Case No. IPR2021-00970
`Attorney Docket: 50095-0032IP1
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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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`APPLE INC.,
`Petitioner,
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`v.
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`ALIVECOR, INC.,
`Patent Owner.
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`IPR2021-00970
`Patent 9,572,499
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`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION TO
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`EXCLUDE PETITIONER’S EVIDENCE
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`Attorney Docket: 50095-0032IP1
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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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`APPLE INC.,
`Petitioner,
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`v.
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`ALIVECOR, INC.,
`Patent Owner.
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`IPR2021-00970
`Patent 9,572,499
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`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION TO
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`EXCLUDE PETITIONER’S EVIDENCE
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`Case No. IPR2021-00970
`Attorney Docket: 50095-0032IP1
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`INTRODUCTION
`Petitioner Apple Inc. (“Apple”) respectfully requests that the Board deny the
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`I.
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`Patent Owner AliveCor Inc.’s (“AliveCor”) motion to exclude Exhibits APPLE-
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`1060-68 and APPLE-1072-85 (Paper No. 35), and decide the patentability of the
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`claims at issue on the full record presented to the Board. As set forth below, each
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`of the complained-of exhibits was submitted to the Board in compliance with
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`PTAB rules and the Rules of Evidence.
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`II. ARGUMENT
`A. Dr. Stultz’s Prior Testimony at the ITC Is Admissible
`AliveCor first asks this Board to exclude prior testimony from an expert who
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`testified before the ITC on behalf of Apple—Dr. Stultz. According to AliveCor,
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`Dr. Stultz’s testimony is hearsay and should be excluded, because—despite never
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`actually asking to take his deposition after his expert report and other testimony
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`was properly submitted in compliance with 37 CFR § 42.53, and despite the fact
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`that AliveCor both deposed and cross-examined Dr. Stultz about his opinions at the
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`ITC—Dr. Stultz was not deposed again in the present proceeding.
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`As the Board has previously recognized, this is exactly the type of argument
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`that puts form over substance to an absurd degree. See, e.g., Intel Corp. v. Tela
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`Innovations, Inc., IPR2019-01255, Paper 79 at 77 (PTAB Jan. 26, 2021) (finding
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`“limited merit” to such a contention). Indeed, the Board has previously noted that,
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`1
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`even though a declaration may have previously been filed in another matter and
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`Case No. IPR2021-00970
`Attorney Docket: 50095-0032IP1
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`may bear a different caption, the difference in caption “is artificial” if (as here) the
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`declaration was also “filed in this proceeding, as if they were prepared for this
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`matter.” Apple Inc. v. Virnetx Inc., IPR2016-00332, Paper 29 at 80-81 (PTAB
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`June 22, 2017).1 This is particularly true where, as here, the “Patent Owner could
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`have sought to cross-examine” Dr. Stultz, but didn’t, id.; or where the Patent
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`Owner could have cited portions of its previous deposition and cross-examination
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`of Dr. Stultz from the ITC proceeding. This Board should not allow AliveCor to
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`make an apparent strategic choice to sit on its hands regarding Dr. Stultz’s
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`deposition, manufacture its own evidentiary issues, and then point to those
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`supposed evidentiary issues as a reason for exclusion.2 Thus, Dr. Stultz’s prior
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`1 See also 37 CFR § 42.53(b)(1)(“[u]ncompelled direct testimony may be taken at
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`any time to support a petition, motion, opposition, or reply”); 37 CFR § 42.2
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`(broadly defining the form for uncompelled direct testimony – “Affidavit means
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`affidavit or declaration under § 1.68 of this chapter. A transcript of an ex parte
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`deposition or a declaration under 28 U.S.C. 1746 may be used as an affidavit.”)
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`2 These facts alone distinguish the cases cited by AliveCor, where there was no
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`showing that the proponent of the evidence had the ability to make witnesses
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`2
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`testimony is admissible under 37 CFR § 42.53.
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`Case No. IPR2021-00970
`Attorney Docket: 50095-0032IP1
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`In any event, AliveCor also misses the mark as to the form they seek to put
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`above substance. Dr. Stultz’s testimony is plainly admissible at least pursuant to
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`FRE 804(b)(1) for exactly the same reasons that the Board considers any testimony
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`offered by an expert in the form of an expert declaration or a deposition.
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`This Board routinely and properly considers statements that are technically
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`“hearsay” from experts, both in the form of declarations and deposition testimony.
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`Per the rules of evidence, “hearsay” is a statement which (1) “the declarant does
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`not make while testifying at the current trial or hearing;” and (2) “a party offers
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`in evidence to prove the truth of the matter asserted in the statement.” Fed. R.
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`Evid. 801(c). So, for example, despite the fact that statements made in an expert
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`declaration are not statements made “while testifying at the current … hearing,”
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`the Board nonetheless considers these statements because the Board doesn’t allow
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`for live testimony at an IPR hearing (thus all experts are “unavailable” to testify at
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`the hearing because no legal process can procure their attendance) and because the
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`Board’s rules provide for the opportunity to depose them. See Fed. R. Evid.
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`available for deposition. See, e.g., Captioncall, LLC v. Ultratec, Inc., IPR2015-
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`00637, Paper 98 at 11 (denying Patent Owner’s attempt to introduce testimony
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`from employees of Petitioner where it made no attempt to subpoena them).
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`3
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`804(a)(5)(A) (unavailability); Fed. R. Evid. 804(b)(1) (prior testimony).
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`Case No. IPR2021-00970
`Attorney Docket: 50095-0032IP1
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`The Federal Rules of Evidence draw no distinction between prior testimony
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`offered in the same proceeding or another one. See, e.g., Fed. R. Evid. 804(b)(1)
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`(applies to sworn testimony, “whether given during the current proceeding or a
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`different one”). This Board should not draw one either. The key question isn’t
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`whether the testimony was offered in this proceeding, but rather whether (as the
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`Rules of Evidence set forth) AliveCor had the opportunity and a similar motive to
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`cross-examine the statements. Here, there can be no question that AliveCor did.
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`AliveCor does not, and cannot, dispute, that Dr. Stultz offered testimony on
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`validity, and in particular regarding a POSITA’s knowledge and understanding of
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`machine learning, in the ITC; that AliveCor both deposed and cross-examined Dr.
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`Stultz in that proceeding on those issues; and that AliveCor had the opportunity
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`(which it didn’t pursue) to depose Dr. Stultz again in this IPR. Thus, Dr. Stultz’s
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`prior testimony is admissible under Fed. R. Evid. 804(b)(1). See, e.g., Intel Corp.
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`v. Tela Innovations, Inc., IPR2019-01255, Paper 79 at 77 (PTAB Jan. 26, 2021)
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`(“Exhibit 1071 is Dr. Auth’s ITC trial testimony. Patent Owner argues that Exhibit
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`1071 is inadmissible hearsay” and “Petitioner argues that Exhibit 1071 … is
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`admissible under FRE 804(b)(1);” “We find limited merit in Patent Owner’s
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`Motion to Exclude”); CostCo Wholesale Corp. v. Robert Bosch LLC, IPR2016-
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`00038, Paper 68 at 10 (PTAB Mar. 30, 2017) (“Mr. Merkel’s former trial
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`testimony is admissible under Federal Rule of Evidence 804(b)(1)”).
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`Case No. IPR2021-00970
`Attorney Docket: 50095-0032IP1
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`Finally, Dr. Stultz’s testimony also is admissible pursuant to the “residual
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`exception.” See Fed. R. Evid. 807. The testimony sought to be introduced is
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`testimony given in another administrative proceeding against AliveCor. Indeed,
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`much of the testimony sought to be offered is testimony elicited by AliveCor’s
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`own lawyers (in deposition and cross-examination). There can be no question of
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`its trustworthiness, or that it is probative of the limited purposes for which it is
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`being offered, or that it is in the interests of justice for the Board to consider it. See
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`Fed. R. Evid. 807. Indeed, AliveCor itself deemed Dr. Stultz’s ITC testimony
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`trustworthy and submitted a portion of it to support AliveCor’s arguments. The
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`interests of justice, thus, compel the Board’s consideration of all of Dr. Stultz’s
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`testimony, not just the portion self-selected by AliveCor—as the Board has
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`recognized in very similar circumstances. See, e.g., Apple v. Virnetx, IPR2016-
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`00332, Paper 29 at 81-82 (finding testimony from a parallel proceeding from an
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`expert to be admissible per FRE 807).
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`B. Apple’s Reply Exhibits Are Proper Reply Evidence
`AliveCor seeks (at 5) exclusion of numerous exhibits submitted with
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`Apple’s replies because, in AliveCor’s view, Apple could have presented this
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`evidence earlier. Respectfully, that is not what this Board’s rules provide. Under
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`the Board’s rules, petitioners are allowed to submit reply argument and evidence
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`5
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`provided it fairly responds to arguments made by patent owners or statements
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`Case No. IPR2021-00970
`Attorney Docket: 50095-0032IP1
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`made in an institution decision. See 37 C.F.R. § 42.23; see also AMC Multi-
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`Cinema, Inc. v. Fall Line Pats., LLC, No. 2021-1051, 2021 WL 4470062, at *7
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`(Fed. Cir. Sept. 30, 2021) (“we have made clear that if the petition asserts that a
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`claim requirement is met, provides a reason that the assertion is true, and cites
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`evidentiary support for that reason, then reply material that fairly adds
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`confirmation that the initially presented material does in fact support the assertion
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`is not prohibited new material, but a proper part of the record”); Belden Inc. v.
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`Berk-Tek LLC, 805 F.3d 1064, 1077–78 (Fed. Cir. 2015).
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`Here, as AliveCor doesn’t even appear to contest, each of the complained of
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`exhibits has been offered in support of arguments that are directly responsive to
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`those made by AliveCor in its Patent Owner Response. With its two sentence
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`argument, AliveCor, as the moving party, has not even attempted to meet its
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`burden of demonstrating how each of Exhibits APPLE-1060-68 and APPLE-1072-
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`85 is not responsive and should be excluded. Instead, AliveCor simply contends
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`that almost all of Apple’s reply evidence should be excluded simply because
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`AliveCor contends that it could have been raised earlier. That is not the law, and
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`exclusion is not warranted.
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`III. CONCLUSION
`AliveCor’s motion to exclude should be denied.
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`Case No. IPR2021-00970
`Attorney Docket: 50095-0032IP1
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`Respectfully submitted,
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`/W. Karl Renner/
`W. Karl Renner, Reg. No. 41,265
`Jeremy Monaldo, Reg. No. 58,680
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
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`Attorneys for Petitioner
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`Dated: August 31, 2022
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`7
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`Case No. IPR2021-00970
`Attorney Docket: 50095-0032IP1
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.6(e)(4), the undersigned certifies that on August
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`31, 2022, a complete and entire copy of this Petitioner’s Opposition to Patent
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`Owner’s Motion to Exclude Petitioner’s Evidence were provided via email, to the
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`Patent Owner by serving the email correspondence address of record as follows:
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`James M. Glass, Registration No. 46,729
`John T. McKee. Registration No. 65,926
`Quinn Emanuel Urquhart & Sullivan LLP
`51 Madison Ave, 22nd Floor New York, New York, 10010
`Email: jimglass@quinnemanuel.com
`qe-alivecor@quinnemanuel.com
`johnmckee@quinnemanuel.com
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`Andrew M. Holmes, Registration No. 64,718
`Sean S. Pak, Pro Hac Vice
`Quinn Emanuel Urquhart & Sullivan LLP
`50 California St, 22nd Floor San Francisco, CA 94111
`drewholmes@quinnemanuel.com
`seanpak@quinnemanuel.com
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`/Crena Pacheco/
`Crena Pacheco
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(617) 956-5938
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