UNITED STATES PATENT AND TRADEMARK OFFICE
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`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`__________________
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`MOMENTUM DYNAMICS CORPORATION,
`Petitioner
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`v.
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`WITRICITY CORPORATION,
`Patent Owner
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`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
`UNDER 37 C.F.R. § 42.64(c)
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`Case No. IPR2021-01166
`Patent No. 8,304,935
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`__________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________
`
`
`MOMENTUM DYNAMICS CORPORATION,
`Petitioner
`
`v.
`
`WITRICITY CORPORATION,
`Patent Owner
`
`
`
`
`
`
`
`
`
`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
`UNDER 37 C.F.R. § 42.64(c)
`
`
`
`
`
`
`
`Case No. IPR2021-01166
`Patent No. 8,304,935
`
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`TABLE OF CONTENTS
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`Case No. IPR2021-01166
`Attorney Docket: 25236-0267IP1
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`I.
`II.
`
`Background ...................................................................................................... 2
`Petitioner fails to authenticate Exhibit 1007 ................................................... 3
`A.
`The Hall-Ellis Declaration fails to authenticate Exhibit 1007 .............. 3
`B.
`The Pierce Declaration fails to authenticate Exhibit 1007 .................... 6
`C.
`The Second Hall-Ellis Declaration alleges that Exhibit 1007 is a copy
`of a different document than that alleged by Petitioner’s other
`evidence ................................................................................................. 8
`III. Conclusion ....................................................................................................... 8
`
`i
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`Case No. IPR2021-01166
`Attorney Docket: 25236-0267IP1
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`Patent Owner submits this Motion to Exclude pursuant to 37 C.F.R. §
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`42.64(c) and the Federal Rules of Evidence (“FRE”). Patent Owner requests that
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`the Board exclude Exhibit 1007 under FRE 901 because Petitioner has failed to
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`authenticate Exhibit 1007 by “produc[ing] evidence sufficient to support a finding
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`that the item is what” Petitioner “claims it is.” FRE 901.
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`Specifically, Petitioner claims that Exhibit 1007 is a German doctoral
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`dissertation by Kathleen O’Brien entitled “Inductively Coupled Radio Frequency
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`Power Transmission System for Wireless Systems and Devices” (hereinafter the
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`“O’Brien Dissertation”).1 Ex. 1005, [38]. Petitioner submitted declaration
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`testimony from two different declarants attempting to authenticate Exhibit 1007.
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`One declarant (Dr. Hall-Ellis) concluded that Exhibit 1007 was a “true and correct
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`copy” of the O’Brien Dissertation based solely on the general appearance of
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`Exhibit 1007 (e.g., ., “no pages are missing … text on each page appears to flow
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`seamlessly from one page to the next … no visible alterations”) without ever
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`reviewing an authentic copy of the O’Brien Dissertation or performing any type of
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`1 Kathleen O’Brien, Inductively Coupled Radio Frequency Power
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`Transmission System for Wireless Systems and Devices (2007) (Ph.D. dissertation,
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`Technical University of Dresden). See Ex. 1024, [2].
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`1
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`Case No. IPR2021-01166
`Attorney Docket: 25236-0267IP1
`comparison. See Ex. 1005, [38]. That same declarant later submitted a second
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`declaration testifying that Exhibit 1007 was a copy of a different document than
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`the O’Brien Dissertation. See Ex. 1025. Petitioner’s other declarant (Michael T.
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`Pierce, listed as backup counsel in this case) provided only conclusory testimony
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`linking Exhibit 1007 and the O’Brien Dissertation, and provided no explanation
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`whatsoever to support his conclusion that Exhibit 1007 is a “true and correct copy”
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`of O’Brien. See Ex. 1024, [2].
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`Admittedly, the Board has generally set the bar for authenticating a
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`reference low. However, given the questionable nature of Petitioner’s
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`authentication evidence in this case (e.g., conflicting declaration testimony from
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`one declarant, conclusory testimony from Petitioner’s counsel), along with the
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`insufficiency of that evidence to prove that Exhibit 1007 is authentic, the Board
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`should grant this Motion and exclude Exhibit 1007 from the present proceeding.
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`I.
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`Background
`On January 24, 2022, Patent Owner timely objected to Exhibit 1007 under
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`FRE 901. Paper 9, 1. This objection is explained below as required by 37 CFR
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`42.64(c). On January 28, 2022, Petitioner served supplemental evidence in
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`response to Patent Owner’s objections consisting of the Declaration of Michael T.
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`Pierce (Ex. 1024), and the Declaration of Sylvia Hall-Ellis (Ex. 1025).
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`2
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`II.
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`Case No. IPR2021-01166
`Attorney Docket: 25236-0267IP1
`Petitioner fails to authenticate Exhibit 1007
`Petitioner’s evidence relating to the authenticity of Exhibit 1007 consists of:
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`1. Ex. 1005 – The Declaration of Sylvia D. Hall-Ellis, Ph.D (the “Hall-
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`Ellis Declaration”);
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`2. Ex. 1024 – The Declaration of Michael T. Pierce (the “Pierce
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`Declaration”); and
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`3. Ex. 1025 - The Second Declaration of Sylvia Hall-Ellis, Ph.D (the
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`“Second Hall-Ellis Declaration”).
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`As explained below, this evidence, both individually and cumulatively, is
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`insufficient to authenticate Exhibit 1007.
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`A. The Hall-Ellis Declaration fails to authenticate Exhibit 1007
`The Hall-Ellis Declaration states that she was “retained as an expert by”
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`Petitioner to “provide [her] expert opinion regarding the authenticity and public
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`availability of” Exhibit 1007. Ex. 1005, [2]. Dr. Hall-Ellis testifies that the
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`declaration “sets forth [her] opinions in detail and provides the bases for [her]
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`opinions regarding the public availability” of the Exhibit. Id.
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`The declaration includes two Attachments (1a and 1b) related to public
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`availability. Dr. Hall-Ellis testifies that “Attachment 1a” to the declaration “is a
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`true and correct copy of the online catalog record” for the O’Brien Dissertation,
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`and that she “personally identified and retrieved the library catalog record that is
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`3
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`Case No. IPR2021-01166
`Attorney Docket: 25236-0267IP1
`Attachment 1a.” Id., [39].2 She also testifies that “Attachment 1b is a true and
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`correct copy of the MARC record for the” O’Brien Dissertation, and that, again,
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`she “personally identified and retrieved the MARC record that is Attachment 1b.”
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`Id., [40].
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`Dr. Hall-Ellis also testifies that the “Exhibit 1007 is a true and correct copy
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`of [the] O’Brien [Dissertation].” Id., [38]. But unlike Attachments 1a and 1b,
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`which she “personally identified and retrieved,” Dr. Hall-Ellis testifies that she
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`“obtained [Exhibit 1007] from counsel,” and concluded that it was a “true and
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`correct copy” of the O’Brien Dissertation because “the text is complete; no pages
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`are missing, … the text on each page appears to flow seamlessly from one page to
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`the next; [and] there are no visible alterations to the document.” Id., [38]
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`(footnotes omitted).
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`Dr. Hall-Ellis’ declaration testimony is insufficient to prove that Exhibit
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`1007 is a true and correct copy of the O’Brien Dissertation for several reasons.
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`First, Dr. Hall-Ellis’ statement that “Exhibit 1007 is a true and correct copy of [the]
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`O’Brien [Dissertation]” is not based on personal knowledge and is not supported
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`by any other evidence. Based on her testimony, Dr. Hall-Ellis did not “personally
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`identif[y] and retrieve[]” Exhibit 1007—she “obtained” it “from counsel.” Id. Nor
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`2 All emphasis added unless otherwise indicated.
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`4
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`Case No. IPR2021-01166
`Attorney Docket: 25236-0267IP1
`did Dr. Hall-Ellis “personally identif[y] and retrieve[]” (e.g., via the internet) a
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`copy of the O’Brien Dissertation from the “Technischen Universität Dresden
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`Library” (where Attachment 1a indicates it is cataloged) for comparison with
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`Exhibit 1007. Id. Because Dr. Hall-Ellis neither personally retrieved Exhibit
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`1007, nor compared Exhibit 1007 to an authentic version of the O’Brien
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`Dissertation, she has no personal knowledge regarding the authenticity of Exhibit
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`1007. Thus, her statement that “Exhibit 1007 is a true and correct copy of [the]
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`O’Brien [Dissertation]” is insufficient to authenticate Exhibit 1007. See id.
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`Second, Dr. Hall-Ellis’ testimony regarding the general appearance of
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`Exhibit 1007 (e.g., “no pages are missing … text on each page appears to flow
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`seamlessly from one page to the next … no visible alterations”) does not support a
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`conclusion that Exhibit 1007 is a true and correct copy of the O’Brien Dissertation.
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`See id. Exhibit 1007 appearing to Dr. Hall-Ellis to be a cogent document does not
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`have any bearing on whether its contents are the same as (i.e., whether it is “a true
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`and correct copy”) of the O’Brien Dissertation. Thus, Dr. Hall-Ellis’ testimony
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`regarding the general appearance of Exhibit 1007 is insufficient to authenticate
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`Exhibit 1007.
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`Outside of paragraph 38, which is discussed at length above, the Hall-Ellis
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`Declaration does not appear to include any other testimony related to the
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`5
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`Case No. IPR2021-01166
`Attorney Docket: 25236-0267IP1
`authenticity of Exhibit 1007. Thus, for at least the reasons discussed above, the
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`Hall-Ellis Declaration is insufficient to authenticate Exhibit 1007.
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`B.
`The Pierce Declaration fails to authenticate Exhibit 1007
`The Pierce Declaration contains testimony from “Michael T. Pierce,” who is
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`identified as “an associate at the law firm of Latham & Watkins LLP” (the firm
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`representing Petitioner in this case). Ex. 1024, [1]. The declaration includes only
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`one sentence of testimony regarding Exhibit 1007:
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`Exhibit 1007 is a true and correct copy of Kathleen
`O’Brien, Inductively Coupled Radio Frequency Power
`Transmission System for Wireless Systems and Devices
`(2007) (Ph.D. dissertation, Technical University of
`Dresden), available at http://www.shaker.de/de/content/
`catalogue/index.asp?lang=de&ID=8&ISBN=978-3-8322-
`5775-0.
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`Id., [2]. This testimony is insufficient to authenticate Exhibit 1007 for several
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`reasons.
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`First, the testimony provides no explanation of how Mr. Pierce concluded
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`that Exhibit 1007 is a true and correct copy of the O’Brien Dissertation. See id.
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`Did Mr. Pierce personally retrieve Exhibit 1007 from the provided URL prior to
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`the filing of the Petition (i.e., seven months or more before the Pierce Declaration
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`was filed)? Did he compare Exhibit 1007 to a document retrieved from the
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`6
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`Case No. IPR2021-01166
`Attorney Docket: 25236-0267IP1
`provided URL and determine them to be textually identical? Curiously, the
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`declaration leaves us to speculate. Thus, this testimony is insufficient to
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`authenticate Exhibit 1007.
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`Second, Mr. Pierce is listed as a backup counsel for Petitioner in this case
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`(subject to a pro hac vice motion which was never filed). See Paper 2, 77. While
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`Mr. Pierce’s representation of Petitioner does not make his testimony unreliable
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`per se, it should inform the Board’s decision regarding how much weight to afford
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`to his unexplained, unsupported testimony regarding the authenticity of Exhibit
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`1007.
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`Third, Mr. Pierce’s conclusion that Exhibit 1007 is a “true and correct” copy
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`of the O’Brien Dissertation is, in fact, incorrect. Exhibit 1007 includes the
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`“Declaration of Irina Hinrichs” (pages 119-201) and an English translation of the
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`title page and page 3 of the PDF (pages 202-205). See Ex. 1005, [38] (describing
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`the inclusion of these materials in Exhibit 1007). These pages were prepared by
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`Momentum specifically for this proceeding, and thus would not be part of any
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`document downloaded from the URL Mr. Pierce provides. See id. Accordingly,
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`Mr. Pierce’s conclusion is incorrect, and thus his testimony is insufficient to
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`authenticate Exhibit 1007.
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`7
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`Case No. IPR2021-01166
`Attorney Docket: 25236-0267IP1
`C. The Second Hall-Ellis Declaration alleges that Exhibit 1007 is a
`copy of a different document than that alleged by Petitioner’s
`other evidence
`The Second Hall-Ellis Declaration (Ex. 1025) states that Exhibit 1007 is a
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`copy not of the O’Brien Dissertation, but of a completely different document by
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`different authors. The declaration states that “Exhibit 1007 is an electronic copy of
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`a conference paper published in Proceedings of the 35th Annual IEEE Power
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`Electronics Specialists Conference found in the Linda Hall Library (Kansas City,
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`Missouri).” Ex. 1025, [50]. Specifically, Dr. Hall-Ellis testifies that Exhibit 1007
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`is a copy of “High Frequency Resonant Inverter for Contactless Energy
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`Transmission Over Large Air Gap” by R. Mecke and C. Rathge. Id. This
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`testimony is contrary to both Dr. Hall-Ellis’ first declaration (Ex. 1005) and the
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`Pierce Declaration (Ex. 1025), neither of which allege Exhibit 1007 to be a copy of
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`“High Frequency Resonant Inverter for Contactless Energy Transmission Over
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`Large Air Gap” by R. Mecke and C. Rathge. Compare Ex. 1025, [50] with Ex.
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`1024, [2] and Ex. 1005, [38]. Thus, the Second Hall-Ellis Declaration not only
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`fails to show that Exhibit 1007 is a true and correct copy of the O’Brien
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`Dissertation, but potentially calls Dr. Hall-Ellis’ and Mr. Pierce’s testimony on this
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`point into question.
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`III. Conclusion
`For the foregoing reasons, Exhibit 1007 should be excluded.
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`8
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`Date: 9/16/2022
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`Case No. IPR2021-01166
`Attorney Docket: 25236-0267IP1
` Respectfully submitted,
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`
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`
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`/Daniel D. Smith/
`Joshua A. Griswold, Reg. No. 46,310
`W. Karl Renner, Reg. No. 41,265
`Daniel D. Smith, Reg. No. 71,278
`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 Patent Owner
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`9
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`Case No. IPR2021-01166
`Attorney Docket: 25236-0267IP1
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(1) and 42.6(e)(4)(iii), the undersigned
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`certifies that on September 16, 2022, a complete and entire copy of this Patent
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`Owner’s Motion to Exclude was provided by email to the Petitioner by serving the
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`email correspondence addresses of record as follows:
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`Jonathan M. Strang
`Inge A. Osman
`Jeffrey G. Homrig
`Blake R. Davis
`Michael T. Pierce
`Latham & Watkins LLP
`555 Eleventh Street, NW, Ste. 1000
`Washington, DC 20004-1304
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`E-mail: jonathan.strang@lw.com
`Inge.osman@lw.com
`Jeff.homrig@lw.com
`blake.davis@lw.com
`mike.pierce@lw.com
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`/Diana Bradley/
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`Diana Bradley
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(858) 678-5667
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