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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE 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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`IPR2018-00294
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`PATENT 6,736,759
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`PATENT OWNER MOTION TO EXCLUDE
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`PURSUANT TO 37 C.F.R. § 42.120
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`1
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`Patent Owner moves pursuant to 37 CFR §§ 42.53(d)(4)(ii) and 42.64(c) to
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`exclude portions of the deposition transcript of William C. Easttom, II, filed as
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`Exhibit 1027. Under Section 42.64(c):
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`A motion to exclude evidence must be filed to preserve any objection.
`The motion must [1] identify the objections in the record in order and
`must [2] explain the objections. The motion may be filed without prior
`authorization from the Board.
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`See 37 C.F.R. § 42.64(c). Further, according to the Trial Practice Guide, “[a] motion
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`to exclude evidence must: … [3] [i]dentify where in the record the evidence sought
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`to be excluded was relied upon by an opponent.” Trial Practice Guide, 77 Fed. Reg.
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`48,756, 47,867.
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`Petitioner’s Reply to Patent Owner’s Response (Paper 12) relies on several
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`excerpts from the cross examination of Dr. Easttom (EX1027) that exceed the proper
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`scope of cross-examination testimony allowed under Section 42.53(d)(4)(ii), which
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`limits the scope of cross-examination testimony to “the scope of direct testimony.”
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`Because such testimony was not “taken, sought, or filed” in accordance with Subpart
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`A of Section 42, it is inadmissible and should be excluded from Petitioner’s briefs,
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`motions and exhibits.
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`Inadmissible evidence in the order it appears in the transcript:
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`First, Petitioner’s Reply relies on EX1027 at 24:16-25:11. See Paper 12 at 8.
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`This testimony exceeds the scope of Dr. Easttom’s direct testimony and is therefore
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`inadmissible under Section 42.53(d)(4)(ii). Patent Owner preserved this objection
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`2
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`by objecting to scope during Dr. Easttom’s cross examination. See EX1027 at
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`24:21-22. This excerpt of Dr. Easttom’s testimony should, therefore, be excluded
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`from Petitioner’s briefs, motions and exhibits.
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`Second, Petitioner’s Reply relies on EX1027 at 26:2-15. See Paper 12 at 7.
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`This testimony exceeds the scope of Dr. Easttom’s direct testimony and is therefore
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`inadmissible under Section 42.53(d)(4)(ii). Patent Owner preserved this objection
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`by objecting to scope during Dr. Easttom’s cross examination. See EX1027 at 26:4-
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`5. This excerpt of Dr. Easttom’s testimony should, therefore, be excluded from
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`Petitioner’s briefs, motions and exhibits.
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`Third, Petitioner’s Reply relies on EX1027 at 58:22-60:4. See Paper 12 at 7.
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`This testimony exceeds the scope of Dr. Easttom’s direct testimony and is therefore
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`inadmissible under Section 42.53(d)(4)(ii). Patent Owner preserved this objection
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`by objecting to scope during Dr. Easttom’s cross examination. See EX1027 at
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`58:24-25. This excerpt of Dr. Easttom’s testimony should, therefore, be excluded
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`from Petitioner’s briefs, motions and exhibits.
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`Fourth, Petitioner’s Reply relies on EX1027 at 86:25-87:11. See Paper 12 at
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`17. This testimony exceeds the scope of Dr. Easttom’s direct testimony and is
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`therefore inadmissible under Section 42.53(d)(4)(ii). Patent Owner preserved this
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`objection by objecting to scope during Dr. Easttom’s cross examination. See
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`3
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`EX1027 at 87:4. This excerpt of Dr. Easttom’s testimony should, therefore, be
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`excluded from Petitioner’s briefs, motions and exhibits.
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`Date: January 3, 2019
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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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`4
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`CERTIFICATE OF SERVICE
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` I
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` certify that the foregoing was served on the Petitioner’s counselors of record
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`by electronic notification, as agreed to by the parties:
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`Lead Counsel:
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`Adam P. Seitz (Reg. No. 52,206)
`adam.seitz@eriseip.com
`ptab@eriseip.com
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`Back-up Counsel:
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`Paul R. Hart (Reg. No. 59,646)
`paul.hart@eriseip.com
`ptab@eriseip.com
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`Chris R. Schmidt (Reg. No. 63,982)
`chris.schmidt@eriseip.com
`ptab@eriseip.com
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`/s/ Brett A. Mangrum
`Brett A. Mangrum
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`5
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