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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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`UNIFIED PATENTS, LLC
`Petitioner
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`v.
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`MEMORYWEB, LLC
`Patent Owner
`____________
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`Case No. IPR2021-01413
`Patent 10,621,228
` ____________
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`PETITIONER’S MOTION TO EXCLUDE
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`IPR2021-01413
`U.S. Patent 10,621,228
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`In accordance with 37 C.F.R. § 42.64(c), Petitioner Unified Patents, LLC
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`(“Petitioner”) respectfully moves to exclude Exhibits 2041, 2042, and 2045.
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`Petitioner timely objected to these exhibits in its objections to evidence filed October
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`18, 2022,1 within five business days of service of the evidence. Paper 38.
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`I. EXHIBITS 2041, 2042, AND 2045 WERE FILED IN VIOLATION OF
`37 C.F.R. § 42.23(b) AND SHOULD BE EXCLUDED
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`37 C.F.R. § 42.23(b) is clear: “[a] sur-reply may only respond to arguments
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`raised in the corresponding reply and may not be accompanied by new evidence
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`other than deposition transcripts of the cross-examination of any reply
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`witness.”2 37 C.F.R. § 42.23(b); see also Consolidated Trial Practice Guide, 73
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`(“[t]he sur-reply may not be accompanied by new evidence other than deposition
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`transcripts of the cross-examination of any reply witness”). The Board has
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` Petitioner objected to Exhibits 2041, 2042, and 2045 under 37 C.F.R. § 42.23(b) in its
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` 1
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`filed objections to evidence, as well as during Dr. Bederson’s reply deposition when they
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`were introduced by Patent Owner. See Paper 38, 1; see, e.g., EX2046, 52:7-25, 59:7-20,
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`79:18-80:2.
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`2 Bolding indicates emphasis added unless otherwise noted.
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`1
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`IPR2021-01413
`U.S. Patent 10,621,228
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`explained that “Rule 42.23(b) provides a blanket prohibition on the patentee filing
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`new exhibits (other than deposition transcripts of the cross-examination of any reply
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`witness) with a sur-reply.” See, e.g., Netflix v. Divx, IPR2020-00511, Paper 46, 54
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`(PTAB Aug. 13, 2021); Intel Corp. v. Parkervision, Inc., IPR2020- 01265, Paper 44,
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`74 (PTAB Jan. 21, 2022); Hamilton Techs. LLC v. Fleur Tehrani, IPR2020-01199,
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`Paper 57, 51-54 (PTAB Dec. 28, 2021).
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`Patent Owner filed Exhibits 2041, 2042, and 20453 with its Sur-Reply (Paper
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`35) on October 11, 2022.4 These exhibits are not deposition transcripts. Therefore,
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`Exhibits 2041, 2042, and 2045 must be excluded under 37 C.F.R. § 42.23(b).
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` Patent Owner introduced Exhibits 2041, 2042, and 2045 for the first time during the reply
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` 3
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`deposition of Dr. Bederson. EX2046, 52:7-25, 59:7-20, 79:18-80:2. Patent Owner’s use of
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`these exhibits during this deposition was improper under 37 C.F.R. § 42.53 (d)(5)(ii) as it
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`exceeded the scope of the direct testimony in Dr. Bederson’s reply declaration (EX1038).
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`4 Patent Owner also filed Exhibits 2043 and 2044 with its Sur-Reply, which Petitioner
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`Objected to. Paper 38. Per the Board’s authorization, Petitioner filed a Sur-Sur Reply
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`2
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`IPR2021-01413
`U.S. Patent 10,621,228
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`To the extent Patent Owner argues Exhibits 2041, 2042, and 2045 are
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`admissible in the interests of justice because they constitute deposition evidence that
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`provide context for Dr. Bederson’s testimony, this argument fails. Patent Owner
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`does not rely on Exhibits 2041, 2042, or 2045, or Dr. Bederson’s testimony
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`regarding these exhibits, in its Sur-Reply (or any of its other papers). Moreover,
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`Patent Owner introduced Exhibits 2041, 2042, and 2045 for the first-time during Dr.
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`Bederson’s reply deposition and did not serve them to Petitioner in advance of the
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`deposition. EX2046, 52:7-25, 59:7-20, 79:18-80:2.5 Dr. Bederson testified during
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`that deposition that he had not seen these exhibits before in this proceeding and was
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`not familiar with them. Id., 190:3-12. Exhibits 2041, 2042, and 2045 therefore do
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`not provide context for Dr. Bederson’s testimony and are not reliable to test his
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`addressing the portions of Patent Owner’s Sur-Reply that relied on these exhibits. Paper
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`42. Therefore, these exhibits are not subject to this Motion.
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`5 Patent Owner introduced these exhibits at such a late stage of the proceeding even
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`though it could have introduced them earlier, such as with its Patent Owner Response
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`or during Dr. Bederson’s first deposition, but chose not to.
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`3
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`IPR2021-01413
`U.S. Patent 10,621,228
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`opinions, and should be excluded; the interests of justice do not necessitate
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`otherwise. See Netflix, IPR2020-00511, Paper 46, 52–55 (Board granting motion to
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`exclude exhibits introduced during reply deposition and filed by patent owner with
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`its Sur-Reply, finding that since the exhibits did not provide context for deposition
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`testimony as the declarant testified he had not seen the exhibits before, the interests
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`of justice did not weigh in favor of maintaining the exhibits); see also Netflix, Inc.
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`v. DivX, LLC, IPR2020-00558, Paper 50, 32-36 (PTAB Aug. 23, 2021) (Board
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`granting motion to exclude exhibit introduced during reply deposition and filed by
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`patent owner with its Sur-Reply, finding that since the exhibit did not provide
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`context for deposition testimony as the declarant testified he had not prepared for
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`the deposition using the newly introduced exhibit, the interests of justice did not
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`weigh in favor of maintaining the exhibit).
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`II. EXHIBITS 2041, 2042, AND 2045 SHOULD BE EXCLUDED UNDER
`THE FEDERAL RULES OF EVIDENCE (“FRE”) 401-403
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`The FRE apply to this proceeding. See 37 C.F.R. § 42.62. The Board may
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`exercise its discretion to exclude evidence entirely, or alternatively, may decline to
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`consider evidence. CBS Interactive Inc. v. Helferich Patent Licensing, LLC,
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`IPR2013-00033, Paper 79, 3 (PTAB Aug. 9, 2013). According to FRE 401
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`4
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`IPR2021-01413
`U.S. Patent 10,621,228
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`“Evidence is relevant if: (a) it has any tendency to make a fact more or less probable
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`than it would be without the evidence; and (b) the fact is of consequence in
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`determining the action.” FRE 401. “Relevancy is not an inherent characteristic
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`of any item of evidence.” FRE 401 Notes of Advisory Committee. “The standard
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`of probability under the rule is ‘more probable than it would be without the
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`evidence.’” Id. According to FRE 402, “[i]rrelevant evidence is not admissible.”
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`FRE 402. FRE 403 adds that relevant evidence may be excluded “if its probative
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`value is substantially outweighed by a danger of one or more of the following: unfair
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`prejudice, confusing the issues, misleading the jury, undue delay, wasting time, or
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`needlessly presenting cumulative evidence.” FRE 403.
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`As discussed above, Patent Owner introduced Exhibits 2041, 2042, and 2045
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`for the first-time during Dr. Bederson’s reply deposition and filed them with its Sur-
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`Reply. Supra, 2-3. But Patent Owner does not rely on Exhibits 2041, 2042, or 2045
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`in its Sur-Reply (or in any of its other papers), and likewise does not rely on any
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`deposition testimony of Dr. Bederson regarding these exhibits. Thus, these exhibits
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`have no bearing on any facts in the case, much less have “any tendency to make a
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`fact more or less probable than it would be without” the exhibits. FRE 401. The
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`exhibits are not “relevant” within the meaning of the Federal Rules of Evidence.
`5
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`IPR2021-01413
`U.S. Patent 10,621,228
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`Id. Thus, the irrelevant exhibits are not admissible. FRE 402; see also, e.g., SK
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`Innovation Co., Ltd. v. Celgard, LLC, IPR2014-00679, Paper 58, 49 (PTAB Sept. 25,
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`2015), Shimano Inc., v. Globeride, Inc., IPR2015-00273, Paper 40, 27-28 (PTAB
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`June 16, 2016) (each granting motion to exclude uncited exhibits).
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`Even if Exhibits 2041, 2042, and 2045 were relevant (which they are not),
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`they have minimal probative value that is substantially outweighed by dangers of
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`unfair prejudice, confusing the issues, undue delay, and wasting time. FRE 403. As
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`discussed, Patent Owner does not cite to any to any of the exhibits or testimony
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`addressing the exhibits. Thus, the exhibits have little to no probative value. And
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`Exhibits 2041, 2042, and 2045 create a myriad of dangers contemplated by the FRE.
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`They serve only as noise to distract from the proceeding and unduly waste both the
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`Board’s and Petitioner’s time as being evidence that is not used. They also confuse
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`the issues by adding to the record evidence that, due to their none-use by Patent
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`Owner, has no bearing on the issues. For the same reasons, Exhibits 2041, 2042, and
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`2045 create a risk of side issues in this proceeding and any appeal therefrom.
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`Accordingly, Exhibits 2041, 2042, and 2045 should be excluded. FRE 403.
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`6
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`Date: November 22, 2022
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`IPR2021-01413
`U.S. Patent 10,621,228
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`Respectfully submitted,
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`/Ellyar Y. Barazesh/
`Ellyar Y. Barazesh
`Reg. No. 74,096
`Counsel for Petitioner
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`7
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`CERTIFICATE OF SERVICE
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`IPR2021-01413
`U.S. Patent 10,621,228
`
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`The undersigned hereby certifies
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`that a copy of
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`the
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`foregoing
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`PETITIONER’S MOTION TO EXCLUDE was served on November 22, 2022, via
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`electronic mail, as agreed to by counsel, upon the following counsel for Patent
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`Owner:
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`
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`Jennifer Hayes
`Nixon Peabody LLP
`300 South Grand Avenue, Suite 4100
`Los Angeles, CA 90071-3151
`jenhayes@nixonpeabody.com
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`George Dandalides
`Nixon Peabody LLP
`70 West Madison, Suite 5200
`Chicago, IL 60602-4224
`gdandalides@nixonpeabody.com
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`Matthew A. Werber
`Nixon Peabody LLP
`70 West Madison, Suite 5200
`Chicago, IL 60602-4224
`mwerber@nixonpeabody.com
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`Date: November 22, 2022
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`/Ashley F. Cheung/
`Ashley F. Cheung
`Paralegal
`Unified Patents, LLC
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