UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner,
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`v.
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`REALTIME DATA LLC,
`Patent Owner.
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`Case IPR2016-01739
`Patent 8,880,862
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`PETITIONER’S OPPOSITION TO PATENT OWNER’S
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`MOTION TO EXCLUDE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner,
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`v.
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`REALTIME DATA LLC,
`Patent Owner.
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`Case IPR2016-01739
`Patent 8,880,862
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`PETITIONER’S OPPOSITION TO PATENT OWNER’S
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`MOTION TO EXCLUDE
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`Proceeding No.: IPR2016-01739
`Attorney Docket: 39521-0025IP3
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`TABLE OF CONTENTS
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`Introduction ...................................................................................................... 1
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`Exhibit 1038 Should Not be Excluded as Hearsay .......................................... 2
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`I.
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`II.
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`III. Exhibit 1038 is Relevant .................................................................................. 5
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`IV. Exhibits 1039, 1040, and 1044 are Withdrawn ................................................ 7
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`V.
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`Conclusion ....................................................................................................... 7
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`i
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`Proceeding No.: IPR2016-01739
`Attorney Docket: 39521-0025IP3
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`I.
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`Introduction
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`Patent Owner, Realtime Data, LLC (“Realtime”), filed a motion to exclude
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`Exhibits 1038-1040 and 1044 on December 22, 2017. As discussed below,
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`Petitioner hereby withdraws Exhibits 1039, 1040, and 1044.
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`As to Exhibit 1038, Realtime fails to adequately explain why this exhibit is
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`inadmissible, merely asserting inadmissibility and improperly shifting the burden
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`to Petitioner to explain why Exhibit 1038 is admissible. Realtime, as the moving
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`party, bears the burden to show entitlement to the relief requested by the motion to
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`exclude. 37 C.F.R. § 42.20. Realtime has not done so.
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`Indeed, relevant evidence is generally admissible. See FRE 402. “Evidence
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`is relevant if: (a) it has any tendency to make a fact more or less probable than it
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`would be without the evidence; and (b) the fact is of consequence in determining
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`the action. FRE 401. “The Rule’s basic standard of relevance thus is a liberal
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`one.” Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579, 587 (1993). Moreover,
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`where necessary, administrative agencies further relax the rules of evidence to
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`account for the skill possessed by administrative judges to handle evidence that
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`may otherwise mislead a jury. See Peabody Coal Co. v. McCandless, 255 F.3d
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`465, 469 (7th Cir. 2001). With this in mind, the PTAB favors inclusion. See, e.g.,
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`Liberty Mutual Ins. v. Progressive Casualty Ins., CBM2012-00002, Paper 66, pp.
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`1
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`Proceeding No.: IPR2016-01739
`Attorney Docket: 39521-0025IP3
`60-61 (PTAB Jan. 23, 2014) (“It is better to have a complete record of the evidence
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`submitted by the parties than to exclude particular pieces.”). As discussed in more
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`detail below, Exhibit 1038 is relevant to this proceeding and admissible.
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`In accordance with 37 C.F.R. §42.64, Petitioner’s opposition addresses “the
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`objections in the record in order,” starting with the objections to Exhibit 1038. For
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`the reasons discussed below, Patent Owner’s Motion to Exclude Exhibit 1038
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`should be denied.
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`II. Exhibit 1038 Should Not be Excluded as Hearsay
`Exhibit 1038 is issued U.S. Patent No. 6,633,968 to Zwiegincew et al.
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`Realtime contends that Exhibit 1038 “constitutes impermissible hearsay without an
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`applicable exception.” Motion to Exclude, p. 1. Realtime is incorrect.
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`As an initial matter, the substance of Exhibit 1038 is not hearsay. Indeed,
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`the substance of the Zwiegincew patent is being “offered as evidence of what it
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`describes to an ordinary artisan, not for proving the truth of the matters addressed
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`in the document.” Biomarin Pharm. Inc., v. Genzyme Therapeutic Products Ltd.
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`P’ship, IPR2013-00537, Paper No. 79, p. 25 (P.T.A.B. Feb. 23, 2015); see also
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`EMC Corp. v. Personal Web Technologies, LLC, IPR2013-00085, Paper 73, p. 66
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`(PTAB May 15, 2014).
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`Moreover, Exhibit 1038 was relied upon by Dr. Neuhauser in formulating
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`his opinion that Zwiegincew’s scenario files are operational and useful during
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`2
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`Proceeding No.: IPR2016-01739
`Attorney Docket: 39521-0025IP3
`operating system boot. See, e.g., Ex. 1003, ¶¶ 35, 40-41, 87-91, and 102. For at
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`least this reason, Exhibit 1038 should not be excluded because, under FRE 703, it
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`is proper for Dr. Neuhauser to rely on facts and/or data, even if otherwise
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`inadmissible, to the extent that (as here) experts in the field would reasonably rely
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`on those kinds of facts or data in forming an opinion on the subject. FRE 703 goes
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`on to state that the proponent of the opinion may disclose otherwise inadmissible
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`facts or data to the jury if their “probative value in helping the jury evaluate the
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`opinion substantially outweighs their prejudicial effect.” In this case, Realtime
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`makes no argument that Exhibit 1038 is untrustworthy or inaccurate, and your
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`Honors are certainly well-qualified to evaluate the competing opinions on
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`Zwiegincew in view of Exhibit 1038 without being prejudiced. Indeed, “because
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`the Board is not a lay jury, and has significant experience in evaluating expert
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`testimony, the danger of prejudice in this proceeding is considerably lower than in
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`a conventional district court trial.” SK Innovation Co., Ltd. v. Celgard, LLC,
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`IPR2014-00679, Paper No. 58, p. 50 (PTAB Sept. 25, 2015). Thus, Exhibit 1038
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`is proper and should not be excluded. Id., pp. 50-51.
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`Further, even assuming Exhibit 1038 is hearsay (it is not), several exceptions
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`apply. For example, Exhibit 1038 is a patent issued by the United States Patent
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`and Trademark Office. With this status, Exhibit 1038 qualifies as a public record
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`3
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`Proceeding No.: IPR2016-01739
`Attorney Docket: 39521-0025IP3
`under FRE 803(8) and a document that affects an interest in property under FRE
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`803(14)-(15).
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`Finally, even assuming Exhibit 1038 is hearsay (it is not) and not covered by
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`an enumerated exception (it is), Exhibit 1038 qualifies under the hearsay exception
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`set forth in FRE 807, known as the “Residual Exception.” FRE 807 establishes
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`that “a hearsay statement is not excluded by the rule against hearsay even if the
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`statement is not specifically covered by a hearsay exception in Rule 803 or 804.”
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`FRE 807. The residual exception applies if “(1) the statement has equivalent
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`circumstantial guarantees of trustworthiness; (2) it is offered as evidence of a
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`material fact; (3) it is more probative on the point for which it is offered than any
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`other evidence that the proponent can obtain through reasonable efforts; and (4)
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`admitting it will best serve the purposes of these rules and the interests of justice.”
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`See SAP America, Inc. v. Lakshmi Arunachalam, IPR2013-00194, Paper No. 67, p.
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`36 (PTAB Sept. 18, 2014) (relying on FRE 807 to admit evidence). As discussed
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`above, Exhibit 1038 is a U.S. Patent that is subject to extensive guarantees of
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`trustworthiness. Additionally, Exhibit 1038 is being offered as evidence of how a
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`POSITA would have interpreted Zwiegincew’s scenario files. Further,
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`Zwiegincew’s own writing on scenario file technology is the most probative
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`evidence of whether scenario files are operational and useful during operating
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`system boot. Because Zwiegincew is not a party to these proceedings, alternative
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`Proceeding No.: IPR2016-01739
`Attorney Docket: 39521-0025IP3
`sources of evidence are not immediately available and would require extensive
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`effort and cost to secure. For these reasons, admitting Exhibit 1038 will best serve
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`the purposes of these rules and the interests of justice because “[t]here is a strong
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`public policy for making all information filed in a non-jury, quasi-judicial
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`administrative proceeding available to the public, especially in an inter partes
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`review which determines the patentability of claims in an issued patent. It is better
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`to have a complete record of the evidence submitted by the parties than to exclude
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`particular pieces.” Nichia Corp. v. Emcore Corp., IPR2012-00005, Paper No. 68,
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`p. 59 (PTAB Feb. 11, 2014).
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`For these reasons, Exhibit 1038 should not be excluded as hearsay.
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`III. Exhibit 1038 is Relevant
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`Realtime also argues that “Exhibit 1038 is…not relevant under FRE 402.”
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`Motion to Exclude, p. 3. Specifically, Realtime contends that “no evidence exists
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`that 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.” Id. Realtime’s position is
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`untenable.
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`As Realtime acknowledges, “Exhibit 1038 is a continuation-in-part of the
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`application that issued as Zwiegincew.” Id. Yet, Realtime would have you believe
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`that when Zwiegincew uses the terms “scenario files” and “boot” in Exhibit 1038,
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`he means something different than when he uses the very same terms in Exhibit
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`Proceeding No.: IPR2016-01739
`Attorney Docket: 39521-0025IP3
`1010. This position is inconsistent with legal precedent, and is unsupported by
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`review of the two exhibits. See, e.g., Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d
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`1314, 1334 (Fed. Cir. 2003) (“unless otherwise compelled...the same claim term in
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`the same patent or related patents carries the same construed meaning.”) For
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`example, the background on hard page fault scenarios discussed by Zwiegincew is
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`identical for the two exhibits. Compare Exhibit 1038, 1:20-2:49 with Exhibit
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`1010, 1:10-2:39. And, Figs. 1-3 and the corresponding description is highly
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`similar and nearly identical. Compare Exhibit 1038, Figs. 1-3, 4:66-10:59 with
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`Exhibit 1010, Figs. 1-3, 4:31-10:13. Thus, Exhibits 1010 and 1038 are referring to
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`the same “scenario files” and “boot” and Zwiegincew’s discussion in Exhibit 1038
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`is relevant to how a POSITA would have viewed the disclosure in Exhibit 1010.
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`Just because Exhibit 1038 supports Dr. Neuhauser’s position, and contradicts Dr.
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`Back’s, does not make Exhibit 1038 irrelevant. To the contrary, Exhibit 1038 is
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`highly relevant to the credibility of the competing expert opinions as to whether
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`Zwiegincew’s scenario files are operational and useful during operating system
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`boot.
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`For these reasons, Exhibit 1038 should not be excluded as irrelevant. See
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`Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579, 587 (1993) (“The Rule’s basic
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`standard of relevance thus is a liberal one.”)
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`6
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`Proceeding No.: IPR2016-01739
`Attorney Docket: 39521-0025IP3
`IV. Exhibits 1039, 1040, and 1044 are Withdrawn
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`Realtime’s Motion to Exclude argues that Exhibits 1039, 1040, and 1044 are
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`not relevant to this proceeding. Motion to Exclude, pp. 4-7. Although these
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`exhibits provide evidence generally relevant to the related IPR proceedings
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`involving Realtime’s patents and each exhibit is relevant and admissible in at least
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`one of the related IPR proceedings, these exhibits are not explicitly cited in the
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`present proceeding. Accordingly, Petitioner withdraws Exhibits 1039, 1040, and
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`1044 from this proceeding, thereby rendering Patent Owner’s Motion to Exclude
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`these exhibits moot.
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`V. Conclusion
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`For the above reasons, Exhibit 1038 should be allowed entry into the
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`proceeding, and Patent Owner’s Motion to Exclude Exhibit 1038 should be denied.
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`Date: December 29, 2017
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`/Jeremy J. Monaldo/
`W. Karl Renner, Reg. No. 41,265
`Jeremy Monaldo, Reg. No. 58,680
`Andrew B. Patrick, Reg. No. 63,471
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
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`Attorneys for Petitioner
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`7
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`Proceeding No.: IPR2016-01739
`Attorney Docket: 39521-0025IP3
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(1) and 42.6(e)(4)(iii), the undersigned
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`certifies that on December 29, 2017, a complete and entire copy of this Petitioner’s
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`Opposition to Patent Owner’s Motion to Exclude was provided via email to the
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`Patent Owner by serving the email correspondence addresses of record as follows:
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`Joseph F. Edell, Richard Z. Zhang, Desmond S. Jui (pro hac vice)
`Fisch Sigler LLP
`5301 Wisconsin Avenue NW, Fourth Floor
`Washington, DC 20015
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`Email: Joe.Edell.IPR@fischllp.com
`Richard.Zhang.IPR@fischllp.com
`Desmond.Jui.IPR@fischllp.com
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`/Edward G. Faeth/
`Edward G. Faeth
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`(202) 626-6420
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