`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`ADVANCED MICRO DEVICES, INC.,
`Petitioner
`
`v.
`
`AQUILA INNOVATIONS INC.,
`Patent Owner
`
`
`
`Case IPR2019-01526
`Patent 6,895,519
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`PETITIONER ADVANCED MICRO DEVICES, INC.’S OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE
`
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`IPR2019-01526
`U.S. Patent No. 6,895,519
`The evidence of record establishes that each of the challenged Exhibits and
`
`
`
`testimony are admissible. Patent Owner (“PO”) fails to make even the most basic
`
`showing that any of AMD’s evidence in this case should be excluded, relying only
`
`on broad, vague, and conclusory statements that contradict the record evidence.
`
`Accordingly, PO has failed to meet its burden of establishing Exhibit 1005 and
`
`paragraphs 56-62 of Exhibit 1028 as not admissible. See 37 C.F.R. § 42.20(c).
`
`PO’s motion should be denied in its entirety.
`
`I.
`
`PATENT OWNER HAS NOT PROVEN EXHIBIT 1005 IS
`INADMISSIBLE.
`PO seeks to exclude Exhibit 1005 arguing that it is “inadmissible under FRE
`
`901 because Petitioner has not presented evidence showing that the document is
`
`what Petitioner claims it to be.” Mot., Paper 31, 2-3. But in doing so, PO fails to
`
`acknowledge that “the authentication requirement under Federal Rule of Evidence
`
`901 [is] a ‘low bar.’” Caterpillar Inc. v. Wirtgen Am., Inc., IPR2018-01091, Paper
`
`49 at 72 (P.T.A.B. Nov. 27, 2019) (quoting United States v. Turner, 934 F.3d 794,
`
`798 (8th Cir. 2019)). “‘The party authenticating the exhibit need only prove a
`
`rational basis for that party’s claim that the document is what it is asserted to be.’”
`
`Id. (quoting United States v. Needham, 852 F.3d 830, 836 (8th Cir. 2017)).
`
`AMD overwhelmingly demonstrates that Exhibit 1005 is authentic.
`
`Specifically, Dr. Albonesi explicitly confirmed that Exhibit 1005 is authentic in
`
`both of his declarations. See e.g., EX1003, ¶43 (“Windows ACPI … is a white
`
`
`
`- 1 -
`
`
`
`IPR2019-01526
`U.S. Patent No. 6,895,519
`paper published by Microsoft”); EX1028, ¶61 (“This caused my computer to
`
`download a .zip file that included EX1005”). Yet despite having deposed Dr.
`
`Albonesi twice, PO never asked him about his opinions on the authenticity of
`
`Exhibit 1005, nor does PO even now suggest that his opinions are incorrect.
`
`Moreover, AMD also submitted the Affidavit of Mr. Christopher Butler of the
`
`Internet Archive’s Wayback Machine (Exhibit 1021) with its Petition, and Mr.
`
`Butler declared that Exhibit 1005 is a “true and accurate” copy of Windows ACPI,
`
`as it appeared on Microsoft’s website on May 4, 1999. See POPR Reply, Paper 11,
`
`3-4; Pet. Reply, Paper 24, 23-25.1 In fact, simply clicking on the URL referenced
`
`in Mr. Butler’s affidavit plainly demonstrates that the Wayback Machine did in
`
`fact archive Exhibit 1005 as of May 4, 1999:
`
`
`1 The Butler Declaration refers to an attached “Exhibit A” as copies of
`
`printouts of the Internet Archives records of the zip files for the listed URLs.
`
`EX1021, 1. This is a typographical error that is a vestige of the Internet Archive’s
`
`Wayback Machine’s boilerplate affidavit language, as it would be impractical to
`
`attach the linked zip files (which are binary files) as a “printout.”
`
`
`
`- 2 -
`
`
`
`IPR2019-01526
`U.S. Patent No. 6,895,519
`
`
`
`AMD has also satisfied the requirement of demonstrating that Exhibit 1005
`
`is authentic under Fed. R. Evid. 901(b)(4) based on the totality of the
`
`circumstances. Fed. R. Evid. 901(b)(4). Indeed, “[t]he appearance, contents,
`
`substance, internal patterns, or other distinctive characteristics of [Exhibit 1005],
`
`taken together with all the circumstances,” demonstrate that Exhibit 1005 is what
`
`AMD states it is. Nothing about Exhibit 1005 suggests that it is not what it
`
`purports to be, and PO never identifies anything to suggest otherwise. Accordingly,
`
`the evidence demonstrates that Exhibit 1005 is authentic under Fed. R. Evid.
`
`901(b)(4). See Actifio, Inc. v. Delphix Corp., IPR2015-00108, Paper 56 at 59
`
`(P.T.A.B. Apr. 29, 2016).
`
`Further, certain evidence is “self-authenticating” and “require[s] no extrinsic
`
`evidence of authenticity in order to be admitted.” Fed. R. Evid. 902. Here, Exhibit
`
`1005 is self-authenticating under Fed. R. Evid. 902(7) because it contains a
`
`Microsoft trade inscription, copyright symbol, and repeated references to Microsoft
`
`
`
`- 3 -
`
`
`
`IPR2019-01526
`U.S. Patent No. 6,895,519
`and Microsoft’s products. See Microsoft Corp. v. FG SRC LLC, IPR2018-01604,
`
`Paper 76 at 12-13 (P.T.A.B. Apr. 30, 2020).
`
`Finally, the motion to exclude Exhibit 1005 is notable for what PO fails to
`
`argue. Importantly, PO does not claim that Exhibit 1005 is not a true and correct
`
`copy of Windows ACPI. Nor does PO present any facts that any of the content of
`
`Exhibit 1005 suggests that the document is not what AMD purports it to be, or that
`
`it was altered in some way. PO bears the burden as movant to demonstrate the
`
`challenged document is not authentic, and summarily saying it is not authentic
`
`without more is insufficient to challenge its authenticity. See 37 CFR § 42.20(c);
`
`Samsung Elecs. Am., Inc. v. Uniloc 2017 LLC, IPR2017-01798, Paper 32 at 103
`
`(P.T.A.B. Jan. 31, 2019). Accordingly, PO’s motion to exclude should also be
`
`denied because PO does not present any evidence, let alone meet its burden of
`
`showing “that any of the content of the exhibits suggest that the documents are not
`
`what they purport to be, or that they were altered in some way.” Caterpillar Inc.,
`
`IPR2018-01091, Paper 49 at 71 (denying motion to exclude under Fed. R. Evid.
`
`901).
`
`In sum, AMD has conclusively established that Exhibit 1005 is authentic
`
`evidence under Fed. R. Evid. 901(a) because the record unambiguously shows that
`
`the exhibit is what AMD asserts it to be—a true and correct copy of Windows
`
`
`
`- 4 -
`
`
`
`IPR2019-01526
`U.S. Patent No. 6,895,519
`ACPI as it appeared on Microsoft’s website on May 4, 1999. Exhibit 1005 is also
`
`authentic evidence under Fed. R. Evid. 901(b)(4) and Fed. R. Evid. 902(7).
`
`As such, PO’s motion to exclude Exhibit 1005 should be denied.
`
`II.
`
`PATENT OWNER HAS NOT PROVEN PORTIONS OF EXHIBIT
`1028 ARE INADMISSIBLE
`Recognizing that Dr. Albonesi has indeed authenticated Exhibit 1005, PO
`
`moves to exclude certain portions of Dr. Albonesi’s reply declaration (Exhibit
`
`1028) as “untimely supplemental evidence.” Mot., 3-4. “As the movant, Patent
`
`Owner has the burden of proof to establish that it is entitled to the requested
`
`relief.” Cellco P’ship d/b/a Verizon Wireless v. Bridge and Post, Inc., IPR2018-
`
`00054, Paper 40 at 74 (P.T.A.B. Apr. 15, 2019). As such, the Board should deny
`
`PO’s requested relief because it is an improper basis for a motion to exclude, and
`
`in any event, Dr. Albonesi’s testimony was proper rebuttal evidence.
`
`AMD properly submitted Dr. Albonesi’s reply declaration to respond to
`
`arguments raised by PO in its response brief—e.g., arguing that AMD has failed to
`
`demonstrate that Exhibit 1005 is a prior-art publication under 35 U.S.C. § 102(b).
`
`POR, Paper 19, 64-67; see also Kaz USA, Inc. v. Exergen Corp., IPR2016-01437,
`
`Paper 43 at 11 (P.T.A.B. Dec. 22, 2017) (finding that reply declarations were
`
`proper when responding to Patent Owner’s argument that a reference was not a
`
`“printed publication”); see also VidStream LLC v. Twitter, Inc., No. 2019-1734,
`
`
`
`- 5 -
`
`
`
`IPR2019-01526
`U.S. Patent No. 6,895,519
`2020 WL 6937853, at *3 (Fed. Cir. Nov. 25, 2020); Anacor Pharm., Inc. v. Iancu,
`
`889 F.3d 1372, 1380-81 (Fed. Cir. 2018).
`
`PO now moves to exclude paragraphs 56-62 of Dr. Albonesi’s reply
`
`declaration as “untimely,” but fails to cite to any rule of evidence or articulate any
`
`explanation with specificity demonstrating why these particular paragraphs should
`
`be excluded. Indeed, it is well-settled that a “motion to exclude evidence filed for
`
`the purpose of striking or excluding an opponent’s brief and/or evidence that a
`
`party believes goes beyond what is permitted under 37 CFR § 42.23 is improper.”
`
`Palo Alto Networks, Inc. v. Finjan Inc., IPR2015-01979, Paper 62 at 66 (P.T.A.B.
`
`Mar. 15, 2017) (stating that an “allegation that evidence does not comply with 37
`
`CFR § 42.23 is not a sufficient reason under the Federal Rules of Evidence for
`
`making an objection and requesting exclusion of such evidence”). And “the Board
`
`has repeatedly stated that a motion to exclude is not the proper vehicle to challenge
`
`the scope of a reply.” F5 Networks, Inc. v. Radware, Ltd., IPR2017-00124, Paper
`
`48 at 68 (P.T.A.B. Apr. 23, 2018).
`
`Finally, PO, with its sur-reply, had the opportunity to address any purported
`
`new evidence and new arguments allegedly first raised in AMD’s Reply. The
`
`Federal Circuit recently affirmed a Board decision finding that motions to exclude
`
`are unwarranted, where, as here, PO had notice of and an opportunity to respond to
`
`
`
`- 6 -
`
`
`
`IPR2019-01526
`U.S. Patent No. 6,895,519
`Exhibit 1028 in its sur-reply, but opted not to. See VidStream LLC, No. 2019-1734,
`
`2020 WL 6937853, at *3.
`
`III. CONCLUSION
`The Board should deny PO’s Motion to Exclude in its entirety.
`
`Respectfully submitted,
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Daniel S. Block/
`
`Daniel S. Block (Reg. No. 68,395)
`Michael B. Ray (Reg. No. 33,997)
`Jonathan Tuminaro (Reg. No. 61,327)
`Michael D. Specht (Reg. No. 54,463)
`Lauren C. Schleh (Reg. No. 65,457)
`Attorneys for Petitioner
`
`
`
`
`
`
`
`
`
`
`
`
`Date: November 27, 2020
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`
`
`- 7 -
`
`
`
`IPR2019-01526
`U.S. Patent No. 6,895,519
`CERTIFICATION OF SERVICE (37 C.F.R. § 42.6(e))
`
`The undersigned hereby certifies that on November 27, 2020, a true and
`
`
`
`
`correct copy of the foregoing PETITIONER ADVANCED MICRO DEVICES,
`
`INC.’S OPPOSITION TO PATENT OWNER’S MOTION TO EXCLUDE
`
`was served electronically via e-mail in its entirety on the following counsel for
`
`Patent Owner:
`
`Jing H. Cherng (Lead Counsel)
`Robert E. Freitas (Back-up Counsel)
`FREITAS & WEINBERG LLP
`gcherng@fawlaw.com
`rfreitas@fawlaw.com
`marlantico@fawlaw.com
`
`
`Respectfully submitted,
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Daniel S. Block/
`
`Daniel S. Block (Reg. No. 68,395)
`Michael B. Ray (Reg. No. 33,997)
`Jonathan Tuminaro (Reg. No. 61,327)
`Michael D. Specht (Reg. No. 54,463)
`Lauren C. Schleh (Reg. No. 65,457)
`Attorneys for Petitioner
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Date: November 27, 2020
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`
`
`
`
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
