UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________________
`
`APPLE INC.,
`Petitioner
`
`v.
`
`BILLJCO LLC,
`Patent Owner
`
`
`CASE: IPR2022-00131
`U.S. PATENT NO. 8,639,267
`
`_______________________
`
`
`PATENT OWNER'S MOTION TO STRIKE
`SUPPLEMENTAL DECLARATION OF THOMAS LA PORTA (EX1012)
`AND PETITIONER'S REPLY
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________________
`
`APPLE INC.,
`Petitioner
`
`v.
`
`BILLJCO LLC,
`Patent Owner
`
`
`CASE: IPR2022-00131
`U.S. PATENT NO. 8,639,267
`
`_______________________
`
`
`PATENT OWNER'S MOTION TO STRIKE
`SUPPLEMENTAL DECLARATION OF THOMAS LA PORTA (EX1012)
`AND PETITIONER'S REPLY
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`Introduction ................................................................................................... 1
`
`Relief Requested ........................................................................................... 2
`
`I.
`
`II.
`
`III. Relevant Law ................................................................................................ 2
`
`IV. Allegations That Haberman's "Preferences" Are The
`
`Equivalent Of The Privilege-Based Claim Limitations
`
`Should Be Stricken As New, Incomplete, Unsupported,
`
`And At Odds With La Porta's Admissions ................................................... 5
`
`A.
`
`B. The Equivalence Contentions Should
`
`Be Stricken As Unreliable .................................................................. 8
`
`The Equivalence Arguments Should Be Stricken As New ................ 7
`
`
`V. Allegations That Vanluijt's "Preferences" Are The
`
`Equivalent Of The Claimed "Privilege" Limitations
`
`Should Be Stricken ..................................................................................... 12
`
`VI. Petitioner's And La Porta's New Contentions Regarding
`
`The "Destination Identity" Claim Limitation Are
`
`New And Should Be Stricken ..................................................................... 14
`
`VII. Conclusion .................................................................................................. 15
`
`
`i
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`Cases:
`
`ActiveVideo Networks v. Verizon Comms.,
`
`694 F.3d 1312 (Fed.Cir. 2014) .................................................................... 4
`
`Ariosa Diagnostics v. Verinata Health, Inc.,
`
`805 F.3d 1359 (Fed. Cir. 2015) ............................................................... 4, 8
`
`Barber v. United Airlines, Inc.,
`
`17 Fed.Appx. 433 (7th Cir.2001) ............................................................... 11
`
`Bricklayers & Trowel Trades Int'l Pension
`Fund v. Credit Suisse Secs. (USA) L.L.C.,
`
`752 F.3d 82, 92 (1st Cir. 2014) .................................................................. 10
`
`Caterpillar Inc. v. Deere & Co.,
`
`224 F.3d 1374, 1379 (Fed. Cir. 2000) ......................................................... 9
`
`Daubert v. Merrell Dow Pharm., Inc.,
`
`509 U.S. 579, 589-90, 113 S.Ct. 2786, 125 L.Ed.2d 469 (1993) ................. 9
`
`Delaware Valley Floral Gp., Inc. v. Shaw Rose Nets, LLC,
`
`597 F.3d 1374 (Fed.Cir. 2010) ..................................................................... 4
`
`EEOC v. Freeman,
`
`778 F.3d 463, 469 (4th Cir. 2015) ............................................................. 10
`
`Fail-Safe, LLC v. A.O. Smith Corp.,
`
`744 F.Supp.2d 870, 891 (E.D.Wis.2010) .................................................. 11
`
`Gemtron Corp. v. Saint-Gobain Corp.,
`
`694 F.3d 1312 (Fed.Cir. 2014) .............................................................. 4, 13
`
`Greater New Orleans Fair Hous. Action Ctr. v.
`U.S. Dep't of Hous. & Urban Dev.,
`
`639 F.3d 1078 (D.C. Cir. 2011) ................................................................. 10
`
`
`
`ii
`
`
`
`
`
`IMS Tech., Inc. v. Haas Automation, Inc.,
`
`206 F.3d 1422 (Fed. Cir. 2000) ................................................................... 9
`
`In re Bextra & Celebrex Mktg. Sales Practices & Prod. Liab. Litig.,
`
`524 F.Supp.2d 1166 (N.D.Cal.2007) .......................................................... 11
`
`Innogenetics, N.V. v. Abbott Labs.,
`
`694 F.3d 1312 (Fed.Cir. 2014) .................................................................... 4
`
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`
`821 F.3d 1359 (Fed. Cir. 2016) ................................................................... 3
`
`Kemco Sales, Inc. v. Control Papers Co.,
`
`208 F.3d 1352 (Fed. Cir. 2000) .................................................................... 9
`
`Quest Integrity USA, LLC v. Cokebusters USA Inc.,
`
`924 F.3d 1220 (Fed. Cir. 2019) .................................................................... 4
`
`SPTS Techs. Ltd. v. Plasma-Therm LLC,
`
`No. IPR2018-00618, 2019 WL 4020200 (PTAB Aug. 26, 2019) ........ 4, 11
`
`VirnetX, Inc. v. Cisco Systems, Inc.,
`
`767 F.3d 1308 (Fed.Cir. 2014) .......................................................... 4, 9, 13
`
`Wasica Fin. GmbH v. Cont'l Auto. Sys., Inc.,
`
`853 F.3d 1272 (Fed. Cir. 2017) .......................................................... 3, 4, 10
`
`
`Other Authority:
`
`Patent Trial and Appeal Board
`Consolidated Trial Practice Guide November 2019 ...................................... passim
`
`35 U.S.C. § 312(a)(3) ......................................................................................... 2, 3
`
`37 C.F.R § 42.20 .................................................................................................... 2
`
`37 C.F.R. § 42.23 ................................................................................................... 3
`
`
`iii
`
`
`
`
`
`37 C.F.R. § 42.104 .................................................................................................. 3
`
`Fed.R.Civ.P. Rule 26(a)(2) ..................................................................................... 4
`
`Fed.R.Evid. 702 ............................................................................................ passim
`
`MPEP 2183 ............................................................................................................. 9
`
`
`All emphasis supplied unless otherwise noted.
`
`
`
`iv
`
`
`
`
`
`TABLE OF EXHIBITS
`
`
`Description
`Deposition of Thomas F. La Porta dated July 29, 2022 in
`IPR2022-00131 Petition for Inter Partes Review of U.S.
`Patent 8,639,267
`Declaration of Istvan Jonyer '267 Patent
`U.S. Patent Application Publication 2008/0170679
`U.S. Patent Application Publication 2007/0244633
`U.S. Patent Application Publication U.S. Patent No.
`7,177,651
`Technical Dictionary Terms
`Amended Complaint and Select Exhibits [Northern District
`of California] (SEALED)
`Patent License Agreement dated August 10, 2017
`(SEALED)
`Patent License Agreement dated August 3, 2022 (SEALED)
`Patent License Agreement dated March 8, 2022 (SEALED)
`About Privacy and Location Services in iOS and iPadOS
`(APL-BJCO_00014622)
`
`Exhibit
`2009
`
`2010
`2011
`2012
`2013
`
`2014
`2015
`
`2016
`
`2017
`2018
`2019
`
`v
`
`
`
`
`
`I.
`
`
`
`Introduction
`
`In support of its Petition for inter partes review of claims 1, 5, 13, 20, 21, 29,
`
`30, 34, 42, and 49 ("the Challenged Claims") of U.S. Patent 8,639,267 ("'267
`
`Patent"), Apple, Inc. ("Petitioner") submitted the declaration of Dr. Thomas La
`
`Porta. (EX1002, "Original Declaration"). In response to the Patent Owner Response
`
`("POR"), Petitioner filed its Reply and the Supplemental Declaration of La Porta.
`
`(EX1012, "Supplemental Declaration"). Rather than submit a proper response to
`
`arguments made in the POR, the Supplemental Declaration and Petitioner's Reply
`
`raise new arguments and evidence. The Reply and Supplemental Declaration
`
`improperly seek to go back and patch over the gaping holes in Petitioner's
`
`obviousness arguments that were exposed by La Porta's admissions demonstrating
`
`none of the prior art includes a key feature to the Challenged Claims.
`
`
`
`While Petitioner will likely attempt to characterize the Reply and
`
`Supplemental Declaration as merely responsive to the POR, as demonstrated below,
`
`the undeniable fact is that they raise numerous arguments, opinions, and evidence
`
`not previously identified. These include citations to new portions of the prior art,
`
`new equivalence arguments, and new opinions by La Porta. It was Petitioner's
`
`obligation to identify with particularity in its Petition all of the evidence supposedly
`
`supporting the grounds for the challenge to each claim, including identifying the
`
`specific portions and the relevance of the evidence to the challenge raised. That they
`
`1
`
`
`
`
`
`are now offering new arguments and evidence, by itself, warrants striking of the
`
`Supplemental Declaration and Reply.
`
`
`
`The Board should also strike the Supplemental Declaration under Fed.R.Evid.
`
`702 as wholly unreliable for at least the reasons that it is unsupported, conclusory,
`
`and directly contradictory to prior testimony. Indeed, other than background matters,
`
`the Supplemental Declaration merely cuts and pastes Sections II-V of the Reply
`
`(within minor edits to read in the first person) in an improper attempt to transform
`
`attorney argument into evidence. So clear is Petitioner's attempt to turn the attorney
`
`argument in its Reply into declaratory evidence that Petitioner even cut and pasted
`
`its typos into the Supplemental Declaration. See e.g., Reply at 10 and EX1012 at ¶
`
`30 (each stating "[i]n other words, Haberman's explicitly provides …."). Because
`
`the Reply is based on the Supplemental Declaration, it too should be stricken.
`
`II. Relief Requested
`
`
`
`Pursuant to 37 C.F.R. § 42.20, Patent Owner moves to strike La Porta's
`
`Supplemental Declaration and all argument’s in Petitioner’s Reply based on the
`
`Supplemental Declaration.
`
`III. Relevant Law
`
`
`
`A Petition for IPR must include all necessary arguments and evidence to
`
`support the challenge. 35 U.S.C. § 312. "It is of the utmost importance that . . . the
`
`initial petition identify 'with particularity' the 'evidence that supports the grounds for
`
`2
`
`
`
`
`
`the challenge to each claim.'" Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`
`821 F.3d 1359, 1369 (Fed. Cir. 2016) (quoting 35 U.S.C. § 312(a)(3)). The Petition
`
`must also identify "the relevance of the evidence to the challenge raised, including
`
`identifying specific portions of the evidence that support the challenge." 37 C.F.R.
`
`§ 42.104(b)(4)-(5). This duty to present all arguments and evidence is because,
`
`"[u]nlike district court litigation—where parties have greater freedom to revise and
`
`develop their arguments over time and in response to newly discovered material—
`
`the expedited nature of IPRs bring with it an obligation for petitioners to make their
`
`case in their petition to institute." Intelligent Bio-Sys., 821 F.3d at 1369.
`
`
`
`To that end, "a reply … may only respond to arguments raised in the preceding
`
`brief." See Patent Trial and Appeal Board Consolidated Trial Practice Guide
`
`November 2019 ("PTAB Practice Guide"), at 74, citing 37 C.F.R. § 42.23.
`
`"'Respond,' in the context of 37 C.F.R. § 42.23(b), does not mean proceed in a new
`
`direction with a new approach as compared to the positions taken in a prior filing.
`
`While replies and sur-replies can help crystalize issues for decision, a reply or sur-
`
`reply that raises a new issue or belatedly presents evidence may not be considered."
`
`Id. Moreover, "the Board is not required to attempt to sort proper from improper
`
`portions of the reply or sur-reply."
`
`
`
`The Federal Circuit has repeatedly affirmed the Board's rejection of matter
`
`raised for the first time in a reply. In Wasica Fin. GmbH v. Cont'l Auto. Sys., Inc.,
`
`3
`
`
`
`
`
`853 F.3d 1272 (Fed. Cir. 2017), the Federal Circuit affirmed the Board's ruling that
`
`an obviousness challenge was "insufficiently precise and underdeveloped" because
`
`the petition "offered only a conclusory and sweeping allegation," whereas the reply
`
`argued a POSITA would have looked to a different passage and would have modified
`
`the prior art. Id. at 1285-1287. Similarly, in Ariosa Diagnostics v. Verinata Health,
`
`Inc., 805 F.3d 1359 (Fed. Cir. 2015) the Federal Circuit affirmed the Board's
`
`rejection of a reply that relied on portions of a prior art reference not previously
`
`identified in the petition or accompanying declarations. Id. at 1364, 1367–68.
`
`
`
`The Federal Rules of Civil Procedure, and particularly Rule 26(a)(2), also
`
`requires experts to disclose, among other things: (i) a complete statement of all
`
`opinions the witness will express and the basis and reasons for them; and (ii) the
`
`facts or data considered by the witness in forming them. Fed.R.Civ.P. Rule 26(a)(2).
`
`An expert cannot, under the guise of a rebuttal case, offer opinions or evidence in
`
`support of opinions that were not earlier disclosed. Innogenetics, N.V. v. Abbott
`
`Labs., 512 F.3d 1363, 1376 n. 4 (Fed.Cir. 2008) ("Conclusory expert reports,
`
`eleventh hour disclosures, and attempts to proffer expert testimony without
`
`compliance with Rule 26 violate both the rules and principles of discovery, and the
`
`obligations lawyers have to the court.").
`
`
`
`Opinions and arguments based thereon may also be stricken under
`
`Fed.R.Evid. 702 where such opinions are wholly unreliable. VirnetX, Inc. v. Cisco
`
`4
`
`
`
`
`
`Systems, Inc., 767 F.3d 1308, 1333 (Fed.Cir. 2014). For example, conclusory and
`
`factually unsupported opinions cannot prove obviousness. ActiveVideo Networks v.
`
`Verizon Comms., 694 F.3d 1312, 1327 (Fed.Cir. 2014). Similarly, attorney
`
`argument, even in the guise of expert testimony, is not evidence. See Gemtron Corp.
`
`v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed.Cir. 2009). So too, "[w]hen a party
`
`has given clear answers to unambiguous questions which negate the existence of any
`
`genuine issue of material fact, that party cannot thereafter create such an issue with
`
`an affidavit that merely contradicts, without explanation, previously given clear
`
`testimony" and a court may simply disregard the affidavit. Delaware Valley Floral
`
`Gp., Inc. v. Shaw Rose Nets, LLC, 597 F.3d 1374 (Fed.Cir. 2010), see also, SPTS
`
`Techs. Ltd. v. Plasma-Therm LLC, No. IPR2018-00618, 2019 WL 4020200, at *6
`
`(PTAB Aug. 26, 2019) (citing Quest Integrity USA, LLC v. Cokebusters USA Inc.,
`
`924 F.3d 1220, 1232 (Fed. Cir. 2019)).
`
`IV. Allegations That Haberman's "Preferences" Are The Equivalent Of The
`Privilege-Based Claim Limitations Should Be Stricken As New,
`Incomplete, Unsupported, And At Odds With La Porta's Admissions
`
`
`
`
`In the Original Declaration and the Petition, it was argued the ordinary
`
`meaning of the claim terms and phrases, including the "privilege" related claims,
`
`should control. Petition at 7; EX1002, ¶¶ 46-47. Rather than explain what the
`
`common ordinary meaning for "privilege" was, both merely presumed a
`
`"preference" was the same thing as a "privilege." Petition at 14, EX1002, ¶ 70
`
`5
`
`
`
`
`
`("Haberman discloses that a user can store a 'preferences profile' (i.e., privilege data)
`
`…."). La Porta admitted, however, that the term "permission" (aka "privilege")1 had
`
`a different meaning than the term "preference" in the computer science arts and that
`
`he would not equate these terms. EX2009, 46:5-47:14. La Porta further admitted that
`
`Haberman never actually recited a "privilege." Id., 70:19-22. Indeed, the word
`
`"privilege" or "permission" appear nowhere in Haberman. EX1004. Furthermore,
`
`Haberman never discusses the granting of any right or authorization. Id.
`
`
`
`La Porta's admission that a preference was not a privilege confirmed the holes
`
`in the obviousness contentions. Faced with this, Petitioner and La Porta shifted their
`
`position in the Reply and Supplemental Declaration. In identical fashion, they
`
`misrepresent Patent Owner's contention by stating "PO alleges that Haberman fails
`
`to teach the 'privilege-related claim limitations' because Haberman's preferences are
`
`not equivalent to a 'privilege.'" Reply at 7; EX1012 at ¶ 27. They then try to topple
`
`this strawman offering the purely conclusory statement that "Haberman's
`
`preferences are indeed equivalent to a 'privilege,' and therefore Haberman teaches
`
`all of the 'privilege-related claim limitations." Reply at 7; EX1012, ¶ 27.
`
`
`
`Contrary to Petitioner's and La Porta's strawman, Patent Owner argued that
`
`Haberman's preferences are not privileges, and made no arguments as to
`
`
`1 The '267 Patent explains the terms "permissions" and "privileges" are "used
`interchangeably in this disclosure." EX1001, 124:7-9
`
`6
`
`
`
`
`
`equivalence. POR at 21-22. Regardless, the relevant point is that whether a prior art
`
`reference actually discloses a claimed feature as originally contended, or the prior
`
`art discloses an equivalent of a claimed feature as now alleged, are two different
`
`questions. Nowhere in La Porta's original declaration or the Petition was it argued
`
`that Haberman's "preference" was the equivalent of a privilege.
`
`
`
`The Reply and Supplemental Declaration should be stricken because the
`
`equivalence argument was not originally presented. La Porta's opinions should
`
`further be stricken under Fed.R.Evid. 702 as entirely unreliable.
`
`
`
`
`
`A. The Equivalence Arguments Should Be Stricken As New
`
`Clearly due to La Porta's admission that a "preference" did not have the same
`
`meaning as the claimed "preference," the Reply and Supplemental Declaration
`
`contend anew that Haberman's "preference" is the equivalent of a privilege. This
`
`attempt to rescue the obviousness contentions with a new approach because of La
`
`Porta's admission is clearly improper.
`
`
`
`La Porta's deposition testimony actually reinforces the fact that his
`
`equivalence arguments are being newly raised. When asked: "if the disclosure of
`
`preference data is not the same as privileged data, would you agree with me that
`
`Haberman does not disclose the claim limitation?" La Porta answered: "[s]o I did
`
`not consider that when I formed my opinion. So I don't have an opinion on that. I
`
`would have to read Haberman in a different light." EX2009, 83:12-20. As shown,
`
`7
`
`
`
`
`
`La Porta was asked whether he analyzed the supposed teaching by Haberman of the
`
`privileged related limitations through any lens other than an express disclosure, and
`
`he admitted that he had not. He cannot be permitted to do so now
`
`
`
`Moreover, La Porta cites to portions of the prior art not previously identified.
`
`This includes a citation to paragraph [0035] of Haberman, which was not identified
`
`in the Original Declaration. EX1012 ¶ 31. This warrants striking of the Reply and
`
`Supplemental Declaration. See Ariosa, 805 F.3d at 1364, 1367–68; see also PTAB
`
`Practice Guide at 73 ("Petitioner may not submit new evidence or argument in reply
`
`that it could have presented earlier, e.g. to make out a prima facie case of
`
`unpatentability."). Indeed, Patent Owner would be severely prejudiced by their late
`
`disclosure. For example, a "sur-reply may not be accompanied by new evidence
`
`other than deposition transcripts of the cross-examination of any reply witness." Id.
`
`As such, Patent Owner would be denied the ability to submit its own expert's
`
`opinions that preferences are not the equivalent of privileges.
`
`
`
`
`
`B. The Equivalence Contentions Should Be Stricken As Unreliable
`
`La Porta's contention (and identical argument in the Reply based thereon) that
`
`Haberman's "preference" is the equivalent of a privilege should also be stricken as
`
`utterly unreliable and conclusory. La Porta's equivalence opinions are precisely the
`
`type of unreliable expert testimony that Rule 702 is intended to address. Before one
`
`can consider expert testimony, one must ensure that any scientific testimony "is not
`
`8
`
`
`
`
`
`only relevant, but reliable." Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579,
`
`589-90, 113 S.Ct. 2786, 125 L.Ed.2d 469 (1993). La Porta's opinions do not come
`
`close to being reliable for multiple reasons.
`
`
`
`La Porta's Supplemental Declaration do not set forth any legitimate
`
`equivalence analysis or reasoned conclusion. Instead, the equivalence contentions
`
`are nothing but purely conclusory pronouncements, and should be stricken. VirnetX,
`
`767 F.3d at 1333. An argument regarding whether a prior art element is an equivalent
`
`of a claimed element is typically for a means-plus-function element. MPEP 2183.
`
`Petitioner has not contended that any claim limitation is such. Even if it were,
`
`Petitioner must show: (1) the prior art element performs the identical function
`
`specified in the claim in substantially the same way, and produces substantially the
`
`same results as the corresponding element disclosed in the specification; (2) a
`
`POSITA would have recognized the interchangeability of the element shown in the
`
`prior art for the corresponding element disclosed in the specification; or (3) there are
`
`insubstantial differences between the prior art element and the corresponding
`
`element disclosed in the specification. Kemco Sales, Inc. v. Control Papers Co., 208
`
`F.3d 1352, 1364 (Fed. Cir. 2000); Caterpillar Inc. v. Deere & Co., 224 F.3d 1374,
`
`1379 (Fed. Cir. 2000); IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422,
`
`1435 (Fed. Cir. 2000). La Porta does not do so. Instead, La Porta's "opinions" are
`
`9
`
`
`
`
`
`only slightly edited repeats of paragraphs cut and paste from Petitioner's Reply, and
`
`thus are not evidence at all. Wasica, 853 F.3d at 1284.
`
`
`
`Central to La Porta's claim that Haberman's "preferences" is the equivalent of
`
`a "privilege" is the assertion that Haberman's preferences are not optional. EX1012,
`
`¶¶ 28-33. Any legitimate review of Haberman shows La Porta's opinion to be so
`
`fundamentally flawed that it fails to satisfy the reliability required under Rule 702.
`
`
`
`Contrary to La Porta's claims, Haberman never says that a preferences profile
`
`is not optional. Instead, Haberman explains that an "exemplary, broad method for
`
`presenting informational content" transmits information to any mobile device within
`
`range of the transmitter, and does not mention a preference profile. EX1004, [0128].
`
`Also, at least the first four of Haberman's numerous embodiments do not require a
`
`preference profile. Id. [0008]-[0021]. Also, none of Haberman's claims include a
`
`limitation to a preference profile. La Porta's claim that Haberman's preference profile
`
`is "not optional" wholly unreliable.
`
`
`
`What is clear is that La Porta simply cherry-picked portions of Haberman
`
`while shutting his eyes to others. Courts have consistently excluded expert
`
`testimony, like La Porta's, that "cherry-picks" relevant data. See, e.g., EEOC v.
`
`Freeman, 778 F.3d 463, 469 (4th Cir. 2015); Bricklayers & Trowel Trades Int'l
`
`Pension Fund v. Credit Suisse Secs. (USA) L.L.C., 752 F.3d 82, 92 (1st Cir. 2014);
`
`Greater New Orleans Fair Hous. Action Ctr. v. U.S. Dep't of Hous. & Urban Dev.,
`
`10
`
`
`
`
`
`639 F.3d 1078, 1086 (D.C. Cir. 2011); Barber v. United Airlines, Inc., 17 Fed.Appx.
`
`433, 437 (7th Cir.2001); Fail-Safe, LLC v. A.O. Smith Corp., 744 F.Supp.2d 870,
`
`891 (E.D.Wis.2010); In re Bextra & Celebrex Mktg. Sales Practices & Prod. Liab.
`
`Litig., 524 F.Supp.2d 1166, 1176-77 (N.D.Cal.2007). As the EEOC case states,
`
`"[c]herry-picking" data is essentially the converse of omitting: just as omitting data
`
`might distort the result by overlooking unfavorable data, cherry-picking data
`
`produces a misleadingly favorable result by looking only to 'good' outcomes." 778
`
`F.3d at 469. La Porta's, or more likely Petitioner's, disingenuously selective citations
`
`to Haberman are intentionally misleading, and should be stricken.
`
`
`
`The unreliability of the Supplemental Declaration is also evident from the fact
`
`that the contention that a preference is the equivalent of a privilege flatly contradicts
`
`La Porta's testimony. La Porta admitted that "in general, in computer science, a
`
`permission is not the same as a preference…." EX2009, 46:8-10. La Porta then
`
`admitted "in general, I would not equate a preference with a permission in computer
`
`science." Id. at 47:12-14. Yet, La Porta now argues that a preference is the equivalent
`
`of a privilege. The Board should strike La Porta's Supplemental Declaration as
`
`contradictory testimony. See SPTS Techs. Ltd., 2019 WL 4020200, at *6.
`
`
`
`For all of these reasons, La Porta's opinions in his Supplemental Declaration
`
`regarding whether Haberman's preferences are the equivalent of the claimed
`
`privileges, and those virtually identical portions of the Reply, should be stricken.
`
`11
`
`
`
`
`
`
`
`
`V. Allegations That Vanluijt's "Preferences" Are The Equivalent Of The
`Claimed "Privilege" Limitations Should Be Stricken
`
`Similar to with Haberman, Petitioner and its expert shift their position
`
`regarding how Vanluijt supposedly satisfies the privilege-related claim limitations.
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`Whereas the Petition contended Vanluijt's "preferences" read directly on the claimed
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`"privileges," based solely on the Supplemental Declaration (Petition at 49:
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`"Vanluijt's preferences set by the user teach the recited "privilege data."), Petitioner
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`now alleges Vanluijt's preferences are the "equivalent" of the claimed privileges.
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`EX1012, ¶¶ 45-51. As with Haberman, these opinions should be stricken because
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`they were not identified in the Petition or Original Declaration.
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`In virtually identical fashion to Haberman, the new arguments raised with
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`respect to Vanluijt start with the false claim that "PO alleges that Vanluijt fails to
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`teach the 'privilege-related claim limitations' because Vanluijt's preferences are not
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`equivalent to a 'privilege.'" EX1012 at ¶ 45. Again, Patent Owner argued Vanluijt's
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`preferences are not privileges, and made no arguments as to equivalence. POR at
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`26-29. La Porta then asserts in a conclusory manner that "Vanluijt's preferences are
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`indeed equivalent to a 'privilege,' and therefore Vanluijt teaches all of the 'privilege-
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`related claim limitations." EX1012, ¶ 45. Nowhere in the Original Declaration or the
`
`Petition was it argued that Vanluijt's "preference" was the "equivalent" of a privilege.
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`The Reply and Supplemental Declaration should be stricken because it was not
`
`originally presented.
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`12
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`Again, La Porta's deposition testimony demonstrates Petitioner's attempt to
`
`back-door the equivalence arguments. With regard to Vanluijt, La Porta was asked:
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`"if preferences and privileges are actually different things, you don't have an opinion
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`as to whether this reference discloses a privilege?" In response La Porta admitted
`
`"[t]o my recollection the word privilege is not in [Vanluijt] but I – to me the
`
`preferences are the same as privileges, so to the extent that they're not, I don't
`
`have an opinion." EX2009, 102:12-23.
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`
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`Also, as with Haberman, the Supplemental Declaration discussion of Vanluijt
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`serves as the only support for the arguments in the Reply, but are nothing more than
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`cut and paste the arguments from Petitioner's Reply, and are not evidence at all.
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`Wasica, 853 F.3d at 1284. See Gemtron, 572 F.3d at 1380 (noting that "unsworn
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`attorney argument ... is not evidence").
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`Moreover, La Porta's new opinions run afoul of his admission that
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`"preference" has a different meaning than "privilege" in computer science. La Porta
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`cites to nothing in Vanluijt regarding any granting of rights or authorizations, or any
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`mention of privileges or permissions. Despite this, La Porta merely concludes that
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`Vanluijt discloses the granting of rights. Such unsupported opinions should be
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`stricken under Rule 702. VirnetX, 767 F.3d at 1333.
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`13
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`For all of these reasons, La Porta's opinions in his Supplemental Declaration
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`regarding whether Vanluijt's preferences are the equivalent of the claimed privileges,
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`and those virtually identical portions of the Reply, should be stricken.
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`VI. Petitioner's And La Porta's New Contentions Regarding The
`"Destination Identity" Claim Limitation Should Be Stricken
`
`Neither Petitioner nor La Porta offered any proposal for the ordinary meaning
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`
`
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`of the claimed "destination identity." In the Petition and Original Declaration, it was
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`argued that "the 'destination identity' encompasses terminals for which the content
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`being broadcast is preferred" and made no mention of any grant of rights. Petition
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`at 23; EX1002, ¶ 89.
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`
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`In the POR, Patent Owner demonstrated that the overarching feature of the
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`'267 Patent is configuring privileges, and that the claimed originating and destination
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`identities are part and parcel with the configuration of privileges. POR at 15-17. In
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`the Reply, Petitioner and La Porta still do not offer any meaning for "destination
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`identity," but now argue that Haberman and Vanluijt disclose the granting of a right.
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`EX1012, ¶¶ 40, 60. By way of example, with respect to Haberman, they state "[b]y
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`indicating in their preferences profile that a broadcaster identification or a
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`transmitting party identification is preferred .. the user is granting the sending
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`device (e.g., the broadcaster identification or the transmitting party identification)
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`the right to present their information on the user's device. See e.g., EX1012, ¶ 40.
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`14
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`This is clearly because of La Porta's admission that a preference had a different
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`meaning than a privilege.
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`
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`This entire concept of the granting of rights is absent from the Petition and
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`Original Declaration, and was raised only in the Reply and Supplemental
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`Declaration. Further, La Porta now newly identifies paragraphs [0002] and [0038]
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`from Vanluijt for his opinions related to the claimed "destination identity." These
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`new arguments and new evidence should be stricken. Moreover, in that La Porta's
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`opinions in his Supplemental Declaration regarding the claimed "destination
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`identity," provide the sole basis for the virtually identical arguments in the Reply,
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`the Reply should also be stricken.
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`
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`La Porta also provides no basis in the prior art to equate a preference profile
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`with granting privileges. Indeed, as La Porta admits, these are different concepts in
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`the art. La Porta's rank conclusion to the contrary is unreliable. Fed.R.Evid. 702.
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`VII. Conclusion
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`
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`For the forgoing reasons, Patent Owner respectfully requests that the Board
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`strike the Supplemental Declaration of La Porta and strike the portions of Petitioner's
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`Reply that rely on the Supplemental Declaration of La Porta.
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`Date: December 22, 2022
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`Mailing address for all correspondence:
`Saul Ewing, LLP
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`Respectfully Submitted,
`
`Brian R. Michalek
`Brian R. Michalek (Reg. No. 65,816)
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`15
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`Centre Square West
`1500 Market Street, 38th Floor
`Philadelphia, PA 19102-2186
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`
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`16
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`Joseph M. Kuo (Reg. No. 38,943)
`Saul Ewing, LLP
`161 N. Clark Street, Suite 4200
`Chicago, Illinois 60601
`Tel: (312) 876-7151
`Brian.Michalek@saul.com
`Joseph.Kuo@saul.com
`
`Brian Landry (Reg. No. 52,074)
`Saul Ewing, LLP
`131 Dartmouth Street, Suite 501
`Boston, MA 02116
`Tel: (617) 912-0969
`Brian.Landry@saul.com
`
`Counsel for Patent Owner, BillJCo, LLC
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`Certification of Service Under 37 C.F.R. § 42.6(e))
`
`
`The undersigned hereby certifies that Patent Owner, BillJCo, LLC’s Motion
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`to Strike was served electronically via e-mail on December 22, 2022 in its entirety
`on the following counsel of record for the Petitioner:
`
`
`Larissa.Bifano@dlapiper.com
`Joseph.Wolfe@dlapiper.com
`Zack.Conrad@dlapiper.com
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`
`
`/Brian R. Landry/
`(Reg. No. 62,074)
`
`Larissa S. Bifano
`Joseph Wolfe
`Zachary Conrad
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`
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`Date: December 22, 2022
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`17
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