UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`BEFORE THE PATENT AND TRIAL AND APPEAL BOARD
`
`
`UNIFIED PATENTS INC.
`Petitioner
`
`v.
`
`VILOX TECHNOLOGIES, LLC.
`Patent Owner
`
`
`
`Case IPR2018-00044
`Patent No. 7,302,423
`
`
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`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
`UNDER 37 C.F.R. § 42.64(c)
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`
`BEFORE THE PATENT AND TRIAL AND APPEAL BOARD
`
`
`UNIFIED PATENTS INC.
`Petitioner
`
`v.
`
`VILOX TECHNOLOGIES, LLC.
`Patent Owner
`
`
`
`Case IPR2018-00044
`Patent No. 7,302,423
`
`
`
`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
`UNDER 37 C.F.R. § 42.64(c)
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2018-00044
`Patent No. 7,302,423
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`Patent Owner requests exclusion of the Declaration of Dr. Philip Greenspun,
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`Exhibit 1013, and USP 6,452,597 to Goldberg et al. (Goldberg), Exhibit 1014.
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`
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`Patent Owner objected to the inclusion of Exhibits 1013 and 1014 in a
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`September 28, 2018 Objection to Evidence.
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`
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`Specifically, Patent Owner objected to this evidence under the Federal Rules
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`of Evidence, Rule 403 – Excluding Relevant Evidence for Prejudice, Confusion,
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`Waste of Time, or Other Reasons, which states:
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`The court may exclude relevant evidence if its probative value is
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`substantially outweighed by a danger of one or more of the following:
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`unfair prejudice, confusing the issues, misleading the jury, undue
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`delay, wasting time, or needlessly presenting cumulative evidence.
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`
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`In its Opposition to Patent Owner’s Motion to Amend (Opposition), Paper
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`42, Petitioner asserts that proposed claims 26 and 27 are obvious over the
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`references initially cited in the Petition, yet, as explained herein, in the Opposition,
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`Petitioner admits that Goldberg provides no additional teachings over that
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`provided in the initially-cited references.
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`
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`Patent Owner asserts that consideration of Exhibits 1013 and 1014 would
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`unfairly prejudice Patent Owner, confuse the issues, produce undue delay, waste
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`time of Patent Owner and the Panel, and needlessly present cumulative evidence.
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`1
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`Case IPR2018-00044
`Patent No. 7,302,423
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`Declaration of Dr. Philip Greenspun
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`
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`Exhibit 1013, Declaration of Dr. Philip Greenspun, states that proposed
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`claims 26 and 27 “would be taught by Maloney and Bertram or Excel and Bertram.
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`Ex. 1013, ¶ 13. Yet beginning with paragraph 14, Exhibit 1013 discusses how
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`Goldberg allegedly teaches limitations of proposed claims 26 and 27. Since
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`petitioner’s expert has stated unequivocally that the limitations of proposed claims
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`26 and 27 are taught by the references cited in the Petition, the addition of
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`Goldberg can only be viewed as needlessly presenting cumulative evidence.
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`Furthermore, responding to the issues raised in Exhibit 1013 will and has wasted
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`time and will and has confused the issue as to the patentability of proposed claims
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`26 and 27. Thus, Exhibit 1013 is not admissible and must be excluded.
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`Goldberg
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`Petitioner’s Opposition to Patent Owner’s Motion to Amend (Opposition)
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`cites Goldberg, Exhibit 1014. Petitioner relied on Goldberg when opposing
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`proposed claims 26 and 27.
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`On pages 13 and 14 of the Opposition, Petitioner asserts that proposed
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`claims 26 and 27 are invalid as obvious based on references already present in the
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`record. Specifically, Petitioner asserts that proposed claims 26 and 27 are obvious
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`2
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`Case IPR2018-00044
`Patent No. 7,302,423
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`over the combination of Maloney, Bertram, and Kanevsky, and are obvious over
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`the combination of Excel 2000 Bible, Bertram and Kanevsky:
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`Bertram itself teaches the amended limitations of proposed claims 26
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`and 27. … Thus, proposed claims 26 and 27 are also unpatentable
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`over the previously-cited combinations of Maloney, Bertram, and
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`Kanevsky and Excel, Bertram, and Kanevsky, [and] the Board should
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`not grant the motion to amend as to those proposed claims.
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`See Opposition, pages 13 –14.
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`
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`Yet on pages 14 - 18 of the Opposition, Petitioner needlessly adds Goldberg
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`to the combination of Maloney, Bertram, and Kanevsky and needlessly adds
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`Goldberg to the combination of Excel 2000 Bible, Bertram, and Kanevsky. Since
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`Petitioner asserts that proposed claims 26 and 27 are obvious over the references
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`initially cited in the Petition while admitting that Goldberg provides no additional
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`teachings over those provided in the initially-cited references, adding Goldberg
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`needlessly presents cumulative evidence, confuses the issues and wastes time.
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`Thus, Goldberg is not admissible, and must be excluded.
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`3
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`Dated: November 5, 2018
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`Case IPR2018-00044
`Patent No. 7,302,423
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`Respectfully submitted,
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`
`
`John K. Harrop
`/s/
`John K. Harrop
`Counsel for Patent Owner
`Vilox Technologies, LLC
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`
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`4
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`Case IPR2018-00044
`Patent No. 7,302,423
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`Certificate of Service
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`The undersigned certifies service pursuant to 37 CFR § 42.6(e) that
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`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE was served on the
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`Petitioner by email as authorized by the Petitioner in the Petition, as follows:
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`David.odell.ipr@haynesboone.com
`David.mccombs.ipr@haynesboone.com
`Thomas.kelton.ipr@haynesboone.com
`Scott.cunning.ipr@haynesboone.com
`jonathan@unifiedpatents.com
`roshan@unifiedpatents.com
`russ.emerson@haynesboone.com
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`Dated: November 5, 2018
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`John K. Harrop
`/s/
`John K. Harrop
`Counsel for Patent Owner
`Vilox Technologies, LLC
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`
`
`
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