Paper 64
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________________
`
`
`TWITTER, INC.
`
`Petitioner
`
`
`v.
`
`
`VIDSTREAM, LLC
`
`Patent Owner
`
`_____________________________
`
`
`Case IPR2017-01131
`U.S. Patent No. 8,464,304
`(Claims 1, 4-5, 8-9, 11-17, 19-26, and 28-30)
`_____________________________
`
`
`PATENT OWNER VIDSTREAM LLC’s OPPOSITION TO
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
`
`
`73479432.1
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________________
`
`
`TWITTER, INC.
`
`Petitioner
`
`
`v.
`
`
`VIDSTREAM, LLC
`
`Patent Owner
`
`_____________________________
`
`
`Case IPR2017-01131
`U.S. Patent No. 8,464,304
`(Claims 1, 4-5, 8-9, 11-17, 19-26, and 28-30)
`_____________________________
`
`
`PATENT OWNER VIDSTREAM LLC’s OPPOSITION TO
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
`
`
`73479432.1
`
`
`
`INTRODUCTION
`Petitioner moved to exclude Exhibits 2003-2007 as allegedly containing
`
`IPR2017-01131
`U.S. Patent No. 8,464,304
`
`
`I.
`
`inadmissible hearsay. Paper 57 (“Motion to Exclude”). These Exhibits are web
`
`pages describing features of certain Nokia phones that were available around the
`
`2006 time frame, when the Lahti reference (Ex. 1006) was published. The Exhibits
`
`are not hearsay because they are relied upon, not to establish the truth of the matters
`
`asserted therein (i.e., that the phones had the described features), but to establish
`
`how Lahti’s disclosure would have been understood by a POSITA. Therefore,
`
`Petitioner’s Motion to Exclude should be denied.
`
`II. ARGUMENT
`A. Applicable Law
`A statement is hearsay only if it is relied upon “to prove the truth of the matter
`
`asserted in the statement.” Fed. R. Evid. (“FRE”) § 801(c). Statements that are
`
`relied upon for other purposes are not hearsay and are not subject to exclusion under
`
`FRE § 802. For example, several courts and the Board have recognized that
`
`statements in prior art references that are relied upon for their effect on a POSITA
`
`or to establish the state of knowledge in the art are not hearsay. E.g., Neev v. Abbot
`
`Med. Optics, Inc., No. 09-146, 2012 WL 1066797, at *14 (D. Del. Mar. 26, 2012)
`
`(“Statements in a reference offered for their effect on one of ordinary skill in the art
`
`are not hearsay.”); Abbot Labs. v. Diamedix Corp., 969 F. Supp. 1064, 1067 n.1
`
`73479432.1
`
`- 1 -
`
`
`
`Case IPR2017-01131
`Patent 8,464,304
`
`(N.D. Ill. 1997) (prior art document was not hearsay because it was being offered
`
`for “the effect its existence had on the knowledge base of those in the field of art”);
`
`Biomarin Pharm. Inc. v. Genzyme Therapeutic Prods. Ltd., IPR2013-00537, Paper
`
`79 at 25 (PTAB Feb. 23, 2015) (prior art document was not hearsay because it was
`
`“offered as evidence of what it describes to an ordinary artisan”). In addition, the
`
`Board has held that technical documents describing properties of commercially
`
`available products and being relied upon for the purpose of interpreting the
`
`disclosure of an asserted prior art reference were not hearsay because the documents
`
`were being “offered simply as evidence of what [they] described, not for proving the
`
`truth of the matters addressed in the document[s].” Luye Pharma Grp. Ltd. v.
`
`Alkermes Pharma Ireland Ltd., IPR2016-01096, Paper 74 at 34-35 (PTAB Nov. 28,
`
`2017) (quoting Joy Techs., Inc. v. Manbeck, 751 F. Supp. 225, 233 n.2 (D.D.C.
`
`1990)).
`
`B.
`
`The Challenged Exhibits Are Not Hearsay
`1.
`Exhibits 2003 and 2004
`Exhibits 2003 and 2004 are relied upon for the non-hearsay purposes of
`
`establishing the knowledge base of a POSITA and for their effect on how a POSITA
`
`would interpret Lahti. The principal issue addressed in Patent Owner’s Response to
`
`the Petition (“POR”) (Paper 50) is Petitioner’s failure to establish that Lahti discloses
`
`the “predetermined constraints” limitation required by all of the Challenged Claims.
`
`73479432.1
`
`- 2 -
`
`
`
`Case IPR2017-01131
`Patent 8,464,304
`
`E.g., POR at 1, 8-9. This limitation generally requires that a server system provides
`
`instructions for a device to capture video in accordance with predetermined
`
`constraints, including frame rate. E.g., ’304 Patent, claim 1. Petitioner alleged that
`
`the MobiCon application disclosed in Lahti meets this limitation because Lahti
`
`describes specific parameters, including frame rate, of a video captured using the
`
`application. Petition at 22 (Paper 1). However, Patent Owner demonstrated in the
`
`POR that this was incorrect and provided evidence, including Exhibits 2003 and
`
`2004, to show that a POSITA would not have interpreted Lahti as disclosing the
`
`“predetermined constraints” limitation. POR at 15-17, 19-22.
`
`More specifically, Exhibits 2003 and 2004, which were publicly available on
`
`the internet at least as early as February 5, 2006 and May 30, 2006, respectively (Ex.
`
`2002, ¶¶ 16, 17), are introduced in the POR as showing that “publications
`
`contemporaneous with Lahti suggest the video parameters enumerated in Lahti were
`
`standard parameters used by camera phones in the 2006 timeframe to capture video
`
`data.” POR at 15-16. The video capture parameters described for the Nokia 6270
`
`model (Exhibit 2003) and the Nokia E50 model (Exhibit 2004) are then cited, which
`
`are the same as the parameters described in Lahti. Id. at 16-17. The effect of these
`
`descriptions on a POSITA is stated in the POR as follows: “a POSITA would have
`
`understood the parameters listed in Lahti are the default parameters for the Nokia
`
`6630 (and a number of other Nokia camera phones available at that time).” Id. at 22
`
`73479432.1
`
`- 3 -
`
`
`
`Case IPR2017-01131
`Patent 8,464,304
`
`(emphasis added). This fact is in turn relied upon to establish Patent Owner’s
`
`ultimate conclusion regarding the interpretation of Lahti: “[A] POSITA reviewing
`
`Lahti would not have viewed Lahti as disclosing that the MobiCon application
`
`actually governed video capture parameters.” Id. (emphasis added); see also id. at
`
`15-16 (“These facts provide a strong basis for concluding that Lahti’s MobiCon
`
`application did not impact or control the parameters by which video data was
`
`captured.”).
`
`Thus, Exhibits 2003 and 2004 are relied upon, not for the truth of the matters
`
`asserted therein, but for what they describe to a POSITA and for how those
`
`descriptions would have affected a POSITA’s understanding of what Lahti
`
`disclosed. This is a permissible, non-hearsay use of the Exhibits. See, e.g., Neev,
`
`2012 WL 1066797, at *14 (“Statements in a reference offered for their effect on one
`
`of ordinary skill in the art are not hearsay.”).
`
`Neither of the cases cited by Petitioner in its Motion to Exclude is to the
`
`contrary. See Microsoft Corp. v. Bradium Techs. LLC, IPR2016-00449, Paper 65 at
`
`2-7 (PTAB July 26, 2017); Google Inc. v. Meiresonne, IPR2014-01188, Paper 38 at
`
`10 (PTAB Jan. 20, 2016). In neither case was the excluded evidence relied upon for
`
`what it described to a POSITA or for its effect on how a POSITA would understand
`
`the teachings of a prior art reference. Rather, in Microsoft the evidence excluded as
`
`hearsay included statements relied upon for a variety of purposes, such as to establish
`
`73479432.1
`
`- 4 -
`
`
`
`Case IPR2017-01131
`Patent 8,464,304
`
`the valuation of a company or the amount of money a party spent on research and
`
`development. IPR2016-00449, Paper 65 at 2, 3. In Google, the excluded evidence
`
`was relied upon to show customer satisfaction with a technical feature of a website.
`
`IPR2014-01188, Paper 38 at 9-10. These cases do not support excluding prior art
`
`documents, like Exhibits 2003 and 2004, relied upon to establish how a POSITA
`
`would have understood a prior art reference.
`
`2.
`Exhibits 2005-2007
`Exhibits 2005,1 2006, and 2007 are also relied upon for what they describe
`
`and for how they would affect a POSITA’s understanding of Lahti. These Exhibits
`
`are introduced in the POR for their description of the properties of the Nokia 6630,
`
`which is the only model of camera phone identified in Lahti. POR at 19. Based on
`
`the video capture parameters described in the Exhibits, the POR states, “Individually
`
`and collectively, Exs. 2005-2007 demonstrate that the only phone model specifically
`
`mentioned in Lahti, the Nokia 6630, natively captured video data with the
`
`parameters disclosed in Lahti.” Id. at 21. Dr. Olivier explains how this affects the
`
`interpretation of Lahti: “This strongly suggests that Lahti’s MobiCon application did
`
`not govern or otherwise impact the video-capture parameters listed in Lahti . . . .”
`
`
`1 Exhibit 2005 was publicly available on the internet at least as early as December
`
`29, 2004. Ex. 2002, ¶ 18.
`
`73479432.1
`
`- 5 -
`
`
`
`Case IPR2017-01131
`Patent 8,464,304
`
`Id. (citing Ex. 2002, ¶76). As with Exhibits 2003 and 2004, the POR relies on
`
`Exhibits 2005-2007 for the effect that they would have on a POSITA’s interpretation
`
`of Lahti: “a POSITA would have understood the parameters listed in Lahti are the
`
`default parameters for the Nokia 6630 . . . .” Id. at 22 (emphasis added). As
`
`discussed above, this is relied upon to establish Patent Owner’s ultimate conclusion
`
`regarding the interpretation of Lahti: “[A] POSITA reviewing Lahti would not have
`
`viewed Lahti as disclosing that the MobiCon application actually governed video
`
`capture parameters.” Id. (emphasis added); see also id. at 15-16 (“These facts
`
`provide a strong basis for concluding that Lahti’s MobiCon application did not
`
`impact or control the parameters by which video data was captured.”).
`
`Thus, Exhibits 2005-2007 are relied upon for what they describe and for how
`
`those descriptions would have affected a POSITA’s understanding of what Lahti
`
`disclosed. This is a permissible, non-hearsay use of Exhibits 2005-2007 for the same
`
`reasons discussed above for Exhibits 2003 and 2004.
`
`
`
`
`
`
`
`*
`
`*
`
`*
`
`73479432.1
`
`- 6 -
`
`
`
`C. CONCLUSION
`For the foregoing reasons, Patent Owner requests that Petitioner’s Motion to
`
`Case IPR2017-01131
`Patent 8,464,304
`
`
`Exclude Evidence be denied.
`
`Dated: September 28, 2018
`
`Respectfully submitted,
`
`NORTON ROSE FULBRIGHT US LLP
`
`/Eagle H. Robinson/
`Eagle H. Robinson (Reg. No. 61,361)
`
`Lead Counsel for Patent Owner
`
`
`
`
`
`73479432.1
`
`- 7 -
`
`
`
`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on
`
`Case IPR2017-01131
`Patent 8,464,304
`
`
`September 28, 2018, complete copies of Patent Owner VidStream LLC’s
`
`Opposition to Petitioner’s Motion to Exclude Evidence was served on the following:
`
`
`
`
`
`
`
`
`
`Lead Counsel:
`
`Todd M. Siegel (Reg. No. 73,232)
`todd.siegel@klarquist.com
`
`Backup Counsel: Andrew M. Mason (Reg. No. 64,034)
`andrew.mason@klarquist.com
`
`Robert T. Cruzen (pro hac vice)
`rob.cruzen@klarquist.com
`
`Respectfully submitted,
`
`/Eagle H. Robinson/
`Eagle H. Robinson (Reg. No. 61,361)
`
`73479432.1
`
`- 8 -
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
