Paper No. 30
`Filed: May 20, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SONOS, INC.
`Petitioner
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`v.
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`IMPLICIT, LLC
`Patent Owner
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`IPR2018-00767
`U.S. Patent No. 8,942,252
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`PETITIONER’S MOTION TO EXCLUDE
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`Filed: May 20, 2019
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`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`SONOS, INC.
`Petitioner
`
`v.
`
`IMPLICIT, LLC
`Patent Owner
`
`
`
`
`IPR2018-00767
`U.S. Patent No. 8,942,252
`
`
`
`
`
`
`
`
`PETITIONER’S MOTION TO EXCLUDE
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`TABLE OF CONTENTS
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`TABLE OF CONTENTS ........................................................................................... i
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`TABLE OF AUTHORITIES .................................................................................... ii
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`I.
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`II.
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`INTRODUCTION ........................................................................................... 1
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`STANDARD .................................................................................................... 1
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`III. EXHIBITS 2002-2009, 2011-2078, AND 2083-2088 SHOULD BE
`EXCLUDED AS NOT BEING AUTHENTICATED UNDER FRE
`901 ................................................................................................................... 1
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`A.
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`B.
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`Sonos Timely Objected ......................................................................... 1
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`The Exhibits Lack Sufficient Authentication ........................................ 2
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`IV. EXHIBITS 2081 AND 2082 SHOULD BE EXCLUDED AS BEING
`IMPROPERLY INCORPORATED BY REFERENCE ................................. 5
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`A.
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`B.
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`Sonos Timely Objected ......................................................................... 5
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`The Exhibits Were Improperly Incorporated By Reference ................. 5
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`i
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`TABLE OF AUTHORITIES
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`CASES
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`Avant Technology, Inc. v. Anza technology, Inc.,
`IPR2018-00828, Paper 7 (P.T.A.B. Oct. 16, 2018) ............................................... 6
`
`Chen v. Bouchard,
`347 F.3d 1299 (Fed. Cir. 2003) ..........................................................................2, 3
`
`Cisco Systems, Inc. v. C-Cation Technologies, LLC,
`IPR2014-00454, Paper 12 (P.T.A.B. Aug. 29, 2014) ............................................ 6
`
`Cooper v. Goldfarb,
`154 F.3d 1321 (Fed. Cir. 1998) .............................................................................. 3
`
`Hahn v. Wong,
`892 F.2d 1028 (Fed. Cir. 1989). ............................................................................. 2
`
`Horton v. Stevens, 1988 WL 252359 (BPAI Mar. 8, 1988 ........................................ 3
`
`IBG LLC v. Trading Technologies, Inc.,
`CBM2016-00054, Paper 36 (P.T.A.B. Apr. 7, 2017) ............................................ 6
`
`In re NTP, Inc., 654 F.3d 1279 (Fed. Cir. 2011) ...................................................2, 3
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`Mahurkar v. C.R. Bard, Inc.,
`79 F.3d 1572 (Fed. Cir. 1996) ................................................................................ 2
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`Medichem, S.A. v. Rolabo, S.L.,
`437 F.3d 1157 (Fed. Cir. 2006) .............................................................................. 3
`
`Microsoft Corp. v. Surfcast, Inc.,
`IPR2013-00292, IPR2013-00293, IPR2013-00294, and IPR2013-00295, Paper
`33 (PTAB Oct. 14, 2014) ....................................................................................... 4
`
`Neste Oil OYJ v. REG Synthetic Fuels, LLC,
`IPR2013-00578, Paper 52 (PTAB Mar. 12, 2015) ............................................2, 3
`
`Perfect Surgical Techniques, Inc. v. Olympus Am., Inc.,
`841 F.3d 1004 (Fed. Cir. 2016) .............................................................................. 2
`
`ii
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`
`
`White v. Habenstein,
`1983 WL 50193 (BPAI May 11, 1983) ................................................................. 3
`
`ZTE (USA), Inc. v. Electronics and Telecommunications Research Institute,
`IPR2015-00028, Paper 12 (P.T.A.B. Mar. 20, 2015 .............................................. 5
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`OTHER AUTHORITIES
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`77 Fed. Reg. 48,756 (Aug. 14, 2012)......................................................................... 1
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`REGULATIONS
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`37 C.F.R. §42.24(b)(2) ............................................................................................... 6
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`37 C.F.R. §42.6(a)(3) ................................................................................................. 6
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`iii
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`I.
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`INTRODUCTION
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`Pursuant to 37 C.F.R. §§ 42.64(c) and 42.61(a) and the Federal Rules of
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`Evidence, Sonos respectfully moves to exclude Exhibits 2002-2009, 2011-2078, and
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`2083-2088 as lacking sufficient authentication, and Exhibits 2081 and 2082 as being
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`improperly incorporated by reference.
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`II.
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`STANDARD
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`A Motion to Exclude must (a) identify where in the record the objection was
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`made, (b) identify where in the record the evidence sought to be excluded was relied
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`upon by an opponent, (c) address objections to exhibits in numerical order, and (d)
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`explain the objection. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
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`48,767 (Aug. 14, 2012).
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`III. EXHIBITS 2002-2009, 2011-2078, AND 2083-2088 SHOULD BE
`EXCLUDED AS NOT BEING AUTHENTICATED UNDER FRE 901
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`A.
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`Sonos Timely Objected
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`Implicit introduced Exhibits 2002-2009, 2011-2078, and 2083-2088 in its
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`Patent Owner response (“POR”), arguing that these exhibits corroborate the
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`declaration of its lead inventor and founder of Implicit (and its predecessor
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`companies). POR, pp. 14-29; Patent Owner’s Exhibit List. Sonos timely objected
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`to these Exhibits on December 26, 2018 as lacking sufficient authentication under
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`FRE 901 and Neste Oil OYJ v. REG Synthetic Fuels, LLC, IPR2013-00578, Paper
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`1
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`52 (PTAB Mar. 12, 2015) (citing In re NTP, Inc., 654 F.3d 1279, 1291 (Fed. Cir.
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`2011); Chen v. Bouchard, 347 F.3d 1299, 1308 (Fed. Cir. 2003)). Paper 10, 10-11.
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`B.
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`The Exhibits Lack Sufficient Authentication
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`Implicit relies on several Exhibits (Exhibits 2002-2009, 2011-2078, and 2083-
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`2088) provided by Mr. Balassanian to allegedly corroborate his testimony (Exhibit
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`2001) that his inventions in the patents at issue were conceived and reduced to
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`practice prior to Janevski. Yet, Implicit relies solely on the testimony of Mr.
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`Balassanian – an inventor – to authenticate these Exhibits. Ex.2001 (Balassanian
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`Dec. 12/17/18) at ¶¶ 91-166; Balassanian Dec. 1/9/19 at ¶¶ 11. This is improper
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`under FRE 901 and Neste, IPR2013-00578, Paper 52 (citing In re NTP, Inc., 654
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`F.3d at 1291; Chen, 347 F.3d at 1308).
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`An inventor can swear behind a reference by proving he conceived of his
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`invention before the effective filing date of the reference and was thereafter diligent
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`in reducing his invention to practice. Perfect Surgical Techniques, Inc. v. Olympus
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`Am., Inc., 841 F.3d 1004, 1007 (Fed. Cir. 2016). It is well established, however, that
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`when a party seeks to prove conception through an inventor’s testimony, the party
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`must proffer evidence, “in addition to [the inventor’s] own statements and
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`documents,” corroborating the inventor’s testimony. Mahurkar v. C.R. Bard, Inc.,
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`79 F.3d 1572, 1577 (Fed. Cir. 1996). The requirement of corroboration exists to
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`prevent an inventor from “describ[ing] his actions in an unjustifiably self-serving
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`2
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`manner,” Chen, 347 F.3d at 1309, and “[e]ven the most credible inventor testimony
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`is a fortiori required to be corroborated by independent evidence,” Medichem, S.A.
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`v. Rolabo, S.L., 437 F.3d 1157, 1171-72 (Fed. Cir. 2006).
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`While the testimony of a witness with personal knowledge of an exhibit may
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`normally be sufficient to authenticate such an exhibit under FRE 901, that is not the
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`situation here. Specifically, because Implicit relies on Exhibits 2002-2009, 2011-
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`2079, and 2083-2088 to corroborate the testimony of its inventor and founder, Mr.
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`Balassanian, in an attempt to prove that his invention predates the prior art
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`(Janevski), independent evidence of authenticity is required. Neste, IPR2013-
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`00578, Paper 52, at pp. 3-4 (citing Horton v. Stevens, 1988 WL 252359 at *4 (BPAI
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`Mar. 8, 1988); White v. Habenstein, 1983 WL 50193 at *7 (BPAI May 11, 1983)).
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`Indeed, “evidence of corroboration must not depend solely on the inventor himself.”
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`Cooper v. Goldfarb, 154 F.3d 1321, 1330 (Fed. Cir. 1998). This rule is proper to
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`avoid “circular” situations in which a party seeks to rely on a document to
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`corroborate a witness’ testimony, but relies on that witness’ testimony to provide the
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`date or other authentication of that document. See Neste, IPR2013-00578, Paper 52,
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`at p. 4 (citing In re NTP, 654 F.3d at 1291; Chen, 347 F.3d at 1308[-1312] (affirming
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`exclusion of documents not corroborated by anything other than the circular
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`testimony of the inventor)).
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`3
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`The Board’s decision in Microsoft Corp. v. Surfcast, Inc., IPR2013-00292,
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`IPR2013-00293, IPR2013-00294, and IPR2013-00295, Paper 33 (PTAB Oct. 14,
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`2014) is directly on point here. In that IPR, the Board granted a request by the
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`Petitioner, Microsoft, to exclude exhibits related to an alleged earlier invention date
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`because the exhibits were not properly authenticated by the Patent Owner, Surfcast.
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`Id. at p. 16. In support of its decision, the Board explained that:
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`The exhibits offered by SurfCast to establish conception have been
`challenged as to authenticity. Paper 67, 4–5 (challenging Exs. 2023–
`2029, 2034, 2036–2038, 2067, and 2068). SurfCast did not cure this
`defect. To authenticate these documents, SurfCast provides only
`inventor testimony. Paper 81, 5 (relying on testimony of Mr. Santoro);
`Ex. 2005 ¶¶ 10 (regarding Exs. 2024–2029 and 2036), 13 (regarding
`Ex. 2023), 17 (regarding Exs. 2037, 2038, 2067, and 2068), 33
`(regarding Ex. 2034). Inventor testimony is not sufficient to
`authenticate a document offered to corroborate the inventor’s
`testimony. The purpose of corroboration is to prevent fraud by
`providing independent confirmation of the inventor’s testimony. See,
`e.g., [Kridl v. McCormick, 105 F.3d 1446, 1449 (Fed. Cir. 1997)]. A
`document authenticated by only an inventor does not achieve that
`purpose because it is not sufficiently independent.
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`Id. at pp. 16-17 (emphasis in original). As a result of this exclusion, the Board held
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`that the Patent Owner did not successfully antedate the prior art. Id. at p. 17.
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`4
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`
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`Since he is an inventor, Mr. Balassanian’s testimony alone cannot
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`authenticate Exhibits 2002-2009, 2011-2078, and 2083-2088. Accordingly, given
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`that Implicit has failed to offer any non-inventor testimony to authenticate any of
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`these Exhibits, they should be excluded as unauthenticated and inadmissible.
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`IV. EXHIBITS 2081 AND 2082 SHOULD BE EXCLUDED AS BEING
`IMPROPERLY INCORPORATED BY REFERENCE
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`A.
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`Sonos Timely Objected
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`Implicit introduced Exhibits 2081 and 2082 in its POR arguing that these
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`Exhibits demonstrate that the Implicit source code practices the claim elements.
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`POR, p. 29-31. Sonos timely objected to these Exhibits on December 26, 2018 as
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`having been improperly incorporated by reference in the POR in violation of 37
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`C.F.R. § 42.6(a)(3) and the word limits imposed by 37 C.F.R. § 42.24(b)(2). Paper
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`10, p. 14.
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`B.
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`The Exhibits Were Improperly Incorporated By Reference
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`“A brief must make all arguments accessible to the judges, rather than ask
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`them to play archeologist with the record.” ZTE (USA), Inc. v. Electronics and
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`Telecommunications Research Institute, IPR2015-00028, Paper 12 at 7 (P.T.A.B.
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`Mar. 20, 2015). Indeed, when a party fails to adequately explain its reasoning in its
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`principal brief, and instead merely cites to a declaration or claim chart exhibit, the
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`Board routinely finds an improper incorporation by reference. Cisco Systems, Inc.
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`v. C-Cation Technologies, LLC, IPR2014-00454, Paper 12 at 9 (P.T.A.B. Aug. 29,
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`5
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`2014) (“citing [a] Declaration to support conclusory statements that are not
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`otherwise supported … amounts to incorporation by reference.”); IBG LLC v.
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`Trading Technologies, Inc., CBM2016-00054, Paper 36 at 3-4 (P.T.A.B. Apr. 7,
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`2017) (refusing to consider argument that commercial embodiment practices the
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`claims because this analysis was set forth in expert’s claim chart and merely cited to
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`in POR). The rule exists to prevent parties from circumventing the word limits.
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`Avant Technology, Inc. v. Anza technology, Inc., IPR2018-00828, Paper 7 at 16
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`(P.T.A.B. Oct. 16, 2018).
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`Here, Implicit’s argument in its POR relied on analysis that the source code
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`practices the Challenged Claims. But, Implicit made no attempt in its POR to tie this
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`evidence to the actual limitations of the Challenged Claims. Instead, Implicit
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`deferred to its expert declaration (Exhibit 2080) and accompanying claim charts
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`(Exhibits 2082). See POR at 15, 25, 28-31. Even the lone “claim chart” in the POR
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`is essentially a citation lookup table (for just claim 1) that merely refers to several
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`exhibits, such as the expert’s declaration and claim chart. As such, Implicit has
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`improperly incorporated these arguments by reference into its POR in contravention
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`of 37 C.F.R. §§42.6(a)(3), §42.24(b)(2).
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`Accordingly, the Board should exclude Exhibits 2081 and 2082 as being
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`improperly incorporated by reference into Implicit’s POR.
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`6
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`Date: May 20, 2019
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`/Cole B. Richter/
`Rory P. Shea (USPTO Reg. No. 60,529)
`Cole B. Richter (USPTO Reg. No. 65,398)
`George I. Lee (USPTO Reg. No. 39,269)
`Michael P. Boyea (USPTO Reg. No. 70,248)
`
`LEE SULLIVAN SHEA & SMITH LLP
`656 West Randolph Street, Floor 5W
`Chicago, Illinois 60661
`Tel: (312) 754-9602
`Fax: (312) 754-9603
`shea@ls3ip.com
`richter@ls3ip.com
`lee@ls3ip.com
`boyea@ls3ip.com
`
`Attorneys for Petitioner Sonos, Inc.
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`7
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`CERTIFICATE OF SERVICE
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`In accordance with 37 CFR §42.6(e)(4), I hereby certify that on May 20,
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`2019, a true copy of the accompanying MOTION, was served via electronic mail
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`to the following counsel at the addresses designated for service by Patent Owner:
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`William E. Davis, III
`THE DAVIS FIRM, PC
`213 N. Fredonia Street, Suite 230
`Longview, Texas 75601
`bdavis@davisfirm.com
`Lead Counsel
`
`Christian Hurt
`THE DAVIS FIRM, PC
`213 N. Fredonia Street, Suite 230
`Longview, Texas 75601
`churt@bdavisfirm.com
`sue@davisfirm.com
`Back-Up Counsel
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`
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`
`
`/Cole B. Richter/
`Cole B. Richter (USPTO Reg. No. 65,398)
`LEE SULLIVAN SHEA & SMITH LLP
`656 West Randolph Street, Floor 5W
`Chicago, Illinois 60661
`Tel: (312) 754-9602
`Fax: (312) 754-9603
`richter@ls3ip.com
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`
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`Date: May 20, 2019
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