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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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`
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`APPLE INC. and FITBIT, INC.
`Petitioner
`
`v.
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`VALENCELL, INC.
`Patent Owner
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`___________________
`
`Case IPR2017-003181
`U.S. Patent No. 8,886,269
`___________________
`
`
`
`
`PETITIONER APPLE INC.’S REPLY TO
`PATENT OWNER’S OPPOSITION TO PETITIONER’S
`MOTION TO EXCLUDE EVIDENCE
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`
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`
`
`
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`1 Case IPR2017-01554 has been joined with this proceeding.
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`Case IPR2017-00318
`U.S. Patent No. 8,886,269
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`Valencell’s Opposition confirms that Exhibits 2152 and 2153 should be
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`excluded. Valencell failed to demonstrate that good cause exists for “excusal” of
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`its
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`late service of supplemental evidence. Rather, Valencell’s arguments
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`demonstrate that it blatantly disregarded its duty of candor and good faith by
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`failing to notify Apple or the Board that it had missed its deadline, or providing
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`any explanation for the missed deadline, when it filed its supplemental evidence–
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`even though it now admits that it knew it was filing its supplemental evidence after
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`the deadline had passed. Valencell’s lack of candor imposed unnecessary costs on
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`both Apple and the Board. Finally, even if Valencell’s supplemental evidence is
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`admitted, Exhibits 2152 and 2153 should be excluded because they are hearsay.
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`I.
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`VALENCELL FAILED TO UPHOLD ITS DUTY OF CANDOR
`UNDER 37 C.F.R. § 42.11
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`Valencell’s failure to comply with its duty of candor follows a pattern of
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`Valencell’s mischaracterizations and misrepresentations, which are well-
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`documented. (See e.g., Petitioner’s Reply, Paper 32, pp. 2-3, 10, 19-20; Petitioner’s
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`Sur-reply to Motion to Amend, Paper 39, p. 6; Petitioner’s Response to Motion for
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`Observations, Paper 45, pp. 1, 5, 6, 8; see also IPR2017-00319, Papers 8 and 9;
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`IPR2017-00321, Papers 9 and 10.)
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`Under 37 C.F.R. § 42.11(a), “[p]arties and individuals involved in the
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`proceeding have a duty of candor and good faith to the Office during the course of
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` 1
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`Case IPR2017-00318
`U.S. Patent No. 8,886,269
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`a proceeding.” Valencell forsook this duty in handling its response to Apple’s
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`objections to Exhibits 2152 and 2153. Valencell acknowledges that it knew
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`Exhibits 2152 and 2153 were inadmissible at the time it filed them with its
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`response. (Paper 47, p. 3 (“Valencell’s counsel pro-actively contacted Analog
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`Devices via email (see Exhibit 2156) to initiate the process of obtaining the
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`necessary declaration relating to Exhibits 2152 and 2153….”) (emphasis added).)
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`Thus, Valencell knew it needed to serve supplemental evidence to attempt to cure
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`the deficiencies of Exhibits 2152 and 2153. Indeed, Apple timely objected to
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`Exhibits 2152 and 2153. (See Paper 44, p. 1.)
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`Yet, when the deadline for service of supplemental evidence came–and
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`went–and Valencell did not have the needed supplemental evidence, Valencell
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`remained silent. Valencell did not alert Apple or the Board. Valencell did not
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`request leave from the Board to extend its deadline. Valencell did not provide any
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`reason for failing to meet its deadline. Instead, Valencell served its supplemental
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`evidence after the deadline passed, presumably hoping that Apple and the Board
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`would not be aware of or take issue with the missed deadline.
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`Extenuating circumstances may warrant leniency; misleading tactics do not.
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`Valencell now beseeches the Board to excuse its actions for “good cause” and “in
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`the interests of justice.” (Paper 47, p. 2.) Valencell’s ship sailed when it failed to
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`bring its late service of supplemental evidence to the Board’s attention prior to or
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`Case IPR2017-00318
`U.S. Patent No. 8,886,269
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`at the time of service. Thus, Valencell failed to fulfill its duty of candor and good
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`faith, and the late-submitted supplemental evidence should be excluded.
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` VALENCELL’S EXCUSES FOR LATE SERVICE OF II.
`
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`SUPPLEMENTAL EVIDENCE ARE INSUFFICIENT
`
`ITS
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`Valencell’s excuses do not warrant the Board’s relief under 37 C.F.R. §
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`42.5(c)(3). First, according to Valencell, it requested expedited processing and paid
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`an additional fee for Mr. Wong’s declaration on or about January 5, 2018. (Paper
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`47, p. 3.) The “two to five business days” for expedited processing would have
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`meant that Valencell should have received the declaration, at the latest, by January
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`12, 2018–eleven days before its supplemental evidence was due. (See id.) Yet
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`Valencell does not allege that it made any efforts to contact anyone at Analog
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`Devices during that time.
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`Second, Valencell tries to blame the weather for its failure, alleging that
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`“there were delays caused by extreme weather along the East Coast throughout the
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`month of January, impacting businesses and their operations.” (Paper 47, p. 3.)
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`There is no evidence–in the declaration of Mr. Wong, or elsewhere–that inclement
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`weather played any role in Valencell’s failure to timely serve its supplemental
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`evidence. Indeed, the delay at Analog Devices appears to simply have been
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`because they were “short staffed.” (Paper 47, p. 3.) Moreover, Valencell could
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`have started the process of gathering supplemental evidence far sooner–while
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`Case IPR2017-00318
`U.S. Patent No. 8,886,269
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`preparing its reply to Apple’s MTA Opposition (filed December 5, 2017)–not after
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`filing its reply with Exhibits 2152 and 2153 on December 29, 2017. Thus, they
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`were not proactive, as they now suggest they were.
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`Accordingly, the Board should not grant Valencell’s request for relief for
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`missing its deadline to serve supplemental evidence.
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` VALENCELL’S NEW EVIDENCE SHOULD BE EXPUNGED III.
`
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`In addition to the untimely served declaration of Mr. Wong, filed as Exhibit
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`2154, Valencell now also submits additional evidence–Exhibits 2155-2157. These
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`Exhibits were not previously served on Apple with the late supplemental evidence
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`and are inappropriate now. Because Valencell’s supplemental evidence (Ex. 2154)
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`should not be admitted, Exhibits 2155-2157 should be expunged along with
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`Exhibit 2154.
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` EXHIBITS 2152 AND 2153 ARE NOT SUBJECT TO ANY HEARSAY IV.
`
`
`EXCEPTION
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`The party seeking to admit the evidence has the burden of proving that the
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`admissibility requirements are met. See, e.g., Bourjaily v. U.S., 483 U.S. 171, 175-
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`76 (1987). Valencell admits that Exhibits 2152 and 2153 “are offered for their
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`truth,” and thus satisfy the definition of hearsay under FRE 801(c). (Paper 47, p.
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`8.) Valencell alleges instead that Exhibits 2152 and 2153 fall under exceptions to
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`the hearsay rule provided by FRE 803(17) and FRE 803(6). (Paper 47, pp. 8-11.)
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`Case IPR2017-00318
`U.S. Patent No. 8,886,269
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`Valencell is wrong on both accounts. First, Valencell has not shown that
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`Exhibits 2152 and 2153 are “[m]arket quotations, lists, directories, or other
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`compilations that are generally relied on by the public or by persons in particular
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`occupations,” under FRE 803(17). Indeed, Valencell only alleges that “Exhibits
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`2152 and 2153 are technical documents that are intended to summarize the
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`features, specifications, applications, and other technical characteristics of Analog
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`Device’s products,” not any of the enumerated publications in FRE 803(17). (Paper
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`47, p. 9.) And Valencell’s allegation that data sheets such as Exhibits 2152 and
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`2153 “are generally relied upon by engineers as well as other professionals in the
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`technical field,” is mere attorney argument, unsupported by the declaration of Mr.
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`Wong. Accordingly, Valencell has not satisfied FRE 803(17).
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`Second, Valencell has not shown that Exhibits 2152 and 2153 are a
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`“business record” under FRE 803(6). The data sheets of Exhibits 2152 and 2153
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`are not “[a] record of an act, event, condition, opinion, or diagnosis,” as required
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`by FRE 803(6) (emphasis added). Indeed, Valencell asserts that they are “technical
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`documents that are intended to summarize the features, specifications, applications,
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`and other technical characteristics of Analog Device’s products.” (Paper 47, p. 9.)
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`Accordingly, Valencell has not satisfied FRE 803(6).
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`Finally, Valencell’s reliance on the residual exception under FRE 807 fails
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`at least because Valencell did not meet the notice requirement of FRE 807(b).
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`Case IPR2017-00318
`U.S. Patent No. 8,886,269
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`
`Respectfully submitted,
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`
`
`
`
`
`
`/Michael D. Specht/
`
`Michael D. Specht
`Registration No. 54,463
`Attorney for Petitioner Apple Inc.
`
`
`Date: February 23, 2018
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`
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` 6
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`
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`CERTIFICATION OF SERVICE (37 C.F.R. § 42.6(e))
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`Case IPR2017-00318
`U.S. Patent No. 8,886,269
`
`
`The undersigned hereby certifies that a true and correct copy of the above
`
`captioned PETITIONER APPLE INC.’S REPLY TO PATENT OWNER’S
`
`OPPOSITION TO PETITIONERS MOTION TO EXCLUDE EVIDENCE
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`was served electronically via email in its entirety on February 23, 2018 on the
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`following:
`
`Justin B. Kimble (Lead Counsel)
`Jeffrey R. Bragalone (Back-up Counsel)
`Nicholas C. Kliewer (Back-up Counsel)
`T. William Kennedy (Back-up Counsel)
`Jonathan H. Rastegar (Back-up Counsel)
`Brian P. Herrmann (Back-up Counsel)
`Marcus Benavides (Back-up Counsel)
`R. Scott Rhoades (Back-up Counsel)
`Sanford E. Warren, Jr. (Back-up Counsel)
`
`Harper Batts (Counsel for Fitbit, Inc.)
`Jeremy Taylor (Counsel for Fitbit, Inc.)
`
`JKimble-IPR@bcpc-law.com
`jbragalone@bcpc-law.com
`nkliewer@bcpc-law.com
`bkennedy@bcpc-law.com
`jrastegar@bcpc-law.com
`bherrmann@bcpc-law.com
`mbenavides@bcpc-law.com
`srhoades@wriplaw.com
`swarren@wriplaw.com
`
`harper.batts@bakerbotts.com
`jeremy.taylor@bakerbotts.com
`dlfitbit-valencell@bakerbotts.com
`
`
`
`
`
`
`
`
`
`Date: February 23, 2018
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`
`
`Respectfully submitted,
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Michael D. Specht/
`
`Michael D. Specht
`Registration No. 54,463
`Attorney for Petitioner Apple Inc.
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