` 8,037,302 Patent
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner,
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`v.
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`MPH TECHNOLOGIES OY,
`Patent Owner,
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`Case IPR2019-00821
`Patent 8,037,302
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`PATENT OWNER’S OBJECTIONS PURSUANT TO 37 C.F.R. § 42.64(b)(1)
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`Pursuant to 37 C.F.R. § 42.64(b)(1) and the Federal Rules of Evidence
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`(“FRE”), Patent Owner MPH Technologies Oy (“Patent Owner”) hereby objects to
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`the evidence presented in the following document submitted by Petitioner Apple
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`Inc. (“Petitioner”).
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`Nothing in this paper should be construed as an admission that any rights of
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`Patent Owner would have been waived or forfeited had the paper or any objection
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`herein not been filed, or that 37 C.F.R. § 42.64(b) applies to any of the objections
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`herein if § 42.64(b) would not otherwise apply. The objections herein are
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`premised upon § 42.64 potentially being determined to apply to the document in
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`question and are submitted solely to preserve the rights of Patent Owner should
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`§ 42.64(b) be determined to apply.
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`Under 37 C.F.R. § 42.23(b), a reply cannot be used to belatedly submit new
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`contentions, grounds or evidence to make out a prima facie case of unpatentability.
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`A reply may only respond to arguments raised in the corresponding patent owner
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`response. Id. The November 2019 Consolidated Trial Practice Guide (“Trial
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`Guide”) states that “Petitioner may not submit new evidence or argument in reply
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`that it could have presented earlier, e.g. to make out a prima facie case of
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`unpatentability.” Trial Guide, 73.
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`In accordance with 37 C.F.R. § 42.64, Patent Owner hereby objects to the
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`following evidence referenced in Petitioner’s Reply, Paper 18, filed on April 1,
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`2020: Exhibit 1020, Declaration of David Goldschlag, Ph.D in Support of
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`Petitioner’s Reply to the Patent Owner Response, including the subject matter
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`addressed in pars. 14-15, 31-34 and 36-38.
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`Specifically, Patent Owner objects to the evidence as submitted in pars. 14-
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`15 and elsewhere to the effect that supposedly the physical set-up and usage of the
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`SA for communication would form another connection—an actual physical
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`connection between the mobile host and the correspondent host. This testimony
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`violates § 42.23(b) and the Trial Guide because it is new evidence that could have
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`been presented earlier in the original petition for IPR. This testimony is also
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`inadmissible under FRE 403 because its probative value is outweighed by the
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`danger of unfair prejudice and confusion of the issues because, among other things,
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`Patent Owner is not permitted to present expert rebuttal evidence in its sur-reply.
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`See Trial Guide, 73 (“The sur-reply may not be accompanied by new evidence
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`other than deposition transcripts of . . . any reply witness.”).
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`Patent Owner objects to the evidence as submitted in par. 31-34 and
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`elsewhere to the effect that modifying an SA supposedly creates a new “secure
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`connection” or “reestablishes it” because the SA is supposedly a simple data
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`structure, and that a POSITA would allegedly have known that modifying an SA to
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`have a new address definition would supposedly have been interchangeable to
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`deleting an old SA and creating a new SA. This testimony violates § 42.23(b) and
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`the Trial Guide because it is new evidence that could have been presented earlier in
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`the original petition for IPR. This testimony is also inadmissible under FRE 403
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`because its probative value is outweighed by the danger of unfair prejudice and
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`confusion of the issues because, among other things, Patent Owner is not permitted
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`to present expert rebuttal evidence in its sur-reply. See Trial Guide, 73.
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`Patent Owner objects to the evidence as submitted in pars. 36-38 and
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`elsewhere to the effect that Ahonen supposedly describes establishing a new
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`connection between the mobile host and the correspondent host when the mobile
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`host configures and uses a physical connection from the second address, and that
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`supposedly by using the remote control function and establishing communications
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`using this SA, the mobile host has supposedly established a “second secure
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`connection” by configuring an actual physical connection that transmits IPSec
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`packets. This testimony violates § 42.23(b) and the Trial Guide because it is new
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`evidence that could have been presented earlier in the original petition for IPR.
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`This testimony is also inadmissible under FRE 403 because its probative value is
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`outweighed by the danger of unfair prejudice and confusion of the issues because,
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`among other things, Patent Owner is not permitted to present expert rebuttal
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`evidence in its sur-reply. See Trial Guide, 73.
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`Respectfully submitted,
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`____/ James T. Carmichael /_________
`James T. Carmichael, Reg. No. 45,306
`CARMICHAEL IP, PLLC
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`Date: April 8, 2020
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`Case IPR2019-00821
` 8,037,302 Patent
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that the following documents were served
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`by electronic service, by agreement between the parties, on the date signed below:
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`PATENT OWNER’S OBJECTIONS PURSUANT TO 37 C.F.R. § 42.64(b)(1)
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`The names and address of the parties being served are as follows:
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`Michael D. Specht
`Daniel S. Block
`Steven M. Pappas
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`mspecht-PTAB@sternekessler.com
`dblock-PTAB@sternekessler.com
`spappas-PTAB@sternekessler.com
`PTAB@sternekessler.com
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`Respectfully submitted,
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` / James Carmichael /
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`Date: April 8, 2020
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