UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ADVANCED MICRO DEVICES, INC.
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`Petitioner
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`v.
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`AQUILA INNOVATIONS INC.
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`Patent Owner
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`Case IPR2019-01526
`U.S. Patent No. 6,895,519
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`PATENT OWNER’S REPLY IN SUPPORT OF
`MOTION TO EXCLUDE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ADVANCED MICRO DEVICES, INC.
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`Petitioner
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`v.
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`AQUILA INNOVATIONS INC.
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`Patent Owner
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`Case IPR2019-01526
`U.S. Patent No. 6,895,519
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`PATENT OWNER’S REPLY IN SUPPORT OF
`MOTION TO EXCLUDE
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`Patent Owner Aquila Innovations Inc. (“Aquila”) submits this Reply in
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`support of its Motion to Exclude Petitioner Advanced Micro Devices, Inc.’s
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`(“Petitioner”) Exhibit 1005 and paragraphs 56-62 of Petitioner’s Exhibit 1028.
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`Petitioner bears the burden to authenticate the evidence it submits and relies
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`on in petitioning for inter partes review. See Fed. R. Evid. 901(a). Petitioner did
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`not submit evidence sufficient to support a finding that Exhibit 1005 is what
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`Petitioner claims it is – a document archived by the Wayback Machine “as of May
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`4, 1999.” See Petition at 12.
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`The only evidence submitted by Petitioner to purportedly authenticate
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`Exhibit 1005 was the Declaration of Christopher Butler (Ex. 1021).1 Mr. Butler’s
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`declaration was deficient and did not authenticate Exhibit 1005. Mr. Butler
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`1 Petitioner also now points to a statement in Dr. Albonesi’s declaration submitted
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`in conjunction with the Petition in an effort to argue that it authenticated Exhibit
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`1005. See Opposition at 1-2 (citing Ex. 1003, ¶ 43). But Dr. Albonesi’s statement
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`that “Windows ACPI … is a white paper published by Microsoft” is also not
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`sufficient to authenticate Exhibit 1005 as what Petitioner claims it to be – a
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`document archived by the Wayback Machine “as of May 4, 1999.” Furthermore,
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`Petitioner has not shown that Dr. Albonesi has personal knowledge of this
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`statement. Fed. R. Evid. 602.
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`-1-
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`testified as to the Internet Archive’s (Wayback Machine) generation of archive
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`URLs according to the date and time it archives the files located at the URL. Ex.
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`1021 ¶ 5. Mr. Butler stated that “[a]ttached hereto as Exhibit A are true and
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`accurate copies of printouts of the Internet Archive’s records of the .zip files” for
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`seven different URLs. Id. at ¶ 6. Yet, as Petitioner concedes, Mr. Butler did not
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`attach any “Exhibit A.” See Opposition (Paper 32) at 2 n.1. Petitioner now admits
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`that the boilerplate declaration it submitted from Mr. Butler was deficient. Id.
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`(“This is a typographical error that is a vestige of the Internet Archive’s Wayback
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`Machine’s boilerplate affidavit language”). See Sam’s Riverside, Inc. v. Intercon
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`Sols., Inc., 790 F. Supp. 2d 965, 981 (S.D. Iowa 2011) (“none of the Contested
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`Screen Shots are attached to the Butler Affidavit; therefore, the Butler Affidavit
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`does not authenticate any of the Contested Screen Shots.”).
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`Petitioner attempts to justify the missing “Exhibit A” by arguing it would be
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`“impractical” for such an exhibit to be included as a printout. Opposition at 2, n.1.
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`But Petitioner refutes its own “impracticality” argument by including “printouts”
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`of archived webpages in its untimely supplemental evidence, see Ex. 1028 at ¶¶
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`57-60, and in opposing this motion, see Opposition at 3.2 But Petitioner’s belated
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`2 Aquila objects to the screenshot printouts in the Opposition as untimely new
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`evidence that lack foundation, are unauthenticated, and are inadmissible hearsay.
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`-2-
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`attempts to supplement the record, while inadequate to authenticate Exhibit 1005,
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`are not permitted by the rules. Critical here, Petitioner did not serve supplemental
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`evidence within ten business days of service of Aquila’s objections. See 37 C.F.R.
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`§ 42.64(b)(2).
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`Conceding that Exhibit 1021 was inadequate to authenticate Exhibit 1005,
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`Petitioner relies on untimely evidence submitted for the first time in conjunction
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`with its Reply. See Opposition at 2. After failing to respond to Aquila’s objection
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`as authorized under the rules, and after realizing that the Butler (and Albonesi)
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`declarations were insufficient, Petitioner attempted to cure its evidentiary problem
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`by filing untimely evidence in paragraphs 56-62 of Dr. Albonesi’s reply
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`declaration. See Ex. 1028 at ¶¶ 56-62. But paragraphs 56-62 of Dr. Albonesi’s
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`reply declaration must be excluded as untimely.
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`In Toshiba Corp. v. Optical Devices, LLC, IPR2014-01446, Paper 31, 2016
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`Pat. App. LEXIS 1107, *42-48 (P.T.A.B. Mar. 9, 2016), aff’d, 689 F. App’x 976,
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`976 (Fed. Cir. 2017), the Board excluded untimely evidence submitted by the
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`petitioner in circumstances akin to those here. The petitioner submitted new
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`evidence including a webpage link to a downloadable data sheet and an Internet
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`Archive screenshot, not pursuant to 37 C.F.R. § 42.64(b) in response to the patent
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`owner’s evidentiary objections nor under 37 C.F.R. § 42.123(b) as supplemental
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`information, but with its reply. Id. at *43-44. In opposing the patent owner’s
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`-3-
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`motion to exclude, the petitioner argued that the exhibits were submitted, under 37
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`C.F.R. § 42.23, in response to patent owner’s arguments in its response. Id. at *44
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`The Board held that the petitioner’s reliance on 37 C.F.R. § 42.23 was “misplaced”
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`because that section “does not authorize or otherwise provide a means for
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`supplementing the evidence of record[,]” id at *44-45, and underscored that there
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`are rules regarding the submission of supplemental evidence or supplemental
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`information, and the petitioner did not follow those rules. Id. at *45-47.
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`Here, as in Toshiba, Petitioner cannot save Exhibit 1005 by using the
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`untimely “evidence” of paragraphs 56-62 of Exhibit 1028. Petitioner argues
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`paragraphs 56-62 are merely “rebuttal evidence” “to respond to arguments raised
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`by PO in its response brief.” See Opposition at 5. Petitioner does not explain why it
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`did not submit that evidence as supplemental evidence in response to patent
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`owner’s evidentiary objections. Petitioner’s untimely supplemental evidence must
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`be excluded. See Toshiba, 2016 Pat. App. LEXIS 1107, *42-28; see also Dropbox,
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`Inc. v. Synchronoss Technologies, Inc., Case IPR2016-00850, Paper 41, 2016 Pat.
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`App. LEXIS 13489, *31-32 (P.T.A.B. October 5, 2016) (“Categorizing
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`supplemental evidence as a proper or timely reply to Patent Owner's arguments []
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`does not shield Petitioner's evidence from the requirements that it comply with the
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`rules regarding supplemental evidence.”).
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`-4-
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`As a last-ditch effort, Petitioner argues that Exhibit 1005 is “self-
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`authenticating” because it contains “a Microsoft trade inscription, copyright
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`symbol, and repeated references to Microsoft and Microsoft’s products.”
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`Opposition at 3-4. This argument does nothing “to support a finding that [Exhibit
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`1005] is what [Petitioner] claims it is”—a document archived by the Wayback
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`Machine “as of May 4, 1999.” See Fed. R. Evid. 901(a). The presence of a
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`Microsoft trade inscription, copyright symbol, or references to Microsoft on
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`Exhibit 1005 do not demonstrate that it was a document archived by the Wayback
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`Machine “as of May 4, 1999” let alone a publication available on Microsoft’s
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`website at any time. See TRW Automotive U.S. LLV v. Magna Electronics Inc.,
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`Case IPR2014-01347, Paper No. 25, 2016 Pat. App. LEXIS 814, *16 (P.T.A.B.
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`January 6, 2016) (holding no support in the case law for “the proposition that the
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`existence of a trade inscription on a document renders that document self-
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`authenticating as a publication of the owner of the trade inscription.”). Exhibit
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`1005 is not “self-authenticating,” and Petitioner’s failure to submit evidence
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`sufficient to authenticate Exhibit 1005 for what Petitioner claims it to be requires
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`exclusion of Exhibit 1005.
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`Date: December 4, 2020
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`/Jing H. Cherng/
`Jing H. Cherng
`Reg. No. 68,144
`Counsel for Patent Owner
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`-5-
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`CERTIFICATE OF SERVICE
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`It is certified that a copy of the foregoing has been served on Petitioner via
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`electronic mail transmission addressed to the person(s) at the address below:
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`Daniel S. Block
`dblock-PTAB@sternekessler.com
`Michael B. Ray
`mray-PTAB@sternekessler.com
`Jonathan Tuminaro
`jtuminar-PTAB@sternekessler.com
`Michael D. Specht
`mspecht-PTAB@sternekessler.com
`Lauren C. Schleh
`lschleh-PTAB@sternekessler.com
`PTAB@sternekessler.com
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`Date: December 4, 2020
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`/Jing H. Cherng/
`Jing H. Cherng
`Reg. No. 68,144
`Counsel for Patent Owner
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`-6-
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