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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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`FACEBOOK, INC.,
`Petitioner
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`v.
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`EXPRESS MOBILE, INC.,
`Patent Owner
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`Case IPR2021-01457
`Patent No. 9,928,044
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`PATENT OWNER’S OBJECTIONS PURSUANT TO 37 C.F.R. § 42.64(b)(1)
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`Pursuant to 37 C.F.R. § 42.64(b)(1) and the Federal Rules of Evidence
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`(“FRE”), Patent Owner Express Mobile, Inc., objects to the following documents
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`submitted by Petitioner Facebook, Inc.
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`Nothing in this paper should be construed as an admission that any rights of
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`Patent Owner would have been waived or forfeited had the paper or any objection
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`herein not been filed, or that 37 C.F.R. § 42.64(b) applies to any of the objections
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`herein if § 42.64(b) would not otherwise apply. The objections herein are premised
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`upon § 42.64 potentially being determined to apply to the document in question and
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`are submitted solely to preserve the rights of Patent Owner should § 42.64(b) be
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`determined to apply.
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`1.
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`Exhibit 1021
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`Under FRE and 37 C.F.R. § 42.65, this document is inadmissible to the extent
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`that it is conclusory and does not disclose the bases for the opinions offered therein.
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`Under FRE 401/402/403/702, this document includes testimony not relevant to the
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`instituted review, because, among other things, it has not been shown that the
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`purportedly expert declarant is qualified to testify competently regarding the matters
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`the opinions are said to address, or that the declarant’s testimony is based on
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`sufficient facts or data or arrived at by reliable principles, procedures, or methods
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`reliably applied to the facts of this case, or that the declarant’s opinion will assist the
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`trier of fact to understand the evidence or to determine any fact in issue and does not
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`1
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`have a greater potential to mislead than to enlighten. Under FRE 602/701/801/802
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`and 37 C.F.R. § 42.61, this document includes testimony that is not shown to be
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`based on first-hand knowledge including of how relied-upon data was generated, is
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`based on speculation, and constitutes and contains inadmissible hearsay. Under FRE
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`401/705 and 37 C.F.R. § 42.65, this document includes testimony on patent law and
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`practice. Under 37 C.F.R. § 42.6(a)(3), this document is inadmissible to the extent
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`that to it relies upon material not presented in the Reply.
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`2.
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`Exhibit 1022
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`Under the Trial Practice Guide, this exhibit is untimely because it is relied
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`upon to establish the Petition’s case-in-chief and could have been submitted with the
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`Petition. Under FRE 801/802, this document constitutes and contains inadmissible
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`hearsay. Under FRE 106/1001, 35 U.S.C. § 312(a)(3) & (5), and 37 C.F.R. §
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`42.51(b)(1), this document is incomplete and is not a copy which accurately
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`reproduces the original. Under FRE 901, this document is inadmissible because it
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`has not been shown to be authenticated or identified. The document is relied upon
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`as evidence of prior art or of common knowledge or understanding of persons in the
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`art at the priority date at issue, but is inadmissible because it has not been shown to
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`qualify as prior art under, inter alia, 35 U.S.C. § 311(b), and there is a lack of
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`supporting documentation to demonstrate common knowledge or understanding as
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`of the priority date.
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`2
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`3.
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`Exhibit 1023
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`Under the Trial Practice Guide, this exhibit is untimely because it is relied
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`upon to establish the Petition’s case-in-chief and could have been submitted with the
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`Petition. Under FRE 801/802, this document constitutes and contains inadmissible
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`hearsay. Under FRE 106/1001, 35 U.S.C. § 312(a)(3) & (5), and 37 C.F.R. §
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`42.51(b)(1), this document is incomplete and are not a copy which accurately
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`reproduces the original. Under FRE 901, this document is inadmissible because it
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`has not been shown to be authenticated or identified. The document is relied upon
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`as evidence of prior art or of common knowledge or understanding of persons in the
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`art at the priority date at issue, but is inadmissible because it has not been shown to
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`qualify as prior art under, inter alia, 35 U.S.C. § 311(b), and there is a lack of
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`supporting documentation to demonstrate common knowledge or understanding as
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`of the priority date.
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`4.
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`Exhibit 1024
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`Under FRE 401/402/403, this document is inadmissible as irrelevant because,
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`among other things, it does not form a basis of the instituted grounds, and its
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`probative value is outweighed by other considerations including prejudice,
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`confusion, and waste of time.
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`5.
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`Exhibit 1025
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`Under FRE 401/402/403, this document is inadmissible as irrelevant because,
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`among other things, it does not form a basis of the instituted grounds, and its
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`3
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`probative value is outweighed by other considerations including prejudice,
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`confusion, and waste of time.
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`6.
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`Exhibit 1026
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`Under FRE 401/402/403, this document is inadmissible as irrelevant because,
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`among other things, it does not form a basis of the instituted grounds, and its
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`probative value is outweighed by other considerations including prejudice,
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`confusion, and waste of time.
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`7.
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`Exhibit 1027
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`Under FRE 401/402/403, this document is inadmissible as irrelevant because,
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`among other things, it does not form a basis of the instituted grounds, and its
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`probative value is outweighed by other considerations including prejudice,
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`confusion, and waste of time.
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`8.
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`Exhibit 1028
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`Under the Trial Practice Guide, this exhibit is untimely because it is relied
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`upon to establish the Petition’s case-in-chief and could have been submitted with the
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`Petition. Under FRE 801/802, this document constitutes and contains inadmissible
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`hearsay. Under FRE 401/402/403, this document is inadmissible as irrelevant
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`because, among other things, it does not form a basis of the instituted grounds, and
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`its probative value is outweighed by other considerations including prejudice,
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`confusion, and waste of time. The document is relied upon as evidence of prior art
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`or of common knowledge or understanding of persons in the art at the priority date
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`4
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`at issue but is inadmissible because it has not been shown to qualify as prior art
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`under, inter alia, 35 U.S.C. § 311(b), and there is a lack of supporting documentation
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`to demonstrate common knowledge or understanding as of the priority date.
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`Respectfully submitted,
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`/Kenneth Weatherwax/
`Sal Lim (Reg. No. 45,706)
`Kenneth Weatherwax (Reg. No. 54,528)
`David L. Alberti (Reg. No. 43,465)
`Russell S. Tonkovich (Reg. No. 64,101)
`Hong S. Lin (Reg. No. 54,629)
`Parham Hendifar (Reg. No. 71,470)
`Attorneys for Patent Owner
`Express Mobile, Inc.
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`Dated: September 22, 2022
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`5
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`CERTIFICATE OF SERVICE
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`I hereby certify that, pursuant to 37 C.F.R. § 42.6(e) and with the agreement
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`of counsel for Petitioner, a true and correct copy of PATENT OWNER’S
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`OBJECTIONS PURSUANT TO 37 C.F.R. § 42.64(b)(1) is being served
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`electronically on the date below, to the names and email addresses below:
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`Heidi L. Keefe
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`Phil Morton
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`Andrew Mace
`Chih Yun (Steve) Wu
`Dustin Knight
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`Mark R. Weinstein
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`hkeefe@cooley.com
`pmorton@cooley.com
`amace@cooley.com
`swu@cooley.com
`dknight@cooley.com
`mweinstein@cooley.com
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`Dated: September 22, 2022
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`By:_/Nick Yakoobian/______
`Nick Yakoobian
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`6
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