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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________________
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`TWITTER, INC.
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`Petitioner
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`v.
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`VIDSTREAM, LLC
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`Patent Owner
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`_____________________________
`
`
`Case IPR2017-01133
`U.S. Patent No. 8,601,506
`(Claims 1, 4-8, 11, 13-15, 23-26, and 29-30)
`_____________________________
`
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`PATENT OWNER VIDSTREAM LLC’s REPLY IN SUPPORT OF
`ITS MOTION TO EXCLUDE EVIDENCE
`
`
`73529521.1
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`LACK OF AUTHENTICATION
`PO moved to exclude Exs. 1033, 1036, 1037, 1043-1045, and 1047-1050 as
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`IPR2017-01133
`U.S. Patent No. 8,601,506
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`I.
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`lacking authentication. PO Motion to Exclude (Paper 56). Petitioner asserts in its
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`Opposition to the Motion to Exclude (Paper 60) (“Opp.”) that these website printouts
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`were either authenticated by the archivist for the Internet Archive or by its own
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`expert, Dr. Houh. E.g., Opp. at 2, 9. However, Petitioner’s attempted authentication
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`fails for all of the exhibits because there is insufficient evidence in the record to
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`authenticate them. The attempted authentication additionally fails for deposition
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`exhibits because Petitioner’s service of supplemental evidence was untimely.
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`A. No Sufficient Evidence of Authenticity
`Petitioner attempts to rely on declarations by an “archivist for the Internet
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`Archive” to authenticate challenged Exs. 1033, 1043, 1044, 1047, 1048, and 1050.
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`However, the Internet Archive declarations have not been filed and are not in the
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`record in this proceeding. Therefore, there is no evidence in the record to
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`authenticate these exhibits.
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`Petitioner attempts to authenticate Exs. 1036, 1037, 1045, and 1049 by
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`referring to statements in Dr. Houh’s declaration (Ex. 1052) that these are true and
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`correct copies of specified web pages. This is insufficient to authenticate website
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`printouts because Petitioner has not provided evidence that Dr. Houh has personal
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`knowledge of the websites themselves. See Neste Oil Oyj v. REG Synthetic Fuels,
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`73529521.1
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`Case IPR2017-01133
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`LLC, IPR2013-00578, Paper 53 at 4 (March 12, 2015) (website printouts must be
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`authenticated by “someone with knowledge of the website . . . for example a web
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`master”).
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`B.
`Petitioner’s Service of Supplemental Evidence Was Untimely
`As discussed in PO’s Motion to Exclude, Petitioner failed to cure the lack of
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`authentication objections made against Exs. 1033, 1036, 1037, 1043-1045, and 1047
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`during the July 24, 2018 deposition of Dr. Olivier, as required by Rule 42.64(a).
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`Paper 56 at 2. Petitioner argues in its Opposition that Rule 42.64(a) is not applicable
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`because it applies only to deposition testimony. Opp. at 3. However, by its plain
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`terms this rule is not so limited. It requires providing evidence during the deposition
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`to cure an objection to any “deposition evidence,” which encompasses deposition
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`exhibits.
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`Petitioner waited until August 14th, three weeks after the deposition, to serve
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`the Internet Archive declarations on PO. Likewise, Dr. Houh’s testimony attempting
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`to authenticate other exhibits was not filed until Petitioner’s Reply to the Petition
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`(Paper 50) was filed on August 10th. Therefore, Petitioner’s attempts to cure the
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`objections to deposition evidence were untimely and ineffectual.
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`Even
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`if Petitioner could cure authentication objections by serving
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`supplemental evidence after the deposition was over, its attempt to do so was still
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`untimely. Under Rule 42.64(b)(2), supplemental evidence supporting objected-to
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`Case IPR2017-01133
`Patent 8,601,506
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`evidence must be served within ten business days of the objection. Petitioner
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`objected to Exs. 1033, 1036, 1037, 1043-1045, and 1047 during the July 24th
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`deposition. The tenth business day after these objections were made was August
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`7th. Therefore, Petitioner’s service of supplemental evidence on August 10th and
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`14th was untimely.
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`II. UNAUTHORIZED SUPPLEMENTAL INFORMATION
`Petitioner asserts that PO’s arguments that Exs. 1033, 1036, 1037, 1043-1045,
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`and 1047-1050 are inadmissible supplemental information are inappropriate because
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`they
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`include arguments
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`that Petitioner’s Reply raises new obviousness
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`combinations. Opp. at 4. However, the legal basis for exclusion of these exhibits is
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`not that the exhibits exceed the proper scope of a reply under Rule 42.23(b), but that
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`they are inadmissible under Rule 42.123(b). Under the latter rule, supplemental
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`information—“evidence a party intends to support an argument on the merits”—is
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`admissible only if its submission is pre-approved by the Board. See Handi Quilter,
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`Inc. v. Bernina Int’l AG, IPR2013-00364, Paper 30 at 2-3 (PTAB June 12, 2014)
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`(supplemental information “may only be filed if a § 123 motion is both authorized
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`and granted”). Arguments that certain exhibits have been submitted without
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`authorization and are therefore inadmissible under Rule 42.123(b) are appropriate in
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`a motion to exclude. Indeed, the Board has granted such motions. Dropbox, Inc. v.
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`Synchronoss Tech., Inc., IPR2016-00851, Paper 40 at 22-23 (PTAB Oct. 5, 2017);
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`73529521.1
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`Toshiba Corp. v. Optical Devices, LLC, IPR2014-01447, Paper 34 at 44-47 (PTAB
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`Mar. 9, 2016). While PO’s Motion to Exclude does explain that Petitioner’s
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`evidence raises new arguments and obviousness combinations beyond the proper
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`scope of a reply, it does so to illustrate that, beyond even that standard, these new
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`exhibits are offered to supplement Petitioner’s required showing and are therefore
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`supplemental information that is inadmissible under Rule 42.123(b).
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`Contrary to Petitioner’s arguments in its Opposition, Petitioner’s Reply relies
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`on the new exhibits for more than just rebuttal of PO’s Response arguments. As
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`discussed in detail in PO’s Response to the Petition, Lahti does not disclose the
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`“predetermined constraints” limitation requiring that video capture parameters are
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`specified by a server. Paper 47 at 1, 8-15. Petitioner’s Reply attempted to remedy
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`this deficiency, not by merely rebutting the arguments made in PO’s Response, but
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`by attempting to fill Lahti’s gaps with these newly cited exhibits. As discussed in
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`PO’s Sur-Reply (Paper 57 at 6-13) and Motion to Exclude (Paper 56 at 7-8),
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`Petitioner relied upon Exs. 1043, 1044, 1045, 1047, and 1048 to purportedly
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`supplement what a POSITA would have “understood” from Lahti’s passing mention
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`of SDKs. Likewise, Petitioner’s Reply relies on Exs. 1033, 1036, 1037, 1049, and
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`1050 to attempt to remedy Lahti’s deficiencies by purportedly demonstrating what
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`a POSITA would have “understood” about mobile handsets available at the time of
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`Lahti. Paper 56 at 2-4; Paper 57 at 5-6.
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`73529521.1
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`Thus, the exhibits challenged here were not merely used for rebuttal, but for
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`establishing new theories as to how and why Lahti purportedly discloses—despite
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`not expressly doing so—the “predetermined constraints” limitation. Because the
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`newly cited exhibits are relied upon to fill gaps in Lahti’s disclosure, they are relied
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`on to present new obviousness combinations. As such, these new exhibits should be
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`excluded under 37 C.F.R. § 42.123(b) as untimely and unauthorized supplemental
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`information.
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`III. HEARSAY
`In its Opposition, Petitioner does not dispute that the dates on the faces of
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`challenged Exs. 1036, 1037, 1043-1045, and 1047-1050 are hearsay. And Petitioner
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`failed to meet its burden to establish that the dates meet the requirements of the
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`exceptions in FRE 803(17) and 807. Petitioner did not provide evidence that the
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`dates on these exhibits have similar guarantees of trustworthiness as the IEEE
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`copyright notice that the Board found persuasive in Ericsson Inc. v. Intellectual
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`Ventures I LLC, IPR2014-00527, Paper 41 at 10-11 (May 18, 2015). Nor does
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`Petitioner even attempt to provide evidence sufficient to meet the “heavy burden”
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`required to establish that the requirements of the “residual exception” in FRE 807
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`are met. U.S. v. Washington, 106 F.3d 983, 1001-02 (D.C. Cir. 1997).
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`Dated: October 5, 2018
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`/Eagle H. Robinson/
`Eagle H. Robinson (Reg. No. 61,361)
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`73529521.1
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`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on
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`Case IPR2017-01133
`Patent 8,601,506
`
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`October 5, 2018, a complete copy of Patent Owner VidStream LLC’s Reply in
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`Support of Its Motion to Exclude Evidence was served on the following:
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`Lead Counsel:
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`Todd M. Siegel (Reg. No. 73,232)
`todd.siegel@klarquist.com
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`Backup Counsel: Andrew M. Mason (Reg. No. 64,034)
`andrew.mason@klarquist.com
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`Robert T. Cruzen (pro hac vice)
`rob.cruzen@klarquist.com
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`Respectfully submitted,
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`/Eagle H. Robinson/
`Eagle H. Robinson (Reg. No. 61,361)
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