throbber
Paper No. 62
`Filed: January 22, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––––––––––
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`DIRECTSTREAM, LLC,
`Patent Owner.
`
`––––––––––––––––––
`
`Case No. IPR2018-01605, IPR2018-01606, IPR2018-01607
`U.S. Patent No. 7,620,800 B2
`
`––––––––––––––––––
`
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION TO
`EXCLUDE
`
`
`
`

`

`IPR2018-01605, -01606, -01607
`
`U.S. Patent No. 7,620,800
`
`TABLE OF CONTENTS
`
`
`
`I.
`II.
`
`B.
`
`3.
`
`Introduction .................................................................................................... 1
`Exhibits 1074, 1077, and 1079....................................................................... 1
`A.
`Exhibits 1074 and 1079 Are Authentic Documents .............................. 1
`1.
`Exhibit 1074 is an Authentic IEEE Publication ......................... 2
`2.
`Exhibits 1074 and 1079 Are Ancient Documents ...................... 3
`Exhibits 1074, 1077, and 1079 Do Not Contain Hearsay ..................... 4
`1.
`Exhibits 1074, 1077, and 1079 Are Not Hearsay ....................... 5
`2.
`Patent Owner Fails to Establish Exhibits 1074, 1077, and 1079
`Constitute Hearsay by Not Identifying What Statements are
`Hearsay. ....................................................................................... 6
`Exhibits 1074 and 1079 are Admissible As Ancient
`Documents .................................................................................. 7
`Exhibit 1077 is Relevant ....................................................................... 7
`C.
`III. Exhibits 1076 .................................................................................................. 8
`IV. Exhibits 1075 and 1078 ................................................................................ 11
`A.
`Testimony in Exhibits 1075 and 1078 is Relevant ............................. 11
`V. Conclusion .................................................................................................... 15
`
`
`
`
`
`
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`

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`IPR2018-01605, -01606, -01607
`
`U.S. Patent No. 7,620,800
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`ACCO Brands, Inc. v. PC Guardian Anti-Theft Prods.,
`592 F. Supp. 2d 1208 (N.D. Cal. 2008) ................................................................ 2
`Anacor Pharm., Inc. v. Iancu,
`889 F.3d 1372 (Fed. Cir. 2018) .......................................................................... 11
`Apple Inc. v. VirnetX,
`IPR2016-00331, Paper 29 (PTAB June 22, 2017) ............................................... 6
`Apple v. DSS Tech. Mgmt.,
`IPR2015-00369, Paper 40 (PTAB June 17, 2016) ............................................... 5
`Apple v. VirnetX,
`IPR2016-01585, Paper 32 (PTAB Feb. 20, 2018) ................................................ 7
`Apple v. VirnetX,
`IPR2017-00337, Paper 31 (PTAB May 30, 2018) ............................................... 5
`Compass Bank v. Intellectual Ventures II,
`IPR2014-00724, Paper 41 (PTAB Nov. 5, 2015) ................................................. 4
`Ericsson Inc. v. Intellectual Ventures I LLC,
`IPR2014-00527, Paper 41 (PTAB May 18, 2015) ............................................... 2
`FLIR Sys., Inc. v. Leak Surveys, Inc.,
`IPR2014-00411, Paper 113 (PTAB Sept. 3, 2015)................................... 1, 13, 15
`FLIR Sys., Inc. v. Leak Surveys, Inc.,
`IPR2015-00065, Paper 71 (PTAB Sept. 3, 2015) ....................................... 8, 9, 11
`Illumina, Inc. v. The Tr. Of Columbia Univ. Of New York,
`IPR2018-00797, Paper 65 (PTAB Sept. 9, 2019) ....................................... 8, 9, 11
`Liberty Mut. Ins. Co. v. Progressive Casualty Ins. Co.,
`CBM2012-00010, Paper 59 (PTAB Feb. 24, 2014) ..................................... 2, 5, 6
`On Semiconductor Corp. v. Power Integrations, Inc.,
`IPR2016-00809, Paper 67 (PTAB Sept. 22, 2017)............................................. 10
`ii
` PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION TO EXCLUDE
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`

`

`IPR2018-01605, -01606, -01607
`
`U.S. Patent No. 7,620,800
`
`QSC Audio Prods., LLC, v. Crest Audio, Inc.,
`IPR2014-00127, Paper 43 (PTAB Apr. 29, 2015) ............................................... 7
`Samsung Electronics America, Inc. v. Uniloc 2017 LLC,
`IPR2017-01798, Paper 32 (PTAB Jan. 31, 2019) ................................................ 2
`United States v. Turner,
`718 F.3d 226 (3d Cir. 2013) ................................................................................. 1
`Other Authorities
`37 C.F.R. § 42.20(c) ..................................................................................... 1, 2, 6, 15
`77 Fed. Reg. at 48,767 ............................................................................... 8, 9, 11, 13
`Fed. R. Evid. 402 and 403 .......................................................................................... 8
`Fed. R. Evid. 803(16) ................................................................................................. 7
`Fed. R. Evid. 901(a) ................................................................................................... 1
`Fed. R. Evid. 901(b) ................................................................................................... 2
`Fed. R. Evid. 901(b)(4) .......................................................................................... 2, 3
`Fed. R. Evid 901(b)(8) ............................................................................................... 4
`Fed. R. Evid. 901(b)(8)(A) ........................................................................................ 4
`Fed. R. Evid. 902(7) ................................................................................................... 2
`R. Evid. 901 (b) (8)(B) ............................................................................................... 4
`R. Evid. 902(6) ....................................................................................................... 2, 3
`
`
`
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`

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`IPR2018-01605, -01606, -01607
`
`U.S. Patent No. 7,620,800
`
`I.
`
`Introduction
`
`The evidence of record establishes that Exhibits 1074, 1077, 1079, and 1076,
`
`and certain testimony in Exhibits 1075 and 1078 are admissible. Patent Owner’s
`
`laundry list of possible bases for excluding, see Paper 61 (“Mot”) at 1-2, and its
`
`thin justifications for such bases, are more fairly characterized as, at best, a
`
`challenge to the sufficiency of evidence rather than the admissibility of the
`
`evidence. For the reasons demonstrated below, because Patent Owner has not met
`
`its burden of establishing these documents or portions of document as not
`
`admissible, see 37 C.F.R. § 42.20(c), FLIR Sys., Inc. v. Leak Surveys, Inc.,
`
`IPR2014-00411, Paper 113 at 5 (PTAB Sept. 3, 2015), its motion must be denied.
`
`II. Exhibits 1074, 1077, and 1079
`
`A. Exhibits 1074 and 1079 Are Authentic Documents
`
`Patent Owner objects to the authenticity of Exhibits 1074 and 10791. Mot.
`
`6. However, the standard for admissibility under Fed. R. Evid. 901(a) is “slight,”
`
`which is clearly met by the exhibits themselves, see United States v. Turner, 718
`
`F.3d 226, 232 (3d Cir. 2013), and Patent Owner identifies nothing about the
`
`documents themselves that brings into question their authenticity. Indeed, as
`
`
`
`1 Patent Owner did not move to exclude Exhibit 1077 on the ground of
`
`Authenticity.
`
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`IPR2018-01605, -01606, -01607
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`U.S. Patent No. 7,620,800
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`Patent Owner bears the burden as movant to demonstrate these documents are not
`
`authentic, summarily saying they are not without more is insufficient to challenge
`
`their authenticity. See 37 CFR § 42.20 (c) (“The moving party has the burden of
`
`proof to establish that it is entitled to the requested relief.); Samsung Electronics
`
`America, Inc. v. Uniloc 2017 LLC, IPR2017-01798, Paper 32 at 103 (PTAB Jan.
`
`31, 2019). For at least this reason—i.e., that Patent Owner has utterly failed to
`
`satisfy its burden—and for the reasons discussed below, Patent Owner’s arguments
`
`should be rejected.
`
`1.
`
`Exhibit 1074 is an Authentic IEEE Publication
`
`Exhibit 1074 is an IEEE publication and is authenticate under Fed. R. Evid.
`
`901(b) and self-authenticating under 902(6) and/or 902(7) at least because it
`
`contains an IEEE trade inscription, copyright symbol, and ISBN. See, e.g.,
`
`Ericsson Inc. v. Intellectual Ventures I LLC, IPR2014-00527, Paper 41 at 12
`
`(PTAB May 18, 2015) (IEEE publication authenticated under Fed. R. Evid.
`
`901(b)(4)); Liberty Mut. Ins. Co. v. Progressive Casualty Ins. Co., CBM2012-
`
`00010, Paper 59 at 37 (PTAB Feb. 24, 2014) (holding that an IEEE article is self-
`
`authenticating under Fedd. R. Evid. 902(6)); ACCO Brands, Inc. v. PC Guardian
`
`Anti-Theft Prods., 592 F. Supp. 2d 1208, 1219 (N.D. Cal. 2008) (Macintosh
`
`Portable computers were self-authenticating under Fed. R. Evid. 902(7) “because
`
`they are inscribed with the Macintosh Portable trade name”). As explained above,
`
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`IPR2018-01605, -01606, -01607
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`U.S. Patent No. 7,620,800
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`Patent Owner has identified nothing that would call in to question the authenticity
`
`of this document.
`
`Exhibit 1074 is an IEEE article by Gokhale et al. entitled “FPGA Computing
`
`in a Data Parallel C.” The IEEE mark on the first page of appears as “0-8186-
`
`3890-7/93 $03.00 © 1993 IEEE.” EX1074, 94. Accordingly, Exhibit 1074 is self-
`
`authenticating under Fed. R. Evid. 902(6) and/or 902(7) because it contains an
`
`IEEE trade inscription, copyright symbol, and ISBN.
`
`Nevertheless, to the extent one might argue it is not self-authenticating,
`
`Exhibit 1074 is authenticated under Fed. R. Evid. 901(b)(4) based on the totality of
`
`the circumstances. Fed. R. Evid. 901(b)(4) (“The appearance, contents, substance,
`
`internal patterns, or other distinctive characteristics of the item, taken together with
`
`all the circumstances.”) For example, the appearance of the paper is consistent
`
`with papers appearing in other proceedings as they have, for example, titles,
`
`authors, contact information including email addresses, page numbers beginning in
`
`the middle of a document, and conclude with a listing of references. Nothing
`
`about this exhibit suggests it is not what it purports to be, and Patent Owner never
`
`identifies anything to suggest otherwise. Accordingly, the circumstantial evidence
`
`shown in this documents demonstrates that Exhibit 1074 is authentic.
`
`2.
`
`Exhibits 1074 and 1079 Are Ancient Documents
`
`3
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`IPR2018-01605, -01606, -01607
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`U.S. Patent No. 7,620,800
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`Exhibits 1074 and 1079 are also authentic because they meet the age
`
`requirements and authentication criteria to constitute ancient documents as
`
`specified in Fed. R. Evid 901(b)(8).
`
`First, each exhibit is over 20 years old. EX1074, (1993); EX1079 (1996);
`
`The challenged exhibits appear in a condition that creates no suspicion about their
`
`authenticity. See Fed. R. Evid. 901(b)(8)(A) . They appear “consistent with their
`
`citation to other documents contemporaneous to the time at which they were
`
`alleged to have been published.” See Compass Bank v. Intellectual Ventures II,
`
`IPR2014-00724, Paper 41 at 55-56 (PTAB Nov. 5, 2015) (finding, for example, an
`
`RFC to be authentic and admissible by qualifying as an ancient document). Patent
`
`Owner fails to provide any evidence that these exhibits are not, on their face, what
`
`they appear to be, and never challenged the authenticity of any of these exhibits.
`
`See generally Mot. 6. Moreover, Exhibit 1074 is available to download on the
`
`IEEE website, see https://ieeexplore.ieee.org/Xplore/home.jsp, while Exhibit 1079
`
`is available from several well-known book sellers2, places they would likely be, if
`
`authentic. See F ed. R. Evid. 901 (b) (8)(B).
`
`B.
`
`Exhibits 1074, 1077, and 1079 Do Not Contain Hearsay
`
`
`
`2 https://www.amazon.com/VHDL-Programmable-Logic-Kevin-
`
`Skahill/dp/0201895730
`
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`IPR2018-01605, -01606, -01607
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`U.S. Patent No. 7,620,800
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`Patent Owner also asserts that Exhibits 1074, 1077, and 1079 are
`
`“inadmissible hearsay,” Mot. 7, because Petitioner uses these documents “to prove
`
`the truth of technical matters allegedly asserted in such documents.” Id. As
`
`demonstrated below, Patent Owner has failed to prove the following exhibits
`
`contain excludable hearsay.
`
`1.
`
`Exhibits 1074, 1077, and 1079 Are Not Hearsay
`
`Exhibits 1074, 1077, and 1079 are not offered for the truth of the matter
`
`asserted but rather serve a non-hearsay purpose. The Board has repeatedly held
`
`that a statement is not hearsay if offered for the effect a statement on the
`
`understanding of a person of ordinary skill in the art, or “to show what one of
`
`ordinary skill in the art would have known about the technical features and
`
`developments in the pertinent art.” Apple v. DSS Tech. Mgmt., IPR2015-00369,
`
`Paper 40 at 38 (PTAB June 17, 2016); Apple v. VirnetX, IPR2017-00337, Paper 31
`
`at 51-52 (PTAB May 30, 2018); Liberty Mut. Ins. Co. at 36-37. Here, Petitioner
`
`relies on Exhibits 1074, 1077, and 1079 to show technologies described in the 800
`
`Patent, such as “hardware description languages, such as VHDL, [used] to
`
`configure FPGAs,” e.g., Reply, Paper 49, 7, 17, 29, (citing Exhibits 1074, 1077,
`
`1079). Thus, these exhibits were offered “to show what one of ordinary skill in the
`
`art would have known about the technical features and developments in the
`
`pertinent art.” DSS Tech. Mgmt., at 38. The exhibits are not hearsay when offered
`
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`IPR2018-01605, -01606, -01607
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`U.S. Patent No. 7,620,800
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`for that purpose and should be admitted to show what a skilled person would have
`
`known about the prior art.
`
`Thus, exhibits 1074, 1077, and 1079 are admissible because they serve a non
`
`hearsay purpose.
`
`2.
`
`Patent Owner Fails to Establish Exhibits 1074, 1077, and 1079
`Constitute Hearsay by Not Identifying What Statements are
`Hearsay.
`
`Patent Owner fails to satisfy its burden of proof for Exhibits 1074, 1077, and
`
`1079 because it does not identify what statements in these exhibits are hearsay.
`
`See 37 C.F.R. § 42.20(c); Apple Inc. v. VirnetX, IPR2016-00331, Paper 29 at 47
`
`(PTAB June 22, 2017) (“Patent Owner does not explain why [the exhibits] are
`
`hearsay or what part of them constitute hearsay.”). Patent Owner merely states in
`
`conclusory fashion that “Petitioner cites each of these documents to prove the truth
`
`of technical matters allegedly asserted in such documents, i.e., to support
`
`Petitioner’s specific factual assertions regarding a technical issue.” Mot. 5. It does
`
`not identify, however, “specifically the textual portions of the aforementioned
`
`exhibits that allegedly are being offered for the truth of the matter asserted, yet
`
`seeks to exclude the entirety of each exhibit.” Liberty Mut. Ins. at 36. The Board
`
`should not have to “go through the entirety of each exhibit and determine which
`
`portion of the exhibit [Patent Owner] believes to be hearsay.” Id.
`
`6
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`

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`IPR2018-01605, -01606, -01607
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`U.S. Patent No. 7,620,800
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`Thus, Patent Owner’s failure to identify the relevant statements is alone
`
`sufficient reason to deny its motion.
`
`3.
`
`Exhibits 1074 and 1079 are Admissible As Ancient Documents
`
`Exhibits 1074 and 1079 qualify for the ancient document hearsay exception.
`
`Statements in an authentic “document that was prepared before January 1, 1998”
`
`are excepted from the rule against hearsay. Fed. R. Evid. 803(16).
`
`Exhibits 1074 and 1079 meet the age requirements and authentication
`
`criteria (for the reasons demonstrated above) to constitute ancient documents.
`
`First, the date on each exhibit indicates that they were prepared before January 1,
`
`1998.3 EX1074, 94; EX1079, Cover-1-Cover-4. Thus, the Board should admit
`
`any hearsay within Exhibits 1074 and 1079—to the extent any exists—under the
`
`ancient document exception. See QSC Audio Prods., LLC, v. Crest Audio, Inc.,
`
`IPR2014-00127, Paper 43 at 14 (PTAB Apr. 29, 2015) (admitting statements on
`
`dates under Fed. R. Evid. 803(16)); see also Apple v. VirnetX, IPR2016-01585,
`
`Paper 32 at 56 (PTAB Feb. 20, 2018).
`
`C. Exhibit 1077 is Relevant
`
`
`
`3The publication dates occur before the cut-off date—i.e., January 1, 1998—for
`
`ancient documents. Fed. R. Evid.803(16) (amended 2017)
`
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`IPR2018-01605, -01606, -01607
`
`U.S. Patent No. 7,620,800
`
`Patent Owner also objects to Exhibit 1077 as lacking relevance. But Patent
`
`Owner’s motion runs afoul of the prohibition against using a motion to exclude
`
`“to challenge the sufficiency of the evidence to prove a particular fact.” 77 Fed.
`
`Reg. at 48,767; FLIR Sys., Inc. v. Leak Surveys, Inc., IPR2015-00065, Paper 71 at
`
`4–5, 9 (PTAB Sept. 3, 2015); see also Illumina, Inc. v. The Tr. Of Columbia Univ.
`
`Of New York, IPR2018-00797, Paper 65 at 11 (PTAB Sept. 9, 2019).
`
`For example, Patent Owner complains that Exhibit 1077 should be excluded
`
`because the definitions of “data structure” and “data path,” are not claim terms.
`
`Mot. 7. Whether or not “data structure” and “data path” are claim terms is simply
`
`of no moment—Patent Owner’s assertions are unambiguously directed to
`
`challenging the “sufficiency of the evidence to prove a particular fact,” 77 Fed.
`
`Reg. at 48,767, a plainly improper use of a motion to exclude. Id. Moreover,
`
`Patent Owner’s argument that Petitioner “attempts to redefine the clear words used
`
`in a dictionary definition” in order to “obfuscate,” Mot. 8, is incredulous given that
`
`Petitioner quotes these definitions directly, Reply, 29 and furthermore filed the
`
`entirety of the exhibits as evidence.
`
`III. Exhibits 1076
`
`Patent Owner further “objects under FED. R. EVID. 402 and 403
`
`specifically to paragraphs 15-17, which discuss EX1074 for the first time.” Mot. 8.
`
`However, Patent Owner never explains how citing an Exhibit “for the first time”
`
`8
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`

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`IPR2018-01605, -01606, -01607
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`U.S. Patent No. 7,620,800
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`effects the admissibility of a declaration. Patent Owner again uses its motion to
`
`exclude as a vehicle to attack the sufficiency of evidence rather than the
`
`admissibility of evidence. 77 Fed. Reg. at 48,767; FLIR Sys., Inc., IPR2015-00065
`
`at 4–5, 9; see also Illumina, Inc. at 11. Additionally, Patent Owner was not
`
`prejudiced by Dr. Stone’s reliance on Exhibit 1074 as it was aware of the Gokhale
`
`paper in advance of filling its Patent Owner Response, and was afforded an
`
`opportunity to respond to these arguments in its Sur-Reply—an opportunity it took
`
`advantage of. Sur-Reply 17-19.
`
`Patent Owner complains that “Dr. Stone attempts to characterize Petitioner's
`
`reply exhibit as somehow first introduced by Patent Owner in its Response,” Mot.
`
`8, and that this means “paragraphs 15-17” must be “excluded as prejudicial in the
`
`inability for Patent Owner to respond.” Id.
`
`However, discussion of the Gokhale and Minnich paper (EX1074) was
`
`actually first raised by Patent Owner, as is objectively apparent from the record. In
`
`its Patent Owner Response (Paper 36, 83), DirectStream claims that “Splash2 is
`
`limited in its capabilities and relies on the external Sun workstation to handle any
`
`looping” citing to “EX2169 at 14-15.” That section of EX2169 is specifically a
`
`summary and discussion of the Gokhale paper (EX1074) in relation to Splash2.
`
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`IPR2018-01605, -01606, -01607
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`U.S. Patent No. 7,620,800
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`
`
`EX2169, 14.
`
`Therefore, far from being “irrelevant to any issues presented by Patent
`
`Owner,” Mot. 8, the Gokhale paper sits front and center in Patent Owner’s
`
`argument that Splash2 relies on the external Sun workstation to handle looping.
`
`Response, 83. Moreover, the paper is relevant to positions that Patent Owner has
`
`taken as part of its arguments related to claim construction.
`
`However, more fundamentally, Patent Owner fails to provide any basis for
`
`their claim that sections of an expert report should be ignored because it discusses
`
`an exhibit “for the first time.” Indeed, the declaration submitted with Petitioner’s
`
`Reply (EX1076) properly respond to arguments raised by Patent Owner in its
`
`Response—e.g., arguing that “computational loop” should be defined as “a set of
`
`computations that is executed repeatedly per datum, either a fixed number of times
`
`or until some condition is true or false.” See Response, Paper 36, 65; On
`
`Semiconductor Corp. v. Power Integrations, Inc., IPR2016-00809, Paper 67 at 67-
`10
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`IPR2018-01605, -01606, -01607
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`U.S. Patent No. 7,620,800
`
`68 (PTAB Sept. 22, 2017); Anacor Pharm., Inc. v. Iancu, 889 F.3d 1372 (Fed. Cir.
`
`2018).
`
`Additionally, Patent Owner is not prejudiced, first because it was well aware
`
`of the Gokhale paper in advance of filling its Patent Owner Response. Second,
`
`because it had a full and fair opportunity to be heard in its Sur-Reply. Indeed,
`
`Patent Owner specifically discussed the disclosure of looping in Splash2 and the
`
`sections of EX2169 at issue in its Sur-Reply. Sur-Reply, 17-19. They therefore
`
`have actually responded these arguments. And third, they cross-examined Dr.
`
`Stone regarding his reply declaration and failed to ask him any substantive
`
`questions.
`
`IV. Exhibits 1075 and 1078
`
`A. Testimony in Exhibits 1075 and 1078 is Relevant
`
`Patent Owner also objects to certain testimony in Exhibits 1075 and 1078 as
`
`lacking relevance. But Patent Owner’s motion runs afoul of the prohibition against
`
`using a motion to exclude “to challenge the sufficiency of the evidence to prove a
`
`particular fact” yet again. 77 Fed. Reg. at 48,767; FLIR Sys., Inc., IPR2015-00065
`
`at 4–5, 9; see also Illumina, Inc. at 11.
`
`For example, Patent Owner complains that testimony at 65:12-17 of Exhibit
`
`1075 should be excluded because “the question asked is vague, ambiguous, calls
`
`for a legal conclusion, and misleading.”
`
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`IPR2018-01605, -01606, -01607
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`U.S. Patent No. 7,620,800
`
`First, it is not true that Petitioner uses 65:12-17 of Exhibit 1075 “to show
`
`that Dr. Homayoun ‘never offers an interpretation of ‘computational loop…’”
`
`Indeed, simply reading the entire sentence shows that Petitioner relies on 65:12-17
`
`of Exhibit 1075 to show that “Dr. Homayoun, never offers an interpretation of
`
`‘computational loop,’ never contests the Board’s interpretation, and never
`
`testifies as to what he believes the ordinary meaning of the phrase is. EX2112,
`
`¶195; EX1075, 65:12-17.”
`
`In any event, the questions were not vague or confusing, and the record is
`
`clear that Dr. Homayoun clearly understood he was being asked if he ever offered
`
`an opinion as to the Board’s interpretation of the term.
`
`Q. Okay. So on the next page of
`5
`Exhibit 2111, page 87, do you see paragraph 195?
`6
`A. Yes, I see.
`7
`Q. And in 195, you recount the Board's
`8
`interpretation of the computational loop claim
`9
`language; correct?
`10
`11 A. Yes.
`12 Q. Would you agree that you don't have an
`13
`opinion here saying that the Board's interpretation
`14
`is incorrect?
`15
`
`MR. HSU: Objection to form.
`16 THE WITNESS: Yes, I don't have an opinion to
`say that the board interpretation is incorrect.
`17
`
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`IPR2018-01605, -01606, -01607
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`U.S. Patent No. 7,620,800
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`EX1075, 65:5-17.
`
`
`
`DirectStream also argues that the question “calls for a legal conclusion,”
`
`however it is unclear how this question, which asks an experts opinion about a
`
`claim construction, could be considered rendering a legal opinion.
`
`
`
`Patent Owner next contends that “the cited deposition passage should still be
`
`excluded as irrelevant” because Dr. Homayoun discuses computational loops
`
`outside of ¶195. Mot. 10. However, Patent Owner only objected to this question
`
`on the grounds of “form,” and therefore has waived any objection based on
`
`relevance.
`
`
`
`Patent Owner next claims that it expert’s testimony at page 27:4-12 in
`
`Exhibit 1075, should be excluded because “the question asked is vague,
`
`ambiguous, calls for a legal conclusion, and misleading.” Mot. 10. Patent Owner
`
`further claims that Petitioner “purposefully misstates” the applicable legal standard
`
`in an attempt to “purposefully . . . elicit confusing testimony.”
`
`However, never specifically explains how his testimony is “purposefully
`
`misstat[ed]” anything. Mot. 10. Indeed, the entirety of Patent Owner’s argument
`
`runs afoul of the prohibition against using a motion to exclude “to challenge the
`
`sufficiency of the evidence to prove a particular fact.” 77 Fed. Reg. at 48,767;
`
`FLIR Sys., Inc. IPR2015-00065 at 4–5. Here Patent Owner is plainly debating the
`
`13
` PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION TO EXCLUDE
`
`

`

`IPR2018-01605, -01606, -01607
`
`U.S. Patent No. 7,620,800
`
`sufficiency of the legal arguments underlying Petitioner’s Reply and not the
`
`admissibility of this testimony.
`
`Patent Owner also seeks to exclude “EX1078, 65:12-17” because the
`
`questions was “is vague, ambiguous, and calls for a speculative answer and thus
`
`should be excluded.” Mot. 11. However, Patent Owner did not object to this
`
`question at the time.
`
`11 Q. And then the sentence after that, "When
`
`12
`
`13
`
`the actual program executes" -- that actual
`
`program is what you create using dbC, correct?
`
`14 A. Yes.
`
`15 Q. Okay. So what this is saying is, if you
`
`16
`
`17
`
`use dbC on Splash 2, Mr. Halverson believes the
`
`loops get done in the Sun workstation?
`
`18 A. In the Sun workstation. Yeah.
`
`19 Q. It doesn't say that's the only way to do
`
`20
`
`it on Splash 2; isn't that right?
`
`21 MR. VINNAKOTA: Objection to form
`
`EX1078, 65:11-21. Patent Owners objection came after the next questions was
`
`asked. Therefore, Patent Owner did not timely object to this question, and has
`
`waived any objections.
`
`14
` PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION TO EXCLUDE
`
`

`

`IPR2018-01605, -01606, -01607
`
`U.S. Patent No. 7,620,800
`
`In any event, Patent Owner does not explain how the questions is vague,
`
`ambiguous, or speculative. For this reason alone, Patent Owner has not met its
`
`burden of establishing these portions of Dr. El-Ghazawi’s testimony are not
`
`admissible, see 37 C.F.R. § 42.20(c), FLIR Sys., Inc., IPR2014-00411 at 5, its
`
`motion must be denied.
`
`V. Conclusion
`
`For the foregoing reasons, Petitioner respectfully requests that the Board
`
`deny Patent Owner’s Motion and rule the exhibits admissible for the reasons
`
`identified above.
`
`
`
`Dated: January 22, 2020
`
`Respectfully Submitted,
`
`
`
`/Joseph A. Micallef/
`Joseph A. Micallef
`Reg. No. 39,772
`SIDLEY AUSTIN LLP
`jmicallef@sidley.com
`(202) 736-8492
`Attorney for Petitioner
`
`
`
`
`
`
`
`
`
`
`15
` PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION TO EXCLUDE
`
`

`

`IPR2018-01605, -01606, -01607
`
`U.S. Patent No. 7,620,800
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on January 22, 2020, a copy of the foregoing document
`
`has been served via email on the following:
`
`Alfonso Chan, Shore Chan DePumpo LLP (achan@shorechan.com)
`Joseph DePumpo, Shore Chan DePumpo LLP (jdepumpo@shorechan.com)
`
`Sean Hsu, Janik Vinnakota LLP (shsu@jvllp.com)
`G. Donald Puckett, Janik Vinnakota LLP (dpuckett@jvllp.com)
`Rajkumar Vinnakota, Janik Vinnakota LLP (kvinnakota@jvllp.com)
`
`Dated: January 22, 2020
`
`
`
`
`Respectfully Submitted,
`
`/Joseph A. Micallef/
`Joseph A. Micallef
`Reg. No. 39,772
`SIDLEY AUSTIN LLP
`1501 K Street, N.W.
`Washington, DC 20005
`(202) 736-8492
`Attorney for Petitioner
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`16
` PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION TO EXCLUDE
`
`

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