Paper No.
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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 REPLY TO PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE
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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.
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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 REPLY TO PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE
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`Patent No. 9,552,376 Reply to Opposition to Motion to Exclude
`IPR2022-00032
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`I.
`INTRODUCTION
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`Petitioner’s Opposition (Paper 36) primarily argues that the Aperture 3 User
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`Manual (“A3UM”) submitted as Ex. 1005 is authentic because the Aperture 3 DVD
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`it was purportedly created from existed in 2010. The Aperture 3 DVD’s existence in
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`2010 is a red herring and avoids the relevant inquiry, which is whether the evidence
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`establishes that Ex. 1005 is what Petitioner claims it is. FED. R. EVID. 901. Petitioner
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`offers no testimony from the unknown individual(s) who purportedly created Ex.
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`1005 from an Aperture 3 DVD; instead, Petitioner merely relies on testimony from
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`its expert and employee who “spot-checked” only a fraction of the content in Ex.
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`1005. Because neither of these witnesses created Ex. 1005 and merely checked
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`unknown portions of the 1,122-page PDF, it is impossible for them to definitively
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`say that Ex. 1005 is a true and correct copy of A3UM.
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`II. ARGUMENT
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`Petitioner argues that Ex. 1005 is authentic because Patent Owner has not
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`submitted evidence proving that Ex. 1005 is not authentic. But this argument
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`improperly flips the parties’ burdens: because Ex. 1005 is not self-authenticating,
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`Petitioner “must produce evidence sufficient to support a finding that . . . [Ex. 1005]
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`is what the proponent claims it is.” See FED. R. EVID. 901; Inductev Inc. v. Witricity
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`Corp., No. IPR2021-01166, Paper 35 at 53 (PTAB Dec. 20, 2022) (“Petitioner bears
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`the burden to authenticate” the exhibit). Instead of identifying sufficient evidence,
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`1
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`Patent No. 9,552,376 Reply to Opposition to Motion to Exclude
`IPR2022-00032
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`Petitioner argues “Patent Owner’s motion is based on nothing more than
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`unsubstantiated speculation that the PDF that is EX1005 might not be a complete
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`copy of the A3UM HTML file set.” Opp., 3 (emphasis in original). To the contrary,
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`Petitioner’s testimony concerning Ex. 1005’s purported authenticity amounts to
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`unsubstantiated speculation because neither witness has sufficient personal
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`knowledge to say that it is authentic.
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`A. Petitioner’s Witnesses Cannot Authenticate Ex. 1005
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`Petitioner does not dispute Dr. Terveen and Mr. Birdsell merely “spot-
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`checked” Ex. 1005. Opp., 5, 7-8. Nor does Petitioner dispute that neither Dr. Terveen
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`nor Mr. Birdsell created Ex. 1005. Opp., 14. Instead, Petitioner argues that Ex. 1005
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`is authenticated because (i) Mr. Birdsell “was able to satisfy himself” (Opp., 4) and
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`(ii) Dr. Terveen was “pretty satisfied” (Id., 7) that Ex. 1005 is a true and correct copy
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`of A3UM. The witnesses’ personal satisfaction does not establish that Ex. 1005 is
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`what the Petitioner claims it is.
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`Petitioner argues that its failure to proffer testimony from whoever
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`purportedly created Ex. 1005 from over 700 HTML files is “irrelevant.” Opp., 14.
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`But because neither Mr. Birdsell nor Dr. Terveen created Ex. 1005, neither can know
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`that Ex. 1005 is a true and correct copy of the 700+ HTML files unless they checked
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`Ex. 1005 against all of the HTML files. Just as when one who only “spot-checks”
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`half of a deck of playing cards cannot be sure that the deck has the correct 52 cards,
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`2
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`Patent No. 9,552,376 Reply to Opposition to Motion to Exclude
`IPR2022-00032
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`Dr. Terveen and Mr. Birdsell cannot know whether Ex. 1005 is a complete copy of
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`the HTML files. If Ex. 1005 were in fact a true and correct copy of all of the HTML
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`files, Petitioner could have easily resolved the issue by proffering testimony from
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`the individual(s) who created it, but Petitioner curiously chose not to do so.
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`Petitioner’s reliance on Mylan Pharm. Inc. v. Regeneron Pharm. Inc. is
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`misplaced. Opp., 3 (citing IPR2021-00881, Paper 94 at 48 (PTAB Nov. 9, 2022)).
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`There, the authenticating witness “personally collected the documents addressed in
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`her declaration.” Id. (emphasis added). Petitioner offers no testimony from the
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`unknown individual(s) who personally collected the documents comprising Ex.
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`1005. See Ex. 1091. See Inductev Inc. v. Witricity Corp., No. IPR2021-01166, Paper
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`35 at 12 (PTAB Dec. 20, 2022) (authenticating witness “personally identified and
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`retrieved” the documents she relied on in her declaration); Ericsson Inc. v. Intell.
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`Ventures I LLC, No. IPR2014-01149, Paper 68 at 12-13 (PTAB Dec. 9, 2015)
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`(authenticating witnessed testified that “the exhibit was obtained from a place where
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`such a document is expected to be found”).
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`Petitioner’s claim that Patent Owner “dissuaded Mr. Birdsell from taking
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`steps to further authenticate Ex. 1005” during his deposition is disingenuous. Opp.,
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`5. That Mr. Birdsell offered to compare Ex. 1005 to the headings in Ex. 2010 for the
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`first time during his deposition only underscores that he did not perform even this
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`basic comparison before summarily declaring that Ex. 1005 was authentic. Petitioner
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`3
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`Patent No. 9,552,376 Reply to Opposition to Motion to Exclude
`IPR2022-00032
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`failed to ask Mr. Birdsell to perform this comparison in his original declaration, on
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`re-direct during deposition, or in a supplemental declaration. Opp., 5. And, even if
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`he had performed such a comparison between Ex. 1005 and a mere Internet Archive
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`table of contents, that still would not prove that the contents of Ex. 1005 are accurate.
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`B.
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`Petitioner Did Not Identify or Authenticate the DVD Purportedly
`Used to Create Ex. 1005
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`Petitioner does not identify the Aperture 3 DVD that was purportedly used to
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`create Ex. 1005, let alone establish that this DVD was authentic. See Opp., 3-4, 6.
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`Dr. Terveen testified that he received two Aperture 3 DVDs – one from Petitioner
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`and another from Petitioner’s counsel, who purchased it from a third party. Ex. 1003,
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`¶ 74; Ex. 2023, 54:10-16. Mr. Birdsell also received a DVD but could not “speak to
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`the chain of custody” of that DVD. Ex. 2026, 41:22-25. Because neither Dr. Terveen
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`nor Mr. Birdsell created Ex. 1005, this suggests that a fourth DVD was used by the
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`unknown individual(s) who created Ex. 1005. Petitioner failed to identify what DVD
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`was used to create Ex. 1005 or establish that this unknown DVD was authentic. See
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`Opp., 3-4, 6. Petitioner therefore failed to establish that Ex. 1005 is authentic for this
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`additional reason. Xactware Sols., Inc. v. Pictometry Int'l Corp., IPR2016-00594,
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`Paper 46 at 13 (PTAB Aug. 24, 2017) (exhibit excluded because “Petitioner
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`provide[d] no indication of the source of the document”).
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`C. Ex. 1005 is Not Admissible Under Rule 901(b)(4)
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`4
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`Patent No. 9,552,376 Reply to Opposition to Motion to Exclude
`IPR2022-00032
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`Petitioner also suggests that Ex. 1005 is authentic under FED. R. EVID.
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`901(b)(4) because the HTML file path footers and copyright date are indicia of
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`authenticity. Opp., 8-10. The Board has rejected such conclusory assertions. See
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`TRW Auto. U.S. LLC v. Magna Elecs. Inc., IPR2014-01348, Paper 25 at 12 (PTAB,
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`Jan. 15, 2016). In TRW, the Board excluded Petitioner’s primary prior art reference
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`because copyright dates and an International Standard Book Number (ISBN) were
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`not sufficient to establish authenticity. Id. (“[w]e cannot accept, as a substitute for
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`evidence, the conclusory assertion by Petitioner’s counsel” to prove authenticity).
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`Accordingly, Petitioner’s reliance on Ex. 1005’s purported indicia supportive of
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`authenticity is not sufficient to authenticate Ex. 1005.
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`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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`5
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`Patent No. 9,552,376 Reply to Opposition to Motion to Exclude
`IPR2022-00032
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`Respectfully submitted,
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`Dated: March 3, 2023
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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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`6
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`Patent No. 9,552,376 Reply to Opposition to 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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`Reply to Petitioner’s Opposition to Motion to Exclude was served on March 3, 2023,
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`upon the following parties via 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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`7
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