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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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`APPLE INC.,
`Petitioner
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`v.
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`QUALCOMM INCORPORATED,
`Patent Owner
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`Case IPR2018-01249
`Patent 7,693,002
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`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
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`TABLE OF CONTENTS
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`Proceeding No.: IPR2018-01249
`Attorney Docket: 39521-0054IP1
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`I.
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`INTRODUCTION ........................................................................................... 1
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`II.
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`FACTUAL BACKGROUND .......................................................................... 1
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`III. EXHIBIT 2004 IS INADMISSIBLE UNDER FRE 702 AS LACKING
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`SUFFICIENT FOUNDATION ....................................................................... 3
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`IV. EXHIBIT 2004 IS INADMISSIBLE UNDER FRE 802 ................................ 5
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`V.
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`EXHIBIT 2004 IS INADMISSIBLE UNDER FRE 402 ................................ 7
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`VI. CONCLUSION ................................................................................................ 9
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`i
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`I.
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`Proceeding No.: IPR2018-01249
`Attorney Docket: 39521-0054IP1
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`INTRODUCTION
`Pursuant to 37 C.F.R. § 42.64 and the Federal Rules of Evidence, Petitioner,
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`Apple Inc. (“Apple”), moves to exclude Exhibit 2004 (Declaration of Donald Alpert,
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`Ph.D
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`in IPR2015-00148) submitted by Patent Owner, Qualcomm, Inc.
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`(“Qualcomm”). Exhibit 2004 is a declaration offering testimony identified by an
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`unrelated party as expert testimony in an unrelated IPR not involving petitioner to
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`the instant proceeding.
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`Exhibit 2004 is inadmissible on several grounds. Exhibit 2004 offers
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`testimony which lacks sufficient factual foundation to the present IPR, is
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`inadmissible hearsay in regard to the present IPR, and irrelevant to the facts at issue
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`in the present IPR. Exhibit 2004 should be excluded under the Federal Rules of
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`Evidence (FRE) 402, 702, and 802.
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`Patent Owner relied on Exhibit 2004 in its Patent Owner Response (Paper 11),
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`filed on April 15, 2019 and its Patent Owner Sur-Reply (Paper 17), filed on August
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`15, 2019. Subsequently, Petitioner timely objected to Exhibit 2004 in its Notice of
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`Objections served on April 22, 2019. For reasons detailed below, Exhibit 2004
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`should be excluded.
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`II.
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`FACTUAL BACKGROUND
`Exhibit 2004 is a declaration submitted by Donald Alpert on behalf of Xilinx,
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`Inc. (not Apple) over four years ago in a different Inter Partes Review proceeding
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`1
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`Proceeding No.: IPR2018-01249
`Attorney Docket: 39521-0054IP1
`(IPR2015-00148), and in reference to a different patent (U.S. Pat. No. 6,356,122)
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`(“the ’122 patent”) directed to subject matter in a different technology field (e.g., “a
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`PLL-based clock synthesizer with a programmable input-output phase relationship
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`for generating output frequencies based on a reference clock input” as stated in the
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`FIELD OF THE INVENTION section of the ’122 patent). Alpert has not offered
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`testimony in the present IPR. Xilinx is not a party to the present IPR. The ’122
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`patent is not related to the ’002 patent. Exhibit 2004 provides no indication that
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`Alpert reviewed or otherwise considered the ’002 patent in any way when providing
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`the opinions offered with respect to the ’122 patent for which he offered his
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`testimony; nor does Patent Owner provide evidence to the contrary. See
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`Ex. 2004, 2. Instead, the opinions expressed in Exhibit 2004 are specific to U.S.
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`Patent 6,356,122 and the facts at issue in IPR2015-00148. Alpert does not apply any
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`of his analysis to the facts of the present IPR.
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`To illustrate, Alpert acknowledges in Exhibit 2004 that the construction of the
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`term “clock” is “the broadest reasonable interpretation of the term ‘clock’ for
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`the ’122 patent . . .” Ex. 2004, 3 (emphasis added). Yet, Patent Owner relies on
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`portions of Alpert’s testimony regarding the definition of the term “clock” as used
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`in the ’122 patent to support its proposed construction of the term “clock signal” as
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`used in the ’002 patent. Further, the Exhibit 2004 analysis of the ’122 patent’s usage
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`of the term “clock” is simply not relevant to the facts of the present IPR, which
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`2
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`Proceeding No.: IPR2018-01249
`Attorney Docket: 39521-0054IP1
`addresses the ’002 patent; indeed, the ’122 patent has at least ten references to
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`periodic characteristics of its clock (e.g., frequency) whereas the ’002 patent uses
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`the term clock signal with no such references to periodicity at all.
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`III. EXHIBIT 2004 IS INADMISSIBLE UNDER FRE 702 AS LACKING
`SUFFICIENT FOUNDATION
`The admissibility of expert testimony in IPRs is governed by the Federal Rules
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`of Evidence. See 37 C.F.R. § 42.62 (“[T]he Federal Rules of Evidence shall apply
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`to [an IPR] proceeding.”). According to Rule 702, an expert witness must be
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`“qualified as an expert by knowledge, skill, experience, training, or education,” and
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`the testimony must “help the trier of fact to understand the evidence or to determine
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`a fact in issue.” In addition, Rule 702 requires that the expert’s testimony be “based
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`on sufficient facts or data” and “the product of reliable principles and methods”; and
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`the expert must “reliably appl[y] the principles and methods to the facts of the
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`case.” Id.
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`In Daubert, the Supreme Court held that scientific expert testimony is
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`admissible only if it is both relevant and reliable. See Daubert v. Merrell Dow
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`Pharms., Inc., 509 U.S. 579, 597 (1993); see also Kumho Tire Co. v. Carmichael,
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`526 U.S. 137, 141 (1999) (stating that in Daubert “this Court focused upon the
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`admissibility of scientific expert testimony. It pointed out that such testimony is
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`admissible only if it is both relevant and reliable.”). In Kumho, the Supreme Court
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`clarified that Daubert applies “not only to testimony based on ‘scientific’
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`3
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`Proceeding No.: IPR2018-01249
`Attorney Docket: 39521-0054IP1
`knowledge, but also to testimony based on ‘technical’ and ‘other specialized’
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`knowledge.” 526 U.S. at 141.
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`Accordingly, in determining whether an expert’s testimony is admissible, the
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`Board must make the following determinations: (1) the expert is qualified to provide
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`the testimony; (2) the expert’s testimony is relevant; and (3) the expert’s testimony
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`is based on sufficient facts or data and is reliable. If any of these requirements is not
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`met, the expert’s proposed evidence and opinions should be excluded under Rule
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`702, Rule 402, and the Supreme Court’s holdings in Daubert and Kumho.
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`Exhibit 2004 lacks proper factual support in relation to the ’002 patent, and
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`should thus be excluded under FRE 702 for not being based on sufficient facts or
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`data and not applying reliable principles and methods to the facts of the present IPR.
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`Exhibit 2004 does not indicate, nor does the Patent Owner argue, that Alpert
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`reviewed the ’002 patent or considered it in any way as part of his analysis and
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`opinions presented therein. See Ex. 2004, 2. Instead, Exhibit 2004 explicitly states
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`that the construction of the term “clock” as discussed therein is “the broadest
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`reasonable interpretation of the term ‘clock’ for the ’122 patent . . .” Ex. 2004, 3
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`(emphasis added). Additionally, the analysis expressed in Exhibit 2004 is applied
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`to the “clock synthesizer” described and claimed in the ’122 patent, and Alpert does
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`not relate this analysis to the dynamic wordline drivers and decoders for memory
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`arrays described and claimed by the ’002 patent. The statements made in Exhibit
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`4
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`Proceeding No.: IPR2018-01249
`Attorney Docket: 39521-0054IP1
`2004 are not based on sufficient facts or data of the present case, as they are not
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`relevant to the facts of the present case, and the analysis in Exhibit 2004 has nothing
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`to do with the facts of this IPR. Despite this, Patent Owner relies on portions of
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`Exhibit 2004 to support its own proposed construction of the term “clock signal” as
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`used in the claims of the ’002 patent.
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`For these reasons, Petitioner respectfully requests that the Board exclude
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`Exhibit 2004, and the limited statements citing thereto in Patent Owner’s Reply (e.g.,
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`pages 14-15) and Sur-Reply (e.g., page 10), as lacking sufficient foundation under
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`FRE 702.
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`IV. EXHIBIT 2004 IS INADMISSIBLE UNDER FRE 802
`Exhibit 2004 should be excluded under Rule 802 as hearsay because Exhibit
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`2004 is a statement made outside of this proceeding and relied upon by Patent Owner
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`to prove the truth of the matter asserted in Exhibit 2004. See FRE. 801(c). Patent
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`Owner relies on portions of Exhibit 2004 to support its construction of the term
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`“clock signal.” See POR, 14-15 (citing Ex. 2004, 3-4).
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`Patent Owner acknowledges that Exhibit 2004 is evidence submitted in a
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`different IPR proceeding and directed to a different patent. But Patent Owner
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`nevertheless relies on the exhibit, stating “Dr. Alpert told the Board that the term
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`‘clock’ should be interpreted as ‘a periodic signal used for synchronization’”, and
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`5
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`Proceeding No.: IPR2018-01249
`Attorney Docket: 39521-0054IP1
`“Dr. Alpert stated that the ‘definition [‘a periodic signal used for synchronization’]
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`is consistent with the broadest reasonable interpretation of the term [‘clock’].’” Id.
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`The Board has previously excluded expert evidence under similar
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`circumstances. In US Endodontics, LLC v. Gold Standard Instruments, LLC, the
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`Board granted the petitioner’s motion to exclude an expert declaration under
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`FRE 802 where the declaration was related to a different patent and submitted during
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`a different proceeding. US Endodontics, LLC v. Gold Standard Instruments, LLC,
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`PGR2015-00019, Paper 54, 38-42, (PTAB 2016) (“The declaration in Exhibit 2034
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`qualifies as hearsay . . . the statements in that declaration were not made while
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`testifying in this proceeding. Instead, the declaration was submitted during ex parte
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`prosecution of another patent application.”). As in US Endodontics, Exhibit 2004
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`constitutes inadmissible hearsay under FRE 802.
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`Additionally, Exhibit 2004 does not meet the conditions under FRE 801(d)
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`for out of court statements that are not considered hearsay. The statements made in
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`Exhibit 2004 were not made by a representative of Apple, with authorization of from
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`Apple, or by Apple’s agent or employee; nor has Apple adopted any of the
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`statements made in Exhibit 2004. FRE 801(2).
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`Finally, no exceptions to the rule against hearsay are applicable to any of the
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`statements in Exhibit 2004; and Patent Owner offered no testimony, expert or
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`6
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`Proceeding No.: IPR2018-01249
`Attorney Docket: 39521-0054IP1
`otherwise, regarding the same. Patent Owner had a burden to provide this evidence
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`or its equivalent in the Patent Owner Reply, but failed to do so.
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`For these reasons, Petitioner respectfully requests that the Board exclude
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`Exhibit 2004, and the limited statements citing thereto in Patent Owner’s Reply (e.g.,
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`pages 14-15) and Sur-Reply (e.g., page 10), as hearsay.
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`V. EXHIBIT 2004 IS INADMISSIBLE UNDER FRE 402
`Exhibit 2004 should be excluded under Rule 402 as irrelevant. Exhibit 2004
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`reflects statements of an unrelated witness regarding claim constructions and
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`patentability of an unrelated patent from an unrelated technology field.
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`Exhibit 2004 explicitly states that the claims constructions discussed therein
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`are “the broadest reasonable interpretation of [claim terms] for the ’122
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`patent . . .”, and, thus, are not related to claim terms of the ’002 patent. Ex. 2004,
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`3, 12 (emphasis added). Instead, Alpert’s analysis is directed to the question of
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`whether a “clock” – as recited in the ’122 patent’s claims – is limited to digital
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`systems only and not to both digital and analog systems. See Ex. 2004, 3-11. The
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`periodicity or non-periodicity of a clock signal is simply inconsequential to
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`Alpert’s analysis. Moreover, the ’122 patent referred to in Exhibit 2004 is directed
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`to a “clock synthesizer with a programmable input-output phase relationship” and
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`is classified in U.S. Cl. 327 (Miscellaneous Active Electrical Nonlinear Devices,
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`Circuits and Systems), whereas the ’002 patent is directed to dynamic wordline
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`7
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`Proceeding No.: IPR2018-01249
`Attorney Docket: 39521-0054IP1
`drivers and decoders for memory arrays and is classified in U.S. Cl. 365 (Static
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`Information Storage and Retrieval). Exhibit 2004, 1; compare ’122 patent, Face
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`and Field of Invention with ’002 patent, Face and Field of Invention; see also
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`Unites States Patent and Trademark Office, US Classes by Number with Title
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`Menu, USPTO website (Sept. 10, 2019),
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`https://www.uspto.gov/web/patents/classification/selectnumwithtitle.htm. Finally,
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`there is absolutely no indication in Exhibit 2004 that the statements made therein
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`are intended to be applied outside the scope of the ’122 patent or are in any way
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`applicable to wordline drivers and decoders for memory arrays. See Exhibit 2004.
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`Consequently, the statements made in Exhibit 2004 are not relevant to the issues to
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`be decided in this IPR.
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`For these reasons, Petitioner respectfully requests that the Board exclude
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`Exhibit 2004, and the limited statements citing thereto in Patent Owner’s Reply (e.g.,
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`pages 14-15) and Sur-Reply (e.g., page 10), as irrelevant.
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`8
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`Proceeding No.: IPR2018-01249
`Attorney Docket: 39521-0054IP1
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`VI. CONCLUSION
`For the foregoing reasons, Petitioner requests that the evidence discussed
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`above be excluded.
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`Customer Number 26171
`Fish & Richardson P.C.
`Telephone: (202) 783-5070
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`Date: September 16, 2019
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` Respectfully submitted,
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`
` /Kenneth J. Hoover/
`W. Karl Renner, Reg. No. 41,265
`Thomas A. Rozylowicz, Reg. No. 50,620
`Timothy W. Riffe, Reg. No. 43,881
`Kenneth J. Hoover, Reg. No. 68,116
`Whitney A. Reichel, Reg. No 59,173
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`Counsel for Petitioner
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`9
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`Proceeding No.: IPR2018-01249
`Attorney Docket: 39521-0054IP1
`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.8(b), the undersigned certifies that on September
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`16, 2019, a complete and entire copy of this Petitioner’s Motion to Exclude
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`Evidence was provided via email to the Patent Owner by serving the
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`correspondence email addresses of record as follows:
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`David B. Cochran
`Joshua R. Nightingale
`Matthew W. Johnson
`Joseph M. Sauer
`David M. Maiorana
`Jones Day
`901 Lakeside Ave.
`Cleveland, OH 44114
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`dcochran@jonesday.com
`jrnightingale@jonesday.com
`mwjohnson@jonesday.com
`jmsauer@jonesday.com
`dmaiorana@jonesday.com
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`Email:
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`/Diana Bradley/
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`Diana Bradley
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`(858) 678-5667
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`10
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