Paper 67
`
`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 REPLY IN SUPPORT OF
`ITS MOTION TO EXCLUDE EVIDENCE
`
`
`73525894.1
`
`
`
`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 REPLY IN SUPPORT OF
`ITS MOTION TO EXCLUDE EVIDENCE
`
`
`73525894.1
`
`
`
`LACK OF AUTHENTICATION
`PO moved to exclude Exs. 1033, 1036, 1037, 1043-1045, and 1047-1050 as
`
`IPR2017-01131
`U.S. Patent No. 8,464,304
`
`
`I.
`
`lacking authentication. PO Motion to Exclude (Paper 59). Petitioner asserts in its
`
`Opposition to the Motion to Exclude (Paper 63) (“Opp.”) that these website printouts
`
`were either authenticated by the archivist for the Internet Archive or by its own
`
`expert, Dr. Houh. E.g., Opp. at 2, 9. However, Petitioner’s attempted authentication
`
`fails for all of the exhibits because there is insufficient evidence in the record to
`
`authenticate them. The attempted authentication additionally fails for deposition
`
`exhibits because Petitioner’s service of supplemental evidence was untimely.
`
`A. No Sufficient Evidence of Authenticity
`Petitioner attempts to rely on declarations by an “archivist for the Internet
`
`Archive” to authenticate challenged Exs. 1033, 1043, 1044, 1047, 1048, and 1050.
`
`However, the Internet Archive declarations have not been filed and are not in the
`
`record in this proceeding. Therefore, there is no evidence in the record to
`
`authenticate these exhibits.
`
`Petitioner attempts to authenticate Exs. 1036, 1037, 1045, and 1049 by
`
`referring to statements in Dr. Houh’s declaration (Ex. 1052) that these are true and
`
`correct copies of specified web pages. This is insufficient to authenticate website
`
`printouts because Petitioner has not provided evidence that Dr. Houh has personal
`
`knowledge of the websites themselves. See Neste Oil Oyj v. REG Synthetic Fuels,
`
`73525894.1
`
`- 1 -
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`
`
`Case IPR2017-01131
`Patent 8,464,304
`
`LLC, IPR2013-00578, Paper 53 at 4 (March 12, 2015) (website printouts must be
`
`authenticated by “someone with knowledge of the website . . . for example a web
`
`master”).
`
`B.
`Petitioner’s Service of Supplemental Evidence Was Untimely
`As discussed in PO’s Motion to Exclude, Petitioner failed to cure the lack of
`
`authentication objections made against Exs. 1033, 1036, 1037, 1043-1045, and 1047
`
`during the July 24, 2018 deposition of Dr. Olivier, as required by Rule 42.64(a).
`
`Paper 59 at 2. Petitioner argues in its Opposition that Rule 42.64(a) is not applicable
`
`because it applies only to deposition testimony. Opp. at 3. However, by its plain
`
`terms this rule is not so limited. It requires providing evidence during the deposition
`
`to cure an objection to any “deposition evidence,” which encompasses deposition
`
`exhibits.
`
`Petitioner waited until August 14th, three weeks after the deposition, to serve
`
`the Internet Archive declarations on PO. Likewise, Dr. Houh’s testimony attempting
`
`to authenticate other exhibits was not filed until Petitioner’s Reply to the Petition
`
`(Paper 53) was filed on August 10th. Therefore, Petitioner’s attempts to cure the
`
`objections to deposition evidence were untimely and ineffectual.
`
`Even
`
`if Petitioner could cure authentication objections by serving
`
`supplemental evidence after the deposition was over, its attempt to do so was still
`
`untimely. Under Rule 42.64(b)(2), supplemental evidence supporting objected-to
`
`73525894.1
`
`- 2 -
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`
`
`Case IPR2017-01131
`Patent 8,464,304
`
`evidence must be served within ten business days of the objection. Petitioner
`
`objected to Exs. 1033, 1036, 1037, 1043-1045, and 1047 during the July 24th
`
`deposition. The tenth business day after these objections were made was August
`
`7th. Therefore, Petitioner’s service of supplemental evidence on August 10th and
`
`14th was untimely.
`
`II. UNAUTHORIZED SUPPLEMENTAL INFORMATION
`Petitioner asserts that PO’s arguments that Exs. 1033, 1036, 1037, 1043-1045,
`
`and 1047-1050 are inadmissible supplemental information are inappropriate because
`
`they
`
`include arguments
`
`that Petitioner’s Reply raises new obviousness
`
`combinations. Opp. at 4. However, the legal basis for exclusion of these exhibits is
`
`not that the exhibits exceed the proper scope of a reply under Rule 42.23(b), but that
`
`they are inadmissible under Rule 42.123(b). Under the latter rule, supplemental
`
`information—“evidence a party intends to support an argument on the merits”—is
`
`admissible only if its submission is pre-approved by the Board. See Handi Quilter,
`
`Inc. v. Bernina Int’l AG, IPR2013-00364, Paper 30 at 2-3 (PTAB June 12, 2014)
`
`(supplemental information “may only be filed if a § 123 motion is both authorized
`
`and granted”). Arguments that certain exhibits have been submitted without
`
`authorization and are therefore inadmissible under Rule 42.123(b) are appropriate in
`
`a motion to exclude. Indeed, the Board has granted such motions. Dropbox, Inc. v.
`
`Synchronoss Tech., Inc., IPR2016-00851, Paper 40 at 22-23 (PTAB Oct. 5, 2017);
`
`73525894.1
`
`- 3 -
`
`
`
`Case IPR2017-01131
`Patent 8,464,304
`
`Toshiba Corp. v. Optical Devices, LLC, IPR2014-01447, Paper 34 at 44-47 (PTAB
`
`Mar. 9, 2016). While PO’s Motion to Exclude does explain that Petitioner’s
`
`evidence raises new arguments and obviousness combinations beyond the proper
`
`scope of a reply, it does so to illustrate that, beyond even that standard, these new
`
`exhibits are offered to supplement Petitioner’s required showing and are therefore
`
`supplemental information that is inadmissible under Rule 42.123(b).
`
`Contrary to Petitioner’s arguments in its Opposition, Petitioner’s Reply relies
`
`on the new exhibits for more than just rebuttal of PO’s Response arguments. As
`
`discussed in detail in PO’s Response to the Petition, Lahti does not disclose the
`
`“predetermined constraints” limitation requiring that video capture parameters are
`
`specified by a server. Paper 50 at 1, 8-15. Petitioner’s Reply attempted to remedy
`
`this deficiency, not by merely rebutting the arguments made in PO’s Response, but
`
`by attempting to fill Lahti’s gaps with these newly cited exhibits. As discussed in
`
`PO’s Sur-Reply (Paper 60 at 6-13) and Motion to Exclude (Paper 59 at 7-8),
`
`Petitioner relied upon Exs. 1043, 1044, 1045, 1047, and 1048 to purportedly
`
`supplement what a POSITA would have “understood” from Lahti’s passing mention
`
`of SDKs. Likewise, Petitioner’s Reply relies on Exs. 1033, 1036, 1037, 1049, and
`
`1050 to attempt to remedy Lahti’s deficiencies by purportedly demonstrating what
`
`a POSITA would have “understood” about mobile handsets available at the time of
`
`Lahti. Paper 59 at 2-4; Paper 60 at 5-6.
`
`73525894.1
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`- 4 -
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`
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`Case IPR2017-01131
`Patent 8,464,304
`
`Thus, the exhibits challenged here were not merely used for rebuttal, but for
`
`establishing new theories as to how and why Lahti purportedly discloses—despite
`
`not expressly doing so—the “predetermined constraints” limitation. Because the
`
`newly cited exhibits are relied upon to fill gaps in Lahti’s disclosure, they are relied
`
`on to present new obviousness combinations. As such, these new exhibits should be
`
`excluded under 37 C.F.R. § 42.123(b) as untimely and unauthorized supplemental
`
`information.
`
`III. HEARSAY
`In its Opposition, Petitioner does not dispute that the dates on the faces of
`
`challenged Exs. 1036, 1037, 1043-1045, and 1047-1050 are hearsay. And Petitioner
`
`failed to meet its burden to establish that the dates meet the requirements of the
`
`exceptions in FRE 803(17) and 807. Petitioner did not provide evidence that the
`
`dates on these exhibits have similar guarantees of trustworthiness as the IEEE
`
`copyright notice that the Board found persuasive in Ericsson Inc. v. Intellectual
`
`Ventures I LLC, IPR2014-00527, Paper 41 at 10-11 (May 18, 2015). Nor does
`
`Petitioner even attempt to provide evidence sufficient to meet the “heavy burden”
`
`required to establish that the requirements of the “residual exception” in FRE 807
`
`are met. U.S. v. Washington, 106 F.3d 983, 1001-02 (D.C. Cir. 1997).
`
`Dated: October 5, 2018
`
`/Eagle H. Robinson/
`Eagle H. Robinson (Reg. No. 61,361)
`
`73525894.1
`
`- 5 -
`
`
`
`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on
`
`Case IPR2017-01131
`Patent 8,464,304
`
`
`October 5, 2018, a complete copy of Patent Owner VidStream LLC’s Reply in
`
`Support of Its 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)
`
`73525894.1
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`- 6 -
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