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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_______________
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`APPLE INC.,
`Petitioner
`
`v.
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`REALTIME DATA, LLC D/B/A/ IXO,
`Patent Owner
`
`_______________
`
`Case IPR2016-01738
`Patent 8,880,862
`
`_______________
`
`
`PATENT OWNER’S RESPONSE TO PETITIONER’S MOTION FOR
`OBSERVATIONS REGARDING THE CROSS-EXAMINATION
`TESTIMONY OF DR. GODMAR BACK
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`Pursuant to the Board’s Order (Paper 36), Patent Owner Realtime responds
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`to Petitioner Apple’s Motion for Observations (Paper 49).
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`Realtime objects to Apple’s observations because they violate the Office
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`Trial Practice Guide.1 First, Observations 1 through 3 improperly use Dr. Back’s
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`November 2, 2017 cross-examination testimony to address subsequent Realtime
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`briefing and testimony, filed on December 2, 2017. Second, each Observation
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`includes a header that is argumentative. Third, Observations 4, 9, 10, and 12 raise
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`new arguments. Fourth, Observation 1 is three pages and includes six
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`subparagraphs and is thus excessively long.
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`Realtime further objects to Observations 4, 7, 8, 11, 12, and 15 because they
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`impermissibly seek to place the burden of persuasion on Realtime regarding the
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`contingent motion to amend.
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`RESPONSE TO OBSERVATION 1
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`Ex. 1046 at 45:18-46:16. The cited testimony is not relevant because Dr.
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`Back was discussing the teachings of the ‘862 Patent itself, not the prior art
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`references. And this observation takes Dr. Back’s testimony out of context. At
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`44:19-45:3 and 47:1-6 of Ex. 1046, Dr. Back testified that he did not offer an
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`
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`1 77 Fed. Reg. at 48767-68 (Aug. 14, 2012).
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`1
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`opinion in his declarations on whether the “second memory” in Amended Claim
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`174 is volatile or non-volatile memory.
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`Ex. 1046 at 47:21-48:6 and 50:10-51:1. The cited testimony is not relevant
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`because Dr. Back was discussing the teachings of the ‘862 Patent itself, not the
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`prior art references. And this observation takes Dr. Back’s testimony out of
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`context. At 51:9-12 of Ex. 1046, Dr. Back testified that he did not offer an opinion
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`in his declarations on whether the cache 13 in the ‘862 specification is volatile or
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`non-volatile memory.
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`Ex. 1046 at 58:9-59:1. This observation takes Dr. Back’s testimony out of
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`context. The whole quotation is provided below:
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`Q: Okay. So setting that aside, your reference to Doctor Neuhauser’s
`declaration, I’d like to know whether it’s your opinion that flash
`memory was expensive on a per bit basis at the time of invention
`relative to volatile memory.
`
`THE WITNESS: I think that an in depth price analysis of memory
`was outside the scope of my assignment. However, as I mentioned
`earlier, in the context of the specification of the ‘862 patent, a person
`of ordinary skill would probably be discouraged from the use of non-
`volatile memory for a number of reasons, one of which is the higher
`price of the memory. (Ex. 1046 at 58:9-59:1 (emphasis added).)
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`Ex. 1046 at 60:12-21. The cited testimony is not relevant because it does not
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`relate to the price of RAM versus flash memory. And this observation
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`2
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`mischaracterizes the referenced “statement by Dr. Neuhauser.” At 57:9-22 of Ex.
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`1046, Dr. Back discussed footnote 8 of his June 14, 2017 Declaration (Ex. 2008),
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`which cites to paragraph 44 of Neuhauser’s First Declaration (Ex. 1003). Dr.
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`Neuhauser’s paragraph 44 refers to the price of flash memory to hard-disk drive,
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`not flash memory to RAM. (Ex. 1003 at ¶ 44.)
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`Ex. 1046 at 64:5-15. The cited testimony is not relevant because Dr. Back
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`was discussing the teachings of the ‘862 Patent itself, not the prior art references.
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`Ex. 1046 at 65:18-66:3, 66:5-67:2, 68:13-69:2, and 117:20-118:9. The
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`cited testimony is not relevant because Dr. Back was discussing the teachings of
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`the ‘862 Patent itself, not the prior art references.
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`RESPONSE TO OBSERVATION 2
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`Ex. 1046 at 76:22-78:15, 81:12-82:2, and 82:4-83:8. This observation
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`mischaracterizes Dr. Back’s testimony. At 79:3-18 of Ex. 1046, Dr. Back testified
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`that his opinion on “preloading” in the current IPR is not different from or
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`narrower than that in the IPR2016-0365 proceeding.
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`RESPONSE TO OBSERVATION 3
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`Ex. 1046 at 138:13-22, 130:1-132:2, 120:13-121:11. This observation
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`mischaracterizes Dr. Back’s testimony regarding when the claimed “preloading”
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`starts and ends. At 114:7-21 of Ex. 1046, Dr. Back testified:
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`Q: Okay. Is it your opinion that the preloading process can be
`performed during the boot process?
`3
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`
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`THE WITNESS: So the paragraph states that the preloading process
`may be completed prior to the commencement of the boot process,
`which implies that it has to start before the boot process. And it says
`that it can be continued after the boot process begins, and then the two
`may be performed simultaneously. I don’t think that is equivalent to
`what you were asking in your question. (Emphasis added. See also id.
`at 121:13-122:10.)
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`RESPONSE TO OBSERVATION 4
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`Ex. 1046 at 145:8-146:12, 148:2-8, and 149:15-150:4. The cited
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`testimony is not relevant because, at the time of Dr. Back’s November 2,
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`2017 testimony (Ex. 1046), Apple had never argued that Settsu’s function
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`definition file would be used to load and initialize some OS modules prior to
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`others, to allow specific processes to occur faster during boot. Also, this
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`observation mischaracterizes Dr. Back’s testimony. The cited testimony was
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`discussing the specific combination proposed by Apple and Dr. Neuhauser.
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`RESPONSE TO OBSERVATION 5
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`Ex. 1047 at 112:19-113:4 and 113:6-13. This observation fails to provide
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`the full context of Dr. Back’s testimony. At 113:15-114:11 of Ex. 1047, Dr. Back
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`testified a POSITA would not have understood Kroeker’s request for data must
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`occur during the boot process. At 117:9-118:8 and 119:5-120:13 of Ex. 1047, Dr.
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`Back explained that Kroeker’s prefetching is not relevant to Apple’s cost and
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`4
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`speed motivation arguments. Later at 115:21-116:9 of Ex. 1047, Dr. Back testified
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`that the prefetched data is used to service data after the host system requests it.
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`RESPONSE TO OBSERVATION 6
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`Ex. 1047 at 115:5-19, 114:13-115:3, 117:9-118:15, and 118:10-15. This
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`observation mischaracterizes Dr. Back’s opinions regarding Apple’s proposed
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`combination of Sukegawa with Dye and Kroeker. At 112:9-18 of Ex. 1047, Dr.
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`Back testified that his opinion on the lack of motivation to combine rests on speed
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`and/or cost—not on whether Kroeker’s disk drive would be idle.
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`RESPONSE TO OBSERVATION 7
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`Ex. 1047 at 117:17-118:15. This observation does not provide the proper
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`context of Dr. Back’s testimony regarding the motivation to combine Sukegawa
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`with Dye and Kroeker. At 89:14-90:11 and 120:15-121:18 of Ex. 1047, Dr. Back
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`testifies regarding this motivation to combine.
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`RESPONSE TO OBSERVATION 8
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`Ex. 1047 at 91:2-9 and 91:11-20. This observation fails to provide the
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`proper context of Dr. Back’s testimony regarding the motivation to combine
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`Sukegawa with Dye and Kroeker. At 89:14-90:11 and 120:15-121:18 of Ex. 1047,
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`Dr. Back testifies regarding this motivation to combine.
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`5
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`RESPONSE TO OBSERVATION 9
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`Ex. 1047 at 97:10-98:2. The cited testimony is not relevant because Apple
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`has never argued that loading data from Sukegawa’s flash memory while the hard
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`disk is idle speeds up the boot process.
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`RESPONSE TO OBSERVATION 10
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`Ex. 1047 at 107:3-19. The cited testimony is not relevant because Apple has
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`never argued that Apple’s proposed modification to Sukegawa to add RAM allows
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`for loading data while the hard disk is idle to speed up the boot process.
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`RESPONSE TO OBSERVATION 11
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`Ex. 1047 at 67:22-68:7 and 47:13-48:1. The cited testimony is not relevant
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`because Apple has never argued that only certain types of flash memory relate to
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`Apple’s proffered obviousness combinations. Also, this observation fails to
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`provide the proper context of the cited testimony because Dr. Back discussed how
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`the advertised memory cards contain the type of flash memory a POSITA would
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`use to implement Sukegawa. (See Ex. 1047 at 48:2-12, 69:15-70:19.)
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`RESPONSE TO OBSERVATION 12
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`Ex. 1047 at 73:12-20, 39:15-19, 37:1-5, 47:6-11. The cited testimony is not
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`relevant because it fails to address the relative price of flash memory and RAM
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`during the relevant time period. And the cited testimony is not relevant because
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`Apple has never argued that the cost of memory components impacts the relative
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`cost of RAM versus flash memory.
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`6
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`RESPONSE TO OBSERVATION 13
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`Ex. 1047 at 61:9-18, 62:2-10. The cited testimony is not relevant because it
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`fails to address the relative price of flash memory and RAM during the relevant
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`time period. And the cited testimony is not relevant because Apple has never
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`argued that the relative percentage decrease in memory price (whether RAM or
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`flash memory) relates to Apple’s proffered obviousness combinations.
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`This observation also fails to provide the context on the price drops in
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`memory during the relevant time period, which Dr. Back discussed in 18:16-19:4,
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`32:14-18, and 33:2-12 of Ex. 1047.
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`RESPONSE TO OBSERVATION 14
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`Ex. 1047 at 32:8-18. Realtime does not object to this observation.
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`RESPONSE TO OBSERVATION 15
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`Ex. 1047 at 11:16-20, 11:10-14, 19:15-20:9, 20:22-21:8. The cited
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`testimony is not relevant because Dr. Back’s review of only excerpts of PC
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`Magazine (Ex. 2028-2030) or other publications is not relevant to whether
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`evidence existed during the relevant time period showing that flash memory was
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`cheaper than DRAM. And the cited testimony is irrelevant because it does not
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`address the relative price of flash memory and RAM during the relevant time
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`period.
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`7
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`Respectfully Submitted,
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`Date: December 29, 2017
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`
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`
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`
`
` / 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
`
`8
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`
`
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`CERTIFICATE OF SERVICE
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`I hereby certify that on December 29, 2017, a true and correct copy of the
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`foregoing Patent Owner’s Response to Petitioner’s Motion for Observations
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`Regarding the Cross-Examination Testimony of Dr. Godmar Back is being served
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`electronically to the Petitioner at the correspondence email addresses of record
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`provided in the Petition as follows:
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`W. Karl Renner (Lead Counsel) IPR39521-0025IP2@fr.com
`
`
`
`
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`Respectfully Submitted,
`
`Date: December 29, 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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