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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_____________________
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`YITA LLC,
`Petitioner
`
`v.
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`MACNEIL IP LLC,
`Patent Owner
`
`_____________________
`
`Case No. IPR2020-01139
`U.S. Patent No. 8,382,186
`_____________________
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`PETITIONER’S OBJECTIONS TO PATENT OWNER’S EVIDENCE
`PURSUANT TO 37 C.F.R. § 42.64(b)(1)
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`
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
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`
`
`Petitioner Yita LLC objects under the Federal Rules of Evidence to the
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`Case IPR2020-01139
`U.S. Patent No. 8,382,186
`
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`admissibility of Exhibit 2137, which Patent Owner MacNeil IP LLC served on
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`June 2, 2021. 37 C.F.R. § 42.64(b)(1). Exhibit 2137 has not been filed as evidence1
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`and was not served as supplemental evidence, which was required to be served by
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`May 26, 2021. Out of an abundance of caution and to preserve its right to move to
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`exclude this exhibit, Yita timely objects within the allowed five business days of
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`service of Exhibit 2137. Yita did not object to MacNeil’s supplemental evidence
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`served May 26, 2021 because the Board has previously indicated that the rules do
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`not provide for objections to supplemental evidence, even if the supplemental
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`evidence is subsequently sought to be submitted as supplemental information. See
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`Valeo North America, Inc. v. Magna Electronics, Inc., IPR2014-01204, FWD, 11-
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`12 (P.T.A.B. Jan. 25, 2016).
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`Because Exhibit 2137 does not squarely match the facts of Valeo (e.g., it
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`was not served as supplemental evidence), Yita objects to Exhibit 2137 now as a
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`precaution. To the extent MacNeil’s motion to submit supplemental information is
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`granted, Yita will object within five business days to any exhibit admitted as
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`1 MacNeil is preparing a motion requesting to submit Exhibit 2137, among
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`other exhibits, as supplemental information. See Paper 33, Board Order
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`Authorizing Motion to Submit Supplemental Information.
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`- 1 -
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`Case IPR2020-01139
`U.S. Patent No. 8,382,186
`supplemental information (including Exhibit 2137 and any exhibit served as
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`supplemental evidence) for which Yita wishes to preserve its right to move to
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`exclude. See id.
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`Yita files and serves MacNeil with these objections to provide notice that
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`Yita may move to exclude Exhibit 2137 under 37 C.F.R. § 42.64(c).
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`I. Exhibit 2137: Translation of TW363545 by “Samuel” Shen Chong
`Yita objects to Exhibit 2137 as untimely. MacNeil did not serve Exhibit
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`2137 with its Patent Owner Response, which was due on May 5, 2021. See Paper
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`25 (jointly stipulating to move Due Date 1 to May 5). Nor did MacNeil timely
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`serve Exhibit 2137 in response to Yita’s objections to evidence within the
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`supplemental evidence window that expired on May 26, 2021. 37 C.F.R. §
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`42.64(b)(2). Instead, MacNeil served Exhibit 2137 on June 2, 2021, after both
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`dates had passed. Thus, Exhibit 2137 is not proper evidence under 37 C.F.R. §
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`42.63(a). As such, this document is also irrelevant under FRE 401, 402, and 403.
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`Yita further objects to Exhibit 2137 under FRE 401, 402, and 403 for
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`including information that is irrelevant. This document lacks any tendency to make
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`a fact that is of consequence in determining the action more or less probable than it
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`would be without this document. In addition, to the extent this document has any
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`probative value to any ground upon which trial was instituted, it is substantially
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`- 2 -
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`Case IPR2020-01139
`U.S. Patent No. 8,382,186
`outweighed by the danger of unfair prejudice, confusing the issues, undue delay,
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`wasting time, or needlessly presenting cumulative evidence.
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`To the extent MacNeil relies on the contents of Exhibit 2137 for the truth of
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`the matter asserted, Yita objects to Exhibit 2137 as inadmissible hearsay under
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`FRE 801 and 802 that does not fall under any exception.
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`Yita objects to Exhibit 2137 as not properly authenticated under FRE 901
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`because MacNeil has not presented evidence sufficient to support a finding that the
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`document in question is what MacNeil claims. There is no evidence that the
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`document is self-authenticating under FRE 902.
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`
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`Respectfully submitted,
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
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`/ R. Wilson Powers III /
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`R. Wilson Powers III (Reg. No. 63,504)
`Counsel for Petitioner
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`Date: June 9, 2021
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`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
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`- 3 -
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`
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`Case IPR2020-01139
`U.S. Patent No. 8,382,186
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a true and correct copy of the
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`foregoing PETITIONER’S OBJECTIONS TO PATENT OWNER’S
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`EVIDENCE PURSUANT TO 37 C.F.R. § 42.64(b)(1) was electronically served
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`via e-mail in its entirety on June 9, 2021, upon the following counsel of record for
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`Patent Owner:
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`David G. Wille (Lead Counsel)
`Chad C. Walters (Back-up Counsel)
`Clarke W. Stavinoha (Back-up Counsel)
`BAKER BOTTS L.L.P.
`david.wille@bakerbotts.com
`chad.walters@bakerbotts.com
`clarke.stavinoha@bakerbotts.com
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`Jefferson Perkins (Back-up Counsel)
`PERKINS IP LAW GROUP LLC
`jperkins@perkinsip.com
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`Respectfully submitted,
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
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` /
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` R. Wilson Powers III /
`
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`R. Wilson Powers III (Reg. No. 63,504)
`Counsel for Petitioner
`
`Date: June 9, 2021
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
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