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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,
`v.
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`Qualcomm Incorporated,
`Patent Owner
`____________________
`
`Case IPR2018-01249
`U.S. Patent No. 7,693,002
`____________________
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`PATENT OWNER’S OPPOSITION TO PETITIONER’S
`MOTION TO EXCLUDE EVIDENCE
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`IPR2018-01249
`U.S. Patent 7,693,002
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`I.
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`INTRODUCTION
`Patent Owner, Qualcomm Incorporated (“Qualcomm”), opposes Petitioner’s
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`Motion to Exclude Evidence (Paper 19). Petitioner, Apple, Inc. (“Apple”), has not
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`met its burden of establishing that it is entitled to the requested relief. 37 C.F.R. §§
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`42.20(c). Apple’s motion to exclude Exhibit 2004 should be denied for the reasons
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`that follow.
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`II. BACKGROUND
`Dr. Alpert is not as far removed from this proceeding as Apple implies in its
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`motion. See Paper 19 at 1-3. In reality, Dr. Alpert served as Apple’s expert in the
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`ITC investigation against Qualcomm for the same patent at issue here, U.S. Patent
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`No. 7,693,002 (“the ʼ002 patent”). See ITC-337-TA-1093. Accordingly, Apple has
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`already recognized him as a person of ordinary skill in the art (POSA).
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`And while Qualcomm agrees that Dr. Alpert’s testimony in IPR2015-00148
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`relates to the construction of the term “clock”—a different (and broader) term than
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`“clock signal” at issue in these proceedings—Apple’s argument on the relevancy of
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`such testimony is disingenuous. Apple itself relied on dictionary definitions of
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`“clock” in arguing for its unduly broad construction of “clock signal.” See Paper 15,
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`at 7-11. Exhibit 2004 merely shows that Apple’s ITC expert previously construed
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`the same term, “clock,” more narrowly. This inconsistent testimony by a POSA is
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`relevant to Apple’s reliance on its definition for “clock,” and as such, should not be
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`1
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`IPR2018-01249
`U.S. Patent 7,693,002
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`excluded.
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`III. ARGUMENT
`A. Exhibit 2004 Is Not Offered As Expert Testimony
`Rule 702 on the admissibility of expert testimony is inapplicable here.
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`Qualcomm does not offer Exhibit 2004 as expert testimony—the contents of Exhibit
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`2004 were prepared for a different proceeding, as Apple notes. Rather, Qualcomm
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`provides this exhibit as extrinsic evidence that Apple’s proposed definition for a term
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`is not the broadest reasonable interpretation as understood by a POSA. Because
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`Exhibit 2004 is not being provided as expert testimony, Apple’s arguments under
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`Rule 702 are irrelevant.
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`B.
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`Exhibit 2004 Is Not Offered For The Truth Of The Matter
`Asserted
`Exhibit 2004 is not hearsay because it is being offered for what it describes,
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`not for the truth of its disclosures. As Apple recognizes, Dr. Alpert’s testimony
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`relates to the meaning of the claim term “clock” from a different patent than that of
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`this proceeding. Qualcomm does not offer Dr. Alpert’s testimony for the truth of
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`the matter asserted, i.e., Dr. Alpert’s conclusions about the meaning of “clock” in
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`the ’122 patent. Rather, his testimony is evidence that Qualcomm’s reliance on the
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`IEEE dictionary definition would not be unreasonable to a POSA, as Dr. Alpert
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`relied on the same definition for a similar term.
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`Indeed, evidence proffered to show its effect on a POSA or the belief of a
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`2
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`IPR2018-01249
`U.S. Patent 7,693,002
`POSA is not hearsay. Neev v. Abbott Med. Optics, Inc., No. 09-146 RBK, 2012 WL
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`1066797, at *14 (D. Del. Mar. 26, 2012) (“Statements in a reference offered for their
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`effect on one of ordinary skill in the art are not hearsay.”) (citing Abbott Labs v.
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`Diamedix Corp., 969 F. Supp. 1064, 1066 n.1 (N.D. Ill. 1997)); see also EMC Corp.
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`v. PersonalWeb Techs., LLC, IPR2013-00084, 2014 WL 2090663, at *26 (PTAB
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`May 15, 2014) (finding a “‘prior art document submitted as a ‘printed publication’
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`under 35 U.S.C. § 102(a) is offered simply as evidence of what it described, not for
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`proving the truth of the matters addressed in the document’”) (internal citations
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`omitted). Because Exhibit 2004 is simply being offered as evidence of what a POSA
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`would have understood at the relevant time, and not for the truth of the matter
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`asserted, it should not be excluded as hearsay.
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`C. Exhibit 2004 Is Relevant
`Qualcomm agrees Exhibit 2004 concerns a different claim term and patent
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`than at issue in this proceeding. But that does not mean the exhibit is irrelevant.
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`Dr. Alpert’s analysis set forth in Exhibit 2004 is directed to the term “clock”—the
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`very same term Apple defines in its Reply. See Paper 15, at 7-11. Yet Apple
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`provides a broader meaning for the term than that described by Dr. Alpert. Thus,
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`Dr. Alpert’s testimony is plainly relevant to the meaning of the claim term as
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`understood by a POSA.
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`The degree to which the ʼ122 patent and Dr. Alpert’s testimony relate to the
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`3
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`IPR2018-01249
`U.S. Patent 7,693,002
`patent at issue in this proceeding goes to the weight afforded this evidence—not to
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`its admissibility. And, as the Board has emphasized, “there is a strong public policy
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`for making all information filed in an administrative proceeding available to the
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`public.” Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., CBM2012-00010, Paper
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`59 at 40 (PTAB February 24, 2014). Accordingly, Exhibit 2004 should not be
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`excluded.
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`IV. CONCLUSION
`For the reasons discussed above, Qualcomm respectfully requests that the
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`Board deny Petitioner’s Motion to Exclude Evidence.
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`Respectfully submitted,
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`Date: September 23, 2019
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`By: /Joseph M. Sauer/
`Joseph M. Sauer, Reg. No. 47,919
`David B. Cochran, Reg. No. 39,142
`David M. Maiorana, Reg. No. 41,449
`JONES DAY
`North Point, 901 Lakeside Avenue
`Cleveland, OH 44114
`(216) 586-3939
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`Matthew W. Johnson, Reg. No. 59,108
`Joshua R. Nightingale, Reg. No. 67,865
`JONES DAY
`500 Grant Street, Suite 4500
`Pittsburgh, PA 15219
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`4
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Patent Owner’s
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`Opposition to Petitioner’s Motion to Exclude Evidence was served on September 23,
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`2019 by email, as follows:
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`W. Karl Renner
`IPR39521-0054IP1@fr.com
`axf-ptab@fr.com
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`Thomas A. Rozylowicz
`PTABInbound@fr.com
`rozylowicz@fr.com
`tar@fr.com
`
`Timothy W. Riffe
`PTABInbound@fr.com
`riffe@fr.com
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`Kenneth J. Hoover
`hoover@fr.com
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`Whitney A. Reichel
`wreichel@fr.com
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`Date: September 23, 2019
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`/Joseph M. Sauer/
`Joseph M. Sauer, Reg. No. 47,919
`JONES DAY
`North Point, 901 Lakeside Avenue
`Cleveland, OH 44114
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`Counsel for Patent Owner
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