UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`TWITTER, INC.,
`Petitioner,
`
`v.
`
`VIDSTREAM LLC,
`Patent Owner.
`
`_________________
`
`Case IPR2017-01131
`Patent 8,464,304
`
`_________________
`
`PETITIONER’S REPLY TO PATENT OWNER’S
`OPPOSITION TO PETITIONER’S MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`TWITTER, INC.,
`Petitioner,
`
`v.
`
`VIDSTREAM LLC,
`Patent Owner.
`
`_________________
`
`Case IPR2017-01131
`Patent 8,464,304
`
`_________________
`
`PETITIONER’S REPLY TO PATENT OWNER’S
`OPPOSITION TO PETITIONER’S MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`TABLE OF CONTENTS
`
`IPR2017-01131
`Patent 8,464,304
`
`Page(s)
`
`EXHIBIT LIST ........................................................................................................ iii
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`EXHIBITS 2003-2007 CONTAIN CLASSIC HEARSAY BECAUSE
`PATENT OWNER RELIES ON THEM TO ALLEGEDLY SHOW
`THAT THE IDENTIFIED PHONES HAD SPECIFIC FEATURES ............. 1
`
`III. PATENT OWNER’S CITED AUTHORITY IS DISTINGUISHABLE ........ 3
`
`IV. CONCLUSION ................................................................................................ 5
`
`
`
`
`
`
`
`Page i
`
`
`
`TABLE OF AUTHORITIES
`
`IPR2017-01131
`Patent 8,464,304
`
`Page(s)
`
`Cases
`
`Abbott Labs. v. Diamedix Corp.,
`969 F. Supp. 1064 (N.D. Ill. 1997) ......................................................................... 4
`
`Biomarin Pharm. Inc. v. Genzyme Therapeutic Prods. Ltd.,
`IPR2013-00537, Paper 79 (PTAB Feb. 23, 2015). ................................................ 4
`
`Luye Pharma Grp. Ltd. v. Alkermes Pharma Ireland Ltd.,
`IPR2016-01096, Paper 74 (PTAB Nov. 28, 2017) ............................................4, 5
`
`Neev v. Abbott Med. Optics, Inc.,
`No. CIV. 09-146 RBK, 2012 WL 1066797 (D. Del. Mar. 26, 2012) .................... 3
`
`
`
`
`
`
`
`
`Page ii
`
`
`
`IPR2017-01131
`Patent 8,464,304
`
`EXHIBIT LIST
`
`LIST OF PREVIOUSLY FILED EXHIBITS
`
`Exhibits 1001-1019: Filed and served March 24, 2017 with Twitter’s Petition for
`
`Inter Partes Review of U.S. Patent No. 8,464,304.
`
`Exhibit 1020: Filed and served October 18, 2017 with Petitioner’s Unopposed
`
`Motion for Pro Hac Vice of Robert T. Cruzen.
`
`Exhibit 1021: Filed and served February 2, 2018 with Petitioner’s Updated
`
`Exhibit List.
`
`Exhibit 1022-1023: Filed and served February 20, 2018 with Petitioner’s Updated
`
`Exhibit List.
`
`Exhibit 1024: Filed and served February 23, 2018 with Petitioner’s Updated
`
`Exhibit List.
`
`Exhibit 1025-1026: Filed and served March 6, 2018 with Petitioner’s Updated
`
`Exhibit List.
`
`Exhibit 1027: Filed and served March 14, 2018 with Petitioner’s Updated Exhibit
`
`List.
`
`Exhibit 1028: Filed and served March 29, 2018 with Petitioner’s Updated Exhibit
`
`List.
`
`Exhibit 1029: Filed and served April 5, 2018 with Petitioner’s Updated Exhibit
`
`List.
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`Page iii
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`
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`IPR2017-01131
`Patent 8,464,304
`
`Exhibit 1030-1031: Filed and served April 11, 2018 with Petitioner’s Updated
`
`Exhibit List.
`
`Exhibit 1032: Filed and served May 3, 2018 with Petitioner’s Updated Exhibit
`
`List.
`
`Exhibits 1033, 1036, 1037, 1043-1045 and 1047-1052: Filed and served August
`
`10, 2018 with Petitioner’s Reply to Patent Owners Response to Petition.
`
`Exhibits 1034, 1035, 1038-1042 and 1046: Identified at Dr. Olivier’s Deposition
`
`on July 24, 2018. Not Filed.
`
`Exhibits 1053 and 1054: Served on August 14, 2018 with Petitioner’s Transmittal
`
`of Supplemental Evidence. Not Filed.
`
`
`
`
`
`Page iv
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`
`
`IPR2017-01131
`Patent 8,464,304
`
`I.
`
`INTRODUCTION
`
`As discussed in Petitioner’s Motion to Exclude Evidence (“Motion”), Exhibits
`
`2003-2007 contain classic hearsay and should be excluded. Motion, Paper 57. Patent
`
`Owner falsely argues that the exhibits are not being offered for the truth of the matter
`
`asserted. Instead, Patent Owner argues that the exhibits are being relied on merely
`
`to inform a person having ordinary skill the art (“POSITA”) as to the state of the
`
`pertinent art. Patent Owner’s Opposition To Motion To Exclude Evidence, Paper 64
`
`(“Oppn.”) at 1. Patent Owner is wrong, and the decisions Patent Owner cites are
`
`readily distinguishable.
`
`II. EXHIBITS 2003-2007 CONTAIN CLASSIC HEARSAY BECAUSE
`PATENT OWNER RELIES ON THEM TO ALLEGEDLY SHOW
`THAT THE IDENTIFIED PHONES HAD SPECIFIC FEATURES
`
`Exhibits 2003-2007 appear to be documents printed off the internet that
`
`discuss various purported characteristics of three models of Nokia mobile devices
`
`from the 2006 time frame, namely the Nokia 6270, Nokia N50, and Nokia 6630.
`
`Patent Owner argues that Exhibits 2003 and 2004 show that the video parameters
`
`enumerated in the Lahti prior art reference “were standard parameters used by
`
`camera phones in the 2006 timeframe to capture video data.” Oppn. at 3. Patent
`
`Owner similarly argues that Exhibits 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.” Oppn. at 5. Patent Owner argues that these
`
`Petitioner’s Reply to Patent Owner’s
`Opposition to Petitioner’s Motion to Exclude Evidence
`
`Page 1
`
`
`
`IPR2017-01131
`Patent 8,464,304
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`“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.” Oppn. at 4,
`
`6 (emphasis added).
`
`Patent Owner contends that it is not relying on these exhibits “to establish the
`
`truth of the matters asserted therein; i.e., that the phones had the described features
`
`….” Oppn. at 1. But that contention is inconsistent with Patent Owner’s Response
`
`to the Petition (Paper 50) and its Opposition to the Motion. Patent Owner expressly
`
`states that the features identified in Exhibits 2003-2007 are the “facts” that
`
`apparently led Patent Owner and its expert to argue to this Board that there is “a
`
`strong basis for” reaching their conclusion. Oppn. at 4, 6. If it was determined that
`
`the identified phones had features that differed from those on which Patent Owner
`
`relies, then they could not argue that their conclusion is based on a “strong basis” of
`
`anything.
`
`Notably, Patent Owner has moved to exclude Exhibits 1033, 1036, 1037,
`
`1043, 1044, 1045, and 1047-1050 that Petitioner submitted with its Reply. See Patent
`
`Owner’s Motion To Exclude Evidence, Paper 59. Patent Owner argued that
`
`Petitioner’s Reply exhibit contain hearsay statements regarding features of various
`
`mobile phones and operating systems. Paper 59.
`
`An important difference from Patent Owner’s Motion to Exclude, is that
`
`Petitioner relies on Exhibits 1033, 1036, 1037, 1043, 1044, 1045, and 1047-1050 to
`
`Petitioner’s Reply to Patent Owner’s
`Opposition to Petitioner’s Motion to Exclude Evidence
`
`Page 2
`
`
`
`IPR2017-01131
`Patent 8,464,304
`
`refute Dr. Olivier’s testimony. In the context of this Motion, Patent Owner and Dr.
`
`Olivier cherry picked three Nokia devices from the 2006 time frame, while ignoring
`
`at least dozens of other devices from Nokia and other manufacturers. Unlike Patent
`
`Owner, Petitioner is not relying on its Reply exhibits for the truth of the matter
`
`asserted in order to make it case of unpatentability. Petitioner’s Reply exhibits
`
`present evidence regarding several other mobile devices and operating systems from
`
`the same time frame to show why Dr. Olivier’s testimony is unreliable.1
`
`III. PATENT OWNER’S CITED AUTHORITY IS DISTINGUISHABLE
`
`The authority cited in Patent Owner’s Opposition is inapposite to Petitioner’s
`
`Motion. Patent Owner cites Neev v. Abbott Med. Optics, Inc., No. CIV. 09-146
`
`RBK, 2012 WL 1066797, at *14 (D. Del. Mar. 26, 2012) for the proposition that
`
`“[s]tatements in a reference offered for their effect on one of ordinary skill in the art
`
`are not hearsay.” Oppn. at 1. Notably, the Neev decision was a claim construction
`
`opinion, in which the court determined that the alleged hearsay statement was
`
`relevant to the state of the art and therefore relevant to claim construction. Here,
`
`Patent Owner relies on Exhibits 2003-2007 for much more than how a POSITA
`
`understands the state of the art. Patent Owner relies on the statements in Exhibits
`
`
`1 If the Board were to deny Petitioner’s Motion to Exclude, there would be no basis
`for granting Patent Owner’s Motion to Exclude Petitioner’s Exhibits submitted with
`its Reply in order to respond to Patent Owner’s new arguments and Dr. Olivier’s
`testimony.
`
`Petitioner’s Reply to Patent Owner’s
`Opposition to Petitioner’s Motion to Exclude Evidence
`
`Page 3
`
`
`
`IPR2017-01131
`Patent 8,464,304
`
`2003-2007 as alleged “facts” that allegedly create a “strong basis” on which Patent
`
`Owner and its expert form their conclusion.
`
`Patent Owner cites Abbott Labs. v. Diamedix Corp. and Biomarin Pharm. Inc.
`
`v. Genzyme Therapeutic Prods. Ltd. for the proposition that prior art documents are
`
`not hearsay if being offered not for the truth of the matter asserted, but instead merely
`
`for what they describe to a POSITA. Abbott Labs. is inapposite because the patent
`
`challenger there relied on the document that allegedly contained hearsay merely for
`
`the existence of the document, and not the truth of the matter asserted. Abbott Labs.
`
`v. Diamedix Corp., 969 F. Supp. 1064, 1067 (N.D. Ill. 1997). In Biomarin, the
`
`Petitioner was relying on the prior art document for its disclosed content, regardless
`
`of whether the statements were true. Biomarin Pharm. Inc. v. Genzyme Therapeutic
`
`Prods. Ltd., IPR2013-00537, Paper 79 at 25 (PTAB Feb. 23, 2015). Here, Patent
`
`Owner relies on the purported truth of the statements made in the Exhibits in order
`
`to provide its expert, Dr. Olivier, with some alleged basis for his opinion. Indeed,
`
`Patent Owner and Dr. Olivier’s conclusions are based entirely on these five exhibits,
`
`while ignoring information regarding the state of the art as a whole, as of the alleged
`
`date of invention (January 25, 2011).
`
`Patent Owner also cites Luye Pharma Grp. Ltd. v. Alkermes Pharma Ireland
`
`Ltd. In Luye Pharma, the patent owner was relying on documents showing when
`
`products having certain characteristics were commercially available. Luye Pharma
`
`Petitioner’s Reply to Patent Owner’s
`Opposition to Petitioner’s Motion to Exclude Evidence
`
`Page 4
`
`
`
`IPR2017-01131
`Patent 8,464,304
`
`Grp. Ltd. v. Alkermes Pharma Ireland Ltd., IPR2016-01096, Paper 74 at 34-35
`
`(PTAB Nov. 28, 2017). This decision is also distinguishable because there, the
`
`patent owner was not relying on the truth of the characteristics, i.e., whether the
`
`products actually had such characteristics. Here, Patent Owner relies on the
`
`statements to form alleged “facts” that create an allegedly “strong basis” for Patent
`
`Owner’s conclusion, notwithstanding that Patent Owner cherry picked only three
`
`models of phones.
`
`IV. CONCLUSION
`
`For the above reasons, as well as the reasons in the Motion (Paper 59), the
`
`Board should grant Petitioner’s Motion to Exclude Evidence.
`
`Dated: October 5, 2018
`
`Respectfully submitted,
`
`
`By: /Todd M. Siegel/
`Todd M. Siegel (Registration No. 73,232)
`todd.siegel@klarquist.com
`KLARQUIST SPARKMAN, LLP
`One World Trade Center, Suite 1600
`121 S.W. Salmon Street
`Portland, Oregon 97204
`Tel: 503-595-5300
`Fax: 503-595-5301
`
`Counsel for Petitioner
`
`
`
`
`
`
`
`Petitioner’s Reply to Patent Owner’s
`Opposition to Petitioner’s Motion to Exclude Evidence
`
`Page 5
`
`
`
`IPR2017-01131
`Patent 8,464,304
`
`CERTIFICATE OF SERVICE
`IN COMPLIANCE WITH 37 C.F.R. § 42.6(e)(4)
`
`The undersigned certifies that on October 5, 2018, a complete copy of
`
`Petitioner’s Reply to Patent Owner’s Opposition to Petitioner’s Motion to
`
`Exclude Evidence was served on counsel for VidStream LLC via electronic mail as
`
`follows:
`
`Eagle Robinson – Lead Counsel
`eagle.robinson@nortonrosefulbright.com
`Eric Green – Back-Up Counsel
`eric.green@nortonrosefulbright.com
`Norton Rose Fulbright US LLP
`98 San Jacinto Blvd., Suite 1100
`Austin, TX 78701
`
`Eric Hall – Back-Up Counsel
`Norton Rose Fulbright US LLP
`1301 McKinney St., Ste. 5100
`Houston, TX 77010
`eric.hall@nortonrosefulbright.com
`
`
`
`
`
`
`By: /Todd M. Siegel/
`Todd M. Siegel (Registration No. 73,232)
`todd.siegel@klarquist.com
`KLARQUIST SPARKMAN, LLP
`One World Trade Center, Suite 1600
`121 S.W. Salmon Street
`Portland, Oregon 97204
`Tel: 503-595-5300
`Fax: 503-595-5301
`
`Counsel for Petitioner
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Page 1
`
`
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