UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`UNIFIED PATENTS INC.
`Petitioner,
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`v.
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`VILOX TECHNOLOGIES LLC
`Patent Owner
`________________
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`IPR2018-00044
`Patent 7,302,423
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`________________
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`PETITIONER’S OPPOSITION TO MOTION TO EXCLUDE
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`________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
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`UNIFIED PATENTS INC.
`Petitioner,
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`v.
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`VILOX TECHNOLOGIES LLC
`Patent Owner
`________________
`
`IPR2018-00044
`Patent 7,302,423
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`________________
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`PETITIONER’S OPPOSITION TO MOTION TO EXCLUDE
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`Petitioner’s Opposition to Motion to Exclude
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`I.
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`Introduction
`On November 5, 2018, Patent Owner filed a Motion to Exclude (“Motion,”
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`IPR2018-00044
` Patent 7,302,423
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`Paper 49), requesting exclusion of Goldberg (EX1014) and Greenspun-MtA
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`(EX1013). Petitioner submits this opposition under 37 C.F.R. § 42.23.
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`Pursuant to the Patent Office’s Trial Practice Guide Update, Petitioner
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`properly included Goldberg and Greenspun-MtA as new evidence in support of its
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`Opposition to Patent Owner’s Motion to Amend (Paper 42). 83 Fed. Reg. 156,
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`39989 (citing Western Digital Corp. v. SPEX Techs., Inc., IPR2018-00082 (PTAB
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`April 25, 2018) (Paper 13, at 9) (“A petitioner may submit additional testimony
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`and evidence with an opposition to the motion to amend[.]”)). As explained below,
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`Patent Owner’s Motion should be denied because its objections under Federal Rule
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`of Evidence (FRE) 403 are without merit. Accordingly, Patent Owner lacks any
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`legitimate grounds to exclude these exhibits.
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`II.
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`Argument
`A. Goldberg Should Not be Excluded Under FRE 403
`Patent Owner fails to show that the protection of FRE 403 precludes
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`Goldberg at least for several reasons.
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`First, Patent Owner’s Motion fails to apply any standard regarding
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`cumulative evidence. Patent Owner points out that Petitioner asserts proposed
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`amended claims 26 and 27 are invalid as obvious in view of references already
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`1
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`Petitioner’s Opposition to Motion to Exclude
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`present in the record. Paper 49, at 2–3. Patent Owner then argues that, because
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`IPR2018-00044
` Patent 7,302,423
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`“Goldberg provides no additional teachings over those provided in the initially
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`cited references, adding Goldberg presents cumulative evidence, confuses the
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`issues and wastes time.” Id. at 3. However, the standard for cumulative evidence is
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`not whether prior art has previously been asserted against the same claim, and
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`indeed Patent Owner tellingly does not (and cannot) cite any caselaw in support.
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`Rather, the Board has previously found that new prior art cited in response
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`to a new argument by Patent Owner regarding claim scope is not cumulative—or
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`otherwise inadmissible under FRE 403—in view of prior art already asserted
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`against the same claim. Captioncall LLC v. Ultratec, Inc., IPR2014-00780 (PTAB
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`Dec. 1, 2015) (Paper 35, at 8) (“Patent Owner fails to address the ‘substantially
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`outweighed’ aspect of the Rule [FRE 403]. In addition, these Exhibits were
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`presented in response to Patent Owner’s argument that the claims required a
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`certain amount of speed; they tend to show that the prior art was sufficiently
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`speedy.”); see also Taiwan Semiconductor Manufacturing Co. v. Godo Kaisha IP
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`Bridge 1, IPR2016-01246 (PTAB Jan. 3, 2018) (Paper 49, at 67–68) (finding prior
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`art references showing a skilled artisan’s background knowledge not cumulative of
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`the art in Petitioner’s unpatentability grounds and thus not inadmissible under FRE
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`403).
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`2
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`Petitioner’s Opposition to Motion to Exclude
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`Here, Goldberg is not cumulative art with respect to proposed amended
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`IPR2018-00044
` Patent 7,302,423
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`claims 26 and 27 because it is cited in response to Patent Owner’s amendments
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`that alter the scope of those claims. Captioncall, IPR2014-00780, Paper 35, at 8;
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`see also Western Digital, IPR2018-00082, Paper 13, at 9. Patent Owner amends
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`the claims to require display of the data entries on “a single page of a terminal,”
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`and Petitioner relies on Goldberg directly in response to the new claim limitation.
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`Greenspun-MtA (EX1013), at ¶ 14.
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`Further, Goldberg clearly teaches the amended claim limitation in more
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`detail compared to the initially cited references and, thus, Patent Owner is incorrect
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`to assert that Goldberg is cumulative and wastes time by providing no additional
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`teachings. For instance, while the initially cited references may not have explicitly
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`said “single page of a terminal,” Goldberg is specifically directed to “adjusting
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`information such that the information can be displayed on a single screen.”
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`Greenspun-MtA (EX1013), at ¶ 14. Goldberg describes that the “size of
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`information being display[ed] by a computer is automatically adjusted in order to
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`make the information easily readable, while at the same time leaving most (or all)
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`of the information displayed on a single screen.” Goldberg (EX1014), at Abstract.
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`Goldberg provides additional detail regarding the mechanisms to adjust the
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`information, where such detail is over and beyond that provided in the initially
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`cited references. Greenspun-MtA (EX1013), at ¶¶ 14–20.
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`3
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`Petitioner’s Opposition to Motion to Exclude
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`Second, Patent Owner argues that Goldberg is inadmissible under FRE 403
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`IPR2018-00044
` Patent 7,302,423
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`because it also “would unfairly prejudice Patent Owner, produce undue delay” and
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`“confuses the issues.” Paper 49, at 1, 3. Patent Owner has not identified any
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`specific instances of prejudice or confusion, and the trial is still proceeding without
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`delay according to the Scheduling Order. Thus, Patent Owner’s assertions are
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`unsupported and not true. Also, without addressing any standards or providing any
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`explanation with respect to unfair prejudice, undue delay, and confusing the issues,
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`Patent Owner fails to carry its burden as a moving party. 37 C.F.R. § 42.20(c).
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`Third, the sole Rule of Federal Evidence cited by the Patent owner, FRE
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`403, has minimal applicability to inter partes reviews: “Proceedings before the
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`Board are not jury trials; in the absence of a jury, the risk of unfair prejudice
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`against which Rule 403 guards is diminished, if not eliminated entirely.” Neste Oil
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`Oyj v. Reg Synthetic Fuels, LLC., IPR2013-00578 (PTAB Mar. 12, 2015) (Paper
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`53, at 10). The Board in this proceeding, like the Board in Neste Oil, “is capable of
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`hearing relevant evidence and weighing its probative value.” Id. at 11.
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`Therefore, because FRE 403 is the sole basis for Patent Owner’s objections
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`to Goldberg, and Goldberg is not precluded under FRE 403, the Motion should
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`fail.
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`B.
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`The Greenspun Declaration Should Not be Excluded Under FRE
`403
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`4
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`Petitioner’s Opposition to Motion to Exclude
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`Patent Owner likewise fails to show that Greenspun-MtA is precluded under
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`IPR2018-00044
` Patent 7,302,423
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`FRE 403.
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`First, the Motion again fails to discuss any standard regarding cumulative
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`evidence. Patent Owner argues that Goldberg provides no additional teachings
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`over the initial references and that adding Greenspun-MtA in support of Goldberg
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`presents cumulative evidence and wastes time. Paper 49, at 3. However, as
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`explained above, this is not supported by any law or rule.
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`Rather, new prior art cited in response to a new argument by Patent Owner
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`regarding claim scope is not cumulative under 403. Captioncall, IPR2014-00780,
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`Paper 35, at 8. Here, Greenspun-MtA is not cumulative and does not waste time
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`because it is evidence in response to Patent Owner’s amendments that alter the
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`claim scope. Greenspun-MtA (EX1013), at ¶¶ 13–20. Further, Greenspun-MtA
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`explains how Goldberg teaches the new claim limitations in a different way
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`compared to the initially cited references. Id.
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`Second, Patent Owner does not carry its burden as a moving party because it
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`alleges that Greenspun-MtA “would unfairly prejudice Patent Owner, produce
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`undue delay” and “confuses the issues” (Paper 49, at 1–2) but fails to address any
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`legal standard or provide any explanation. 37 C.F.R. § 42.20(c).
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`Third, the sole Rule of Federal Evidence cited by the Patent owner against
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`Greenspun-MtA, FRE 403, should not be applied to the present inter partes review
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`5
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`Petitioner’s Opposition to Motion to Exclude
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`proceeding because it is not a jury trial and thus “the risk of unfair prejudice
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`IPR2018-00044
` Patent 7,302,423
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`against which Rule 403 guards is diminished, if not eliminated entirely.” Neste Oil,
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`IPR2013-00578, Paper 53, at 10–11.
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`Therefore, FRE 403 does not preclude Greenspun-MtA.
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`III.
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`Conclusion
`For at least the foregoing reasons, Petitioner respectfully requests that the
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`Board deny Patent Owner’s Motion to Exclude.
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`Dated: November 16, 2018
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`HAYNES AND BOONE, LLP
`2323 Victory Avenue, Suite 700
`Dallas, Texas 75219
`Telephone: 972-739-8635
`Facsimile: 214-200-0853
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`Respectfully submitted,
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`By: /David M. O’Dell/
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`David M. O’Dell
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`Registration No. 42,044
`Lead Counsel for Petitioner
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`6
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`Petitioner’s Opposition to Motion to Exclude
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6, the undersigned certifies that service was
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`IPR2018-00044
` Patent 7,302,423
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`made on the Patent Owner as detailed below:
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`Date of service November 16, 2018
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`Manner of service Email: harrop@vapatent.com
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`Documents served Petitioner’s Opposition to Motion to Exclude
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`Persons Served John K. Harrop
`Cecil E. Key
`Jay Kesan
`P.O. Box 320171
`Alexandria, VA 22320
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`440 Belmont Bay Drive, Unit 202
`Woodbridge, VA 22191
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`By: /David M. O’Dell/
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`David M. O’Dell
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`Registration No. 42,044
`Lead Counsel for Petitioner
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`7
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