UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`ALIVECOR, INC.,
`Patent Owner
`________________
`
`IPR2021-00972
`U.S. Patent No. 10,638,941
`________________
`
`PATENT OWNER’S REPLY IN SUPPORT OF
`MOTION TO EXCLUDE
`
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`ALIVECOR, INC.,
`Patent Owner
`________________
`
`IPR2021-00972
`U.S. Patent No. 10,638,941
`________________
`
`PATENT OWNER’S REPLY IN SUPPORT OF
`MOTION TO EXCLUDE
`
`
`
`IPR2021-00972
`
`
`PATENT OWNER’S REPLY ISO MOTION TO EXCLUDE
`
`
`
`Petitioner fails to respond to the heart of PO’s motion: that the rules governing
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`practice before this Board do not permit a petitioner to jettison its petition-expert at
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`the 11th hour, on reply, proffering new testimony from another expert, given in
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`another forum, related to different issues (§ 101) and different prior art. The
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`reason Petitioner did so here is clear: during cross-examination, Petitioner’s IPR
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`expert conceded he lacked the necessary expertise to offer opinions regarding
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`machine learning, which is core to claims of the AliveCor patents. Petitioner must
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`have known its expert lacked this expertise when it filed its Petition, and should not
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`be permitted to remedy this failing at this late stage by effectively swapping experts.
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`If the Board sanctions this approach, petitioners will be encouraged to hide their true
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`expert testimony until reply after the weaknesses in their expert’s testimony have
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`been exposed, and submit new expert testimony under the guise of responding to a
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`patent owner’s dispositive arguments in a POR. This should not be allowed.
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`I.
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`NEW EVIDENCE ON REPLY IS NOT PERMITTED
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`On Reply, Petitioner submitted an ITC expert report, deposition, and trial
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`testimony from its ITC expert, Dr. Stultz (“ITC Testimony”) and several new prior
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`art references not raised in the Grounds (“New Prior Art”). Dr. Stultz did not submit
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`a declaration in this case. Petitioner also did not submit a reply declaration from its
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`IPR expert, Dr. Chaitman, instead jettisoning him when he admitted on cross that he
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`was not an expert on machine learning. Ex. 2017, 27:23-28:1. Petitioner instead
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`1
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`
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`IPR2021-00972
`
`
`PATENT OWNER’S REPLY ISO MOTION TO EXCLUDE
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`relies on the new ITC Testimony, which relates primarily to patent eligibility under
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`§ 101, to support its prima facie case of obviousness of the machine learning claims
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`in the co-pending IPRs against AliveCor’s ’499 and ’731 patents (in this proceeding,
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`Petitioner filed but did not rely on the ITC Testimony) and the New Prior Art to
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`bolster its obviousness positions based on Shmueli and Osorio. However, not a
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`single reference submitted with the New Prior Art was part of the asserted grounds
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`and Petitioner has not argued that it was unable to raise this New Prior Art in the
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`Petition, or that it was unable to rely on its ITC Expert in the Petition. The TPG is
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`clear that a Petitioner “may not submit new evidence or argument in reply that it
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`could have presented earlier, e.g. to make out a prima facie case of
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`unpatentability.” TPG at 73. Petitioner’s new evidence should be excluded. See
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`Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 775 (Fed. Cir.
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`2018). This is thus all plainly new evidence, prohibited on Reply.
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`Remarkably, Petitioner argues that the ITC Testimony and New Prior art do
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`not constitute impermissible new evidence and should not be excluded because PO
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`“doesn’t even appear to contest” that the new evidence was “offered in support of
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`arguments that are directly responsive to those made by AliveCor in its Patent Owner
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`Response.” Resp. at 6. This is incorrect—PO argued that this was impermissible
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`new evidence. Mot. at 5; Sur-Reply at 2-5.
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`Allowing Petitioner to rely on this new evidence would also have a deleterious
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`
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`2
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`IPR2021-00972
`
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`PATENT OWNER’S REPLY ISO MOTION TO EXCLUDE
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`impact on IPR practice, encouraging IPR petitioners to submit unlimited new
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`evidence in reply including new testimony from new experts, on unrelated topics,
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`as well as new prior art that could have been raised in the Petition, with no ability
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`for a patent owner’s expert to respond. Reply evidence should not be without
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`limits—the purpose of the rules is not to allow a petitioner to sidestep a patent
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`owner’s ability to defend itself. Moreover, Petitioner’s approach is fundamentally
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`unfair to patent owners who have only one opportunity for an expert to respond—
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`the POR. See Acceleration Bay, 908 F.3d at 775.
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`II.
`
`PETITIONER’S LEGAL AUTHORITY IS UNAVAILING
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`Apple does not cite a single case where hearsay testimony on unrelated issues
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`and new prior art was accepted on Reply.1 Apple first cites Intel Corp. v. Tela
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`Innovations, Inc., IPR2019-01255, Paper 79 (PTAB Jan. 26, 2021) for the
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`proposition that PO’s motion puts “form over substance.” But in that case, the Board
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`simply declined to rule on the motion to exclude ITC evidence, as the evidence of
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`record was sufficient for its decision. In any event, the ITC evidence submitted on
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`reply in that case was directly related to issues raised in the proceeding – secondary
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`considerations – and was submitted to support Petitioner’s Reply declaration from
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`the petition expert. Id. at 6, 77. Here, neither is true.
`
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`1 Exhibits 1065-1068, 1074-1080, 1085 are hearsay as well. See Sur-Reply at 2-
`5. No hearsay exception applies, these exhibits should be excluded.
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`
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`3
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`IPR2021-00972
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`PATENT OWNER’S REPLY ISO MOTION TO EXCLUDE
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`In Apple Inc. v. VirnetX, IPR2016-00332, Paper 29 (PTAB June 22, 2017),
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`the petitioner reused fact witness declarations from an earlier filed ex parte
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`reexamination involving a related patent. That testimony also was directly related to
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`the issues in the IPR—it was used to establish that the prior art relied upon in the
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`grounds were printed publications. Id. at 3, 80-81 (PTAB June 22, 2017). Thus, in
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`VirnetX, the “main distinction” was simply the caption. Id. Here, Dr. Stultz’s
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`opinion has nothing to do with the IPR art or issues at all.
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`Moreover, the Rule 804(b)(1) hearsay exception for former testimony for
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`unavailable declarants does not apply. Apple argues “because the Board doesn’t
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`allow for live testimony at an IPR hearing [] all experts are ‘unavailable’ to
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`testify”—in essence, Apple argues that Rule 804(b)(1) should always apply because
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`experts are always unavailable in IPR hearings. Resp. at 3. But the Board does
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`permit live testimony; this proposed hearsay exception would subsume the rule—
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`any prior art author or inventor would be “unavailable” and their testimony not
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`hearsay. Moreover, at the same time, Petitioner argues that its expert was available
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`and could have sat for deposition. Id. at 1. Petitioner cannot have it both ways.2
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`2 Petitioner’s complaint that Patent Owner could have deposed Dr. Stultz as
`uncompelled testimony is both wrong and unavailing. Dr. Stultz’s testimony was
`not submitted as a declaration in this case, and is therefore compelled testimony. See
`37 C.F.R. § 42.53. Petitioner would have this Board excuse its improper new
`evidence because PO did not jump through the additional expense of moving for and
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`4
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`IPR2021-00972
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`PATENT OWNER’S REPLY ISO MOTION TO EXCLUDE
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`The real issue is whether the hearsay exception applies at all—it doesn’t.
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`Because Dr. Stultz’s ITC testimony related to § 101 and to unrelated prior art, PO
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`did not have a “similar motive” to cross-examine him on issues pertinent to this
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`proceeding. See Fed. R. Evid. 804(b)(1). The Rule 804(b)(1) hearsay exception
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`does not apply and the Intel case cited by Petitioner does not hold otherwise.
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`Petitioner also relies on CostCo Wholesale Corp. v. Robert Bosch LLC,
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`IPR2016-00038, Paper 68 (PTAB Mar. 30, 2017), but that case involved a fact
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`witness, not an expert, and prior trial testimony on “the same issues” as the IPR
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`proceeding. Id. at 16.
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`Lastly, the residual hearsay exception does not apply—that exception is for
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`“exceptional cases,” and petitioner provides only the barest summary of analyses.
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`VirnetX, IPR2016-00332, Paper 29 at 81 (quotation omitted). Rule 807 requires that
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`the hearsay testimony sought to be admitted is “more probative on the point for
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`which it is offered than any other evidence that the proponent can obtain through
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`reasonable efforts.” Fed. R. Evid. 807(a)(2). Here, Dr. Stultz’s testimony on § 101
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`and unrelated prior art simply is simply not probative of the prior art issues in this
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`proceeding.
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`then cross examining its replacement expert. This turns the analysis on its head—
`the new evidence is improper and should never have been submitted in the first place.
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`5
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`IPR2021-00972
`
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`PATENT OWNER’S REPLY ISO MOTION TO EXCLUDE
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`Date: September 7, 2022
`
`
`
` By: /Jim Glass/
`James M. Glass (Reg. No. 46,729)
`QUINN EMANUEL URQUHART &
`
`SULLIVAN LLP
`
`
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`6
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`IPR2021-00972
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`PATENT OWNER’S REPLY ISO MOTION TO EXCLUDE
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`CERTIFICATE OF SERVICE (37 C.F.R. §§ 42.6(E), 42.105(A))
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`The undersigned hereby certifies that the foregoing document was served in
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`its entirety on September 7, 2022 upon the following parties via Electronic Mail.
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`W. Karl Renner Jeremy J. Monaldo
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`IPR50095-0032IP1@fr.com
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`PTABInbound@fr.com
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`axf-ptab@fr.com
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`monaldo@fr.com
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`Date: September 7, 2022
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` By: /Jim Glass/
`James M. Glass (Reg. No. 46,729)
`QUINN EMANUEL URQUHART &
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`SULLIVAN LLP
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`
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`7
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