Filed on Behalf of Valencell, Inc.
`
`By: Sanford E. Warren Jr. (SWarren@wriplaw.com)
`
`R. Scott Rhoades (SRhoades@wriplaw.com)
`
`Warren Rhoades LLP
`
`1212 Corporate Drive, Suite 250
`
`Irving, Texas 75038
`
`Telephone: 972-550-2955
`
`Fax: 469-442-0091
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE, INC. and FITBIT, INC.
`Petitioners
`
`v.
`
`VALENCELL, INC.
`Patent Owner
`
`
`Case IPR2017-003181
`U.S. Patent No. 8,886,269
`
`
`
`
`
`
`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION
`TO EXCLUDE EVIDENCE
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`1 IPR2017-01554 has been joined to this current proceeding.
`
`
`
`
`
`
`
`By: Sanford E. Warren Jr. (SWarren@wriplaw.com)
`
`R. Scott Rhoades (SRhoades@wriplaw.com)
`
`Warren Rhoades LLP
`
`1212 Corporate Drive, Suite 250
`
`Irving, Texas 75038
`
`Telephone: 972-550-2955
`
`Fax: 469-442-0091
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE, INC. and FITBIT, INC.
`Petitioners
`
`v.
`
`VALENCELL, INC.
`Patent Owner
`
`
`Case IPR2017-003181
`U.S. Patent No. 8,886,269
`
`
`
`
`
`
`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION
`TO EXCLUDE EVIDENCE
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`1 IPR2017-01554 has been joined to this current proceeding.
`
`
`
`
`
`
`
`Case IPR2017-00318
`U.S. Patent No. 8,886,269
`
`TABLE OF CONTENTS
`
`I. INTRODUCTION ....................................................................................... 1
`
`II. LEGAL STANDARD ................................................................................. 2
`
`III. GOOD CAUSES EXISTS FOR EXCUSAL OF VALENCELL’S
`LATE SERVICE OF SUPPLEMENTAL EVIDENCE BY ONE
`DAY ............................................................................................................. 2
`
`IV. EXHIBITS 2152 AND 2153 ARE AUTHENTIC .................................... 4
`
` A. Exhibits 2152 and 2153 Have Been Properly Authenticated ................. 4
`
` B. Exhibits 2152 and 2153 Are Self-Authenticating and
` Admissible ................................................................................................. 6
`
`V. EXHIBITS 2152 AND 2153 ARE NOT HEARSAY
`BECAUSE BOTH EXHIBITS FALL WITHIN EXCEPTIONS
`TO THE HEARSAY RULE ........................................................................ 8
`
`VI. PETITIONER’S OBJECTION THAT EXHIBIT 2153 IS
`NOT ADMISSIBLE UNDER FED. R. EVID. 403 IS
`MISPLACED ............................................................................................. 11
`
`VII. CONCLUSION ....................................................................................... 13
`
`
`
`
`
`
`
`
`
`ii
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`Case IPR2017-00318
`U.S. Patent No. 8,886,269
`
`TABLE OF AUTHORITIES
`
`Cases
`
`ACCO Brands, Inc. v. PC Guardian Anti-Theft Prods., Inc., 592
`F.Supp. 2d 1208 (N.D. Cal. 2008) ................................................................. 6
`
`Alexander v. CareSource, 576 F.3d 551 (6th Cir. 2009) ................................... 6
`
`Donnelly Garment Co. v. NLRB, 123 F.2d 215 (8th Cir. 1941) ..................... 13
`
`Laird Techs., Inc. v. Graftech Inter. Holdings, Inc., IPR2014-
`00023, Paper 49 (PTAB March 25, 2015) ................................................... 12
`
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.,
`CBM2012-00002, Paper 66 (P.T.A.B. Jan. 23, 2014) ................................ 13
`
`Liberty Mutual Insurance Co. v. Progressive Casualty Insurance
`Co., CBM2012-00002, Paper 66 (January 23, 2014) .............................. 2, 11
`
`Pass & Seymour, Inc. v. Hubbell Inc., 532 F. Supp. 2d 418
`(N.D.N.Y. 2007) ............................................................................................ 6
`
`United States v. Hassan, 742 F.3d 104 (4th Cir. 2014) .................................... 4
`
`United States v. Holmquist, 36 F.3d 154 (1st Cir. 1994) .................................. 5
`
`Vibrant Media, Inc. v. General Electric Co., IPR2013-00170,
`Paper 56 (Jun. 26, 2014) .............................................................................. 11
`
`Wall Data Inc. v. Los Angeles County Sheriff’s Dep’t, 447 F.3d
`769 (9th Cir. 2006) ...................................................................................... 12
`
`Federal Rules of Evidence
`
`Fed. R. Evid. 803(17) ........................................................................................ 9
`
`Fed. R. Evid. 803(6) .......................................................................................... 9
`
`Fed. R. Evid. 803(6)(A)-(C) ........................................................................... 10
`
`Fed. R. Evid. 803(6)(D) .................................................................................. 11
`
`
`
`iii
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`U.S. Patent No. 8,886,269
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`Fed. R. Evid. 803(6)(E) .................................................................................. 11
`
`Fed. R. Evid. 901 .............................................................................................. 4
`
`Fed. R. Evid. 901(a) .......................................................................................... 5
`
`Fed. R. Evid. 901(b)(1) ..................................................................................... 5
`
`Fed. R. Evid. 901(b)(4) ................................................................................. 6, 8
`
`Fed. R. Evid. 902(7) ...................................................................................... 6, 8
`
`Rules
`
`37 C.F.R § 42.64 ............................................................................................. 12
`
`37 C.F.R. § 42.20(c) ..................................................................................... 1, 2
`
`37 C.F.R. § 42.5(c)(3) ....................................................................................... 2
`
`37 C.F.R. § 42.64(b)(2) ..................................................................................... 2
`
`
`
`
`
`
`
`
`
`iv
`
`
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`Case IPR2017-00318
`U.S. Patent No. 8,886,269
`
`I.
`
`INTRODUCTION
`
`
`
`Pursuant to the Board’s Scheduling Order (Paper No. 29), Patent Owner
`
`Valencell, Inc. (“Valencell”) hereby responds
`
`to Petitioner Apple, Inc.’s
`
`(“Petitioner”) Motion to Exclude Exhibits 2152 and 2153, filed on February 9, 2018
`
`(Paper 44).
`
`Petitioner’s Motion seeks to exclude Exhibits 2152 (Analog Devices’
`
`ADXL311 Rev. A Datasheet) and 2153 (Analog Devices’ ADXL311 Rev. B
`
`Datasheet) submitted by Valencell.2 In particular, Petitioner contends that Exhibits
`
`2152 and 2153 should be excluded under Federal Rule of Evidence (“Fed. R. Evid.”)
`
`901 as not properly authenticated; and that Exhibits 2152 and 2153 should be
`
`excluded under Fed. R. Evid. 801 and 802 as inadmissible hearsay. In addition,
`
`Petitioner adds that Exhibit 2153 should also be excluded under Fed. R. Evid. 403
`
`on the grounds of purported prejudice and confusion. Petitioner bears the burden to
`
`show that they are entitled to the relief requested, i.e., prove Exhibits 2152 and 2153
`
`are inadmissible. 37 C.F.R. § 42.20(c). But Petitioner fails to carry this burden. For
`
`the reasons set forth herein, the evidence submitted by Valencell is admissible under
`
`
`
`2 Valencell notes that Exhibits 2152 and 2153 were timely filed with Patent Owner’s
`Reply in Support of its Conditional Motion to Amend (Paper 37) on December 29,
`2017. Subsequently, Valencell served Petitioner with its Supplemental Evidence on
`January 24, 2018, authenticating both Exihibit 2152 and 2153 filed previously with
`the Board.
`
`
`
`1
`
`
`
`the Federal Rules of Evidence, and the Board should deny Petitioner’s Motion in its
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`Case IPR2017-00318
`U.S. Patent No. 8,886,269
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`entirety.
`
`II. LEGAL STANDARD
`
`As the moving party, Petitioner bears the burden of proving that the
`
`challenged exhibits are inadmissible. Liberty Mutual Insurance Co. v. Progressive
`
`Casualty Insurance Co., CBM2012-00002, Paper 66 at 59 (January 23, 2014); 37
`
`C.F.R. § 42.20(c). Petitioner has failed to meet this burden. As a matter of policy,
`
`the Board disfavors excluding evidence; “it is better to have a complete record of the
`
`evidence submitted by the parties than to exclude particular pieces.” Id. at 60-61.
`
`III. GOOD CAUSES EXISTS FOR EXCUSAL OF VALENCELL’S LATE
`SERVICE OF SUPPLEMENTAL EVIDENCE BY ONE DAY
`
`The Board’s rules expressly provide that “[a] late action will be excused on a
`
`showing of good cause or upon a Board decision that consideration on the merits
`
`would be in the interests of justice.” 37 C.F.R. § 42.5(c)(3). Although Valencell
`
`served its Supplemental Evidence3—the Declaration of Alex Wong relating to
`
`Exhibits 2152 and 2153—one day after the deadline pursuant to 37 C.F.R. §
`
`42.64(b)(2), good cause exists to excuse Valencell’s late service as there is no
`
`prejudice to Petitioner.4 On January 3, 2018—five days prior to the filing and service
`
`
`
`3 The previously served Supplemental Declaration of Alex Wong accompanies this
`motion as Exhibit 2154.
`4 Valencell notes that its late service of its Supplemental Evidence by one day was
`not the result of any unnecessary delay on behalf of Valencell.
`
`
`
`2
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`Case IPR2017-00318
`U.S. Patent No. 8,886,269
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`of Petitioner’s objections to Exhibits 2152 and 2153 (Paper 38 filed January 8,
`
`2018)—Valencell’s counsel pro-actively contacted Analog Devices via email (see
`
`Exhibit 2156) to initiate the process of obtaining the necessary declaration relating
`
`to Exhibits 2152 and 2153 from Analog Devices’ custodian of records. See
`
`Declaration of Nathan L. Levenson (hereinafter “Levenson Decl.”), Exhibit 2155 at
`
`¶ 2.
`
`On January 5, 2018, Benjamin Brown, the Assistant General Counsel for
`
`Analog Devices, responded to Valencell’s counsel’s request, stating that they could
`
`assist in providing a Declaration and provided Valencell’s counsel with the
`
`associated administrative fees. Mr. Brown further added that the process could be
`
`expedited for an additional fee. Mr. Brown projected the turn-around time for
`
`Valencell to receive a signed declaration through the expedited process to be two to
`
`five business days. Although Valencell requested to have the declaration expedited,
`
`Benjamin Brown, the Assistant General Counsel for Analog Devices, informed
`
`Valencell’s counsel via email (Exhibit 2157) on January 23, 2018 that an unforeseen
`
`delay was incurred due to Analog Devices counsel being “short staffed.” See
`
`Levenson Decl., Exhibit 2155 at ¶ 3. As the Board may recall, there were delays
`
`caused by extreme weather along the East Coast throughout the month of January,
`
`impacting businesses and their operations.5 The Declaration of Alex Wong, Analog
`
`
`
`5 Analog Devices’ headquarters are located in Norwood, Massachusetts.
`
`
`
`3
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`Case IPR2017-00318
`U.S. Patent No. 8,886,269
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`Devices’ custodian of technical documentation, was executed and delivered to
`
`Valencell’s counsel on January 24, 2018 via email. Valencell promptly served its
`
`Supplemental Evidence—the Declaration of Alex Wong—that afternoon, after its
`
`receipt from Analog Devices.
`
`As set forth above, Valencell has demonstrated good cause for the one day
`
`delay and that there is no prejudice to Petitioner; accordingly, Petitioner’s Motion
`
`should be denied. In addition, given the Board’s time and effort in instituting the
`
`present proceeding, it is in the interest of justice for the Board to decide this case on
`
`its merits which includes Exhibits 2152, 2153 and 2154. Accordingly, Valencell
`
`respectively requests excusal for its late service of its Supplemental Evidence in light
`
`of the relatively short delay and in the interests of justice.
`
`IV. EXHIBITS 2152 AND 2153 ARE AUTHENTIC
`
`
`
`A.
`
`Exhibits 2152 and 2153 Have Been Properly Authenticated
`
`Petitioner contends that Exhibits 2152 and 2153 should be excluded for failing
`
`to comply with Fed. R. Evid. 901. Motion to Exclude (Paper 44) at 3-4, 5-6.
`
`Petitioner’s objections to Exhibits 2152 and 2153, however, once examined have no
`
`merit. “[T]he burden to authenticate under Rule 901 is not high—only a prima facie
`
`showing is required.” United States v. Hassan, 742 F.3d 104, 133 (4th Cir. 2014)
`
`(quotation omitted). The burden of authentication “does not require the proponent of
`
`the evidence to rule out all possibilities inconsistent with authenticity, or to prove
`
`beyond any doubt that the evidence is what it purports to be. Rather, the standard for
`
`
`
`4
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`Case IPR2017-00318
`U.S. Patent No. 8,886,269
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`authentication, and hence for admissibility, is one of reasonable likelihood.” United
`
`States v. Holmquist, 36 F.3d 154, 168 (1st Cir. 1994).
`
`As Petitioner admits, the authentication requirement is satisfied if the
`
`proponent presents “evidence sufficient to support a finding that the item is what the
`
`proponent claims it is.” Fed. R. Evid. 901(a). In the Declaration of Alex Wong, Mr.
`
`Alex Wong (hereinafter “Mr. Wong”) declares to the authenticity of Exhibits 2152
`
`and 2153. See Declaration of Alex Wong (hereinafter “Wong Decl.”), Exhibit 2154
`
`at ¶¶ 6, 12. Mr. Wong is the Technical Illustration Team Manager at Analog Devices
`
`and among his responsibilities, Mr. Wong is the custodian of certain records for
`
`Analog Devices, including technical documentation. Wong Decl., Exhibit 2154 at
`
`¶¶ 3-4. By virtue of his duties and responsibilities, Mr. Wong is also familiar with
`
`the manner and process in which Analog Devices' datasheets for its products are
`
`created, kept and maintained as part of Analog Devices' regular business practices.
`
`Id. at ¶ 4. As such, Valencell’s Supplemental Evidence—the Declaration of Alex
`
`Wong—establishes that Exhibits 2152 and 2153 are what Valencell claims them to
`
`be under Fed. R. Evid. 901(b)(1)— datasheets for Analog Devices’ ADXL311 Rev.
`
`A accelerometer (Exhibit 2152) and the ADXL311 Rev. B accelerometer (Exhibit
`
`2153). Id. Notably, Petitioner’s Motion fails to explain why the Declaration of Alex
`
`Wong is insufficient to authenticate the datasheets. Accordingly, Exhibits 2152 and
`
`2153 have been properly authenticated and are admissible.
`
`
`
`5
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`U.S. Patent No. 8,886,269
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`
`
`
`
`B.
`
`Exhibits 2152 and 2153 Are Self-Authenticating and Admissible
`
`Exhibits 2152 and 2153 are also self-authenticating under Fed. R. Evid.
`
`902(7); Fed. R. Evid. 901(b)(4). Fed. R. Evid. 902(7) provides that a document with
`
`“[a]n inscription, sign, tag, or label purporting to have been affixed in the course of
`
`business and indicating origin, ownership, or control” is self-authenticating and
`
`“require[s] no extrinsic evidence of authenticity in order to be admitted.”
`
`Trade inscriptions such as marks and logos were held to be self-
`
`authenticating. See, e.g., Alexander v. CareSource, 576 F.3d 551, 561 (6th Cir. 2009)
`
`(job description on a company letterhead was self-authenticating under Fed. R. Evid.
`
`902(7) because it contained a trade inscription indicating the source of origin of the
`
`document); ACCO Brands, Inc. v. PC Guardian Anti-Theft Prods., Inc., 592 F.Supp.
`
`2d 1208, 1219 (N.D. Cal. 2008) (finding that computers inscribed with the
`
`Macintosh Portable trade name were self-authenticating under Fed. R. Evid. 902(7));
`
`Pass & Seymour, Inc. v. Hubbell Inc., 532 F. Supp. 2d 418, 438 (N.D.N.Y. 2007)
`
`(holding that self-promoting materials that contain a company logo are self-
`
`authenticating).
`
`Exhibits 2152 and 2153 satisfy Fed. R. Evid. 902(7), as both datasheets bear
`
`the following trade inscription and a copyright notice, shown below:
`
`
`
`6
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`Case IPR2017-00318
`U.S. Patent No. 8,886,269
`
`
`The logo above is a registered trademark of Analog Devices, Inc.— U.S. Trademark
`
`
`
`Reg. No. 4,363,194. In addition, Exhibit 2152 contains the following copyright
`
`notice:
`
`
`(Exhibit 2152 at 2).
`
`
`
`Exhibit 2153
`
`
`
`
`
`
`As previously discussed, the logo above is a registered trademark of Analog Devices,
`
`Inc.— U.S. Trademark Reg. No. 4,363,194. Exhibit 2153 further contains the
`
`following copyright notice:
`
`(Exhibit 2153 at 2).
`
`
`
`7
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`Case IPR2017-00318
`U.S. Patent No. 8,886,269
`
`As Exhibits 2152 and 2153 include Analog Devices’ name, trademark, copyright
`
`notice, and address—which were included as part of the datasheet in the course of
`
`business—the origin, ownership, and control of the datasheets (Exhibits 2152 and
`
`2153) is properly established. Exhibits 2152 and 2153, therefore, are self-
`
`authenticating under Fed. R. Evid. 902(7).
`
`An additional example of evidence that satisfies the authentication
`
`requirement is stated in Fed. R. Evid. 901(b)(4): “[t]he appearance, contents,
`
`substance, internal patterns, or other distinctive characteristic of the item, taken
`
`together with all the circumstances.” Exhibits 2152 and 2153 contain further
`
`indicators as to the source of origin of the datasheets, including the listing of the
`
`name, address, phone number, fax number, and website of the company producing
`
`the data sheet. These factors also authenticate Exhibits 2152 and 2153 under Fed. R.
`
`Evid. 901(b)(4).
`
`V.
`
`EXHIBITS 2152 AND 2153 ARE NOT HEARSAY BECAUSE BOTH
`EXHIBITS FALL WITHIN EXCEPTIONS TO THE HEARSAY RULE
`
`Next, Petitioner erroneously contends that Exhibits 2152 and 2153 are also
`
`inadmissible as hearsay under Fed. R. Evid. 801 and 802. Motion to Exclude (Paper
`
`44) at 2-3, 4-5. Petitioner’s hearsay objections, however, ignore well-recognized
`
`exceptions to the hearsay rule. Although these exhibits are offered for their truth, the
`
`datasheets should not be excluded as inadmissible hearsay because they fall within
`
`several hearsay exceptions set forth in the Federal Rules of Evidence. For example,
`
`
`
`8
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`
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`Case IPR2017-00318
`U.S. Patent No. 8,886,269
`
`Fed. R. Evid. 803(17) provides that market reports and similar commercial
`
`publications are considered admissible if they are generally used and relied upon by
`
`the public or by persons in particular occupations. See Fed. R. Evid. 803(17).
`
`Exhibits 2152 and 2153 are technical documents that are intended to summarize the
`
`features, specifications, applications, and other technical characteristics of Analog
`
`Device's products. Wong Decl., Exhibit 2154 at ¶ 5. Sales or material data sheets,
`
`such as Exhibits 2152 (Analog Devices’ ADXL311 Rev. A Datasheet) and 2153
`
`(Analog Devices’ ADXL311 Rev. B Datasheet), are generally relied upon by
`
`engineers as well as other professionals in the technical field. Thus, Exhibits 2152
`
`and 2153 are admissible under Fed. R. Evid. 803(17).
`
`The datasheets—Exhibits 2152 and 2153—are also admissible under Fed. R.
`
`Evid. 807 because both datasheets have circumstantial guarantees of trustworthiness,
`
`such as the use of the Analog Devices’ trademark and copyright notices. Both
`
`datasheets are offered with respect to the material facts relating to the iMEMS
`
`process used in the accelerometers, and it is highly probative regarding the iMEMS
`
`process.
`
`Notwithstanding the foregoing, Exhibits 2152 and 2153 are also admissible
`
`under Fed. R. Evid. 803(6) because the datasheets fall within the “business record”
`
`exception to the hearsay rule. See Fed. R. Evid. 803(6). This exception applies if
`
`“the record was made at or near the time by . . . someone with knowledge; the record
`
`
`
`9
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`U.S. Patent No. 8,886,269
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`was kept in the course of a regularly conducted activity of … [an] organization; [and]
`
`making the record was a regular practice of that activity.” Fed. R. Evid. 803(6)(A)-
`
`(C). These requirements must be shown by testimony of a qualified witness. Fed. R.
`
`Evid. 803(6)(D). Analog Devices’ datasheets for both the ADXL311 Rev. A
`
`accelerometer (Exhibit 2152) and the ADXL311 Rev. B accelerometer (Exhibit
`
`2153) are admissible because they fall under the business record exception, as set
`
`forth in the Declaration of Alex Wong. See Wong Decl., Exhibit 2154.
`
`As set forth in Mr. Wong’s Declaration, it is the regular business practice of
`
`Analog Devices to prepare and create technical documentation including datasheets
`
`for its products. Id. at ¶ 4. As required by Fed. R. Evid. 803(6)(A)-(C), Mr. Wong’s
`
`Declaration establishes that the ADXL311 Rev. A & Rev. B datasheets were:
`
`i. Prepared and created by, or from information contemporaneously
`
`transmitted by, an individual employed at Analog Devices with
`
`specialized knowledge of technical characteristics of the ADXL311
`
`Rev. A & Rev. B accelerometers at or near the time of the
`
`accelerometers’ production and availability for purchase (id. at ¶¶ 7-8,
`
`3-14);
`
`ii. The datasheets for the ADXL311 Rev. A & Rev. B accelerometers are
`
`kept in the course of the regularly conducted business activities of
`
`Analog Devices (id. at ¶¶ 9, 15); and
`
`
`
`10
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`Case IPR2017-00318
`U.S. Patent No. 8,886,269
`iii. The datasheets for the ADXL311 Rev. A & Rev. B accelerometers are
`
`created as part of the regular business practices of Analog Devices to
`
`summarize the features, specifications, applications, and other
`
`technical characteristics of the accelerometers (id. at ¶¶ 5, 7, 9, 13, 15).
`
`As the custodian of technical documentation for Analog Devices, Mr. Wong
`
`is qualified to testify about these business records. Id. at ¶¶ 3-4. See Fed. R. Evid.
`
`803(6)(D). Moreover, Petitioner
`
`failed
`
`to
`
`identify any hallmarks of
`
`untrustworthiness. See Fed. R. Evid. 803(6)(E).
`
`Accordingly, the datasheets for both the ADXL311 Rev. A accelerometer
`
`(Exhibit 2152) and the ADXL311 Rev. B accelerometer (Exhibit 2153) should not
`
`be excluded as inadmissible hearsay.
`
`VI. PETITIONER’S OBJECTION THAT EXHIBIT 2153 IS NOT
`
`ADMISSIBLE UNDER FED. R. EVID. 403 IS MISPLACED
`
`Motions to exclude should be directed to the admissibility of the evidence
`
`(e.g., relevance or hearsay) rather than the sufficiency or weight of the evidence.
`
`Vibrant Media, Inc. v. General Electric Co., IPR2013-00170, Paper 56 at 31, 34
`
`(Jun. 26, 2014). “There is a strong public policy for making all information filed in
`
`a non-jury, quasi-judicial administrative proceeding available to the public,
`
`especially in an inter partes review which determines the patentability of claim in
`
`an issued patent.” Liberty Mutual Insurance Co. v. Progressive Casualty Insurance
`
`Co., CBM2012-00002, Paper 66 at 60 (January 23, 2014). Accordingly, motions to
`
`
`
`11
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`Case IPR2017-00318
`U.S. Patent No. 8,886,269
`
`exclude directed to the weight of the evidence rather than its admissibility should be
`
`denied because “[i]t is within the Board’s discretion to assign the appropriate weight
`
`to be accorded to evidence.” Id.
`
`Here, Petitioner contends that Exhibit 2153 is not admissible under Fed. R.
`
`Evid. 403 on the grounds of purported prejudice and confusion due to the presence
`
`of the watermark “OBSOLETE” 6 on the datasheet. See Motion to Exclude (Paper
`
`44) at 4. Yet, Petitioner fails even to articulate any particular unfair prejudice, let
`
`alone demonstrate that the probative value of Exhibit 2153 is substantially
`
`outweighed by the danger of any such prejudice. Petitioner’s boilerplate objection is
`
`nothing more than a misguided attempt to argue the weight of the evidence, rather
`
`than its admissibility, and a motion to exclude pursuant to 37 C.F.R § 42.64 is not
`
`an appropriate mechanism to do so. See Laird Techs., Inc. v. Graftech Inter.
`
`Holdings, Inc., IPR2014-00023, Paper 49 at 33 (PTAB March 25, 2015).
`
`Fed. R. Evid. 403 is designed to prevent a party from being unduly prejudiced
`
`in front of a jury. See Wall Data Inc. v. Los Angeles County Sheriff’s Dep’t, 447 F.3d
`
`769, 782-83 (9th Cir. 2006). Such principles do not apply here. As the Board has
`
`
`
`6 As set forth in the Declaration of Alex Wong, Analog Devices uses six designators
`to inform our customers of where a product is in its life cycle, including the
`designation “obsolete”. Wong Decl., Exhibit 2154 at ¶ 17. Analog Devices
`designates a product “obsolete” when the models in this product family are no longer
`available. Id. Once a product is no longer available, the watermark “OBSOLETE”
`may be added to the datasheet. Id.
`
`
`
`12
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`
`
`Case IPR2017-00318
`U.S. Patent No. 8,886,269
`
`previously explained,“[p]roceedings before the Board are not jury trials; in the
`
`absence of a jury, the risk of unfair prejudice against which Rule 403 guards is
`
`diminished, if not eliminated entirely.” Neste Oil OYJ v. Reg Synthetic Fuels, LLC,
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`IPR2013-00578, Paper 53 at 10 (March 12, 2015) (citation omitted).
`
`In addition, “[i]t is within the Board’s discretion to assign the appropriate
`
`weight to be accorded to evidence.” Liberty Mutual Ins. Co. v. Progressive Casualty
`
`Ins. Co., CBM2012-00002, Paper 66 at p. 60 (P.T.A.B. Jan. 23, 2014). Petitioner’s
`
`argument that the evidence may confuse the issues is misplaced as the fact-finders
`
`in this proceeding, i.e., the Board, can accord the evidence Petitioner seeks to
`
`exclude the appropriate weight. See Donnelly Garment Co. v. NLRB, 123 F.2d 215,
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`224 (8th Cir. 1941) (“One who is capable of ruling accurately upon the admissibility
`
`of evidence is equally capable of sifting it accurately after it has been received . . .
`
`.”). Accordingly, Petitioner has failed to establish that Exhibit 2153 should be
`
`excluded under Fed. R. Evid. 403.
`
`VII. CONCLUSION
`
`Accordingly, for the reasons set forth above, Petitioner’s Motion to
`
`Exclude should be denied in its entirety.
`
`
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`13
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`
`
`Date: February 16, 2018
`
`
`
`Respectfully submitted,
`
`Case IPR2017-00318
`U.S. Patent No. 8,886,269
`
`
`
`/s/ Sanford E. Warren, Jr.
`Sanford E. Warren, Jr.
`Reg. No. 33,219
`Warren Rhoades LLP
`1212 Corporate Drive, Suite 250
`Irving, Texas 75038
`Email: swarren@wriplaw.com
`Telephone: 972-550-2955
`
`R. Scott Rhoades
`Reg. No. 44,300
`Warren Rhoades LLP
`1212 Corporate Drive, Suite 250
`Irving, Texas 75038
`Email: srhoades@wriplaw.com
`Telephone: 972-550-2997
`
`Attorneys for Patent Owner
`
`
`
`14
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Case IPR2017-00318
`U.S. Patent No. 8,886,269
`
`I certify that the foregoing PATENT OWNER’S OPPOSITION TO
`
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE was served on the
`
`Petitioner by electronic mail on February 16, 2018:
`
`Michael D. Specht, Reg. No. 54,463 (mspecht-PTAB@skgf.com)
`Michelle K. Holoubek, Reg. No. 54,179 (holoubek-PTAB@skgf.com)
`Jason A. Fitzsimmons, Reg. No. 65,367 (jfitzsimmons-PTAB@skgf.com)
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C., (PTAB@skgf.com)
`1100 New York Avenue, N.W.,
`Washington, D.C., 20005
`
`Harper Batts (harper.batts@bakerbotts.com)
`Jeremy Taylor (jeremy.taylor@bakerbotts.com)
`(dlfitbitvalencell@bakerbotts.com)
`BAKER BOTTS L.L.P.
`1001 Page Mill Road, Bldg. One, Suite 200
`Palo Alto, CA 94304
`
`
`
`
`/s/ Sanford E. Warren, Jr.
`Sanford E. Warren, Jr.
`Reg. No. 33,219
`R. Scott Rhoades
`Reg. No. 44,300
`Warren Rhoades LLP
`1212 Corporate Drive, Suite 250
`Irving, Texas 75038
`Email: swarren@wriplaw.com
`Telephone: 972-550-2955
`
`Attorneys for Patent Owner
`
`15
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`
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