throbber
Case IPR2019-00821
` 8,037,302 Patent
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MPH TECHNOLOGIES OY,
`Patent Owner,
`____________
`
`Case IPR2019-00821
`Patent 8,037,302
`____________
`
`
`PATENT OWNER’S OBJECTIONS PURSUANT TO 37 C.F.R. § 42.64(b)(1)
`
`
`
`
`
`
`
`

`

`Pursuant to 37 C.F.R. § 42.64(b)(1) and the Federal Rules of Evidence
`
`(“FRE”), Patent Owner MPH Technologies Oy (“Patent Owner”) hereby objects to
`
`the evidence presented in the following document submitted by Petitioner Apple
`
`Inc. (“Petitioner”).
`
`Nothing in this paper should be construed as an admission that any rights of
`
`Patent Owner would have been waived or forfeited had the paper or any objection
`
`herein not been filed, or that 37 C.F.R. § 42.64(b) applies to any of the objections
`
`herein if § 42.64(b) would not otherwise apply. The objections herein are
`
`premised upon § 42.64 potentially being determined to apply to the document in
`
`question and are submitted solely to preserve the rights of Patent Owner should
`
`§ 42.64(b) be determined to apply.
`
`Under 37 C.F.R. § 42.23(b), a reply cannot be used to belatedly submit new
`
`contentions, grounds or evidence to make out a prima facie case of unpatentability.
`
`A reply may only respond to arguments raised in the corresponding patent owner
`
`response. Id. The November 2019 Consolidated Trial Practice Guide (“Trial
`
`Guide”) states that “Petitioner may not submit new evidence or argument in reply
`
`that it could have presented earlier, e.g. to make out a prima facie case of
`
`unpatentability.” Trial Guide, 73.
`
`In accordance with 37 C.F.R. § 42.64, Patent Owner hereby objects to the
`
`following evidence referenced in Petitioner’s Reply, Paper 18, filed on April 1,
`
`- 1 -
`
`

`

`2020: Exhibit 1020, Declaration of David Goldschlag, Ph.D in Support of
`
`Petitioner’s Reply to the Patent Owner Response, including the subject matter
`
`addressed in pars. 14-15, 31-34 and 36-38.
`
`Specifically, Patent Owner objects to the evidence as submitted in pars. 14-
`
`15 and elsewhere to the effect that supposedly the physical set-up and usage of the
`
`SA for communication would form another connection—an actual physical
`
`connection between the mobile host and the correspondent host. This testimony
`
`violates § 42.23(b) and the Trial Guide because it is new evidence that could have
`
`been presented earlier in the original petition for IPR. This testimony is also
`
`inadmissible under FRE 403 because its probative value is outweighed by the
`
`danger of unfair prejudice and confusion of the issues because, among other things,
`
`Patent Owner is not permitted to present expert rebuttal evidence in its sur-reply.
`
`See Trial Guide, 73 (“The sur-reply may not be accompanied by new evidence
`
`other than deposition transcripts of . . . any reply witness.”).
`
`Patent Owner objects to the evidence as submitted in par. 31-34 and
`
`elsewhere to the effect that modifying an SA supposedly creates a new “secure
`
`connection” or “reestablishes it” because the SA is supposedly a simple data
`
`structure, and that a POSITA would allegedly have known that modifying an SA to
`
`have a new address definition would supposedly have been interchangeable to
`
`deleting an old SA and creating a new SA. This testimony violates § 42.23(b) and
`
`- 2 -
`
`

`

`the Trial Guide because it is new evidence that could have been presented earlier in
`
`the original petition for IPR. This testimony is also inadmissible under FRE 403
`
`because its probative value is outweighed by the danger of unfair prejudice and
`
`confusion of the issues because, among other things, Patent Owner is not permitted
`
`to present expert rebuttal evidence in its sur-reply. See Trial Guide, 73.
`
`Patent Owner objects to the evidence as submitted in pars. 36-38 and
`
`elsewhere to the effect that Ahonen supposedly describes establishing a new
`
`connection between the mobile host and the correspondent host when the mobile
`
`host configures and uses a physical connection from the second address, and that
`
`supposedly by using the remote control function and establishing communications
`
`using this SA, the mobile host has supposedly established a “second secure
`
`connection” by configuring an actual physical connection that transmits IPSec
`
`packets. This testimony violates § 42.23(b) and the Trial Guide because it is new
`
`evidence that could have been presented earlier in the original petition for IPR.
`
`This testimony is also inadmissible under FRE 403 because its probative value is
`
`
`
`
`
`- 3 -
`
`

`

`outweighed by the danger of unfair prejudice and confusion of the issues because,
`
`among other things, Patent Owner is not permitted to present expert rebuttal
`
`evidence in its sur-reply. See Trial Guide, 73.
`
`
`
`Respectfully submitted,
`
`
`____/ James T. Carmichael /_________
`James T. Carmichael, Reg. No. 45,306
`CARMICHAEL IP, PLLC
`
`Date: April 8, 2020
`
`- 4 -
`
`

`

`Case IPR2019-00821
` 8,037,302 Patent
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the following documents were served
`
`by electronic service, by agreement between the parties, on the date signed below:
`
`
`
`PATENT OWNER’S OBJECTIONS PURSUANT TO 37 C.F.R. § 42.64(b)(1)
`
`
`The names and address of the parties being served are as follows:
`
`Michael D. Specht
`Daniel S. Block
`Steven M. Pappas
`
`
`
`
`
`
`mspecht-PTAB@sternekessler.com
`dblock-PTAB@sternekessler.com
`spappas-PTAB@sternekessler.com
`PTAB@sternekessler.com
`
`
`Respectfully submitted,
`
` / James Carmichael /
`
`Date: April 8, 2020
`
`
`
`

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

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.

throbber

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.

Become a Member

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

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket