`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`
`APPLE INC.,
`Petitioner
`v.
`COREPHOTONICS, LTD.,
`Patent Owner
`———————
`
`IPR2020-00861
`U.S. Patent 10,230,898
`_______________
`
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
`UNDER 37 C.F.R. § 42.64(c)
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`
`
`
`Petitioner’s Motion to Exclude Evidence
`
`IPR2020-00861
`U.S. Patent No. 10,230,898
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`I.
`
`Relief Requested
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`Pursuant to 37 C.F.R. §§ 42.62 and 42.64(c), Petitioner Apple Inc.
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`(“Petitioner”) moves to exclude sur-reply Exhibit 2018 submitted by Patent Owner
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`as improper sur-reply evidence under §42.23(b) and Federal Rules of Evidence
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`(FRE) 401-403. Petitioner further moves to exclude, strike, or otherwise disregard
`
`references to, or reliance upon, the improper Exhibit(s) in either another Exhibit or
`
`a Paper, including specifically the references thereto in Sur-Reply (Paper 26), at
`
`19.
`
`II.
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`Petitioner Timely Objected to Patent Owner’s Exhibits
`
`Petitioner timely objected to Patent Owner’s evidence. Paper 30. Patent
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`Owner fails to respond to Petitioner’s objections.
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`III. Argument
`The rules of Trial Practice Before the Patent Trial and Appeal Board clearly
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`instruct that “[a] sur-reply may only respond to arguments raised in the
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`corresponding reply and may not be accompanied by new evidence other than
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`deposition transcripts of the cross-examination of any reply witness.” 37 C.F.R.
`
`§42.23(b). Patent Owner did not seek or obtain a waiver of §42.23(b) or Board
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`authorization to file the new sur-reply evidence. Furthermore, the FRE apply to
`
`this proceeding. 37 C.F.R. §42.62(a). Only relevant evidence is admissible, unless
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`its “probative value is substantially outweighed by the danger of unfair prejudice,
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`1
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`
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`Petitioner’s Motion to Exclude Evidence
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`IPR2020-00861
`U.S. Patent No. 10,230,898
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`confusing the issues, … wasting time …,” in which case it may be excluded. FRE
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`403.
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`As discussed in detail below, the Board should exclude Patent Owner’s sur-
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`reply Exhibit 2018 as improper sur-reply evidence under §42.23(b) and FRE 401-
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`403, and further exclude references to, or reliance upon, Exhibit 2018 in Sur-Reply
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`(Paper 26) at 19.
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`A. Exhibit 2018 is improper sur-reply evidence.
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`With its Sur-Reply, Patent Owner submits new Exhibit 2018, despite the
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`prohibition on submitting new evidence with a sur-reply. §42.23(b). Exhibit 2018
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`should be excluded based at least on this clear prohibition.
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`Exhibit 2018 is also irrelevant under FRE 401-403 because it does not make
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`any fact more, or less, probable than it would be without the evidence.
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`Specifically, Exhibit 2018 is a transcript of a deposition1 of Petitioner’s expert Dr.
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`Durand taken in different IPR proceedings. Patent Owner cites generally to
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`
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`1 Although Dr. Durand appears as a technical expert in both this proceeding and
`the other proceeding(s) from which Exhibit 2018 is drawn, Petitioner notes that
`insofar as the prohibition on new evidence is concerned (see §42.23(b)), the
`Board has indicated that sur-reply practice essentially replaces the previous
`practice of filing observations on cross-examination testimony. See
`Consolidated Trial Practice Guide, at 74 (2019). Evidence from an entirely
`different proceeding is not akin to observations on cross.
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`2
`
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`
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`Petitioner’s Motion to Exclude Evidence
`
`IPR2020-00861
`U.S. Patent No. 10,230,898
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`Exhibit 2018 for its assertion that “Apple ignores that it specifically asked Patent
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`Owner for the ability to license all of Corephotonics IP, and asked for and received
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`samples of Corephotonics’ image fusion algorithm.” Sur-Reply, 19. However,
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`Patent Owner fails to explain why such assertion is in any way relevant to the
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`weight to be accorded Dr. Durand’s testimony on factual issues that underlie
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`secondary considerations, and fails to even provide a page citation to the 332-page
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`Exhibit 2018. See Id. Moreover, the probative value of Exhibit 2018, which is a
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`332-page deposition transcript from entirely different proceedings involving
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`different patents, is substantially outweighed by a danger of confusing the issues.
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`Patent Owner does not identify or allege in its Sur-Reply (or any paper) any
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`inconsistency or impeachment value of the new, improper and unauthorized sur-
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`reply evidence. Exhibit 2018 and references thereto in Sur-Reply should be
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`excluded for each of these reasons.
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`VI. Conclusion
`
`For the foregoing reasons, Petitioner requests that the evidence discussed
`
`above be excluded and that references thereto be disregarded or (as appropriate)
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`stricken from the record.
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`3
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`Petitioner’s Motion to Exclude Evidence
`
`IPR2020-00861
`U.S. Patent No. 10,230,898
`
`
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`
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`Dated: August 17, 2021
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`
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`
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`Respectfully submitted,
`
`/David W. OBrien/
`David W. OBrien
`Reg. No. 40,107
`Counsel for Petitioner, Apple Inc.
`
`
`
`4
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`Petitioner’s Motion to Exclude Evidence
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`IPR2020-00861
`U.S. Patent No. 10,230,898
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`CERTIFICATE OF SERVICE
`The undersigned certifies, in accordance with 37 C.F.R. § 42.6(e), that
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`service was made on the Patent Owner as detailed below.
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`Date of service August 17, 2021
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`Manner of service Electronic Service by E-Mail
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`Persons served
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`Documents served Petitioner’s Motion To Exclude Evidence
`
`Neil A. Rubin (nrubin@raklaw.com)
`C. Jay Chung (jchung@raklaw.com)
`Marc A. Fenster (mfenster@raklaw.com)
`James S. Tsuei (jtsuei@raklaw.com)
`RUSS AUGUST & KABAT
`12424 Wilshire Boulevard, 12th Floor
`Los Angeles, CA 90025
`Phone: (310) 826-7474
`Fax: (310) 826-6991
`
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`
`
`/David W. OBrien/
`David W. O’Brien
`Lead Counsel for Petitioner
`Registration No. 40,107
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`5
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