UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS AMERICA, INC.
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`Petitioner
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`v.
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`UNILOC LUXEMBOURG, S.A.
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`Patent Owner
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`IPR2017-1799
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`PATENT 8,199,747
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`PATENT OWNER MOTION TO EXCLUDE
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`PURSUANT TO 37 C.F.R. § 42.64
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`1
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS AMERICA, INC.
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`Petitioner
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`v.
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`UNILOC LUXEMBOURG, S.A.
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`Patent Owner
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`IPR2017-1799
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`PATENT 8,199,747
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`PATENT OWNER MOTION TO EXCLUDE
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`PURSUANT TO 37 C.F.R. § 42.64
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`1
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`Pursuant to 37 CFR § 42.64, Patent Owner moves to exclude portions of the
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`deposition transcripts that exceed the permissible scope of cross examination.
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`BACKGROUND
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`Petitioner cross examined Patent Owner’s witness, William C. Easttom II,
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`during three separate depositions held on August 3 and 6, 2018. See Exhibits 1040,
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`1041, and 1042. Rather than question Mr. Easttom concerning the direct testimony
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`contained in his declarations, however, Petitioner spent much of the time questioning
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`Mr. Easttom concerning matters outside the scope of his direct testimony and
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`therefore outside the scope of cross-examination testimony allowed under 37 CFR
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`§§ 42.53(d)(4)(ii).
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`During the first deposition, held on August 3, for example, Petitioner directly
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`mentioned Mr. Easttom’s declarations only to ask basic preliminary questions about
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`the preparation and authenticity of the declarations. Petitioner then asked Mr.
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`Easttom a series of questions outside the scope of his direct testimony, including
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`various hypotheticals not contemplated in his direct testimony. See e.g. Ex. 1040 at
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`31:25-32:6 (“would the delay of an hour at the time be an instant message”); 32:13
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`– 32:24 (same); 33:6 – 33:12 (same); 105:18-105:23 (question concerning
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`capabilities of hypothetical configurations); 106:3 – 106:20 (same). Mr. Easttom
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`repeatedly informed Petitioner that these questions were outside the scope of his
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`direct testimony. See e.g. Ex. 1040 at 32:2-3 (“It’s not really a concept I’ve
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`2
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`considered. I know all my opinions are in my declaration.”); 33:7-9 (“What I’ve
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`actually said [is] I haven’t contemplated that. I haven’t opined on that. That’s not
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`within my declaration.”); 105:21-23 (same); 106:6-7 (same).
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`After a series of hypotheticals outside the scope of Mr. Easttom’s direct
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`testimony culminated in Petitioner’s insistence that Mr. Easttom answer “yes or no”
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`to a question about a hypothetical e-mail system imagined by Petitioner, which Mr.
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`Easttom described as “radically different than not only the way e-mail works but the
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`way the protocols would even allow it to work,” counsel for Patent Owner suggested
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`that Petitioner either move on to actual cross examination of Mr. Easttom’s direct
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`testimony or the parties go to the board for intervention. Ex. 1040 at 57:3 – 59:25.
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`OBJECTIONS TO SCOPE
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`In accordance with § 42.64(a), Patent Owner preserved its objections to the
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`scope of Petitioner’s questions by objecting to scope each time Petitioner’s cross
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`examination exceeded the permissible scope of the deposition. In accordance with
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`§ 42.64(c), each of Patent Owner’s objections to scope is identified below, in the
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`order they appear in the record.
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`Objections to Exhibit 1040
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`I.
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`Patent Owner objected to the following sections of Exhibit 1040 and hereby
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`moves to exclude them from Petitioner’s briefing and trial exhibits:
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`31:25 – 32:6
`32:13 – 32:24
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`191:2 – 191:20
`60:24 – 61:3
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`105:20 – 106:2
`109:11 – 109:22
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`3
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`33:6 – 33:12
`34:21 – 35:18
`35:20 – 36:16
`36:22 – 37:22
`38:2 – 38:17
`38:22 – 39:5
`39:19 – 39:21
`40:3 – 40:15
`41:5 – 41:12
`41:23 – 42:6
`42:15 – 42:24
`44:6 – 44:15
`45:3 –45:7
`45:11 – 45:17
`47:11 - 48:4
`52:3 – 52:15
`52:22 – 53:6
`53:10 – 53:12
`53:17 – 53:23
`54:11 – 54:17
`55:9 – 55:13
`55:25 – 57:1
`57:10 – 57:17
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`61:17 – 61:23
`65:17 – 65:23
`66:2 – 66:9
`66:18 – 66:23
`67:8 – 67:13
`71:3 – 71:6
`83:5 – 84:5
`84:13 – 85:5
`85:10 – 85:16
`86:3 – 86:9
`86:16 – 86:23
`87:20 – 87:22
`92:9 – 92:19
`93:2 – 93:7
`93:16 – 94:13
`94:24 – 95:8
`95:12 – 95:19
`95:25 – 96:3
`96:15 – 96:23
`96:20 – 96:23
`100:14 – 100:18
`101:6 – 101:10
`101:17 – 101:20
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`110:21 – 111:9
`113:25 – 114:9
`115:10 – 115:15
`119:3 – 119:18
`144:2 – 144:9
`148:25- 149:1
`149:19 – 150:2
`119:23 – 120:1
`121:20 – 122:4
`126:12 –127:1
`128:15 – 129:4
`129:8 – 130:6
`131:11 – 131:19
`132:19 – 133:12
`133:19 – 134:09
`140:4 -140:15
`141:22 – 141:22
`152:25 – 153:8
`154:15 – 155:2
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`The basis for each of the objections above is that the question exceeded the scope of
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`Mr. Easttom’s direct testimony. Patent Owner’s numerous objections to the scope of
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`questioning in Exhibit 1040 is a result of a lengthy line of questioning by Petitioner,
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`including questions about hypothetical systems, that was entirely outside the scope of
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`Mr. Easttom’s direct testimony in his declaration.
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`II. Objections to Exhibit 1041
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`Patent Owner identifies the following objections to the scope of Exhibit 1041
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`and moves to exclude these portions of the exhibit because they are outside the scope
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`of Mr. Easttom’s declaration (as he repeatedly reminded Petitioner).
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`19:6 – 19:11
`20:14 – 20:19
`21:6 – 21:24
`22:16 – 22:21
`22:24 – 23:21
`23:22 – 24:4
`26:5 – 26:18
`27:2 – 27:5
`28:9 – 28:15
`28:20 – 29:8
`29:12 – 29:14
`29:19 – 30:1
`30:6 – 30:20
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`III. Objections to Exhibit 1042
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`Patent Owner identifies the following objections to the scope of Exhibit 1042
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`and moves to exclude these portions of the exhibit because they are outside the scope
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`of Mr. Easttom’s declaration.
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`21:6 – 21:24
`31:5 – 31:9
`59:9 – 60:3
`68:3 – 68:9
`68:15 – 68:18
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`5
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`Date: September 28, 2018
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`Respectfully submitted,
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`By: /s/ Brett A. Mangrum
`Brett A. Mangrum
`Attorney for Patent Owner
`Reg. No. 64,783
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`Ryan Loveless
`Attorney for Patent Owner
`Reg. No. 51,970
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`6
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e), we certify that we served an electronic copy
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`of the foregoing PATENT OWNER’S RESPONSE PURSUANT TO 37 C.F.R. §
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`42.107(a) along with any accompanying exhibits via the Patent Review Processing
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`System (PRPS) to Petitioner’s counsel of record at the following address:
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`PETITIONER LEAD COUNSEL:
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`Naveen Modi (Reg. No. 46,224)
`Paul Hastings LLP,
`875 15th St. N.W.
`Washington, DC, 20005
`Telephone: 202.551.1990
`Fax: 202.551.1705
`Email: PH-Samsung-Uniloc-IPR@paulhastings.com
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`Date: September 28, 2018
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`Respectfully submitted,
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`By: /s/ Brett A. Mangrum
`Brett A. Mangrum
`Attorney for Patent Owner
`Reg. No. 64,783
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`Ryan Loveless
`Attorney for Patent Owner
`Reg. No. 51,970
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`7
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