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 IPR2016-01739
`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 IPR2016-01739
`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 and 1044. Apple submitted these exhibits in
`
`support of its Reply (Paper 17) and Realtime timely objected (Paper 18) on
`
`September 7, 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
`
`[Exhibit 1010] Zwiegincew’s scenario file for boot and, when used for
`
`boot, [Exhibit 1010] Zwiegincew’s scenario file is a boot data list that
`
`is updated.2
`
`
`
`1 Reply (Paper 17) at 14.
`
`2 Id. (citing Exhibit 1038 at Abstract, 2:65-3:16, 11:59-12:4, 14:20-43).
`
`1
`
`
`
`Apple is therefore offering Exhibit 1038 to prove that Zwiegincew discloses
`
`“scenario files” that 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 data of the ‘862 Patent. No known
`
`hearsay exceptions are offered by Apple and indeed, none is applicable pursuant to
`
`FRE 802. As such, Exhibit 1038 constitutes inadmissible hearsay that should be
`
`excluded.
`
`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
`
`when those exhibits constituted out-of-court statements regarding the disputed
`
`publication date of a prior art reference.3
`
`
`
`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
`
`2
`
`
`
`Exhibit 1038 is also not relevant under FRE 402. 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.4 Here, 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.5 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 Exhibit 1010.6 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
`
`proceeding more or less probable than it would be without the exhibit, Exhibit
`
`1038 is irrelevant and inadmissible under FRE 401 and 402.
`
`
`
`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 FRE 401.
`
`5 Exhibit 1038 at cover; Exhibit 1010 at cover.
`
`6 MPEP 201.08.
`
`3
`
`
`
`II. EXHIBITS 1039 AND 1040 SHOULD BE EXCLUDED BECAUSE
`APPLE DOES NOT RELY UPON THOSE EXHIBITS IN THIS
`PROCEEDING.
`
`Exhibits 1039 and 1040 are inadmissible under FRE 402 for failing the test
`
`for relevance set forth in FRE 401. Apple identifies Exhibits 1039 and 1040 as
`
`“Defendant Apple Inc.’s Invalidity Contentions, Case No. 4:16-cv-02595-JD (N.D.
`
`Cal.)” and “Transcript of June 20, 2017 Deposition of Dr. Back,” respectively.7
`
`Apple, however, does not cite to any portions of Exhibits 1039 and 1040 in this
`
`proceeding. Nor does Apple explain the significance Exhibits 1039 and 1040 have
`
`to any issue here. Exhibits 1039 and 1040 are 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.8 Here, Exhibit 1039 and 1040 do
`
`
`
`7 Reply (Paper 17) at iv.
`
`8 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,
`
`4
`
`
`
`not tend to make a fact of consequence more or less probable than it would be
`
`without those exhibits. Exhibits 1039 and 1040, therefore, are irrelevant and
`
`inadmissible under FRE 401 and 402.
`
`Exhibit 1039, moreover, includes five parts that cumulatively exceed 8,500
`
`pages and purport to address dozens of prior art references unrelated to this
`
`proceeding. And Exhibit 1039 appears to include arguments regarding the validity
`
`of U.S. Patent Nos. 7,818,608, and 9,090,936, which are not at issue here.9
`
`Because Exhibit 1039 is not cited by Apple or its experts and because it spans
`
`thousands of pages that include validity theories not at issue here, any probative
`
`value of Exhibit 1039 is substantially outweighed by a danger of confusing the
`
`
`
`Paper 46 at 23 (PTAB Mar. 30, 2016) (excluding as irrelevant an exhibit that was
`
`not cited or relied on for any analysis in petition, expert declaration, decision to
`
`institute, or final written decision).
`
`9 Exhibit 1039 (Part 1) at 1-2. The ‘862 Patent is a continuation of the applications
`
`that issued as the ‘608 and ‘936 Patents.
`
`5
`
`
`
`issues, wasting time, and needlessly presenting cumulative evidence.10 Thus, this
`
`exhibit is also inadmissible under FRE 403.
`
`Further, Exhibit 1040 does not relate to this proceeding nor to the challenged
`
`claims of the ‘862 Patent. Instead, Exhibit 1040 relates to the ‘608 and ‘936
`
`Patents that are being challenged in IPR2016-01365 and -01366.11 Because Exhibit
`
`1040 does not relate to any challenged claims or issues in this proceeding, any
`
`probative value of Exhibit 1040 is substantially outweighed by a danger of
`
`confusing the issues and wasting time.12 This exhibit is thus additionally
`
`inadmissible under FRE 403.
`
`III. EXHIBIT 1044 SHOULD BE EXCLUDED BECAUSE APPLE DOES
`NOT RELY UPON IT IN THIS PROCEEDING.
`
`Exhibit 1044 is not relevant to this IPR proceeding, nor is it offered to
`
`support a proposition in Apple’s Reply. Exhibit 1044 is therefore inadmissible
`
`under FRE 402. In its Reply exhibit list, Apple identifies Exhibit 1044 as “Access,
`
`
`
`10 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).
`
`11 Exhibit 1040 at 1.
`
`12 Bose Corp., 274 F.3d at 1360.
`
`6
`
`
`
`Microsoft Press Computer Dictionary (3d ed. 1997).”13 Apple, however, does not
`
`cite to any portions of Exhibit 1044 in this proceeding. Nor does Apple explain the
`
`significance Exhibit 1044’s definition of “access” has to any issue here. Exhibit
`
`1044 is therefore irrelevant to this proceeding and should be excluded.14
`
`Here, Exhibit 1044 does not tend to make a fact of consequence more or less
`
`probable than it would be without Exhibit 1044. Exhibit 1044, therefore, is
`
`irrelevant and inadmissible under FRE 401 and 402.
`
`IV. CONCLUSION
`
`Apple’s Exhibits 1038-1040 and 1044 fail to comply with 37 C.F.R. § 42.64
`
`and the Federal Rules of Evidence, and should be excluded.
`
`
`
`
`
`
`
`
`13 Reply (Paper 17) at iv.
`
`14 See Shimano Inc., IPR2015-00273, Paper 40 at 26-28; Google Inc., CBM2016-
`
`00049, Paper 37 at 36-40; Apple Inc., CBM2015-00017, Paper 46 at 23.
`
`7
`
`
`
`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
`
`
`
`8
`
`
`
`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) IPR39521-0025IP3@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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