Paper No. 69
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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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`––––––––––––––––––
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MEMORYWEB, LLC,
`Patent Owner.
`
`––––––––––––––––––
`
`Case No. IPR2022-00031
`U.S. Patent No. 10,621,228
`
`––––––––––––––––––
`
`PETITIONER’S OBJECTIONS TO EVIDENCE
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––––––––––
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MEMORYWEB, LLC,
`Patent Owner.
`
`––––––––––––––––––
`
`Case No. IPR2022-00031
`U.S. Patent No. 10,621,228
`
`––––––––––––––––––
`
`PETITIONER’S OBJECTIONS TO EVIDENCE
`
`
`
`IPR2022-00031
`
`
`
`U.S. Patent No. 10,621,228
`
`Pursuant to 37 C.F.R. § 42.64(b)(1), Petitioner hereby submits initial
`
`objections to certain evidence Patent Owner provided (by agreement) on October
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`9, 2023, as contemplated exhibits in support of Patent Owner’s Reply in support of
`
`its motion to terminate, which is due to be filed later today. While Petitioner may
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`serve additional objections once it has had an opportunity to review Patent
`
`Owner’s Reply (after it is filed), and may, as appropriate, seek leave from the
`
`Board to file a motion to exclude or strike, Petitioner provides these initial
`
`objections in light of the compressed schedule currently in place (Date 6 currently
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`provides for both the Reply and any Motions to Exclude to be filed at the same
`
`time (today), and thus Petitioner cannot yet fully address Patent Owner’s evidence
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`newly submitted with the Reply or file a responsive motion to exclude or strike).
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`The discussion below identifies the late-filed and otherwise improper evidence of
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`which Petitioner is currently aware to which Petitioner initially objects. It further
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`summarizes the initial objections, including the Federal Rules of Evidence or other
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`rules, which serve as the basis for Petitioner’s objections.
`
`1.
`
`Ex. 2122 (“Usermanual.wiki PDF”) and Ex. 2123, ¶5
`(“Declaration of Angelo J. Christopher”)
`
`Petitioner objects to Ex. 2122 and to paragraph 5 of Ex. 2123 (which, inter
`
`alia, refers to Ex. 2122) because they are not relevant to any issue in this
`
`proceeding, and any theoretical relevance is outweighed by the risks of confusion,
`
`substantial danger of unfair prejudice, and/or misleading the fact finder. See Fed.
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`1
`
`
`
`
`IPR2022-00031
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`
`
`U.S. Patent No. 10,621,228
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`R. Evid. 401-403. Among other things, (i) Ex. 2122 (bearing a 2010 copyright
`
`date and containing different text and images1) is a different document from Ex.
`
`1005 (“A3UM,” bearing a 2009 copyright date) that was utilized in the Petition,
`
`(ii) there is an absence of evidence that Ex. 2122 was available to an ordinarily
`
`skilled searcher at the URL https://usermanual.wiki/apple/Aperture3.1938174072
`
`on or before September 3, 2021, and (iii) there is no evidence when, if at all, Ex.
`
`2122 became available such that it would qualify as prior art in these proceedings.
`
`See, e.g., Ex. 2108 at 2 (“© 2023 UserManual.wiki”); Ex. 2111, ¶23 (Patent
`
`Owner’s “expert” defining “relevant timeframe” as “on or before September 3,
`
`2021”); Ex. 1115, 135:22-136:8, 149:6-152:20. Petitioner further objects to this
`
`evidence as untimely and improper reply evidence. Patent Owner and its expert
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`were fully aware of the cited URL that Patent Owner asserts leads to Ex. 2122 at
`
`the time of the submission of Patent Owner’s motion (see, e.g., Ex. 2111, ¶49; Ex.
`
`1115, 149:6-152:20) and chose not to submit Ex. 2122 or Ex. 2123, ¶5 with the
`
`motion, thereby depriving Petitioner of any opportunity to address them through
`
`cross-examination or briefing. Indeed, at the deposition of Mr. Lhymn, counsel for
`
`MemoryWeb expressly stated on the record that it “[did not] believe there’s
`
`
`1 Compare, e.g., Ex. 1005 at 40 with Ex. 2122 at 47-48 and Ex. 1005 at 118 with
`
`Ex. 2122 at 118.
`
`2
`
`
`
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`IPR2022-00031
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`
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`U.S. Patent No. 10,621,228
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`anything that [Patent Owner was] relying on that [Petitioner did not] already have.”
`
`Ex. 1115, 181:6-18; see also id. 125:9-127:14. Patent Owner’s submission of Ex.
`
`2122 and Ex. 2123, ¶5 with its reply brief is in violation of the applicable rules
`
`governing this proceeding and is unfairly prejudicial to Petitioner, and any
`
`attempted reliance thereon is similarly in violation of the applicable rules and
`
`unfairly prejudicial to Petitioner (see Fed. R. Evid. 403). Petitioner expressly
`
`asserts, reserves, and does not waive any other objections that would be applicable
`
`in such a context.
`
`2.
`
`Exs. 2120 (“Salvador URL”), 2121 (“Salvador URL Result”) and
`2123, ¶¶2-4 (“Declaration of Angelo J. Christopher”)
`
`Petitioner objects to Exs. 2120-2121 and paragraphs 2-4 of Ex. 2122 (which,
`
`inter alia, refer to Exs. 2120-2121) because they are not relevant to any issue in
`
`this proceeding, and any theoretical relevance is outweighed by the risks of
`
`confusion, substantial danger of unfair prejudice, and/or misleading the fact finder.
`
`See Fed. R. Evid. 401-403. Among other things: (i) Exs. 2120 and 2121 are not the
`
`subject of any testimony by Patent Owner’s purported expert, Mr. Eugene Lhymn,
`
`regarding an allegedly reasonably diligent search by an ordinarily skilled searcher;
`
`(ii) the declarant of Ex. 2123, Mr. Christopher, does not purport to have any expert
`
`qualifications or basis to testify as to a reasonably diligent search by an ordinarily
`
`skilled searcher on or before September 3, 2021; and (iii) there is an absence of
`
`evidence that Ex. 2121 would result from the described activities on or before
`
`3
`
`
`
`
`IPR2022-00031
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`
`
`U.S. Patent No. 10,621,228
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`September 3, 2021 (see, e.g., EX2111 ¶23 (Patent Owner’s “expert” defining
`
`“relevant timeframe” as “on or before September 3, 2021”)). Petitioner further
`
`objects to this evidence as untimely and improper reply evidence. Patent Owner
`
`and its expert were fully aware of the cited URL at the time of submission of the
`
`motion to terminate (see, e.g., Ex. 2111, ¶42; Ex. 2101, 1; Ex. 1115, 95:24-97:15)
`
`and chose not to visit it or search archive.org for that URL, or to submit any results
`
`of doing so with Patent Owner’s motion, thereby depriving Petitioner of any
`
`opportunity to address Exs. 2120-2121 and Ex. 2123, ¶¶2-4 through cross-
`
`examination or briefing. Patent Owner’s submission of Exs. 2120-2121 and Ex.
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`2123, ¶¶2-4 is in violation of the applicable rules governing this proceeding and is
`
`unfairly prejudicial to Petitioner, and any attempted reliance thereon is similarly in
`
`violation of the applicable rules and unfairly prejudicial to Petitioner (see Fed. R.
`
`Evid. 403). Petitioner expressly asserts, reserves, and does not waive any other
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`objections that would be applicable in such a context.
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`* * *
`
`Petitioner submits these initial objections subject to and without waiver of its
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`right to provide different or further objections under the applicable rules and as
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`may otherwise be permitted by the Board, including after Petitioner has had an
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`opportunity to review Patent Owner’s Reply, which is due to be filed later today
`
`but has not yet been filed. As stated above, while Petitioner may as appropriate
`
`4
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`
`
`
`IPR2022-00031
`
`
`
`U.S. Patent No. 10,621,228
`
`seek leave from the Board to file a motion to exclude or strike at an appropriate
`
`time after an opportunity to review the Reply, Petitioner provides these initial
`
`objections in light of the compressed schedule currently in place (Date 6 currently
`
`provides for both the Reply and any Motions to Exclude to be filed at the same
`
`time (today), and thus Petitioner cannot yet fully address Patent Owner’s evidence
`
`newly submitted with the Reply or file a responsive motion to exclude or strike).
`
`
`
`Dated: October 10, 2023
`
`Respectfully Submitted,
`
`/J. Steven Baughman/
`Jeffrey P. Kushan
`Reg. No. 43,401
`SIDLEY AUSTIN LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`jkushan@sidley.com
`(202) 736-8914
`
`J. Steven Baughman
`Reg. No. 47,414
`GROOMBRIDGE, WU, BAUGHMAN &
`STONE LLP
`801 17th Street, N.W., Suite 1050
`Washington, D.C. 20006
`steve.baughman@groombridgewu.com
`(202) 505-5832
`Attorney for Petitioner
`
`5
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`
`
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`IPR2022-00031
`
`
`
`U.S. Patent No. 10,621,228
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 10th day of October, 2023, a copy of Petitioner’s
`
`Objections to Evidence has been served by electronic mail on the following
`
`addresses for patent owner(s):
`
`Jennifer Hayes, jenhayes@nixonpeabody.com
`George Dandalides, gdandalides@nixonpeabody.com
`Matthew A. Werber, mwerber@nixonpeabody.com
`Daniel Schwartz, djschwartz@nixonpeabody.com
`Angelo Christopher, achristopher@nixonpeabody.com
`
`Dated: October 10, 2023
`
`Respectfully Submitted,
`
`/J. Steven Baughman/
`Jeffrey P. Kushan
`Reg. No. 43,401
`SIDLEY AUSTIN LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`jkushan@sidley.com
`(202) 736-8914
`
`J. Steven Baughman
`Reg. No. 47,414
`GROOMBRIDGE, WU, BAUGHMAN &
`STONE LLP
`801 17th Street, N.W., Suite 1050
`Washington, D.C. 20006
`steve.baughman@groombridgewu.com
`(202) 505-5832
`Attorney for Petitioner
`
`
`
`
`
`
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