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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT AND 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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`Case IPR2018-00044
`Patent No. 7,302,423
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`PATENT OWNER’S REPLY TO PETITIONER’S
`OPPOSITION TO MOTION TO EXCLUDE
`PETITIONER’S EVIDENCE UNDER 37 C.F.R. §
`42.64(c)
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`Case IPR2018-00044
`Patent No. 7,302,423
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`I.
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`INTRODUCTION
`Petitioner filed an Opposition to Patent Owner’s Motion to Amend
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`(“Opposition” ) citing Goldberg, Ex. 1014 and Greenspun MtA, Ex 1013. Patent
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`Owner objected to this evidence as improper and filed a Motion to Exclude
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`(“Motion”) pursuant to 37 C.F.R. § 42.23 to exclude Exhibits 1013 and 1014.
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`Petitioner then filed an Opposition to Patent Owner’s Motion to Exclude
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`(“Opposition to Motion”), alleging the Motion “lacks any legitimate grounds to
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`exclude these exhibits.”
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`The Motion properly describes legitimate grounds to exclude Exhibits 1013
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`and 1014.
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`II. EXHIBITS 1013 AND 1014 ARE NEEDLESSLY CUMULATIVE
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`Page 1 of Petitioner’s Opposition to Motion states that Patent Owner “fails
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`to apply any standard regarding cumulative evidence.”
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`Petitioner is wrong. FRE 403 explicitly states that the court may exclude
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`evidence if “its probative value is substantially outweighed by a danger of ...
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`needlessly presenting cumulative evidence.” This requirement presupposes the
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`new evidence has some probative value in addition to evidence already provided.
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`However, Petitioner’s arguments in the Opposition clearly show that
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`Goldberg, and (by extension) Greenspun MtA, have no additional probative value.
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`As Patent Owner pointed out in the Motion, Greenspun MtA states, and the
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`Case IPR2018-00044
`Patent No. 7,302,423
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`Opposition repeats, that proposed claims 26 and 27 are invalid based on references
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`presented with the Petition.
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`For example, Greenspun MtA states that proposed claims 26 and 27 “would
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`be taught by Maloney and Bertram or Excel and Bertram. Ex. 1013, ¶ 13.
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`The Opposition states:
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`Bertram itself teaches the amended limitations of proposed claims 26
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`and 27. In particular, in describing the prior art technique, Bertram
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`describes that, as a result of truncation, a previously unviewable
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`column, referred to as column 80, “can be displayed to the system
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`administrator without horizontal scrolling.” Bertram (EX1007), at
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`5:9-24; Greenspun-MtA (EX1013), ¶ 13. … Bertram still teaches the
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`claim feature, as its techniques would result in displaying a given set
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`of data “on a single page of a terminal.” Greenspun-MtA (EX1013), ¶
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`13.
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`Opposition, pp. 13-14.
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`As Patent Owner asserts in its Motion, these passages are unequivocal.
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`Petitioner and Petitioner’s expert clearly assert that the limitations of proposed
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`claims 26 and 27 are not just suggested, but indeed are taught by Bertram, and
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`thus Petitioner necessarily must be alleging that Bertram in combination with other
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`Case IPR2018-00044
`Patent No. 7,302,423
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`references cited in the Petition is sufficient to render proposed claims 26 and 27
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`invalid.
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`Since under Petitioner’s own theory, Bertram teaches the limitations of
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`proposed claims 26 and 27, the assertion of Goldberg adds no additional probative
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`value and thus is needlessly cumulative. The plain language of FRE 403 itself
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`states the court may exclude evidence if “its probative value is substantially
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`outweighed by a danger of... needlessly presenting cumulative evidence.” Here,
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`the risk of presenting cumulative evidence “substantially outweighs” the zero
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`additional probative value of Goldberg and Greenspun MtA, since, by Petitioner's
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`own writings, the evidence presented in these two Exhibits is merely duplicative of
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`Petitioner’s other references.
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`III. PETITIONER MISCONSTRUES CAPTIONCALL, IPR2014-00780
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`Petitioner cites Paper 35, page 8, of the Captioncall IPR as allegedly
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`supporting Petitioner’s proposition that in an IPR, a Party may apply new art in
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`response to arguments regarding claim scope without concern for FRE 403. See
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`Opposition to Motion, p. 2. However, the Captioncall Board did not hold that in
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`all cases “new prior art cited in response to a new argument by Patent Owner
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`regarding claim scope is not cumulative,” as Petitioner contends. Rather, the
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`Captioncall Board found that in that specific IPR, the new references asserted by
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`Case IPR2018-00044
`Patent No. 7,302,423
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`the Captioncall Petitioner presented evidence of the state of the prior art, which
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`addressed a specific new argument raised by the Captioncall Patent Owner
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`regarding what was known in the art. Defining the state of the prior art as in
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`Captioncall is very different from finding a prior art reference that teaches a
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`specific claim limitation, as the Petitioner attempts to do in this IPR with
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`Goldberg. Here, there is no new issue regarding the state of the prior art.
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`Furthermore, by Petitioner’s own writings in the Opposition, Goldberg does not
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`add anything new that the references asserted in the Petition do not already cover.
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`IV. FRE 403 IS APPLICABLE TO IPRs
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`Citing IPR 2013-00578, the Opposition to Motion asserts that FRE 403 has
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`minimal applicability to IPRs; however, the cited IPR addressed non-jury
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`proceedings where the risk of unfair prejudice is diminished. FRE 403 addresses
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`more than just unfair prejudice, as the Captioncall IPR shows. While the
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`Captioncall Board denied a motion to exclude based on FRE 403, the Board did
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`not simply dismiss the FRE 403 argument as inapplicable to IPRs.
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`V. CONCLUSION
`For at least the foregoing reasons, Patent owner respectfully requests that the
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`Board grant Patent Owner’s Motion to Exclude.
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`Dated: November 28, 2018
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`Case IPR2018-00044
`Patent No. 7,302,423
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`Respectfully submitted,
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`
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`John K. Harrop
`/s/
`John K. Harrop
`Counsel for Patent Owner
`Vilox Technologies, LLC
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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 PATENT
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`OWNER’S MOTION TO EXCLUDE EVIDENCE was served on the Petitioner by
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`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 28, 2018
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`John K. Harrop
`/s/
`John K. Harrop
`Counsel for Patent Owner
`Vilox Technologies, LLC
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` 7
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