.
`
`11 IPR2014-01348, Paper 25 at 5-6 (PTAB Jan. 15, 2016).
`
`12 Id. at 7-8.
`
`6
`
`
`
`proper authentication.13 Because Apple has not proffered any evidence to
`
`authenticate Exhibits 1048 and 1049, these exhibits should be excluded under FRE
`
`901 and 902.
`
`To the extent Apple asserts Exhibits 1048 and 1049 are webpages, neither
`
`exhibit bears a URL address from which the exhibit was purportedly found. The
`
`Board has excluded similar webpage-based evidence for failing to authenticate
`
`information regarding the website itself. In Standard Innovation Corp. v. Lelo,
`
`Inc., for example, the Board excluded exhibits as lacking authentication when the
`
`13 Id.; see also Contra Biomarin Pharm., Inc. v. Genzyme Therapeutic Prod., Ltd.
`
`P’ship., IPR2013-00534, Paper 81 at 23-24 (PTAB Feb. 23, 2015) (holding that a
`
`press release was sufficiently authenticated because it was accompanied by
`
`additional evidence in the form of a newspaper article discussing the press release,
`
`an affidavit from the individual whom obtained a copy of the press release with a
`
`trade inscription); Valeo N. Am., Inc. v. Magna Elec., Inc., IPR2014-00222, Paper
`
`55 at 11-12 (PTAB May 28, 2015) (allowing evidence to be admitted as properly
`
`authenticated where accompanied by a declaration of the senior director of
`
`publishing for the source of the exhibit).
`
`7
`
`
`
`proponent of the evidence provided only a printout of the webpage without
`
`providing authentication information from the website itself.14
`
`Exhibits 1048 and 1049 should also be excluded as inadmissible hearsay.
`
`Apple appears to offer both exhibits to show that it was known by a POSITA that
`
`flash memory was more expensive than RAM memory in February 2000.15
`
`Without an applicable hearsay exception, such out-of-court statements cannot be
`
`admitted pursuant to FRE 802. Because Exhibits 1048 and 1049 are offered to
`
`prove the truth of the matter asserted, i.e., the prices and trends in cost contained
`
`within them to establish the understanding and motivation of a POSITA during the
`
`relevant time period, these exhibits are inadmissible hearsay per FRE 801.
`
`Moreover, Exhibits 1048 and 1049 are irrelevant to the current proceedings.
`
`The test for relevance requires that evidence tends to make a fact of consequence
`
`in the action more or less probable than it would be without the evidence.16 First,
`
`Apple’s expert Dr. Neuhauser does not rely on either exhibit in forming his
`
`opinion; nor does Apple rely on any specific contents of either exhibit.17 Second,
`
`
`
`14 IPR2014-00148, Paper 42 at 10 (PTAB Apr. 23, 2015).
`
`15 Supplemental Reply (Paper 43) at 5.
`
`16 FRE 401.
`
`17 Supplemental Reply (Paper 43) at 5.
`
`8
`
`
`
`because they were purportedly published in 2005 and 2007, respectively, the
`
`exhibits fail to relate to the understanding of a POSITA in February 2000. Exhibits
`
`1048 and 1049, therefore, are irrelevant and inadmissible under FRE 401 and 402.
`
`It appears that Apple further offers Exhibits 1048 and 1049 to support
`
`Apple’s expert Dr. Neuhauser’s opinions regarding Realtime’s Motion to Amend.
`
`Exhibits 1048 and 1049, however, were not relied on by Dr. Neuhauser (nor
`
`Realtime’s expert Dr. Back). Because these exhibits were not relied upon by
`
`Apple’s expert, and because they were produced years after the relevant time
`
`period, any probative value of Exhibits 1048 and 1049 is substantially outweighed
`
`by a danger of confusing the issues and wasting time.18 Thus, these exhibits are
`
`also inadmissible under FRE 403.
`
`IV. CONCLUSION
`
`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.
`
`
`
`
`
`
`
`18 Bose Corp., 274 F.3d at 1360.
`
`9
`
`
`
`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
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on December 22, 2017, a true and correct copy of the
`
`foregoing Patent Owner’s Motion to Exclude is being served electronically to the
`
`Petitioner at the correspondence email addresses of record provided in the Petition
`
`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
`
`
`
`
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