Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 69
`Entered: September 6, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`GOOGLE LLC, ZTE (USA), INC.,
`SAMSUNG ELECTRONICS CO., LTD.,
`LG ELECTRONICS INC., HUAWEI DEVICE USA, INC.,
`HUAWEI DEVICE CO. LTD., HUAWEI TECHNOLOGIES CO. LTD.,
`HUAWEI DEVICE (DONGGUAN) CO. LTD.,
`HUAWEI INVESTMENT & HOLDING CO. LTD.,
`HUAWEI TECH. INVESTMENT CO. LTD., and
`HUAWEI DEVICE (HONG KONG) CO. LTD.,
`Petitioner,
`
`v.
`
`CYWEE GROUP LTD,
`Patent Owner.
`____________
`
`Case IPR2018-01257 (Patent 8,552,978 B2)
`Case IPR2018-01258 (Patent 8,441,438 B2)
`____________
`
`
`
`Before PATRICK M. BOUCHER, KAMRAN JIVANI, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`571-272-7822
`
`
`
`
`
`Paper 69
`Entered: September 6, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`GOOGLE LLC, ZTE (USA), INC.,
`SAMSUNG ELECTRONICS CO., LTD.,
`LG ELECTRONICS INC., HUAWEI DEVICE USA, INC.,
`HUAWEI DEVICE CO. LTD., HUAWEI TECHNOLOGIES CO. LTD.,
`HUAWEI DEVICE (DONGGUAN) CO. LTD.,
`HUAWEI INVESTMENT & HOLDING CO. LTD.,
`HUAWEI TECH. INVESTMENT CO. LTD., and
`HUAWEI DEVICE (HONG KONG) CO. LTD.,
`Petitioner,
`
`v.
`
`CYWEE GROUP LTD,
`Patent Owner.
`____________
`
`Case IPR2018-01257 (Patent 8,552,978 B2)
`Case IPR2018-01258 (Patent 8,441,438 B2)
`____________
`
`
`
`Before PATRICK M. BOUCHER, KAMRAN JIVANI, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`IPR2018-01257 (Patent 8,552,978 B2)
`IPR2018-01258 (Patent 8,441,438 B2)
`
`
`A conference call was held with the parties on September 5, 2019.
`Three issues were discussed. The parties were notified of the panel’s
`decisions on all three issues at the conclusion of the call, and those issues
`and decisions are memorialized herein.
`
`
`I. DECLARATION BY SHUN-NAN LIOU
`First, a Declaration by Shun-Nan Liou, an inventor named on the
`challenged patents, was filed by Patent Owner as Exhibit 2020.1 As
`uncompelled direct testimony, such a Declaration “must be submitted in the
`form of an affidavit.” 37 C.F.R. § 42.53(a). In defining an “affidavit,” our
`regulations refer to the provisions of 37 C.F.R. § 1.68 and 28 U.S.C. § 1746.
`See 37 C.F.R. § 42.2. The former of these, i.e., 37 C.F.R. § 1.68, requires
`that a declarant be warned, on the same document, that “willful false
`statements and the like are punishable by fine or imprisonment, or both (18
`U.S.C. 1001).” The latter, i.e., 28 U.S.C. § 1746, provides that unsworn
`declarations may substitute for sworn declarations if accompanied by a
`statement in substantially the form, “I declare . . . under penalty of perjury
`under the laws of the United States of America that the foregoing is true and
`correct.” Exhibit 2020 includes neither statement, and Patent Owner
`requested authorization on the call to file a substitute exhibit that includes
`the required language but which is otherwise identical to the previously filed
`exhibit. Petitioner opposes.
`In Petitioner’s Surreply in Opposition to Patent Owner’s Motion to
`Amend, Petitioner observes that Dr. Liou’s “statement is not in the form of
`
`
`1 Citations are to IPR2018-01257. Similar papers and exhibits have been
`filed in both proceedings.
`
`2
`
`
`
`IPR2018-01257 (Patent 8,552,978 B2)
`IPR2018-01258 (Patent 8,441,438 B2)
`
`an affidavit, as required by 37 C.F.R. §42.53(a),” and asserts that Petitioner
`“notified CyWee of this in its objections of Aug. 7, 2019, but CyWee made
`no correction.” Paper 64, 1–2. Petitioner’s objection of August 7, 2019,
`states: “Google further objects under FRE 802 and 37 C.F.R. 42.53(a)
`because the exhibit is an alleged out-of-court statement of an individual that
`does not meet any hearsay exception and is not in the form of an affidavit.”
`Paper 49, 2–3.
`Petitioner’s Surreply in Opposition to Patent Owner’s Motion to
`Amend cites FedEx v. Ronald A. Katz Tech., CBM2015-00053, Paper 9 at
`7–8 (PTAB June 29, 2015). In that case, a declaration filed by a petitioner
`was given no weight in determining whether to institute a covered business
`method review because the declaration was not sworn under penalty of
`perjury and did not include any statements or warnings as to the truth of the
`statements or the ramifications of making false statements. FedEx, Paper 9
`at 7. Conversely, Patent Owner drew our attention during the call to Fidelity
`Information Services, LLC v. Mirror Imaging, LLC, CBM2017-00064, Paper
`54 (PTAB Jan. 2, 2019), in which a panel granted an oral motion to file a
`corrected declaration to add the language required by 18 U.S.C. § 1001. In
`Fidelity, the party opposing filing of the corrected declaration had, as here,
`duly objected. Fidelity, Paper 54 at 6.
`Patent Owner’s attempt to cure Dr. Liou’s defective Declaration is
`untimely, and the only reason offered by Patent Owner for that untimeliness
`during the call was “inadvertence.” See 37 C.F.R. § 42.64(b)(2) (“The party
`relying on evidence to which an objection is timely served may respond to
`the objection by serving supplemental evidence within ten business days of
`service of the objection.”). But our regulations accord us with discretion to
`
`3
`
`
`
`IPR2018-01257 (Patent 8,552,978 B2)
`IPR2018-01258 (Patent 8,441,438 B2)
`
`excuse a late action “on a showing of good cause or upon a Board decision
`that consideration on the merits would be in the interest of justice.” 37
`C.F.R. § 42.5(c)(3).
`We find the circumstances in this proceeding more akin to those in
`Fidelity than to those in FedEx, and accordingly exercise such discretion to
`authorize filing of the Corrected Declaration. Specifically, in FedEx, the
`Board was confronted with a preliminary record that included no attempt by
`the proffering party to cure the defective declaration. By contrast, in
`Fidelity—as in this proceeding—the proffering party made a specific effort
`to cure. But even more relevant to our determination is the fact that,
`notwithstanding the defectiveness of Dr. Liou’s Declaration, Petitioner
`nonetheless proceeded to cross-examine Dr. Liou. See Paper 58 (Notice of
`Deposition of Shun-Nan Liou). Petitioner thus appears to have pursued a
`strategy that would allow it to use Dr. Liou’s cross-examination testimony if
`something productive were uncovered, and to seek to suppress Dr. Liou’s
`direct testimony if that cross-examination proved unproductive. Under these
`circumstances, we find it in the interest of justice to allow Patent Owner to
`cure the defect in Dr. Liou’s Declaration. Cf. Apple Inc. v. Evolved
`Wireless, IPR2016-01228, Paper 27 at 10–11 (PTAB Nov. 30, 2017) (giving
`no weight to an unsworn declaration where the opposing party forwent
`cross-examination).
`
`
`II. PATENT OWNER’S REPLY IN SUPPORT OF
`MOTION TO TERMINATE
`
`
`Second, Petitioner contends that a paragraph of Patent Owner’s Reply
`in Support of its Motion to Terminate, specifically the paragraph beginning
`
`4
`
`
`
`IPR2018-01257 (Patent 8,552,978 B2)
`IPR2018-01258 (Patent 8,441,438 B2)
`
`on the last line of page 3 of Paper 65,2 includes improper new argument and
`evidence. In particular, Petitioner identifies Exhibits 2046 and 2048, as well
`as pages 5–21 of Exhibit 2047, as evidence that it contends is not properly
`responsive to arguments made in Petitioner’s Opposition to Patent Owner’s
`Motion to Terminate, i.e., Paper 51.3 Petitioner requests authorization to file
`a motion to strike the identified portion of Paper 65, as well as the identified
`exhibits, or, in the alternative, to file a surreply to address Patent Owner’s
`argument.
`During the call, Patent Owner did not oppose Petitioner’s alternative
`request, even in light of the specific observation that this alternative request
`would provide Petitioner with the last written word on this argument. In
`light of this agreement, we authorize Petitioner to file a surreply in support
`of its Opposition to Patent Owner’s Motion to Terminate, limited to
`addressing the argument and evidence discussed in the paragraph beginning
`on the last line of page 3 of Paper 65. In granting this authorization, we
`deny Petitioner’s request to file the surreply at a time after the date of the
`oral hearing. Such timing would deprive the panel of having the full
`authorized briefing by the parties on the termination issue available at the
`time of the hearing, which we find unproductive.
`
`
`
`2 A public redacted version of Paper 65 is available in the record as Paper
`66.
`3 A public redacted version of Paper 51 is available in the record as Paper
`52.
`
`5
`
`
`
`IPR2018-01257 (Patent 8,552,978 B2)
`IPR2018-01258 (Patent 8,441,438 B2)
`
`
`III. DEMONSTRATIVE EXHIBITS
`Consistent with 37 C.F.R. § 42.70(b), our hearing Order in these
`proceedings directs the parties to serve demonstrative exhibits “at least
`seven business days before the hearing date.” Paper 61, 4. According to
`representations made by the parties during the call, Petitioner timely served
`its demonstrative exhibits on Patent Owner on September 4, 2019, i.e. seven
`business days before the hearing date of September 13, 2019. As of the time
`of the call on September 5, 2019, Patent Owner had not yet served its
`demonstrative exhibits on Petitioner. We understand Patent Owner to have
`attributed the failure to timely serve its demonstrative exhibits on an error
`that mistakenly docketed the due date as September 5, 2019.
`Because of the untimeliness, Petitioner requests that Patent Owner be
`prohibited from using demonstrative exhibits at the oral hearing. Because
`we have no reason to doubt the innocence of the docketing error, we find it
`in the interest of justice to allow late service of Patent Owner’s
`demonstrative exhibits, and exercise our discretion to do so. See 37 C.F.R.
`§ 42.5(c)(3). In doing so, we are not unsympathetic to the concern
`expressed by Petitioner during the call that such excuse of Patent Owner’s
`late action may unfairly allow Patent Owner to tailor its demonstrative
`exhibits in response to the content of Petitioner’s timely served
`demonstrative exhibits. We caution the parties that we expect to be mindful
`of that context in considering any objections to demonstrative exhibits. In
`addition, we extend the time for Petitioner to object to Patent Owner’s
`demonstrative exhibits by one day. See Paper 61, 5 (“Any party with
`unresolved objections must file a list of those objections with the Board at
`least two business days before the hearing.”). That is, objections filed by
`
`6
`
`
`
`IPR2018-01257 (Patent 8,552,978 B2)
`IPR2018-01258 (Patent 8,441,438 B2)
`
`Petitioner one business day before the oral hearing shall be considered
`timely. No such accommodation is accorded to Patent Owner, whose
`objections remain due two business days before the oral hearing.
`
`
`IV. ORDER
`
`It is
`ORDERED that Patent Owner is authorized to file a corrected version
`of Dr. Liou’s Declaration, limited to adding language that the Declaration is
`sworn under penalty of perjury, and that Dr. Liou has been warned of the
`consequences of false statements;
`FURTHER ORDERED that Petitioner is authorized to file a Surreply
`in Support of its Opposition to Patent Owner’s Motion to Terminate, limited
`to two pages and limited in content as described above, by September 11,
`2019;
`FURTHER ORDERED that Patent Owner shall serve its
`demonstrative exhibits on Petitioner by 5:00 PM Eastern Time on
`September 5, 2019; and
`FURTHER ORDERED that Petitioner’s time for filing objections to
`Patent Owner’s demonstrative exhibits is extended to September 12, 2019.
`
`7
`
`
`
`IPR2018-01257 (Patent 8,552,978 B2)
`IPR2018-01258 (Patent 8,441,438 B2)
`
`Petitioner:
`
`Matthew A. Smith
`Andrew S. Baluch
`SMITH BALUCH LLP
`smith@smithbaluch.com
`baluch@smithbaluch.com
`
`James Sobieraj
`Jon Beaupre
`Yeuzhong Feng
`Andres Shoffstall
`BRINKS GILSON & LIONE
`jsobieraj@brinksgilson.com
`jbeaupre@brinksgilson.com
`yfen@brinksgilson.com
`ashoffstall@brinksgilson.com
`
`Naveen Modi
`Chetan Bansal
`PAUL HASTINGS LLP
`naveenmodi@paulhastings.com
`chetanbansal@paulhastings.com
`
`Collin Park
`Andrew Devkar
`Jeremy Peterson
`Adam Brooke
`MORGAN LEWIS & BOCKIUS LLP
`Collin.park@morganlewis.com
`Andrew.devkar@morganlewis.com
`jpeterson@morganlewis.com
`adam.brooke@morganlewis.com
`
`Kristopher Reed
`Benjamin Klein
`Norris Booth
`KILPATRICK TOWNSEND
`kreed@kilpatricktownsend.com
`
`8
`
`
`
`IPR2018-01257 (Patent 8,552,978 B2)
`IPR2018-01258 (Patent 8,441,438 B2)
`
`bkleinman@kilpatricktownsend.com
`nboothe@kilpatricktownsend.com
`
`
`Patent Owner:
`
`Jay P. Kesan
`Ari Rafilson
`DIMURO GINSBERG PC-DGKEYIP GROUP
`jkesan@dimuro.com
`arafilson@shorechan.com
`
`
`9
`
`
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
