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`Paper 28
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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.: IPR2020-01533
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`U.S. Patent 9,816,046
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`PETITIONER’S REPLY IN SUPPORT OF ITS
`MOTION TO EXCLUDE EVIDENCE
`PURSUANT TO 37 C.F.R. § 42.64 (c)
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`Inter Partes Review Case No.: IPR2020-01533
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`U.S. Patent No. 9,816,046
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`TABLE OF CONTENTS
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`I.
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`II.
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`PETITIONER’S OBJECTIONS COMPLIED § 42.64(b)(1) ......................... 1
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`PATENT OWNER HAS NOT AUTHENTICATED EXHIBIT 2010 ........... 2
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`III. EXHIBITS 2003 AND 2013 ARE INADMISSIBLE HEARSAY ................. 3
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`IV. CONCLUSION ................................................................................................ 5
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`i
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`Inter Partes Review Case No.: IPR2020-01533
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`U.S. Patent No. 9,816,046
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`TABLE OF AUTHORITIES
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`CASES
`Apple v. Achates Reference Publishing, Inc.,
`IPR2013-00080 (June 2, 2014) ...................................................................... 1
`ATI Techs. v. Iancu,
`920 F.3d 1361 (Fed. Cir. 2019) ..................................................................... 3
`Chen v. Bouchard,
`347 F.3d 1299 (Fed. Cir 2003) ...................................................................... 2
`Deckers Outdoor v. Romeo & Juliette, Inc.,
`2:15-cv-02812, 2017 U.S. Dist. LEXIS 91711
`(C.D. Cal. June 13, 2017) .............................................................................. 3
`Flir Sys., Inc., v. Leak Surveys, Inc.,
`IPR 2014-00411 (Decision - Motions to Exclude),
`Paper 113 (Sept. 3, 2015) .............................................................................. 1
`Horton v. Stevens,
`7 USPQ2d 1245 (BPAI 1988) ....................................................................... 2
`Incyte Corp. v. Concert Pharms.Inc.,
`IPR 2017-01256 (Final Written Decision),
`Paper 119 (Apr. 8, 2019) ............................................................................... 1
`Kolcraft Enter. v. Graco Children Prods.,
`927 F.3d 1320 (Fed. Cir. 2019) ..................................................................... 2
`Motorola Mobility LLC v. Intellectual Ventures II LLC,
`IPR2014-00504 (Final Written Decision),
`Paper 84 (Mar. 3, 2020) ................................................................................. 2
`Pozen Inc. v. Par Pharm., Inc.,
`696 F.3d 1151 (Fed. Cir. 2012) ..................................................................... 5
`Sonos, Inc. v. Implicit,
`IPR2018-00766 (Final Written Decision),
`Paper 46 (Sept. 16, 2019) .............................................................................. 2
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`ii
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`Inter Partes Review Case No.: IPR2020-01533
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`U.S. Patent No. 9,816,046
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`STATUTES
`37 C.F.R. § 42.64(b)(1) ............................................................................................ 1
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`RULES
`Fed. R. Evid. 803 ..................................................................................................... 4
`Fed. R. Evid. 807 ................................................................................................. 3, 5
`Fed. R. Evid. 901 ..................................................................................................... 2
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`iii
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`Inter Partes Review Case No.: IPR2020-015333
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`I.
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`PETITIONER’S OBJECTIONS COMPLIED § 42.64(b)(1)
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`Contrary to Patent Owner’s argument, Mot. Excl. Opp. (Paper 26), 1-3,
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`U.S. Patent No. 9,816,046
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`Petitioner complied with Section 42.64(b)(1), and provided adequate notice of its
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`evidentiary objections to the entirety of Exhibits 2003, 2010 and 2013 by asserting:
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`FRE 802 (hearsay without exception)
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`The exhibit is offered to prove the truth of the matter
`asserted without meeting any hearsay exception.
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`FRE 901 (authentication)
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`Patent Owner failed to provide evidence sufficient to
`establish the exhibit is what it is purported to be.
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`Exhibit 1171, pp. 3, 7-9. See, e.g., Incyte Corp. v. Concert Pharms. Inc., IPR
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`2017-01256 (Final Written Decision), Paper 119, pp. 38-39 (Apr. 8, 2019)
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`(objection “(a) lacks authentication under FRE 901 . . . [and] (b) represents
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`hearsay under FRE 802” provide “sufficient particularity”); see Flir Sys., Inc., v.
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`Leak Surveys, Inc., IPR 2014-00411 (Decision - Motions to Exclude), Paper 113,
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`p. 7 (Sept. 3, 2015) (“Objection: Hearsay: Fed. R. Evid. 802; 37 C.F.R. § 42.61
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`(c) . . . . Nothing more is needed.”). Patent Owner’s citation to Apple v. Achates
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`Reference Publishing, Inc., IPR2013-00080 (June 2, 2014) is unavailing. Mot.
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`Excl. Opp. 3. Apple involved whether objections were “timely” filed, a fact not
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`disputed by Patent Owner. See Apple, p. 49. Petitioner’s objections properly put
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`Patent Owner on notice of Petitioner’s authenticity and hearsay objections.
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`Inter Partes Review Case No.: IPR2020-01533
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`U.S. Patent No. 9,816,046
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`II.
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`PATENT OWNER HAS NOT AUTHENTICATED EXHIBIT 2010
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`Patent Owner’s arguments that metadata authenticates Dr. Tilseth’s meeting
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`notes, Exhibit 2010, is meritless. Mot. Excl. Opp., 3-9. In fact, the Federal
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`Circuit has expressly held otherwise. Kolcraft Enter. v. Graco Children Prods.,
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`927 F.3d 1320, 1325 (Fed. Cir. 2019) (“The only other discussion of metadata as
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`possible corroborating evidence is found in [inventor testimony] which is
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`insufficient to corroborate inventor testimony of prior conception.”); see, e.g.,
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`Mot. Excl. (Paper 25), 4 (citing Chen v. Bouchard, 347 F.3d 1299 (Fed. Cir 2003)
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`and Horton v. Stevens, 7 USPQ2d 1245 (BPAI 1988)).
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`Patent Owner nevertheless incorrectly argues that Motorola Mobility LLC v.
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`Intellectual Ventures II LLC, IPR2014-00504 (Final Written Decision), Paper 84
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`(Mar. 3, 2020) supports the proposition that testimony of a witness other than the
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`inventor is generally not needed to authenticate the document’s contents under
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`Rule 901. See Mot. Excl. Opp., 5. As an initial matter, Patent Owner’s argument
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`is inapt in view of Kolcraft, Chen and Horton. Additionally, admissibility in
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`Motorola did not rest exclusively on inventor testimony and metadata. Instead, in
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`Motorola the inventor’s testimony was “corroborated explicitly” by the testimony
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`of another, something Dr. Tilseth’s testimony lacks. Id. at 8. Further, Patent
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`Owner’s reliance on Sonos and ATI is similarly unpersuasive because those cases
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`involved additional corroborative evidence. Mot. Excl. Opp., 5; see Sonos, Inc. v.
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`Inter Partes Review Case No.: IPR2020-01533
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`U.S. Patent No. 9,816,046
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`Implicit, IPR2018-00766, Paper 46 (Sept. 16, 2019), p. 49 (additional support for
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`authenticity included production of document logs and forensic examination of
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`documents in native format); ATI Techs. v. Iancu, 920 F.3d 1361, 1370-72 (Fed.
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`Cir. 2019) (metadata was maintained in a specialized “revision-control system”
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`and proponent’s expert “reviewed the records and summarized their content”).
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`Patent Owner also urges that additional testimony regarding metadata was
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`submitted to further support the authenticity of Exhibit 2010. Mot. Excl. Opp., 7.
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`That testimony, however, was a Declaration of Patent Owner’s counsel in this
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`proceeding (Exhibit 2023) that parrots Dr. Tilseth’s testimony, and should be
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`disregarded. Compare Exhibit 2023, ¶ 5 with Exhibit 2001, ¶ 11; see Deckers
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`Outdoor v. Romeo & Juliette, Inc., 2:15-cv-02812, 2017 U.S. Dist. LEXIS 91711,
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`at * 14 (C.D. Cal. June 13, 2017) (rejecting counsel’s attempt to authenticate).
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`III. EXHIBITS 2003 AND 2013 ARE INADMISSIBLE HEARSAY
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`First, Patent Owner curiously states Exhibits 2003 and 2013 are not hearsay
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`“because the exhibits are not being used for the truth of the matter asserted.” Mot.
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`Excl. Opp., 11-12. However, this is inconsistent with Patent Owner’s concession
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`that Exhibits 2003 and 2013 are actually “being offered as evidence of a material
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`fact” in contending both exhibits are admissible under the residual hearsay
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`exception. Mot. Excl. Opp., 13; see Fed. R. Evid. 807. It is also difficult to
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`fathom how Patent Owner can successfully antedate Breivik II if Exhibits 2003
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`and 2013 are not being offered for the truth of the activities reported in these
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`exhibits; exhibits that purportedly demonstrate the very activities Patent Owner
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`contends prove Dr. Tilseth’s reduction to practice story.
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`Next, without acknowledging the requirements of Rule 803(6), Patent
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`Owner simply proclaims that the testimony of Dr. Tilseth and Mr. Otherals “prima
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`facie establishes that Exs. 2003 and 2013 are business records.” Mot. Excl. Opp.,
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`12-13. Then, relying on nothing more than unsupported attorney argument, Patent
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`Owner states Exhibits 2003 and 2013 “are simple reports of the type of which are
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`routinely stored in the course of virtually any business.” Id., 13. Notably,
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`however, there is no evidence either Dr. Tilseth or Mr. Otherals is a “custodian or
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`other qualified witness” under Rule 803(6). Mot. Excl., 7-11. In fact, Patent
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`Owner does not contest that the testimony of Dr. Tilseth and Mr. Otherals is an
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`impermissible “boilerplate” recitation of the requirements of Rule 803(6)(A)-(E).
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`See Mot. Excl., 8-9. Lastly, Patent Owner offers no explanation why Exhibit 2003
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`and its purported metadata, Exhibit 2004, list different “authors” and have
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`different “dates.” Id., 11-12.1
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`Finally, effectively conceding that Exhibits 2003 and 2013 are hearsay,
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`1 Contrary to Patent Owner’s assertion, Petitioner has not argued Exhibits 2004
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`and 2014 are inadmissible hearsay. See Mot. Excl. Opp., 10-11.
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`4
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`Inter Partes Review Case No.: IPR2020-01533
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`U.S. Patent No. 9,816,046
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`Patent Owner urges Exhibits 2003 and 2013 are nevertheless admissible under
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`Fed. R. Evid. 807. Mot. Excl. Opp., 13-14. However, the residual hearsay
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`exception “is to be used only rarely, in truly exceptional cases.” Pozen Inc. v. Par
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`Pharm., Inc., 696 F.3d 1151, 1162, n.6 (Fed. Cir. 2012) (citation omitted). In
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`addition, the residual exception requires that the proffered evidence be “more
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`probative on the point for which it is offered than any other evidence that the
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`proponent can obtain through reasonable efforts.” Fed, R. Evid. 807(a)(3)
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`(emphasis added). Here, however, Patent Owner failed to proffer testimony of the
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`author of Exhibits 2003 and 2013 despite securing the testimony of the non-party
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`author of Exhibit 2002 in response to Petitioner’s evidentiary objections. Mot.
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`Excl., 12. Finally, the “guarantees of trustworthiness” mandated by Rule 807 are
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`absent in view of unanswered questions about Exhibits 2003 and 2004. Supra, 4;
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`Mot. Excl., 11-12. Exhibits 2003 and 2013 are not admissible under Rule 807.
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`IV. CONCLUSION
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`Exhibits 2003, 2010 and 2013 are inadmissible and should be excluded.
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`Dated: January 4, 2022
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`5
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`Respectfully submitted,
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`/James F. Harrington/
`James F. Harrington
`Registration No. 44,741
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`HOFFMANN & BARON, LLP
`Attorney for Petitioner
`Rimfrost AS
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`Inter Partes Review Case No.: IPR2020-01533
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`CERTIFICATE OF SERVICE
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`U.S. Patent No. 9,816,046
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`I hereby certify that on this 4th day of January 2022, PETITIONER’S
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`REPLY IN SUPPORT OF ITS MOTION TO EXCLUDE EVIDENCE
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`PURSUANT TO 37 C.F.R. § 42.64(c) was served in its entirety on the following
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`counsel of record by e-mail at the address provided in the PO Mandatory Notice
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`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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`2307008.1
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