Paper No. 34
`Filed: June 3, 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 REPLY IN SUPPORT OF ITS MOTION TO EXCLUDE
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`Filed: June 3, 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
`
`
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`
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`PETITIONER’S REPLY IN SUPPORT OF ITS 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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`IMPLICIT FAILED TO OFFER INDEPENDENT EVIDENCE OF
`AUTHENTICATION ...................................................................................... 1
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`II.
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`IMPLICIT 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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`Cisco Systems, Inc. v. C-Cation Technologies, LLC,
`IPR2014-00454, Paper 12 (P.T.A.B. Aug. 29, 2014) ............................................ 5
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`Horton v. Stevens,
`7 U.S.P.Q.2d 1245, 1988 WL 252359 (B.P.A.I. 1988) ......................................... 1
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`IBG LLC v. Trading Technologies, Inc.,
`CBM2016-00054, Paper 36 (P.T.A.B. Apr. 7, 2017) ............................................ 5
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`Microsoft Corp. v. Surfcast, Inc.,
`IPR2013-00292, IPR2013-00293, IPR2013-00294, and IPR2013-00295, Paper
`33 (PTAB Oct. 14, 2014) .............................................................................. 1, 3, 4
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`Neste Oil OYJ v. REG Synthetic Fuels, LLC,
`IPR2013-00578, Paper 52 (PTAB Mar. 12, 2015) ............................................1, 4
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`ii
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`I.
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`IMPLICIT FAILED TO OFFER INDEPENDENT EVIDENCE OF
`AUTHENTICATION
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`Implicit attempts to recast the standard for authentication as being a low bar.
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`But, as previously explained, the authentication standard is not a low bar when the
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`documents are being used, as they are here, to corroborate inventor testimony for
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`purposes of antedating a prior art reference. Mot. at 3. When documents are being
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`used for this purpose, something more is required for authentication.
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`Indeed, Microsoft and Neste Oil instruct that inventor testimony is not
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`sufficient to authenticate a document used to corroborate that inventor’s testimony
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`– rather, independent evidence of authenticity is required (i.e., evidence that is
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`independent of the inventor). Neste Oil OYJ v. REG Synthetic Fuels, LLC,
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`IPR2013-00578, Paper 52 (PTAB Mar. 12, 2015) (“[B]ecause [Patent Owner]
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`relies on these exhibits to corroborate the testimony of [inventor] Mr. Abhari, in an
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`attempt to prove invention prior to the Dindi prior art reference, independent
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`evidence of authenticity is required.”);1 Microsoft Corp. v. Surfcast, Inc., IPR2013-
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`00292, IPR2013-00293, IPR2013-00294, and IPR2013-00295, Paper 33 (PTAB
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`Oct. 14, 2014) (“Inventor testimony is not sufficient to authenticate a document
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`offered to corroborate the inventor’s testimony.”); see also Horton v. Stevens, 7
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`U.S.P.Q.2d 1245, 1988 WL 252359, *4 (B.P.A.I. 1988) (“the testimony of a
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`1 All emphasis added, except where indicated.
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`1
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`witness other than the inventor, who is shown to have understood the recorded
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`information, is generally necessary to authenticate the document's contents”).
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`Implicit has not provided independent evidence of authenticity, such as a
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`document that comes from someone other than the inventor or the testimony of a
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`witness other than the inventor. Instead, Implicit attempts to circumvent the
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`requirement for independent evidence by throwing more unauthenticated inventor
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`documents on top of the documents at issue, as well as pointing to other parts of
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`the documents themselves. But, neither of these attempts satisfies Microsoft’s and
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`Neste Oil’s requirement for independent evidence of authenticity.
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`For instance, Implicit attempts to pile on additional documents, such as a
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`manual explaining how the CVS works, a 15,000+ page printout of the CVS log,
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`and a laptop of native files. But, Implicit fails to explain how or why these
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`documents satisfy the requirement for independent evidence of authenticity. In
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`fact, these documents all come from the same “records custodian” – Balassanian –
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`who is also the founder of Implicit, the inventor of the patents, and the sole source
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`of testimony for which all these documents are meant to corroborate. Thus, these
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`additional Balassanian documents are not independent evidence of authenticity.
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`Moreover, Implicit attempts to use portions of the documents themselves as
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`a substitute for the requirement for independent evidence of authenticity. But,
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`these documents are not inherently self-authenticating, and Implicit fails to explain
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`2
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`how a portion of the document itself would qualify as independent evidence. In
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`particular, Implicit points to filesystem metadata as sufficiently authenticating the
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`exhibits, but this metadata is part of the document itself. The fact that the
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`document (and thus the metadata associated with the document) came from the
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`inventor’s files and is being offered to corroborate that same inventor’s testimony
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`underscores why a portion of the document cannot be used to authenticate the
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`document. Microsoft, Paper 33 (“The purpose of corroboration is to prevent fraud
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`by providing independent confirmation of the inventor’s testimony.”). It would
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`be strange indeed if a party can simply point to a portion of an allegedly-
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`corroborating document as providing sufficient evidence of authenticity of that
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`document. To allow this would be to allow a party to completely sidestep the
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`requirement for independent evidence of authenticity. Implicit has pointed to no
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`authority allowing such a result.
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`Finally, Implicit takes issue with the number of exhibits Sonos identified as
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`unauthenticated. Opp. at 3. But there is no sliding scale for authenticity based on
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`the number of exhibits a proponent puts forth. Nor does Implicit present any
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`authority for the notion that the volume of documents produced is somehow a
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`substitute for the requirement for independent evidence of authenticity.
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`In fact, the large number of documents cited by Implicit as allegedly
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`corroborating Balassanian’s testimony is exactly why the requirement for
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`3
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`independent corroboration exists. In particular, Balassanian’s testimony sets forth
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`his own version of his invention story. Balassanian then selectively produced a
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`large number of documents from his own collection. But tellingly, no single
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`document from Balassanain’s collection corroborates his whole story. Rather, it is
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`only through his testimony that Balassanian attempts to piece together all the
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`disparate teachings from these documents and explain how they fit together to
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`support his version of the story. Because of the concern that an inventor, whether
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`consciously or subconsciously, would remember facts and offer explanations
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`favorable to their own case, this Board has repeatedly required independent
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`evidence of authenticity. Id. (“The requirement for corroboration of inventor’s
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`testimony arose out of a concern that inventors testifying at trial would be tempted
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`to remember facts favorable to their case by the lure of protecting their patent or
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`defeating another’s patent.”); Neste Oil, Paper 52. As Implicit has no independent
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`evidence of authenticity, its allegedly-corroborating documents must be excluded.2
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`2 Implicit’s suggestion that the testimony of Drs. Hashmi and Chertov provide
`independent authentication for the documents at issue is without merit. These
`experts do not have personal knowledge of the documents, were not custodians of
`the documents, acquired the documents solely through this IPR, and simply assumed
`that the documents were authentic.
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`4
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`II.
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`IMPLICIT IMPROPERLY INCORPORATED BY REFERENCE
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`Implicit does not dispute that it relied on an analysis that its source code
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`practices the Challenged Claims. Nor does Implicit dispute that it failed to set
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`forth in the POR itself its argument as to why or how the source code practices the
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`claims. Indeed, Implicit admits that all it did was “cite to” where the supporting
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`arguments could be found for each claim element of each Challenged Claim.
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`Implicit’s Patent Owner’s Response contains a limitation-by-limitation
`chart for the claims that Petitioner identified in its Petition as illustrative
`and specifically cited to the source code evidence in Dr. Hashmi’s
`declaration, Dr. Hashmi’s accompanying claim charts explaining his
`source code trace (Exhibits 2081 and 2082), and additional source code
`and documentary exhibits as meeting each of those limitations.
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`Opp. at 10.3 Implicit argues that it need not reproduce verbatim each word of the
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`evidence it cites. True. But, Implicit must do more than simply provide a look-up
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`table to its expert’s declaration and accompanying claim charts directing the Board
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`and Sonos to where in other papers it can locate the substance of Implicit’s argument
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`that the source code practices the claims. Indeed, in similar cases, the Board has
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`considered this an improper incorporation by reference. E.g., Cisco Systems,
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`IPR2014-00454, Paper 12 at 9; IBG LLC, CBM2016-00054, Paper 36 at 3-4. Thus,
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`the Board should exclude Exhibits 2081-82.
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`3 Contrary to this quote, the POR does not contain “a chart,” nor is it “for the claims.”
`The POR contains a citation look-up table. And this table is for just claim 1. An
`actual chart for all Challenged Claims can only be found in Exhibits 2081-82.
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`5
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`Date: June 3, 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)
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`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
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`Attorneys for Petitioner Sonos, Inc.
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`6
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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 June 3,
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`2019, a true copy of the accompanying REPLY, was served via electronic mail to
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`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
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`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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`/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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`Date: June 3, 2019
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