`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`APPLE INC.,
`Petitioner
`
`v.
`
`QUALCOMM INCORPORATED,
`Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2018-01249
`Patent 7,693,002
`
`
`
`
`
`
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S OPPOSITION TO
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
`
`
`
`Proceeding No.: IPR2018-01249
`Attorney Docket: 39521-0054IP1
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`
`
`
`I.
`
`A.
`
`EXHIBIT 2004 IS INADMISSIBLE UNDER FRE 702 ................................ 2
`
`EXHIBIT 2004 IS INADMISSIBLE UNDER FRE 802 ................................ 3
`
`EXHIBIT 2004 IS INADMISSIBLE UNDER FRE 402 ................................ 5
`
`CONCLUSION ................................................................................................ 5
`
`B.
`
`C.
`
`II.
`
`
`
`
`
`
`
`i
`
`
`
`I.
`
`Proceeding No.: IPR2018-01249
`Attorney Docket: 39521-0054IP1
`
`INTRODUCTION
`Patent Owner’s Opposition does not challenge the substance of Petitioner’s
`
`objections: FRE 702 and 802 prohibit a party from relying on hearsay statements of
`
`an individual who had never looked at the ’002 patent as reliable expert testimony
`
`on the meaning of a claim term of the ’002 patent. Instead, Patent Owner sidesteps
`
`the issue by mischaracterizing its reliance on Exhibit 2004 as extremely limited: only
`
`to the fact that certain statements were made, and not for the truth of their substance.
`
`Opposition, 2 (“…his testimony is evidence that Qualcomm’s reliance on the IEEE
`
`dictionary definition would not be unreasonable to a POSA”).
`
`Patent Owner’s characterization of its reliance on Exhibit 2004 as so limited
`
`cannot be reconciled with the record of these proceedings. Patent Owner has
`
`repeatedly attempted to rely on the substance of the statements in the Exhibit as
`
`evidence of the meaning of “clock” to a POSA. See POR, 14-15; Sur-Reply, 10.
`
`[A]ddressing the meaning of the term “clock,” Dr. Alpert told the
`
`Board that the term “clock” should be interpreted as “a periodic
`
`signal used for synchronization.” Ex. 2004 at 3-4. Dr. Alpert stated
`
`that the “definition [‘a periodic signal used for synchronization’] is
`
`consistent with the broadest reasonable interpretation of the term
`
`[‘clock’].” Id. Dr. Alpert’s Statement provides further support for
`
`Qualcomm’s proposed construction.
`
`1
`
`
`
`Proceeding No.: IPR2018-01249
`Attorney Docket: 39521-0054IP1
`POR, 15. Patent Owner likewise argued in its Sur-Reply that the substance
`
`of Dr. Alpert’s analysis was relevant to the meaning of “clock signal” in this
`
`proceeding because “Dr. Alpert did not qualify his opinion on the meaning
`
`of ‘clock’ to indicate that it was specific to that previous proceeding or
`
`the patent involved therein.” Sur-Reply, 10.
`
`Even in its Opposition to Petitioner’s Motion to Exclude, Patent Owner
`
`admits that it relies on the statements in the Exhibit for their substance, as
`
`“plainly relevant to the meaning of the claim term as understood by a POSA.”
`
`Opposition, 3; see also id., 2 (describing Exhibit 2004 as “extrinsic evidence
`
`that Apple’s proposed definition for a term is not the broadest reasonable
`
`interpretation understood by a POSA.”) Thus, Patent Owner has repeatedly
`
`relied on Exhibit 2004 both (a) for the truth of the statements contained
`
`therein, and (b) as evidence of how a POSA would interpret a claim term.
`
`Both uses are precluded by the Federal Rules of Evidence. FRE 702, 802.
`
`A. EXHIBIT 2004 IS INADMISSIBLE UNDER FRE 702
`Patent Owner’s representation that “Exhibit 2004 is not being provided as
`
`expert testimony” (Opposition, 2) is contradicted by its own arguments. Patent
`
`Owner admittedly seeks to rely on Alpert’s “opinion on the meaning of ‘clock’”
`
`and “the meaning of the [term clock] as understood by a POSA.” Sur-Reply, 10;
`
`Opposition, 3. Patent Owner’s characterization of the opinions in Exhibit 2004 as
`
`2
`
`
`
`Proceeding No.: IPR2018-01249
`Attorney Docket: 39521-0054IP1
`generic is a misrepresentation; as explained in Petitioner’s Motion, the opinions in
`
`Exhibit 2004 are specific to a different patent and a different proceeding. But even
`
`accepting Patent Owner’s characterizations, Patent Owner cannot rely on the
`
`“opinions” in Exhibit 2004 without first establishing that those opinions are reliably
`
`based on the facts of the present case: the applicable POSA, at the applicable time
`
`period, based on the applicable intrinsic record. Patent Owner made no attempt to
`
`do so, instead effectively conceding that Exhibit 2004 does not constitute reliable
`
`expert testimony as to the proper interpretation of “clock signal” in the ’002 patent.
`
`Opposition, 2 (“Qualcomm does not offer Exhibit 2004 as expert testimony—the
`
`contents of Exhibit 2004 were prepared for a different proceeding, as Apple notes.”)
`
`Exhibit 2004 includes no analysis of how the applicable POSA, reading
`
`the ’002 patent at the applicable time, would interpret the term “clock signal” in the
`
`context of the ’002 patent. Thus, those opinions are not reliable expert testimony in
`
`this proceeding, and should be excluded under FRE 702.
`
`B. EXHIBIT 2004 IS INADMISSIBLE UNDER FRE 802
`As demonstrated above, Patent Owner has consistently relied on Exhibit 2004
`
`for the truth of the matter asserted: how a POSA would interpret the term “clock.”
`
`Thus, the Exhibit is inadmissible under FRE 802.
`
`Patent Owner’s response to Petitioner’s motion is nonsensical. Patent Owner
`
`claims that it relies on Exhibit 2004 for the limited purpose of evidence that another
`
`3
`
`
`
`Proceeding No.: IPR2018-01249
`Attorney Docket: 39521-0054IP1
`person at another point in time has relied on an IEEE dictionary. But Petitioner does
`
`not challenge Patent Owner’s ability to introduce the IEEE dictionary into the record
`
`of these proceedings.
`
`Patent Owner’s case law discussion is likewise entirely off-point and
`
`nonresponsive. Exhibit 2004 is not prior art that was available to a POSA “at the
`
`relevant time.” Opposition, 3; cf. EMC Corp. v. PersonalWeb Techs., LLC,
`
`IPR2013-00084, 2014 WL 2090663, at *13, *23-26 (PTAB May 15, 2014)
`
`(discussing whether a manual for a shareware software program posted to an
`
`electronic Bulletin Board System is a “printed publication” under 35 U.S.C.
`
`§ 102(b)). Exhibit 2004 also is not the inventor’s own explanation of the state of the
`
`art at the time of his or her own invention. Neev v. AbbottMed. Optics, Inc., No. 09-
`
`146 RBK, 2012 WL 1066797, at *13-14 (D. Del. Mar. 26, 2012) (discussing that the
`
`inventor’s own discussion of the state of the art presented in “Plaintiff’s Opening
`
`Markman Brief” were offered for their effect on a POSA and not to prove the novelty
`
`of the invention). Instead, it is an expert declaration prepared in a different
`
`proceeding for a different patent more than eight years after the filing date of
`
`the ’002 patent. Thus, the District Court and PTAB decisions that Patent Owner
`
`cites are simply irrelevant.
`
`Exhibit 2004 is testimony submitted during a different proceeding related to
`
`a different patent, yet relied upon in this proceeding for the truth of its statements
`
`4
`
`
`
`Proceeding No.: IPR2018-01249
`Attorney Docket: 39521-0054IP1
`about how a POSA would interpret the term “clock.” Thus, those statements are
`
`hearsay, and should be excluded under FRE 802. US Endodontics, LLC v. Gold
`
`Standard Instruments, LLC, PGR2015-00019, Paper 54, 38-42, (PTAB 2016).
`
`C. EXHIBIT 2004 IS INADMISSIBLE UNDER FRE 402
`Patent Owner’s argument for the relevance of Exhibit 2004 only serves to
`
`highlight its reliance on the truth of the testimony provided therein. If, as Patent
`
`Owner contends, “Dr. Alpert’s testimony is plainly relevant to the meaning of the
`
`claim term as understood by a POSA” (Opposition, 3) then it is inadmissible under
`
`either or both FRE 702 and 802 for the reasons set forth above and in Petitioner’s
`
`Motion. The Exhibit cannot, at the same time, both be relevant to proving the truth
`
`of how a POSA would have interpreted a claim term, yet only be relied upon to
`
`support the use of a particular dictionary. Patent Owner’s attempt to salvage Exhibit
`
`2004 only emphasizes its inadmissibility.
`
`II. CONCLUSION
`For the foregoing reasons, Petitioner requests that the evidence discussed
`
`above be excluded.
`
`
`
`
`
`5
`
`
`
`Proceeding No.: IPR2018-01249
`Attorney Docket: 39521-0054IP1
`
` Respectfully submitted,
`
`
`
` /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
`
`Counsel for Petitioner
`
`
`
`
`
`
`
`
`
`
`
`
`
`Date: September 30, 2019
`
`Customer Number 26171
`Fish & Richardson P.C.
`Telephone: (202) 783-5070
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`6
`
`
`
`Proceeding No.: IPR2018-01249
`Attorney Docket: 39521-0054IP1
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR § 42.8(b), the undersigned certifies that on September
`
`30, 2019, a complete and entire copy of this Petitioner’s Reply To Patent Owner’s
`
`Opposition To Petitioner’s Motion To Exclude Evidence was provided via email to
`
`the Patent Owner by serving the correspondence email addresses of record as
`
`follows:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`David B. Cochran
`Joshua R. Nightingale
`Matthew W. Johnson
`Joseph M. Sauer
`David M. Maiorana
`Jones Day
`901 Lakeside Ave.
`Cleveland, OH 44114
`
`dcochran@jonesday.com
`jrnightingale@jonesday.com
`mwjohnson@jonesday.com
`jmsauer@jonesday.com
`dmaiorana@jonesday.com
`
`Email:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Christine Rogers/
`Christine Rogers
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`(650) 839-5092
`
`
`
`
`
`
`
`
`7
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
