`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––––––––––
`
`GOOGLE INC.,
`Petitioner,
`
`v.
`
`BLACKBERRY LTD.,
`Patent Owner.
`
`––––––––––––––––––
`
`Case No. IPR2017-00913
`U.S. Patent No. 8,402,384 B2
`
`––––––––––––––––––
`
`PATENT OWNER’S OBJECTIONS TO PETITIONER’S EXHIBITS
`
`
`
`IPR2017-00913
`U.S. Patent No. 8,402,384
`
`
`
`Pursuant to 37 C.F.R. § 42.64(b)(1), the undersigned, on behalf of and acting
`
`in a representative capacity for Patent Owner BlackBerry Limited (“Patent
`
`Owner”), hereby submits the following objections to Petitioner Google Inc.’s
`
`(“Petitioner”) Exhibits 1002, 1012, and 1013, and any reference thereto/reliance
`
`thereon, without limitation. Patent Owner’s objections below apply the Federal
`
`Rules of Evidence (“F.R.E”) as required by 37 C.F.R. § 42.62.
`
`
`
`These objections address evidentiary deficiencies in the materials submitted
`
`by Petitioner with its Petition on February 16, 2017.
`
`The following objections apply to Exhibits 1002, 1012, and 1013 as they are
`
`actually presented by Petitioner, in the context of Petitioner’s February 16, 2017
`
`Petition (Paper 1) and not in the context of any other substantive argument on the
`
`merits of the instituted grounds in this proceeding. Patent Owner expressly objects
`
`to any other purported use of these Exhibits, including as substantive evidence in
`
`this proceeding, which would be untimely and improper under the applicable rules,
`
`and Patent Owner expressly asserts, reserves and does not waive any other
`
`objections that would be applicable in such a context.
`
`I.
`
`Objection to Exhibit 1002, And Any Reference to/Reliance Thereon
`Grounds for objection: F.R.E. 702 (“Testimony by Expert Witnesses”);
`
`F.R.E. 403 (“Excluding Relevant Evidence for Prejudice, Confusion, Waste of
`
`Time, or Other Reasons”); and 37 C.F.R. § 42.61 (“Admissibility”).
`
`1
`
`
`
`IPR2017-00913
`U.S. Patent No. 8,402,384
`
`
`Patent Owner objects to the use of Exhibit 1002 under F.R.E. 702 and 37
`
`C.F.R. § 42.61. Exhibit 1002 is the Declaration of Dr. Dan R. Olsen Jr. in support
`
`of the Petition. Exhibit 1002 purports to provide expert testimony in this matter,
`
`but—in many key respects—fails to establish the basis for Dr. Olsen’s opinions.
`
`For example, Dr. Olsen offers only conclusory statements in support of his
`
`opinions in paragraphs 15-21, 55, 61, 82, and 85-86 regarding technical features
`
`that were purportedly “well known” at the time of the alleged invention. Dr. Olsen
`
`also offers only conclusory statements in support of his opinions in at least
`
`paragraphs 87-88, 94-97, 100-01, 103-07, 110, 113, 125, and 128-29 that it would
`
`have been obvious for a POSITA to modify Cadiz (Exhibit 1005) to perform the
`
`claimed methods. Similarly, Dr. Olsen offers only conclusory statements in
`
`support of his opinions in at least paragraphs 131-32 and 135-37 that it would have
`
`been obvious for a POSITA to combine elements from Ng (Exhibit 1006) with
`
`Cadiz (Exhibit 1005) to perform the claimed methods. Likewise, Dr. Olsen offers
`
`only conclusory statements in support of his opinion in at least paragraphs 139 and
`
`142-44 that it would have been obvious for a POSITA to combine elements from
`
`Matthews (Exhibit 1008) with Cadiz (Exhibit 1005) to perform the claimed
`
`methods. And Dr. Olsen also offers only conclusory statements in support of his
`
`opinion in at least paragraphs 146-50 that it would have been obvious for a
`
`2
`
`
`
`IPR2017-00913
`U.S. Patent No. 8,402,384
`
`POSITA to modify Cadiz (Exhibit 1005) and/or combine elements from Smith
`
`(Exhibit 1009) with Cadiz (Exhibit 1005) to perform the claimed methods.
`
`Such conclusory statements without reference to the underlying basis for Dr.
`
`Olsen’s opinion is not proper testimony under F.R.E. 702 and should be excluded.
`
`Accordingly, permitting reliance on this document in the Petition or other
`
`submissions by Petitioner would be misleading and unfairly prejudicial to Patent
`
`Owner (F.R.E. 403).
`
`II. Objection to Exhibits 1012 and 1013, And Any Reference to/Reliance
`Thereon
`Grounds for objection: F.R.E. 901 (“Authenticating or Identifying
`
`Evidence”); F.R.E. 1002 (“Requirement of the Original”); F.R.E. 1003
`
`(“Admissibility of Duplicates”); and 37 C.F.R. § 42.61 (“Admissibility”).
`
`Patent Owner objects to the use of Exhibits 1012 and 1013 under F.R.E. 901,
`
`1002, 1003, and 37 C.F.R. § 42.61 because Petitioner fails to provide the
`
`authentication required for these documents, and the Exhibits are not self-
`
`authenticating under F.R.E. 902.
`
`Dated: September 25, 2017
`
`Respectfully Submitted,
`
`/Ching-Lee Fukuda/
`Ching-Lee Fukuda
`Reg. No. 44,334
`SIDLEY AUSTIN LLP
`787 Seventh Avenue
`New York, NY 10019
`
`3
`
`
`
`IPR2017-00913
`
`IPR2017-00913
`U.S. Patent No. 8,402,384
`US. Patent No. 8,402,3 84
`
`P: (212) 839-7364
`P: (212) 839-7364
`F: (212) 839-5599
`F: (212) 839-5599
`Attorney for Patent Owner
`Attorney for Patent Owner
`
`4
`
`
`
`IPR2017-00913
`U.S. Patent No. 8,402,384
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), I hereby certify that on this 25th day of
`
`September, 2017, I caused to be served a true and correct copy of the foregoing by
`
`electronic mail on the following counsel:
`
`Naveen Modi
`Joseph E. Palys
`Phillip Citroën
`Arvind Jairam
`PH-Google-Blackberry-IPR@paulhastings.com
`
`Dated: September 25, 2017
`
`Respectfully Submitted,
`
`/Ching-Lee Fukuda/
`Ching-Lee Fukuda
`Reg. No. 44,334
`SIDLEY AUSTIN LLP
`787 Seventh Avenue
`New York, NY 10019
`P: (212) 839-7364
`F: (212) 839-5599
`Attorney for Patent Owner
`
`5
`
`