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 REPLY TO
`OPPOSITION TO MOTION TO EXCLUDE
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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
`
`
`
`
`
`
`
`
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`PATENT OWNER'S REPLY TO
`OPPOSITION TO MOTION TO EXCLUDE
`
`
`
`
`
`
`
`Case No. IPR2021-01166
`Patent No. 8,304,935
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`Case No. IPR2021-01166
`Attorney Docket: 25236-0267IP1
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`TABLE OF CONTENTS
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`Mr. Pierce’s testimony does not authenticate Exhibit 1007 ............................ 1
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`Dr. Hall-Ellis’ testimony does not authenticate Exhibit 1007 ........................ 2
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`I.
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`II.
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`III. Exhibit 1007 is not self-authenticating ............................................................ 3
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`IV. Petitioner mischaracterizes Patent Owner’s burden ........................................ 4
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`V.
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`Conclusion ....................................................................................................... 5
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`i
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`Case No. IPR2021-01166
`Attorney Docket: 25236-0267IP1
`Patent Owner submits the following Reply to Petitioner’s Opposition (Paper
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`30, the “Opposition”) to Patent Owner’s Motion to Exclude (Paper 28, the
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`“Motion”). As explained herein and in the prior Motion, Petitioner has not
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`provided evidence sufficient to authenticate Exhibit 1007. Thus, the Board should
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`grant the Motion and exclude Exhibit 1007 from the present proceeding.
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`I. Mr. Pierce’s testimony does not authenticate Exhibit 1007
`Mr. Pierce’s declaration (Ex. 1024, the “Pierce Declaration”) is not
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`sufficient to authenticate Exhibit 1007. As noted in the Motion, Mr. Pierce1
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`provides no testimony explaining how he concluded that Exhibit 1007 is a true and
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`correct copy of the O’Brien Dissertation. See Motion, 6-7; Ex. 1024, [2].
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`Recognizing this deficiency, Petitioner, in its Opposition, attempts to fill in these
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`gaps with attorney argument, such as by providing a description of the website
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`pointed to by the URL, and a statement that the “information provided in the URL
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`referenced in Mr. Pierce’s declaration matches the contents of Exhibit 1007.”
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`Opposition, 3. However, such attorney argument should not be considered when
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`deciding whether Petitioner has provided sufficient evidence to authenticate
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`Exhibit 1007 (which, as explained in the Motion, it has not).
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`1 Petitioner removed Mr. Pierce as backup counsel on April 28, 2022 (see
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`Paper 15)—well after submission of the Pierce Declaration.
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`1
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`Case No. IPR2021-01166
`Attorney Docket: 25236-0267IP1
`In addition, as noted in the Motion, Mr. Pierce’s conclusion that Exhibit
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`1007 is a “true and correct” copy of the O’Brien Dissertation is factually incorrect,
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`because Exhibit 1007 includes the “Declaration of Irina Hinrichs” (pages 199-201)
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`and an English translation of the title page and page 3 of the PDF (pages 202-205).
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`See Motion, 7; Ex. 1005, [38] (describing the inclusion of these materials in
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`Exhibit 1007). The Opposition does not address this factual inaccuracy in Mr.
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`Pierce’s testimony.
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`Thus, Mr. Pierce’s conclusory and factually inaccurate testimony fails to
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`authenticate Exhibit 1007.
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`II. Dr. Hall-Ellis’ testimony does not authenticate Exhibit 1007
`Neither of Dr. Hall-Ellis’ declarations (Ex. 1005, the “First Hall-Ellis
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`Declaration,” and Ex. 1025, the “Second Hall-Ellis Declaration”) are sufficient to
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`authentication Exhibit 1007.
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`With respect to the First Hall-Ellis Declaration, Petitioner confirms that Dr.
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`Hall-Ellis “relied on the contents of Ex. 1007 compared to library and MARC
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`records… to verify that Exhibit 1007 is what Momentum purports it to be.”
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`Opposition, 5 (emphasis added). Based on Dr. Hall-Ellis’ testimony, this
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`comparison consisted solely of verifying that the page number of the last page in
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`Exhibit 1007 before the “Declaration of Irina Hinrichs” matched the number of
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`pages listed in the “library and MARC records.” See Ex. 1005, p. 19 note 21.
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`2
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`Case No. IPR2021-01166
`Attorney Docket: 25236-0267IP1
`Neither the First Hall-Ellis Declaration nor the Opposition claim that Dr. Hall-Ellis
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`ever reviewed an authentic version of the O’Brien Dissertation, much less
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`performed any comparison between such an authentic version and the contents of
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`Exhibit 1007. See Opposition, 4-7; Ex. 1005, [38] (Dr. Hall-Ellis “obtained”
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`Exhibit 1007 “from counsel.”). Thus, the First Hall-Ellis Declaration is
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`insufficient to authenticate Exhibit 1007.
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`Regarding the Second Hall-Ellis Declaration, Petitioner, in the Opposition,
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`states that it “served Dr. Hall-Ellis’ declaration from” a different proceeding “in
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`this proceeding in response to Patent Owner’s authenticity objection to Exhibit
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`1016.” Opposition, p. 6 note 2. Petitioner did not provide this or any explanation
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`when it served the Second Hall-Ellis Declaration in response to Patent Owner’s
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`objections. Thus, Patent Owner’s arguments in the Motion with respect to the
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`Second Hall-Ellis Declaration were not “fundamentally misleading and
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`disingenuous” as Petitioner claims, but were in fact based on the (lack of)
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`information Patent Owner received regarding the intended use of the document.
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`Regardless, at best, as the Opposition admits, the Second Hall-Ellis Declaration “is
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`simply not relevant,” and thus is insufficient to the authenticate Exhibit 1007.
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`III. Exhibit 1007 is not self-authenticating
`The Opposition argues, without evidence, that Exhibit 1007 is self-
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`authenticating because “Exhibit 1007 contains a Shaker Verlag trade inscription,
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`3
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`Case No. IPR2021-01166
`Attorney Docket: 25236-0267IP1
`copyright data, and ISBN.” Opposition, 7. However, Petitioner fails to provide
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`any evidence that (or even any explanation of why) these constitute an “inscription,
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`sign, tag, or label purporting to have been affixed in the course of business and
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`indicating origin, ownership, or control” as it alleges. See id. The Board should
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`not “accept, as a substitute for evidence” such conclusory assertions by Petitioner’s
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`counsel. See TRW Automotive U.S. LLC, v. Magna Electronics Inc., IPR2014-
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`01347, Paper No. 25, pp. 9-11 (Jan. 6, 2016) (finding a purported ISBN did not
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`support a document’s authenticity where the party did not produce evidence
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`showing “what an ISBN is, what an ISBN signifies, how an ISBN is assigned, who
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`assigns it, or when and under what circumstances an ISBN is stamped onto
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`something.”). Thus, Petitioner’s argument regarding the alleged “Shaker Verlag
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`trade inscription, copyright data, and ISBN” contained in Exhibit 1007 are
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`insufficient to authenticate Exhibit 1007.
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`IV. Petitioner mischaracterizes Patent Owner’s burden
`Petitioner argues that “Patent Owner does not satisfy its burden to prove
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`Exhibit 1007 is not authentic.” Opposition, 8. Patent Owner has no such burden.
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`It is Petitioner’s burden to produce evidence sufficient to authenticate Exhibit
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`1007, and as shown in the Motion and herein, it has failed to carry this burden.
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`See, e.g., Opposition, 1-2 (explaining Petitioner’s burden).
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`4
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`V. Conclusion
`The Opposition argues that authentication is “low bar,” and that Petitioner
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`Case No. IPR2021-01166
`Attorney Docket: 25236-0267IP1
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`need only provide evidence “sufficient to support a finding that the item is what
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`the proponent claims it is.” Opposition, 1-2. None of the evidence provided by
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`Petitioner is sufficient to support such a finding.
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`As explained above, the Pierce Declaration is conclusory and factually
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`inaccurate with respect to the contents of Exhibit 1007. See Ex. 1024, [2]. Dr.
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`Hall-Ellis’ testimony, at most, shows that the last page number of the portion of
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`Exhibit 1007 alleged to be the O’Brien Dissertation matches the number of pages
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`listed in the “library and MARC records” for the O’Brien Dissertation. See Ex.
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`1005, p. 19 note 21. Two documents having the same number of pages is not
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`sufficient to support a finding that the contents of the two documents are the same.
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`Accordingly, Petitioner has not provided evidence sufficient to authenticate
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`Exhibit 1007. Thus, the Board should grant the Motion and exclude Exhibit 1007.
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`5
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`Date: 9/30/2022
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`Case No. IPR2021-01166
`Attorney Docket: 25236-0267IP1
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` Respectfully submitted,
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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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`6
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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 30, 2022, a complete and entire copy of Patent Owner's
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`Reply to Opposition to Motion to Exclude was provided by email to the Petitioner
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`by serving the email correspondence addresses of record as follows:
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`Jonathan M. Strang
`Inge A. Osman
`Jeffrey G. Homrig
`Blake R. Davis
`Dale Chang
`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
`dale.chang@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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`7
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