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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
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`K/S HIMPP,
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`Petitioner,
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`v.
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`III HOLDINGS 4, LLC,
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`Patent Owner
`_________________
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`Case IPR2017-00782
`Patent 8,654,999
`_________________
`
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`Patent Owner Motion to Exclude
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`I.
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`Introduction
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`Pursuant to 37 C.F.R. § 42.64, III Holdings 4, LLC (“Patent Owner”) moves
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`to exclude certain evidence, discussed below, that Petitioner submitted in this
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`proceeding. The Board should grant the Patent Owner Motion to Exclude for the
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`reasons set forth below. Patent Owner timely filed and served Petitioner with
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`objections to the exhibits accompanying the Petition on August 10, 2017. Paper 10.
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`II. The Board Should Exclude Exhibit 1109 – German patent publication
`DE19542961 (“DE961”)
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`Patent Office Rule 37 C.F.R. § 42.63(b) requires “a translation of the
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`document into English and an affidavit attesting to the accuracy of the translation
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`must be filed with the document.” 37 C.F.R. § 42.63(b). The Patent Office Rules
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`further state that “[e]vidence that is not taken, sought, or filed in accordance with
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`this subpart is not admissible.” 37 C.F.R. § 42.61(a) (emphasis added). As
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`explained below, the “Verification” included with Exhibit 1109 is not “an affidavit
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`attesting to the accuracy of the translation” that is required by § 42.63(b). Without
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`the required affidavit attesting to the accuracy of the translation, Patent Owner and
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`the Board are left guessing as to the substance of the foreign language document.
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`Accordingly, Patent Owner respectfully requests that the Board apply 37 C.F.R.
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`§ 42.61(a) and exclude the foreign language document. See Square, Inc. v. REM
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`Holdings 3, LLC, IPR2014-00312, Paper No. 58 (PTAB July 7, 2015) (excluding
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`1
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`exhibit because translation was not accompanied by an affidavit as required by 37
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`C.F.R. § 42.63(b)).
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`Exhibit 1109 must be excluded because the “Verification” accompanying the
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`Exhibit it fails to meet the requirements for an affidavit under the Patent Office’s
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`rules. Specifically, 37 C.F.R. § 42.53(a) states that: “Uncompelled direct testimony
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`must be submitted in the form of an affidavit.” Furthermore, 37 C.F.R. § 42.2
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`states that: “Affidavit means affidavit or declaration under § 1.68 of this chapter. A
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`transcript of an ex parte deposition or a declaration under 28 U.S.C. 1746 may be
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`used as an affidavit.” Petitioner’s exhibit fails to comply with the requirements
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`contained in the rules and statute.
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`Exhibit 1109 does not comply with 37 C.F.R. § 1.68. Specifically, § 1.68
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`requires that:
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`Any document to be filed in the Patent and Trademark Office and
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`which is required by any law, rule, or other regulation to be under
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`oath may be subscribed to by a written declaration. Such declaration
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`may be used in lieu of the oath otherwise required, if, and only if, the
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`declarant is on the same document, warned that willful false
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`statements and the like are punishable by fine or imprisonment, or
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`both (18 U.S.C. 1001) and may jeopardize the validity of the
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`application or any patent issuing thereon. The declarant must set forth
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`in the body of the declaration that all statements made of the
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`declarant’s own knowledge are true and that all statements made on
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`information and belief are believed to be true.
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`2
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`37 C.F.R. § 1.68. The “Verification included in Exhibit 1109 merely states “To the
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`best of my knowledge and belief, the attached is a true, accurate and complete
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`English translation of the above-referenced German document.” (Ex. 1109 at 10).
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`The “Verification” lacks all of the other statements required by 37 C.F.R. § 1.68.
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`Exhibit 1109 also fails to comply with 28 U.S.C. § 1746. Specifically,
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`§ 1746 requires that declarations signed within the United States must be
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`“subscribed by [the declarant], as true under penalty of perjury, and dated, in
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`substantially the following form: … (2) If executed within the United States, its
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`territories, possessions, or commonwealths: ‘I declare (or certify, verify, or state)
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`under penalty of perjury that the foregoing is true and correct. Executed on (date).
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`(Signature)’.” 28 U.S.C. § 1746. The “Verification” of Exhibit 1109, which merely
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`states “To the best of my knowledge and belief, the attached is a true, accurate and
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`complete English translation of the above-referenced German document” (Ex.
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`1109 at 10), fails to satisfy the requirement that the declaration be subscribed as
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`true under penalty of perjury in substantially the same form as provided by the
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`statute.
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`Furthermore, because the “Verification” of Exhibit 1109 does not qualify as
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`an affidavit under 37 C.F.R. § 42.53(a), Exhibit 1109 must be excluded under FRE
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`901 because it is not properly authenticated, and Petitioner has not presented any
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`3
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`evidence that the English language portions of the exhibit are authentic. Further,
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`the exhibit is not self-authenticating under FRE 902.
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`III. The Board Should Exclude Exhibit 1111 – Michael Valente, “Guideline
`for Audiologic Management of the Adult Patient (“Valente”) and
`Exhibit 1112 – Good Practice Guidance for Adult Hearing Aid Fittings
`and Services – Background to the Document and Consultation (“Good
`Practice Guidance”)
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`The Board should exclude Valente (Ex. 1111) and Good Practice Guidance
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`(Ex. 1112) as unauthenticated, hearsay, and irrelevant. Fed. R. Evid. 901, 902, 801,
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`802, 401, 402. In order “[t]o satisfy the requirement of authenticating or
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`identifying an item of evidence, the proponent must produce evidence sufficient to
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`support a finding that the item is what the proponent claims it is.” Fed. R. Evid.
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`901. Petitioner failed to authenticate the Valente Document and the Good Practice
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`Guidance Document as documents that were publicly available as of the priority
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`date.
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`The Valente Document bears only a copyright date of 2016, which is
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`unauthenticated by any evidence that Petitioner has introduced, and a further date
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`of “12/14/2016”. The Good Practice Guidance Document references a November
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`2004 date, which is also unauthenticated by any evidence that Petitioner has
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`introduced. The mere appearance of a date, even a copyright date, on a document is
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`insufficient to establish the date of when the document was available to the public.
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`See, e.g., TRW Automotive U.S. LLC v. Magna Elecs. Inc., Case IPR2014-01347,
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`4
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`Paper 25 at 5-12 (PTAB Jan. 6, 2016) (granting patent owner’s motion to exclude
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`prior art for lack of authentication). The dates by themselves are insufficient, as a
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`matter of law, to establish that the Valente Document or the Good Practice
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`Guidance Document qualify as a printed publication, let alone that they were
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`accessible to the public prior to the 2010 priority date of the challenged patent. See,
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`e.g., TRW Automotive, Case IPR2014-01347, Paper 25 at 5-12 (“Although [a]
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`copyright notice is probative that IEEE owns a copyright to the article, it is not
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`probative that the article was ever published by IEEE or anyone else.”); Stryker
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`Corp. v. Karl Storz Endoscopy-Am., Inc., Case IPR2015-00677, Paper 15 at 18-19
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`(PTAB Sept. 2, 2015); In re Lister, 583 F.3d 1307, 1316-17 (Fed. Cir. 2009);
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`iOnROAD Ltd. v. Mobileye Techs. Ltd., Case IPR2013-00227, Paper 18 at 3, 16
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`(PTAB Aug. 27, 2013) (stating that a copyright date does not mean that a reference
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`was published). Accordingly, the Board should exclude Exhibits 1111 and 1112
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`because they were not properly authenticated.
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`Second, the date on the Good Practice Guidance Document is itself
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`inadmissible hearsay. Petitioner attempts to rely on the Good Practice Guidance
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`Document date for a hearsay purpose, i.e., to prove the truth of the contention that
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`the document was publicly accessible as of 2010. Fed. R. Evid. 801 (hearsay is an
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`out-of-court statement offered to prove truth of the matter asserted); Stryker, Case
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`IPR2015-00677, Paper 15 at 18-19; In re Lister, 583 F.3d at 1316-17. No hearsay
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`5
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`exception applies. Therefore, the Good Practice Guidance Document date is
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`hearsay under FRE 801, and is inadmissible under FRE 802 and FRE 803.
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`Third, the Valente Document and the Good Practice Guidance Document
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`should be excluded as irrelevant, because Petitioner failed to establish each was
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`available as prior art. Evidence is relevant if (1) it has any tendency to make a fact
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`more or less probably than it would be without the evidence, and (2) the fact is of
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`consequence in determining the action. Fed. R. Evid. 401. A Petitioner can
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`challenge the validity of a patent based only on prior art patents and printed
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`publications. 35 U.S.C. § 311(b). It is Petitioner’s burden to establish that a
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`document is a “printed publication” by demonstrating that the document was
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`publicly accessible to persons concerned with the prior art to which the document
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`relates. ServiceNow, Inc. v. Hewlett-Packard Co., Case IPR2015- 00716, Paper 13
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`at 8, 15-17 (PTAB Aug. 26, 2015).
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`As discussed above, the Valente Document and the Good Practice Guidance
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`Document are each unauthenticated, inadmissible hearsay, and have not been
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`shown to be prior art. Accordingly, the Valente Document and the Good Practice
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`Guidance Document cannot be relevant in determining patentability of the ’999
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`Patent claims. Allowing the Petitioner to rely on the Valente Document and the
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`Good Practice Guidance Document as prior art would be unfairly prejudicial to
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`Patent Owner under FRE 403, given that each is unauthenticated, the purported
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`6
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`publication dates are hearsay, and the documents are irrelevant. For all of the
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`reasons discussed above, the Board should exclude exhibits 1111 and 1112.
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`Dated: March 20, 2018
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`Respectfully submitted,
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`
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`/Henry A. Petri, Jr./
`Henry A. Petri Jr., Reg. No. 33,063
`James P. Murphy, Reg. No. 55,474
`Polsinelli, PC
`1000 Louisiana Street, 53rd Floor
`Houston, Texas 77002
`Tele: (713) 374-1631
`Fax: (713) 374-1601
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`7
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing PATENT
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`OWNER MOTION TO EXCLUDE was served on March 20, 2018, via email
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`directed to the following counsel of record for the Petitioner:
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`Donald R. Steinberg
`Don.Steinberg@wilmerhale.com
`Yung-Hoon Ha
`sam.ha@wilmerhale.com
`Haixia Lin
`Haixia.Lin@wilmerhale.com
`Christopher R. O’Brien
`christopher.obrien@wilmerhale.com
`Vera A Shmidt
`Vera.Shmidt@wilmerhale.com
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`/Sabrina Alaniz/
`Sabrina Alaniz
`POLSINELLI PC
`1000 Louisiana, Fifty-Third Floor
`Houston, Texas 77002
`Tele: (713) 374-1600
`Fax: (713) 374-1601
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`8
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