U.S. Patent No. 9,552,376
`Patent Owner’s Motion to Exclude
`IPR2022-00032
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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.
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`Petitioner
`v.
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`MEMORYWEB, LLC
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`Patent Owner
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`Patent No. 9,552,376
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`Inter Partes Review No. IPR2022-00032
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`PATENT OWNER’S MOTION TO EXCLUDE
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`Patent Owner’s Motion to Exclude
`IPR2022-00032
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`Paper No.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.
`
`Petitioner
`v.
`
`MEMORYWEB, LLC
`
`Patent Owner
`
`Patent No. 9,552,376
`
`Inter Partes Review No. IPR2022-00032
`
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`PATENT OWNER’S MOTION TO EXCLUDE
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`U.S. Patent No. 9,552,376
`Patent Owner’s Motion to Exclude
`IPR2022-00032
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`INTRODUCTION
`I.
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`
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`Pursuant to 37 C.F.R. §§ 42.62 and 42.64 and the Federal Rules of Evidence,
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`Patent Owner moves to exclude Exhibit 1005, purportedly a copy of the Aperture 3
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`User Manual (“A3UM”), relied on by Apple Inc. (“Petitioner”). As detailed below,
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`Petitioner has not, and cannot, properly authenticate Exhibit 1005 as a true and
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`correct copy of A3UM publicly available as of February 2010. Petitioner submitted
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`the declarations of its employee, Mr. Birdsell, and its expert, Dr. Terveen, to
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`authenticate Ex. 1005 as a true and correct copy of A3UM. See Exhibits 1020 and
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`1003. However, neither witness possessed the personal knowledge required to
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`authenticate it as an admissible exhibit. See FED. R. EVID. 901 and 902; Ex. 2026,
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`20:5-6; 41:11-16; 41:22-25; Ex. 2023 57:10-59:3; 61:9-62:19. Patent Owner timely
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`objected to these exhibits pursuant to 37 C.F.R. § 42.46(b)(1) in Patent Owner’s
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`Evidence Objections (Papers 14 and 27), served on July 14, 2022 and January 3,
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`2023, respectively.
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`II. ARGUMENT
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`
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`A party may move to exclude evidence based on the Federal Rules of
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`Evidence. See 37 C.F.R. § 42.62 (“[T]he Federal Rules of Evidence shall apply to a
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`proceeding.”).
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`U.S. Patent No. 9,552,376
`Patent Owner’s Motion to Exclude
`IPR2022-00032
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`A. Exhibit 1005 Should be Excluded Under FED. R. EVID. 901-902
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`Exhibit 1005 purports to be a copy of A3UM, which Petitioner relies on as
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`alleged prior art. However, as discussed below, Exhibit 1005 is neither authenticated
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`nor self-authenticating. See FED. R. EVID. 902.
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`To authenticate a document, “the proponent must produce evidence sufficient
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`to support a finding that the item is what the proponent claims it is.” FED. R. EVID.
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`901(a). A witness with knowledge can authenticate an electronically stored
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`document; however, the witness “must ‘provide factual specificity about the process
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`by which the electronically stored information is created, acquired, maintained, and
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`preserved without alteration or change.’” Xactware Sols., Inc. v. Pictometry Int’l
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`Corp., IPR2016-00594, Paper 46 at 11-12 (PTAB Aug. 24, 2017) (citations omitted).
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`In this case, Petitioner cited testimony from its expert, Dr. Terveen, and its
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`employee, Mr. Birdsell, in an attempt to establish the authenticity of Ex. 1005.
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`Petition, 16, 14; Ex. 1003, ¶74; Ex. 1020, ¶4. However, as discussed below, neither
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`Dr. Terveen nor Mr. Birdsell could properly authenticate Ex. 1005 as a true, correct,
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`and complete copy of A3UM. Ex. 1005 is therefore inadmissible. TRW Automotive
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`U.S. LLC v. Magna Electronics Inc., IPR2014-01348 Paper 25 at 12 (PTAB January
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`15, 2016) (excluding alleged prior art publication on grounds that Petitioner did not
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`provide sufficient evidence of the exhibit’s authenticity).
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`U.S. Patent No. 9,552,376
`Patent Owner’s Motion to Exclude
`IPR2022-00032
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`In his declaration, Mr. Birdsell stated that he reviewed Ex. 1005—which
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`spans over 1,122 pages—and “confirm[ed] it is an accurate copy of the Aperture 3
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`User Manual that was distributed with the initial version of the Aperture 3 product.”
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`Ex. 1020, ¶ 4. However, during his deposition, Mr. Birdsell admitted he did not
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`personally create Ex. 1005. Ex. 2026, 20:5-6. Instead, the sole basis for his statement
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`that Ex. 1005 is an “accurate copy” of A3UM is having “spot-checked it against the
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`files that were on the disk and in the app.” Ex. 2026, 41:11-16. When asked about
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`the DVD he used for his spot-check, Mr. Birdsell admitted that he could not “speak
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`to the chain of custody” of that DVD. Id., 41:22-25. Given that he did not create Ex.
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`1005 and only “spot-checked” it, Mr. Birdsell cannot know whether Ex. 1005 is an
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`accurate copy of A3UM. Mr. Birdsell cannot provide the “factual specificity”
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`regarding how Ex. 1005, or the DVD used to create Ex. 1005, was “created,
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`acquired, maintained, and preserved without alteration or change. Xactware Sols.,
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`IPR2016-00594, Paper 46 at 11-12.
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`Petitioner’s reliance on Dr. Terveen to authenticate Ex. 1005 similarly fails.
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`Dr. Terveen stated in his declaration that “A3UM (EX1005) is a true and accurate
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`copy of the underlying HTML files containing the Aperture 3 User Manual.” Ex.
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`1003, ¶ 74. However, when asked about how Ex. 1005 was created, it became clear
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`that Dr. Terveen had no knowledge regarding the creation of Ex. 1005. Ex. 2023,
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`U.S. Patent No. 9,552,376
`Patent Owner’s Motion to Exclude
`IPR2022-00032
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`57:10-59:3. When asked whether he created Ex. 1005, Dr. Terveen stated he did not.
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`Id. 57:17-18. Dr. Terveen was then asked “[w]ho created that PDF,” to which Dr.
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`Terveen replied “[c]ounsel, someone – someone of Apple’s attorneys.” Id., 57:19-
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`21. When asked who specifically created Ex. 1005, Dr. Terveen repeatedly answered
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`“I don’t know who created it.” Id., 58:12-4; 58:15-20. Notably, Dr. Terveen admitted
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`that it was Petitioner’s counsel who “represented to [him] that [Ex. 1005] was ... a
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`PDF that contained all of the HTML files that comprised the user manual.” Id., 59:4-
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`10.
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`Like Mr. Birdsell, Dr. Terveen merely “spot-checked” unidentified portions
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`of Ex. 1005 against the HTML files found after installing Aperture 3 until he was
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`“pretty satisfied” that Ex. 1005 was an accurate copy of A3UM. Id., 61:9-62:12.
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`Specifically, when asked whether he compared the entirety of Ex. 1005 with the
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`HTML files found after installing Aperture 3, Dr. Terveen admitted that he “did not
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`check all 1122 pages, but [he] spot-checked a whole lot of them.” Id., 61:9-17. Dr.
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`Terveen glaringly did not provide any statement regarding which pages he “spot-
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`checked” and whether the pages he “spot-checked” were the pages he relied on in
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`forming his opinion. Dr. Terveen also did not run a simple comparison software to
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`compare the contents of Ex. 1005 with the HTML file from the Aperture 3
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`installation DVD. Id., 62:13-19.
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`U.S. Patent No. 9,552,376
`Patent Owner’s Motion to Exclude
`IPR2022-00032
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`Notably, Dr. Terveen admitted that “my opinion that Exhibit 1005 is a true
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`and accurate copy of the underlying HTML files was based on the representations
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`made to me and my spot checks.” Id., 62:9-12 (emphasis added). In other words, Dr.
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`Terveen simply relied on counsels’ representation that Ex. 1005 was a true and
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`accurate copy of A3UM. Dr. Terveen lacks the personal knowledge required to
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`ensure that Ex. 1005 “is what the proponent claims it is.” FED. R. EVID. 901(a).
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`Neither of Petitioner’s witnesses can confirm that Ex. 1005 is a true and
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`correct copy of A3UM because they did not themselves create Ex. 1005. At best,
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`their “spot-checking” confirmed that some portions may have been accurately
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`copied. But the fact that they only “spot-checked” Ex. 1005 means that neither
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`witness can confirm that the entirety of Ex. 1005—including all of the portions relied
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`on by Petitioner—is authentic. Their limited spot-checking also leaves open the
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`possibility that Ex. 1005 contains material not in the actual Aperture 3 manual or,
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`conversely, that Ex. 1005 omits material present in the actual Aperture 3 manual. In
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`short, Mr. Birdsell and Dr. Terveen’s testimony regarding Ex. 1005 lacks the
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`“factual specificity” required for proper authentication. Xactware Sols., IPR2016-
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`00594, Paper 46 at 11-12.
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`U.S. Patent No. 9,552,376
`Patent Owner’s Motion to Exclude
`IPR2022-00032
`
`III. CONCLUSION
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`For the reasons stated above, Patent Owner’s Motion to Exclude should be
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`granted.
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`Respectfully submitted,
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`Dated: February 17, 2023
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`
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`By:
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`
`
`/Jennifer Hayes/
`Jennifer Hayes
`Reg. No. 50,845
`Nixon Peabody LLP
`300 South Grand Avenue,
`Suite 4100
`Los Angeles, CA 90071-3151
`Tel. 213-629-6179
`Fax 866-781-9391
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`
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`U.S. Patent No. 9,552,376
`Patent Owner’s Motion to Exclude
`IPR2022-00032
`
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Patent Owner’s
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`Motion to Exclude was served on February 17, 2023, upon the following parties via
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`electronic service:
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`Jeffrey P. Kushan
`Thomas A. Broughan, III
`Scott M. Border
`Sidley Austin LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`jkushan@sidley.com
`tbroughan@sidley.com
`sborder@sidley.com
`SidleyAppleMemoryWebIPRs@sidley.com
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`Counsel for Petitioner, Apple Inc.
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`By:
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`/s/ Jennifer Hayes
`Lead Counsel for Patent Owner
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