UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
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`Paper No. 65
`Filed: January 29, 2020
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________________
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`MICROSOFT CORPORATION,
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`Petitioner,
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`v.
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`DIRECTSTREAM, LLC,
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`Patent Owner.
`_______________________
`
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`IPR2018-01605, IPR2018-1606, IPR2018-01607
`Patent 7,620,800 B2
`__________________________
`
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`PATENT OWNER DIRECTSTREAM, LLC’S
`REPLY IN SUPPORT OF ITS MOTION TO EXCLUDE
`UNDER 37 C.F.R. §42.64
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`
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`______________________
`
`Paper No. 65
`Filed: January 29, 2020
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________________
`
`MICROSOFT CORPORATION,
`
`Petitioner,
`
`v.
`
`DIRECTSTREAM, LLC,
`
`Patent Owner.
`_______________________
`
`
`IPR2018-01605, IPR2018-1606, IPR2018-01607
`Patent 7,620,800 B2
`__________________________
`
`
`PATENT OWNER DIRECTSTREAM, LLC’S
`REPLY IN SUPPORT OF ITS MOTION TO EXCLUDE
`UNDER 37 C.F.R. §42.64
`
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`Exhibits 1074 and 1079 Are Not Admissible
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`Among numerous objections, Patent Owner specifically objected to Exhibits
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`1074 and 1079 (“the Exhibits”) on authenticity grounds. See FED. R. EVID. 901;
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`Paper 61, 4-7.1 Patent Owner timely objected to these Exhibits. Id.
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`In its Opposition, Petitioner argues that the standard for admissibility under
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`FED. R. EVID. 901(a) is “slight,” Paper 62 at 1, but “slight” does not mean non-
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`existent. Rather, the burden Petitioner must satisfy to establish authenticity is
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`simple: “To authenticate evidence, a party must produce evidence sufficient to
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`support a finding that the item is what the proponent claims it is.” FED. R. EVID.
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`901(a). Despite this simple burden, and the opportunity to provide supplemental
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`evidence to overcome authenticity objections under 37 C.F.R. §42.64(b)(2),
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`Petitioner offers nothing other than naked attorney argument in its Opposition to
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`Patent Owner’s objections—which is not evidence. TRW Auto. U.S. LLC v. Magna
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`Elecs. Inc., IPR2014-01347, Paper 25 at 10 (PTAB Jan. 6, 2016) (holding
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`1 With respect to issues not specifically rebutted herein, Patent Owner stands on the
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`arguments raised in its Motion to Exclude (Paper 61). For the reasons set forth in its
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`Motion to Exclude, and as further explained below, Petitioner has not presented any
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`credible argument to overrule Patent Owner’s objections to Petitioner’s evidence.
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`1
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`“conclusory assertions by Petitioner’s counsel” are not a substitute for Rule 901(a)
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`evidence).2
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`Petitioner argues that EX1074 and EX1079 are admissible under FED. R.
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`EVID. 901(b)(8)(B) based on the age of the documents and the assertion that both
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`documents can be acquired at the present time. Paper 62 at 4. Yet, this assertion is
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`mere attorney argument, not evidence. Moreover, even if attorney argument
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`regarding public-availability of EX1074 and EX1079 was accepted as fact, this
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`argument only shows the exhibits are available today, not at any particular past date.
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`Magna, IPR2014-01347, Paper 25 at 10-11.
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`Petitioner also argues that EX1074 is authentic because it contains a trade
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`inscription, copyright symbol, and ISBN. Paper 62 at 2-3. But, Petitioner simply
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`listed this exhibit in its Reply, Paper 49 at 7, 65, and now relies solely on Petitioner’s
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`counsel’s conclusory assertions that these elements meet Rule 901(a), Rule 902(6)
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`“and/or” Rule 902(7). Yet, when faced with similar objections to similar documents,
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`the Board established that attorney assertions about an “ISBN” or copyright
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`symbols, without any supporting evidence does not meet the requirements of Rule
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`901(a), 902(6), or 902(7). “We cannot accept, as a substitute for evidence, the
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`2 Despite Petitioner’s suggestion to the contrary, 37 C.F.R. §42.20(c) does not relieve
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`its burden of authentication under Rule 901(a) as the “proponent” of the evidence.
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`2
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`conclusory assertion by Petitioner’s counsel that the presence of [an ISBN] either
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`alone or in conjunction with a [copyright symbol] on a document tends to prove that
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`the document is an IEEE publication from an IEEE periodical.” Magna, IPR2014-
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`01347, Paper 25 at 10.
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`Moreover, in Microsoft v. IPA, the Board made clear that IEEE or copyright
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`dates on documents may constitute authentication if additional testimony or
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`evidence is provided to corroborate or authenticate public availability. Microsoft v.
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`IPA, IPR2019-00810, Paper 12 at 81-82 (PTAB Oct. 16, 2019). Here, Petitioner
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`fails to provide any evidence, post-institution, that the Exhibits were provided to
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`libraries for circulation to the public, etc. and fails to provide any witness testimony
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`with knowledge of the contents of the Exhibits. See FED. R. EVID. 901(b)(1).
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`Instead, Petitioner provides scant attorney conjecture and only cites cases dealing
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`with the threshold indicia requirements to authenticate a printed publication pre-
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`institution. See Paper 62, 1-4.
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`As the recent Precedential Board panel articulated in Hulu, LLC v. Sound View
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`Innovations, Case No. IPR2018-01039, Paper 29 (PTAB Precedential Order Panel,
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`Dec. 10, 2019), the distinction of evidence required pre-institution versus post-
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`institution on the indicia to support public availability or authentication is
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`determinative to establish whether Petitioner met its burden of proof. Id. at 14-15,
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`17. The argument made by Petitioner on the copyright date, ISBN numbers, etc.
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`3
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`only is applicable in the pre-institution phase to establish a reasonable likelihood the
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`Exhibit is authentic prior art. But, as these Exhibits were introduced post-institution
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`in its Reply, and Patent Owner timely objected, Petitioner needed to cure with
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`supplemental evidence to establish its burden on authenticity by a preponderance of
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`the evidence, as articulated by the Precedential Panel. Id. at 17-19.
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`In stark contrast to Petitioner, Patent Owner’s experts and witnesses each
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`attached all supporting documentation to their declarations under FED. R. EVID.
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`901(b)(1) (witness with knowledge), which Petitioner, ironically, moves to exclude.
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`Here, Petitioner’s only witness with knowledge of the Exhibits are its counsel, who
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`are not admissible witnesses in this matter, and the other Rule 901 exceptions cited
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`are likewise inapplicable characterizations without any corroborating evidence (e.g.,
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`ancient documents).
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`Petitioner failed to cure Patent Owner’s authenticity objections in a timely
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`manner; thus, the Exhibits were not properly authenticated and should be excluded,
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`along with any reliance in Petitioner’s Reply. See Paper 61, 6-8.
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`4
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`Dated: January 29, 2020
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`Respectfully submitted,
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`
`/Alfonso Chan/
`
`Alfonso Chan, Reg. No. 45,964
`achan@shorechan.com
`Joseph F. DePumpo, Reg. No. 38,124
`jdepumpo@shorechan.com
`SHORE CHAN DEPUMPO LLP
`901 Main Street, Suite 330
`Dallas, Texas 75202
`Tel: (214) 593-9110
`Fax: (214) 593-9111
`
`Sean Hsu, Reg. No. 69,477
`shsu@jvllp.com
`Rajkumar Vinnakota*
`kvinnakota@jvllp.com
`G. Donald Puckett*
`dpuckett@jvllp.com
`JANIK VINNAKOTA LLP
`8111 Lyndon B. Johnson Fwy. #790
`Dallas, Texas 75251
`Tel: (214) 390-9999
`Fax: (214) 888-0219
`* Admitted Pro Hac Vice
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`Attorneys for Patent Owner
`DirectStream, LLC
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`5
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`Pursuant to 37.C.F.R. §§42.6(e)(4) and 42.25(b), the undersigned certifies that
`on January 29, 2020, a complete copy of the foregoing document was filed
`electronically through the Patent Trial and Appeal Board’s PTABE2E System and
`provided, via electronic service, to the Petitioner by serving the correspondence
`address of record as follows:
`Joseph A. Micallef
`jmicallef@sidley.com
`Scott M. Border
`sborder@sidley.com
`SIDLEY AUSTIN LLP
`1501 K. Street N.W.
`Washington, DC 20005
`
`Jason P. Greenhut
`jgreenhut@sidley.com
`SIDLEY AUSTIN LLP
`1 South Dearborn
`Chicago, IL 60603
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`/Alfonso Chan/
`Alfonso Chan
`Reg. No. 45,964
`Tel: (214) 593-9118
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`CERTIFICATE OF SERVICE
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`6
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`CERTIFICATE OF WORD COUNT
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`Pursuant to 37 C.F.R. §42.24, the undersigned certifies that the foregoing
`Patent Owner DirectStream, LLC’s Reply in Support of its Motion to Exclude Under
`37 C.F.R. §42.64 contains not more than 5 pages, excluding the Certificate of
`Service and Certificate of Page Count.
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`Dated: January 29, 2020
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`/Alfonso Chan/
`Alfonso Chan
`Reg. No. 45,964
`Tel: (214) 593-9110
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`7
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