Docket No.: 2212665-00120US8
`Filed on behalf of K/S HIMPP
`By: Donald R. Steinberg, Reg. No. 37,241
`Haixia Lin, Reg. No. 61,318
`Christopher R. O’Brien, Reg. No. 63,208
`Yung-Hoon Ha, Reg. No. 56,368
`Wilmer Cutler Pickering Hale and Dorr LLP
`60 State Street
`Boston, Massachusetts 02109
`Email: Don.Steinberg@wilmerhale.com
` Yung-Hoon.Ha@wilmerhale.com
` Haixia.Lin@wilmerhale.com
` Christopher.O’Brien@wilmerhale.com
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`K/S HIMPP
`Petitioner
`v.
`III Holdings 4 LLC
`Patent Owner.
`_______________
`Case IPR2017-00782
`Patent No. 8,654,999
`_______________
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`PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE
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`
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`Filed on behalf of K/S HIMPP
`By: Donald R. Steinberg, Reg. No. 37,241
`Haixia Lin, Reg. No. 61,318
`Christopher R. O’Brien, Reg. No. 63,208
`Yung-Hoon Ha, Reg. No. 56,368
`Wilmer Cutler Pickering Hale and Dorr LLP
`60 State Street
`Boston, Massachusetts 02109
`Email: Don.Steinberg@wilmerhale.com
` Yung-Hoon.Ha@wilmerhale.com
` Haixia.Lin@wilmerhale.com
` Christopher.O’Brien@wilmerhale.com
`
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`K/S HIMPP
`Petitioner
`v.
`III Holdings 4 LLC
`Patent Owner.
`_______________
`Case IPR2017-00782
`Patent No. 8,654,999
`_______________
`
`PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE
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`I.
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`IPR2017-00782
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`INTRODUCTION
`Patent Owner’s Motion to Exclude Exhibits 1109, 1111, and 1112 should be
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`denied for at least the reasons set forth herein. In addition, Exhibit 1115 should be
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`admitted for consideration in this proceeding as timely-served and responsive
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`supplemental evidence.
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`II. THE BOARD SHOULD DENY THE MOTION TO EXCLUDE
`EXHIBIT 1109 AND SHOULD ADMIT EXHIBIT 1115
`Patent Owner’s Motion to Exclude Exhibit 1109 should be denied because—
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`although Patent Owner fails to acknowledge the fact in its Motion to Exclude—
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`Petitioner timely served supplemental evidence pursant to 37 C.F.R. §42.64(b)(2)
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`on Patent Owner curing its objections to admissibility.
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`For evidence other than deposition evidence, first an “objection must
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`identify the grounds for the objection with sufficient particularity to allow
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`correction in the form of supplemental evidence,” then, “[t]he party relying on
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`evidence to which an objection is timely served may respond to the objection by
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`serving supplemental evidence within ten business days of service of the
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`objection.” 37 C.F.R. §42.64(b)(2). Patent Owner filed its Objection to Exhibit
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`1109 on August 10, 2017, specifying that “Petitioner has not provide [sic] a
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`translation of the foreign language document in accordance with 37 C.F.R. §
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`42.63(b) and 37 C.F.R. § 42.2, as further specified in 37 C.F.R. § 1.68 (affidavit)
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`and 28 U.S.C. § 1746 (declaration).” Paper 10, 2.
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`1
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`IPR2017-00782
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`In response, Petitioner timely served supplemental evidence on Patent
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`Owner on August 24, 2017 curing those objections. See, Exhibit 1115, now filed
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`with this Opposition,1 and Exhibit 1118 (Exhibit 1115 service email to counsel for
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`Patent Owner).
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`Exhibit 1115, in accordance with 37 C.F.R. § 42.63(b), includes “a
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`translation of the document into English and an affidavit attesting to the accuracy
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`of the translation.” Ex. 1115, 10. Pursuant to 37 C.F.R. § 42.2, an “[a]ffidavit
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`means affidavit or declaration under § 1.68 of this chapter. A transcript of an ex
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`parte deposition or a declaration under 28 U.S.C. 1746 may be used as
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`an affidavit.” (emphasis added).
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`Ex. 1115 satisfies the requirements of 37 C.F.R. § 1.68. Specifically, the
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`declarant in Ex. 1115: (i) is on the same document; (ii) acknowledges that willful
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`false statements and the like are punishable by fine or imprisonment, or both (18
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` 1
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` See Activision Blizzard, Inc. v. Acceleration Bay, LLC, Case IPR2015-01951, slip
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`op. at 6–7 (PTAB May 4, 2016) (explaining that authorization to file previously-
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`served supplemental evidence is not required when Patent Owner has filed a
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`motion to exclude and Petitioner is filing an opposition to the motion to exclude to
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`explain how the supplemental evidence cures the objections to admissibility).
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`2
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`IPR2017-00782
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`U.S.C. 1001); and (iii) sets forth in the body of the declaration that all statements
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`made of the declarant's own knowledge are true and that all statements made on
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`information and belief are believed to be true. Ex. 1115, 10; 37 C.F.R. § 1.68.
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`Accordingly, Ex. 1115—which was timely served on Patent Owner to cure the
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`evidentiary objections filed against Ex. 1109—satisfies all requirements of 37
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`C.F.R. § 42.63(b) and 37 C.F.R. § 42.2, as further specified in 37 C.F.R. § 1.68.
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`See, e.g., Becton, Dickinson and Company v. B. Braun Melsungen AG, Case
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`IPR2017-01588, slip op. at 7-8 (PTAB Dec. 21, 2017) (distinguishing between a
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`declaration or an affidavit, as required by 37 C.F.R. § 42.2, when evaluating the
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`sufficiency of an affidavit attesting to the accuracy of a translation).
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`
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`Patent Owner’s present Motion to Exclude identifies the same objections
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`against Exhibit 1109 that were filed in its original objections, but neither addresses
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`Exhibit 1115 at all, nor even alleges that Exhibit 1115 is insufficient in curing
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`those original objections. As a result, Patent Owner’s Motion should be denied
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`and Exhibit 1115—which sufficiently cures the objections raised by Patent Owner
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`and was timely served—should be admitted for consideration in this proceeding.
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`III. THE BOARD SHOULD DENY THE MOTION TO EXCLUDE
`EXHIBITS 1111 AND 1112
`Patent Owner’s Motion to Exclude Exhibits 1111 and 1112 should be denied
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`as moot because Exhibits 1111 and 1112 are only used by Dr. Atlas in his
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`Declaration as support for his statements regarding parameter settings and how
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`3
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`IPR2017-00782
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`they are set. Patent Owner has not challenged the accuracy of these statements by
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`Dr. Atlas and the exhibits are not part of the grounds of unpatentability instituted
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`for inter partes review by the Board.
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`Dated: April 3, 2018
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`Respectfully submitted,
`K/S HIMPP, Petitioner
`
`By: /Donald R Steinberg/
`Donald R. Steinberg
`Registration No. 37,241
`Wilmer Cutler Pickering
`Hale & Dorr LLP
`Tel: 617-526-6453
`Fax: 617-526-5000
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`4
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`IPR2017-00782
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
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`TABLE OF EXHIBITS
`
`Description
`Exhibit
`1101 U.S. Patent No. 8,654,999 B2 to Mindlin
`1102
`File History for U.S. Patent No. 8,654,999 B2 to Mindlin
`1103 U.S. Patent No. 8,787,603 to Fichtl, et al.
`1104 U.S. Patent Application Publication 2003/0215105 to Sacha
`1105 U.S. Patent Application Publication 2005/0036637 to Janssen
`1106 U.S. Patent No. 6,741,712 to Bisgaard
`1107 U.S. Patent No. 4,972,487 to Mangold
`1108 Declaration of Dr. Les Atlas
`1109 German patent publication DE19542961 with certified translation
`1110 U.S. Patent No. 7,933,419 to Roeck
`1111 Michael Valente, “Guideline for Audiologic Management of the
`Adult Patient”
`1112 Good Practice Guidance for Adult Hearing Aid Fittings and
`Services – Background to the Document and Consultation
`1113 Keidser et al., “Variation in preferred gain with experience for
`hearing-aid user”
`1114 Dillon et al., “The trainable hearing aid: What will it do for clients
`and clinicians?”
`1115 German patent publication DE19542961 with certified translation
`(now filed with Petitioner’s Opposition)
`1116 Deposition transcript of Mr. Brown, February 1, 2018
`1117 Webster’s New College Dictionary 2007 (excerpt)
`August 24, 2017 service email from H. Lin, Supplemental Evidence
`in response to Patent Owner's Objection to Evidence IPR2017-
`00781, IPR2017-00782
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`1118
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`i
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`IPR2017-00782
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`CERTIFICATE OF SERVICE
`I hereby certify that on April 3, 2018, I caused a true and correct copy of the
`foregoing materials:
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`• Petitioner’s Opposition to Patent Owner’s Motion to Exclude
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`• Exhibits 1115 and 1118
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`• Petitioner’s Updated Table of Exhibits
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`to be served electronically via e-mail to the following:
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`Henry A. Petri, Jr., (Lead Counsel Reg. No. 33,063)
`hpetri@polsinelli.com
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`James P. Murphy (Back-up Counsel Reg. No. 55,474)
`jpmurphy@polsinelli.com
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`Margaux A. Savee (Back-up Counsel Reg. No. 62,940)
`msavee@polsinelli.com
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`Tim R. Seeley (Back-up Counsel Reg. No. 53,575)
`tims@intven.com
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`Russ Rigby (Back-up Counsel Reg. No. 50,267)
`rrigby@intven.com
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`Respectfully Submitted,
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`/Scott Bertulli/
`Scott Bertulli, Reg. No. 75,886
`Wilmer Cutler Pickering Hale and Dorr
`LLP
`60 State Street
`Boston, MA 02109
`(617) 526-6706
`
`ii
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