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`Paper 25
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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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`RIMFROST AS
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`Petitioner
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`v.
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`AKER BIOMARINE ANTARCTIC AS
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`Patent Owner
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`Case No.: IPR2020-01532
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`U.S. Patent 9,644,169
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`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
`PURSUANT TO 37 C.F.R. § 42.64 (c)
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`Inter Partes Review Case No.: IPR2020-01532
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`U.S. Patent No. 9,644,169
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`TABLE OF CONTENTS
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`I.
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`II.
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`INTRODUCTION ........................................................................................... 1
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`RELEVANT LEGAL PRINCIPLES .............................................................. 1
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`A.
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`PATENT OWNER’S REDUCTION TO PRACTICE ARGUMENT IS
`III.
` PREDICATED UNCORROBORATED INVENTOR TESTIMONY ........... 2
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`Exhibits 2003, 2010 and 2013 Are Not Authenticated
`Under Fed. R. Evid. 901 And Should Be Excluded .............................. 3
`Exhibits 2003 and 2013 Are Inadmissible Hearsay .............................. 6
`B.
`IV. CONCLUSION ..............................................................................................13
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`TABLE OF AUTHORITIES
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`CASES
`Belber v. Lipson,
`905 F.2d 549 (1st Cir. 1990)...........................................................................11
`Bourjaily v. United States,
`483 U.S. 171 (1987)......................................................................................... 1
`Calhoun v. Walmart Stores, E., LP,
`818 Fed. Appx. 899 (11th Cir. 2020) .............................................................10
`Chen v. Bouchard,
`347 F.3d 1299 (Fed. Cir. 2003) .................................................................4, 12
`Conoco Inc. v. DOE,
`99 F.3d 387 (Fed. Cir. 1996) ........................................................................... 5
`Horton v. Stevens,
`7 USPQ2d 1245 (BPAI 1988) ......................................................................... 4
`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011) ....................................................................... 4
`JPMorgan Chase Bank, N.A. v. AME Fin. Corp.,
`No. 1:08-CV-2543-LTW, 2009 U.S. Dist. LEXIS 140441
`(N.D. Ga. Sept. 25 2009) .............................................................................5, 9
`Kolmes v. World Fibers Corp.,
`107 F.3d 1534 (Fed. Cir. 1997) .................................................................8, 10
`Lorraine v. Markel Am. Ins. Co.,
`241 F.R.D. 534 (D. Md. 2007) ....................................................................6, 9
`Miss Jones LLC v. Stiles,
`17 Civ. 1450 (NSR), 2019 U.S. Dist. LEXIS 43980
`(S.D.N.Y. Mar. 18, 2019) ................................................................................ 9
`Riverbed Tech. v. Realtime Data, LLC,
`IPR2016-00978 (Final Written Decision)
`(Oct. 30, 2017) ...............................................................................................13
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`Thanongsinh v. Bd. Of Educ.,
`462 F.3d 762 (7th Cir. 2006) ............................................................................ 9
`United States v. Garnett,
`122 F.3d 1016 (11th Cir. 1997) ........................................................................ 9
`United States v. Porter,
`821 F.2d 968 (4th Cir. 1987) ..........................................................................10
`Wi-Lan Inc. v. Sharp Elecs. Corp.,
`362 F. Supp. 3d 226 (D. Del. 2019),
`aff’d, 992 F.3d 1366 (Fed. Cir. 2021) .............................................................. 9
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`STATUTES
`37 C.F.R. § 42.62 ....................................................................................................... 1
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`RULES
`Fed. R. Evid. 801(c) ...............................................................................................1, 7
`Fed. R. Evid. 802 ...................................................................................................1, 7
`Fed. R. Evid. 803 ...................................................................................................1, 3
`Fed. R. Evid. 803(6) ......................................................................................... passim
`Fed. R. Evid. 803(6)(A-E) .......................................................................... 1, 8, 9, 10
`Fed. R. Evid. 901 .................................................................................... 1, 3, 5, 6, 13
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`Inter Partes Review Case No.: IPR2020-015332
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`I.
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`INTRODUCTION
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`U.S. Patent No. 9,644,169
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`Exhibits 2003 (Report K-300 dated December 23, 2005), 2010 (Meeting
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`Notes dated June 26, 2006) and 2013 (Report K-313 dated September 14, 2006),
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`cited in Patent Owner’s Response, are not only unauthenticated, each exhibit is
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`hearsay not subject to any exception. Thus, Petitioner moves to exclude Exhibits
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`2003, 2010 and 2013, as well as Paragraphs 7-8, 12-14 and 17 of the Declaration
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`of Dr. Tilseth (Exhibit 2001) and Paragraph 28 of the Declaration of Dr. Jaczynski
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`(Exhibit 2015) that rely on these exhibits. Petitioner’s objections were preserved
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`in Petitioner’s Objections Pursuant to 37 C.F.R. § 42.64 (b)(1). Paper 11.
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`II. RELEVANT LEGAL PRINCIPLES
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`The Federal Rules of Evidence apply to proceedings before the Board. 37
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`C.F.R. § 42.62. To authenticate an exhibit, Patent Owner “must produce evidence
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`sufficient to support a finding that the item is what the proponent claims it is.”
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`Fed. R. Evid. 901(a); see Bourjaily v. United States, 483 U.S. 171, 176 (1987).
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`Hearsay is an out of court statement offered as evidence to prove the truth
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`of the matter asserted. Fed. R. Evid. 801(c). Hearsay is inadmissible unless an
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`exception is applicable. See Fed. R. Evid. 802, 803. One such exception is the
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`“business record exception” which allows admission of records of a regularly
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`conducted activity provided certain requirements are established. See Fed. R.
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`Evid. 803(6)(A-E); infra, p. 7.
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`III. PATENT OWNER’S REDUCTION TO PRACTICE ARGUMENT IS
`PREDICATED UNCORROBORATED INVENTOR TESTIMONY
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`In an effort to demonstrate the process recited in the claims of the ‘169
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`patent was reduced to practice before the priority date of Breivik II (Exhibit
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`1038), Patent Owner relies on the testimony of Dr. Tilseth, one of the named
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`inventors of the challenged patent. Exhibit 2001. To support its antedatation
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`argument, Patent Owner attempts to corroborate Dr. Tilseth’s reduction to practice
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`story by relying on, inter alia, Exhibits 2003, 2010 and 2013, each prepared over
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`15 years ago. Dr. Tilseth drafted Exhibit 2010, while Eyolf Langmyhr, an
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`employee of third party Fiskeriforskning, authored Exhibits 2003 and 2013.
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`To support the admissibility of Exhibits 2003, 2010 and 2013, Patent
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`Owner initially relies on Dr. Tilseth’s testimony that each exhibit was “stored . . .
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`on the hard drive of my computer,” and is a “true and correct” copy. Exhibit
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`2001, ¶¶ 7, 11, 13.
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`Petitioner timely objected, asserting Exhibits 2003, 2010 and 2013 were
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`unauthenticated and inadmissible hearsay not subject to any exception. Paper 11.
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`In response to Petitioner’s evidentiary objections to Exhibits 2003 and
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`2013, Patent Owner served the Declaration of Åge Oterhals. Exhibit 2021. Mr.
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`Oterhals says he is an employee of third party Nofima AS, a successor to
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`Fiskeriforskning. Exhibit 2021, ¶ 2. Mr. Oterhals also avers he is the “custodian
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`of records,” and that Exhibits 2003 and 2013 “were made at or near the time of the
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`events set forth therein at the dates indicated on the [exhibits] by people with
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`knowledge of those matters,” that it was “a regular practice of the business to
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`make and save reports, including copies of [Exhibits 2003 and 2013],” and that
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`these exhibits “were kept in the regular course of business activity.” Exhibit
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`2021, ¶¶ 3, 5-7 (emphasis added).1
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`The Declarations of Dr. Tilseth and Mr. Oterhals, individually and
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`collectively, however, fail to cure Petitioner’s authentication and hearsay
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`objections to Exhibits 2003, 2010 and 2013. See Fed. R. Evid. 803, 901.
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`A. Exhibits 2003, 2010 and 2013 Are Not Authenticated
`Under Fed. R. Evid. 901 And Should Be Excluded
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`As an initial matter, Patent Owner cannot rely on the testimony of a named
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`inventor to authenticate the very exhibits that purportedly corroborate his
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`1 Mr. Oterhals does not state if the “business” discussed in his declaration refers
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`to his current employer, Nofima AS, Fiskeriforskning, or Patent Owner. Further,
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`Mr. Oterhals never suggests he was employed by Fiskeriforskning, and proffers
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`no foundation for his assertion that Exhibits 2003 and 2013 “were made at or near
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`the time of the events set forth therein at the dates indicated on the [exhibits] by
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`people with knowledge of those matters and provided to [Patent Owner].”
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`reduction to practice story. Rather, independent evidence of authenticity is
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`required to support the admissibility of Exhibits 2003, 2010 and 2013:
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`It is well established that in order for a contemporaneous
`document to be accorded any corroborative value the
`testimony of a witness other than the inventor, who is
`shown to have understood the recorded information, is
`generally necessary to authenticate the document’s
`contents as well as to explain the witness’ relationship to
`the document in question.
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`Horton v. Stevens, 7 USPQ2d 1245, 1248 (BPAI 1988) (emphasis added); see,
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`e.g., Chen v. Bouchard, 347 F.3d 1299, 1308 (Fed. Cir. 2003) (rejecting
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`authentication of a document because it was not established by anything other the
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`circular testimony of the inventor); see In re NTP, Inc., 654 F.3d 1279, 1291 (Fed.
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`Cir. 2011) (“It would be strange indeed to say that [an inventor], who filed the . . .
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`affidavit that needs corroborating, can by his own testimony provide that
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`corroboration.”). Thus, Patent Owner’s attempt to have Dr. Tilseth authenticate
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`the very exhibits that supposedly corroborate his reduction to practice story should
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`be rejected.
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`Acknowledging that inventor testimony cannot authenticate Exhibits 2003
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`and 2013, Patent Owner next attempts to overcome Petitioner’s evidentiary
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`objections by proffering the testimony of Åge Oterhals. Exhibit 2021. However,
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`Mr. Oterhals’ boilerplate testimony regarding the “regular practice” of some
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`unidentified “business,” and his cursory assertion that these 15-year old exhibits
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`were “kept in the regular course of business activity” fails to authenticate Exhibits
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`2003 and 2013 pursuant to Fed. R. Evid. 901.
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`Significantly, Mr. Oterhals neglects to provide any testimony regarding the
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`procedures used to generate, acquire and maintain Exhibits 2003 and 2013, or
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`explain the methods used to retrieve these exhibits. JPMorgan Chase Bank, N.A.
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`v. AME Fin. Corp., No. 1:08-CV-2543-LTW, 2009 U.S. Dist. LEXIS 140441, at
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`*11 (N.D. Ga. Sept. 25 2009) ( “witness authenticating the exhibits must also
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`identify the ‘exhibits as documents of a type that the organization typically
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`develops, and testif[y] about the procedures the organization follows in
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`generating, acquiring and maintaining documents of that type, and explain[] the
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`method by which the specific exhibits were retrieved from the organization’s
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`files’”) (citation omitted); Conoco Inc. v. DOE, 99 F.3d 387, 391 (Fed. Cir. 1996)
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`(witness seeking to authenticate exhibits must “understand[] the system used to
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`prepare the records”). The conclusory testimony of Mr. Oterhals is insufficient to
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`authenticate Exhibits 2003 and 2013.
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`Other unanswered questions surrounding the testimony of Mr. Oterhals
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`further support exclusion of Exhibits 2003 and 2013. For example, Mr. Oterhals
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`does not provide any information regarding record-keeping procedures of either
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`Nofima AS or Fiskeriforskning. Infra, pp. 7-11. Additionally, he does not
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`indicate when he joined Nofima AS or how and when he acquired information
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`about Exhibits 2003 and 2010 to demonstrate he is qualified to authenticate those
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`exhibits under Fed. R. Evid. 901. Supra, p. 3, n.1.
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`In sum, the testimony of Dr. Tilseth and Mr. Oterhals, individually and
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`collectively, fails to authenticate Exhibits 2003, 2010 and 2013. Exhibit 2010 is
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`inadmissible because Patent Owner improperly relies exclusively on inventor
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`testimony for authentication. Additionally, the conclusory nature Mr. Oterhals’
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`testimony fails to authenticate Exhibits 2003 and 2013, and as a result, these
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`exhibits are inadmissible and should be excluded. See Lorraine v. Markel Am.
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`Ins. Co., 241 F.R.D. 534, 542 (D. Md. 2007) (“the inability to get evidence
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`admitted because of a failure to authenticate is almost always a self-inflicted
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`injury which can be avoided by thoughtful advance preparation”).
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`B.
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`Exhibits 2003 and 2013 Are Inadmissible Hearsay
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`Assuming arguendo the Board finds Patent Owner proffered adequate
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`evidence to authenticate Exhibits 2003 and 2013, both exhibits should
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`nevertheless be excluded as inadmissible hearsay.2
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`2 Because Patent Owner improperly relies on the testimony of a named inventor,
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`Exhibit 2010 is unauthenticated and inadmissible. Thus, the Board need not
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`consider if Exhibit 2010 is admissible under Fed. R. Evid. 803(6).
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`The Federal Rules of Evidence prohibits parties from introducing any out of
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`court statement for the truth of the matter asserted, unless an exception applies.
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`Fed. R. Evid. 801(c), 802. Here, there can be no dispute that Patent Owner is
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`trying to offer Exhibits 2003 and 2013 as proof of the truth of the matters asserted
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`in these exhibits.
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`In an effort to overcome the prohibition against hearsay, Dr. Tilseth testifies
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`that Exhibits 2003 and 2013 are “true and correct” copies and were stored
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`“corporate record[s] on the hard drive on [his] computer.” Exhibit 2001, ¶¶ 7, 13.
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`Additionally, Mr. Oterhals states it was a “regular practice of the business to make
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`and save reports, including copies of [Exhibit 2003 and 2013] and that these
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`exhibits “were kept in the regular course of business.” Exhibit 2021, ¶¶ 6-7. The
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`collective averments of these witnesses indicate that Patent Owner believes
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`Exhibits 2003 and 2013 qualify as business records under Fed. R. Evid. 803(6).
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`To be admissible under the “business records” exception, Exhibits 2003 and
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`2013 must have been made at or near the time by - or from information
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`transmitted by - someone with knowledge, the record was kept in the course of a
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`regularly conducted business activity, making the record was part of the regular
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`practice of that activity, and these conditions must be shown by the testimony of
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`the custodian or another qualified witness. Fed R. Evid. 803(6). However, for a
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`host of reasons, there is insufficient foundational testimony to establish Exhibits
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`2003 and 2013, prepared by third party Fiskeriforskning, qualify as Patent
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`Owner’s business records under Rule 803(6).
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`First, Patent Owner failed to establish that Dr. Tilseth or Mr. Oterhals was a
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`“custodian or other qualified witness” under the business records exception. See
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`Fed. R. Evid. 803(6)(D). Specifically, neither witness provides any testimony
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`about the record-keeping process related to Exhibits 2003 and 2013, a requisite for
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`admissibility of documents under the business records exception. Kolmes v.
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`World Fibers Corp., 107 F.3d 1534, 1542-43 (Fed. Cir. 1997) (proponent failed to
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`establish admissibility under Fed. R. Evid. 803(6)(D) because testimony
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`“concerning the record-keeping process . . . [is] a requirement for admissibility of
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`documents under the business records exception”). For example, Dr. Tilseth
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`simply asserts that Exhibits 2003 and 2013 were stored as a “corporate record,”
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`without providing any information about Patent Owner’s record-keeping
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`practices. Exhibit 2001, ¶¶ 7, 13. Similarly, Mr. Oterhals just refers to the
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`“regular practice of the business” and the “regular course of business activity”
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`without even identifying the particular business referenced, or providing any
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`substantive information about the record-keeping procedures associated with
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`Exhibits 2003 and 2013. Exhibit 2021, ¶¶ 6-7. Because both witnesses “merely
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`provide conclusory statements that the [exhibits are] business record[s] without
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`providing any factual basis for those statements,” Exhibits 2003 and 2013
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`constitute inadmissible hearsay. Wi-Lan Inc. v. Sharp Elecs. Corp., 362 F. Supp.
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`3d 226, 232 (D. Del. 2019), aff’d, 992 F.3d 1366 (Fed. Cir. 2021). In fact, the
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`entirety of Mr. Oterhals’ testimony is just a conclusory restatement of the
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`elements of Rule 803(6). Compare Rule 803(6)(A)-(C) with Exhibit 2021, ¶¶ 5-7;
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`see, e.g., JP Morgan, 2009 U.S. Dist. LEXIS 140441, at * 9 (“boilerplate
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`recitation of the requirements under 803(6) fails to provide sufficient detail
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`necessary to authenticate the exhibits or satisfy the requirements of Rule 803(6)”);
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`Lorraine, 241 F.R.D. at 545-46 (“boilerplate, conclusory statements that simply
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`parrot the elements of the business record exception to the hearsay rule” are
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`insufficient).
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`At bottom, Dr. Tilseth and Mr. Oterhals fail to proffer any explanation of
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`the record-keeping practices associated with Exhibits 2003 and 2013 which is
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`needed to support the admissibility of these exhibits under Fed. R. Evid.
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`803(6)(D). See, e.g., Thanongsinh v. Bd. Of Educ., 462 F.3d 762, 777 (7th Cir.
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`2006) (witness must be “familiar with the company’s recordkeeping practices”)
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`(citation omitted); United States v. Garnett, 122 F.3d 1016, 1018-19 (11th Cir.
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`1997) (“Fed. R. Evid. 803(6) requires the testimony of a custodian or other
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`qualified witness who can explain the record-keeping procedure utilized.”); Miss
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`Jones LLC v. Stiles, 17 Civ. 1450 (NSR), 2019 U.S. Dist. LEXIS 43980, at *20-22
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`(S.D.N.Y. Mar. 18, 2019) (“custodian must be able to explain the record keeping
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`system applicable to the record and testify that the record keeping requirements
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`were met”).
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`Second, the meager testimony provided by Mr. Oterhals suggests he simply
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`performed the ministerial task of collecting Exhibits 2003 and 2013. Importantly,
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`because he failed to testify that he had any knowledge of the circumstances under
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`which the exhibits were prepared or stored, he is not qualified to provide the
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`necessary foundational testimony under Fed. R. Evid. 803(6). See, e.g., Calhoun
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`v. Walmart Stores, E., LP, 818 Fed. Appx. 899 (11th Cir. 2020) (records not
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`admissible under Fed. R. Evid. 803(6) because no witness was proffered who was
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`“knowledgeable about the procedures used to create” the records); Kolmes, 107
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`F.3d at 1542 (document inadmissible under the business records exception
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`because witness “did not know when or how the documents were prepared”); see
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`United States v. Porter, 821 F.2d 968, 977 (4th Cir. 1987) (employee who merely
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`had access to company files and did not know about the company’s record-
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`keeping requirements was not a “qualified witness” under Rule 803(6)(D)).
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`Third, Mr. Oterhals failed to articulate whether his testimony relates to the
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`activities of his current employer, Nofima AS, or those of Fiskeriforskning.
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`Importantly, Exhibit 2003 and 2013 were prepared 15 years ago by third party
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`Fiskeriforskning, not Nofima AS or Patent Owner. Supra, pp. 2-3. Even if Patent
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`Owner could establish these exhibits were kept in the regular course by Nofima
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`AS or Fiskeriforskning, that it is beside the point. The relevant inquiry is whether
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`it can be demonstrated that these exhibits constitute Patent Owner’s business
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`records pursuant to Fed. R. Evid. 803(6). See Belber v. Lipson, 905 F.2d 549, 552
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`(1st Cir. 1990) (“The mere custody by Conway of the medical records of another
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`doctor does not incorporate them into Conway's business records.”). As Petitioner
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`has detailed, Patent Owner has failed to establish Exhibits 2003 and 2013 are
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`admissible under the business rule exception.
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`Additionally, questions regarding the metadata associated with Exhibits,
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`2003 and 2013 (e.g., Exhibits 2004 and 2014) demonstrate an absence of a
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`guarantee of trustworthiness needed to support admissibility. As an initial matter,
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`Patent Owner again impermissibly tries to use inventor testimony to authenticate
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`the metadata exhibits: Exhibits 2004 and 2014. Exhibit 2001, ¶¶ 7, 13. Further
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`compounding questions regarding metadata is Dr. Tilseth’s failure to testify who
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`took the screen shots of the metadata purportedly associated with Exhibits 2003
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`and 2013, when, where and how the screenshots were taken. Additionally, there
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`are a number of inconsistencies associated with the metadata exhibits. For
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`example, the metadata associated Exhibit 2003 identifies the author as “Hauan.”
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`Exhibit 2004. However, Eyolf Langmyhr is the listed author of Exhibit 2003.
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`Exhibit 2003, pp. 0001, 0003. In contrast, Exhibit 2013 and its associated
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`metadata, Exhibit 2014, both list “Eyolf Langmyhr” as author. Exhibits 2013, pp.
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`0001, 0003; 2014. Further, the metadata associated with Exhibit 2003 indicates
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`the exhibit was created on January 27, 2006. Exhibit 2004. However, Exhibit
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`2003 is actually dated December 23, 2005, one month earlier. Exhibit 2003, pp.
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`0001, 0003. In contrast, the metadata associated with Exhibit 2013 indicates that
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`exhibit was last modified September 14, 2006. Exhibit 2014. This is consistent
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`with the date of “14.09.2006” listed on the exhibit. Exhibit 2013, p. 0003. Dr.
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`Tilseth’s failure to explain the various discrepancies associated with the metadata
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`further supports exclusion of Exhibits 2003 and 2013.
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`Finally, instead of proffering a declaration from Eyolf Langmyhr, the listed
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`author of Exhibits 2003 and 2013, or anyone from Fiskeriforskning associated
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`with the preparation of these exhibits, Patent Owner opted, without any
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`explanation, to rely on the declaration of Mr. Oterhals.3 Patent Owner’s decision
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`not to rely on the testimony of the author of Exhibits 2003 and 2013, further
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`compels exclusion of these exhibits. See Chen, 347 F.3d at 1308 (failure of the
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`exhibit’s author to testify supports finding the exhibit did not fall within the
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`business record exception of Rule 803(6)).
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`3 Notably, responding to Petitioner’s evidentiary objections to Exhibit 2002,
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`Patent Owner proffered a declaration from that exhibit’s author. Exhibit 2022.
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`Exhibits 2003 and 2013 are hearsay and the testimony of Dr. Tilseth and
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`Mr. Oterhals, individually and collectively, fails to lay the requisite foundation
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`under Rule 803(6) to admit these exhibits into evidence.
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`IV. CONCLUSION
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`Exhibits 2003, 2010 and 2013 should be excluded as lacking authentication
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`under Fed. R. Evid. 901. Additionally, Exhibits 2003 and 2013 are inadmissible
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`hearsay not subject to any exception, and should also be excluded. Finally,
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`Paragraphs 7-8, 12-14, and 17 of the Declaration of Dr. Tilseth and Paragraph 28
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`of the Declaration of Dr. Jaczynski rely on Exhibits 2003, 2010 and 2013, and
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`should also be excluded. See Riverbed Tech. v. Realtime Data, LLC, IPR2016-
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`00978 (Final Written Decision) Paper 67, p. 41 (Oct. 30, 2017) (excluding
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`unauthenticated exhibit and parts of declaration relying on that exhibit).
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`Dated: December 21, 2021
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`Respectfully submitted,
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`/James F. Harrington/
`James F. Harrington
`jfhdocket@hbiplaw.com
`Registration No. 44,741
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`HOFFMANN & BARON, LLP
`6900 Jericho Turnpike
`Syosset, New York 11791
`(516) 822-3550
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`Attorney for Petitioner
`Rimfrost AS
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`13
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`Inter Partes Review Case No.: IPR2020-01532
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`CERTIFICATE OF SERVICE
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`U.S. Patent No. 9,644,169
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`I hereby certify that on this 21st day of December 2021, PETITIONER’S
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`MOTION TO EXCLUDE EVIDENCE PURSUANT TO 37 C.F.R. §42.64(c)
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`was served in its entirety on the following counsel of record by e-mail at the
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`address provided in the PO Mandatory Notice Information as set forth below:
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`David A. Casimir, Ph.D.
`J. Mitchell Jones, Ph.D.
`Casimir Jones, S.C.,
`2275 Deming Way, Suite 310
`Middleton, Wisconsin 53562
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`dacasimir@casimirjones.com
`jmjones@casimirjones.com
`docketing@casimirjones.com
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`By:
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`/Michael I. Chakansky/
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`Michael I. Chakansky (Reg. No. 31,600)
`Hoffmann & Baron, LLP
`4 Century Drive
`Parsippany, New Jersey 07054
`mchakansky@hbiplaw.com
`Tel: 973.331.1700
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`2300310.1
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