UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`META PLATFORMS, INC.,
`Petitioner
`
`v.
`
`THALES VISIONIX, INC.,
`Patent Owner
`__________________
`
`U.S. PATENT NO. 6,922,632
`
`IPR2022-01304
`__________________
`
`PATENT OWNER’S OPPOSITION TO
`MOTION TO EXCLUDE
`
`November 21, 2023
`
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`META PLATFORMS, INC.,
`Petitioner
`
`v.
`
`THALES VISIONIX, INC.,
`Patent Owner
`__________________
`
`U.S. PATENT NO. 6,922,632
`
`IPR2022-01304
`__________________
`
`PATENT OWNER’S OPPOSITION TO
`MOTION TO EXCLUDE
`
`November 21, 2023
`
`
`
`Paper No. 42
`
`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES.....................................................................................ii
`
`LIST OF EXHIBITS ................................................................................................iii
`
`I.
`
`Exhibit 2010 ....................................................................................................1
`
`A.
`
`B.
`
`C.
`
`Background ...........................................................................................1
`
`Petitioner Waived Its Objection............................................................3
`
`Petitioner’s Motion Is Meritless............................................................7
`
`II.
`
`Exhibit 2017 ....................................................................................................9
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`Paper No. 42
`
`CASES
`Abbott Labs. v. Cardinal Health 529, LLC,
`IPR2019-00098, Paper 10 (P.T.A.B. Feb. 14, 2019)........................................8, 9
`EMC Corp. v. ActivIdentity, Inc.,
`IPR2017-00338, Paper 9 (P.T.A.B. July 3, 2017)............................................8, 9
`QSC Audio Prods., LLC v. Crest Audio, Inc.,
`IPR2014-00127, 2015 WL 1967347 (P.T.A.B. Apr. 29, 2015) .........................11
`Satco Prods., Inc. v. Regents of Univ. of Cal.,
`IPR2021-00662, 2022 WL 16726349 (P.T.A.B. Nov. 4, 2022).........................10
`ZTE (USA), Inc. v. Cywee Grp.,
`IPR2019-00143, 2021 WL 641742 (P.T.A.B. Feb. 17, 2021) .........................3, 6
`RULES AND REGULATIONS
`37 C.F.R. § 42.20.......................................................................................................7
`37 C.F.R. § 42.22.......................................................................................................7
`37 C.F.R. § 42.53...........................................................................................3, 4, 6, 7
`37 C.F.R. § 42.64...................................................................................................3, 6
`Fed. R. Evid. 402.......................................................................................................7
`Fed. R. Evid. 807...............................................................................................10, 11
`Fed. R. Evid. 901.....................................................................................................10
`OTHER AUTHORITIES
`Wright & Miller, 8A Fed. Prac. & Proc. Civ. § 2150
`(3d ed., Apr. 2023 update)....................................................................................9
`75 Am. Jur. 2d Trial § 314 (Oct. 2023 update) .........................................................3
`
`ii
`
`
`
`Paper No. 42
`
`LIST OF EXHIBITS
`
`Title
`
`U.S. Patent No. 6,922,632
`File History of U.S. Patent No. 6,922,632
`U.S. Patent No. 7,725,253
`File History of U.S. Patent No. 7,725,253
`Declaration of Dr. Ulrich Neumann in Support of Inter Partes
`Review of U.S. Patent No. 6,922,632
`Curriculum Vitae of Dr. Ulrich Neumann
`Welch, G. et al., “High-Performance Wide-Area Optical
`Tracking” (2001)
`Welch, G. et al., “SCAAT: Incremental Tracking with
`Incomplete Information” (1997)
`Welch G., “SCAAT: Incremental Tracking with Incomplete
`Information,” PhD Thesis, University of North Carolina
`(1996)
`U.S. Patent No. 5,615,132
`U.S. Patent No. 5,307,289
`Gentex’s Amended Preliminary Infringement Contentions
`and corresponding Exhibits 4 and 5 (’632 and ’253
`infringement charts)
`Azuma, R., “Predictive Tracking for Augmented Reality,”
`PhD Thesis, University of North Carolina (1995)
`You, S. and Neumann, U., “Orientation Tracking for Outdoor
`Augmented Reality Registration,” (1999)
`
`Exhibit
`1001
`1002
`1003
`1004
`1005
`
`1006
`1007
`
`1008
`
`1009
`
`1010
`1011
`1012
`
`1013
`
`1014
`
`iii
`
`
`
`Paper No. 42
`
`Exhibit
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`1023
`1024
`
`1025
`
`Title
`Carlson, Neal A. and Berarducci, Michael P. “Federated
`Kalman Filter Simulation Results,” Navigation. Vol. 41,
`Issue 3 (Fall 1994)
`Reitmayr, Gerhard and Schmalstieg, “An Open Software
`Architecture for Virtual Reality Interaction,” VRST ’01
`(November 2001)
`Barfield, W., “Fundamentals of Wearable Computers and
`Augmented Reality” (2001)
`Declaration of Rachel J. Watters regarding Welch, G. et al.,
`“High- Performance Wide-Area Optical Tracking” (2001)
`Declaration of Scott Delman regarding Welch, G. et al.,
`“SCAAT:
`Incremental Tracking with
`Incomplete
`Information” (1997)
`Declaration of Dr. James L. Mullins regarding Welch G.,
`“SCAAT:
`Incremental Tracking with
`Incomplete
`Information,” PhD Thesis, University of North Carolina
`(1996)
`Declaration of Scott Delman regarding Reitmayr, Gerhard
`and Schmalstieg, “An Open Software Architecture for
`Virtual Reality Interaction,” VRST ’01 (November 2001)
`U.S. Patent No. 5,807,284
`U.S. Patent No. 5,991,085
`Chen, Steven C. and Lee, Kang, “A mixed-mode smart
`transducer interface for sensors and actuators,” Sound &
`Vibration, 32(4) (April 1998)
`Hoff, William and Vincent, Tyrone, “Analysis of Head Pose
`Accuracy in Augmented Reality”, IEEE Transactions on
`Visualization and Computer Graphics, Vol. 6, Issue 4,
`October – December 2000.
`
`iv
`
`
`
`Paper No. 42
`
`Exhibit
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`1031
`
`1032
`
`1033
`
`1034
`
`1035
`
`Title
`Zetu, Dan et al., “Extended-Range Hybrid Tracker and
`Applications
`to Motion and Camera Tracking
`in
`Manufacturing Systems,” IEEE Transactions on Robotics
`and Automation, Vol. 16, Issue 3, June 2000
`Declaration of Rachel J. Watters regarding Chen, Steven C.
`and Lee, Kang, “A mixed-mode smart transducer interface
`for sensors and actuators,” Sound & Vibration, 32(4) (April
`1998)
`Declaration of Gordon MacPherson regarding Hoff, William
`and Vincent, Tyrone. “Analysis of Head Pose Accuracy in
`Augmented Reality”, IEEE Transactions on Visualization
`and Computer Graphics, Vol. 6, Issue 4, October – December
`2000.
`Declaration of Gordon MacPherson regarding Zetu, Dan et
`al., “Extended-Range Hybrid Tracker and Applications to
`Motion and Camera Tracking in Manufacturing Systems,”
`IEEE Transactions on Robotics and Automation, Vol. 16,
`Issue 3, June 2000
`U.S. Patent No. 5,592,401
`Case Management and Pretrial Order, Gentex Corp. v. Meta
`Platforms, Inc., No. 5:22-cv-03892-YGR (N.D. Cal. Oct. 18,
`2022), ECF No. 116
`Declaration of Akshay S. Deoras in Support of Unopposed
`Motion for Pro Hac Vice Admission Pursuant to 37 C.F.R.
`§ 42.10(c)
`Transcript of the Deposition of Yohan Baillot (Sept. 13,
`2023)
`Enumerate, Random House Webster’s Unabridged
`Dictionary (2d ed. 2001)
`Oklobdzija, Vojin G., “The Computer Engineering
`Handbook” (2002)
`
`v
`
`
`
`Paper No. 42
`
`Exhibit
`1036
`
`1037
`
`1038
`
`1039
`
`1040
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`Title
`Compare Benefits of CPUs, GPUs, and FPGAs for Different
`oneAPI Compute Workloads, Intel
`Plaintiffs’ Disclosure of Asserted Claims and Infringement
`Contentions Pursuant to Patent L.R. 3-1, Gentex Corp. v.
`Meta Platforms, Inc., No. 22-cv-3892-YGR (N.D. Cal. Oct.
`21, 2022)
`Supplemental Declaration of Dr. Ulrich Neumann in Support
`of Inter Partes Review of U.S. Patent Nos. 6,922,632 and
`7,725,253
`Email correspondence from Patent Trial & Appeal Board to
`parties’ counsel, dated May 31, 2023
`Email correspondence from Patent Owner’s counsel to
`Petitioner’s counsel, dated October 1, 2023
`Complaint, Gentex Corp. v. Meta Platforms, Inc., No. 6:21-
`cv-00755-ADA (W.D. Tex. July 22, 2021), ECF No. 1.
`Joint Order Regarding Claim Construction and Discovery,
`Gentex Corp. v. Meta Platforms, Inc., No. 5:22-cv-03892-
`YGR (N.D. Cal. Nov. 9, 2022), ECF No. 118.
`Gentex Corp. v. Meta Platforms, Inc., No. 5:22-cv-03892-
`YGR (N.D. Cal.), Letter from Laura Ashley Harris to
`Andrew Borrasso (Feb. 3, 2023)
`Gentex Corp. v. Meta Platforms, Inc., No. 5:22-cv-03892-
`YGR (N.D. Cal.), Excerpts of Invalidity Contentions of Meta
`Platforms, Inc. (Dec. 5, 2022)
`Declaration of Adam D. Harber in Support of Unopposed
`Motion for Pro Hac Vice Admission Pursuant to 37 C.F.R.
`§ 42.10(c)
`Declaration of Melissa B. Collins in Support of Unopposed
`Motion for Pro Hac Vice Admission Pursuant to 37 C.F.R.
`§ 42.10(c)
`
`vi
`
`
`
`Paper No. 42
`
`Exhibit
`2007
`
`2008
`2009
`
`2010
`
`2011
`2012
`
`2013
`2014
`
`2015
`
`2016
`2017
`2018
`
`2019
`(not filed)
`
`2020
`2021
`
`Title
`Declaration of Yohan Baillot in Support of Patent Owner’s
`Responses to Petitions for Inter Partes Review of U.S. Patent
`Nos. 6,922,632 and 7,725,253 (June 4, 2023)
`Curriculum Vitae of Yohan Baillot
`Transcript of the Deposition of Dr. Ulrich Neumann (June 1,
`2023)
`Excerpt of Transcript of the Deposition of Dr. Ulrich
`Neumann (May 23, 2023)
`Couple, American Heritage Dictionary (4th ed, 2000)
`Configure, Merriam-Webster’s Collegiate Dictionary (10th
`ed. 1999)
`Configure, American Heritage Dictionary (4th ed. 2000)
`Configure, Random House Webster’s Unabridged Dictionary
`(2d ed. 2001)
`Enumerate, Merriam-Webster’s Collegiate Dictionary (10th
`ed. 1999)
`Enumerate, American Heritage Dictionary (4th ed. 2000)
`IEEE 1451.4-2004, IEEE SA (last visited June 8, 2023)
`Inertial Motion-Tracking Technology for Virtual 3-D, NASA
`Spinoff (originally published in 2005)
`Declaration of Yohan Baillot in Support of Patent Owner’s
`Responses to Petitions for Inter Partes Review of U.S. Patent
`Nos. 6,922,632 and 7,725,253 with attachment (July 7, 2023)
`Declaration of Glen Parker (June 29, 2023)
`Couple, Merriam-Webster’s Collegiate Dictionary (10th ed.
`1999)
`
`vii
`
`
`
`Paper No. 42
`
`Exhibit
`2022
`
`2023
`(not filed)
`2024
`(not filed)
`2025
`
`2026
`
`2027
`2028
`
`Title
`Couple, Random House Webster’s Unabridged Dictionary
`(2d ed. 2001)
`Enumerate, Random House Webster’s Unabridged
`Dictionary (2d ed. 2001)
`Enumerate, Merriam-Webster’s Collegiate Dictionary (10th
`ed. 1999)
`Transcript of the Deposition of Dr. Ulrich Neumann (October
`20, 2023)
`Transcript of the Deposition of Glen Parker, Jr. (October 24,
`2023)
`May 3, 2023 Email Correspondence
`May 22, 2023 Email Correspondence
`
`viii
`
`
`
`Paper No. 42
`
`Petitioner Meta Platforms, Inc. (“Petitioner”) moves to exclude Exhibit 2010
`
`and Exhibit 2017. Exhibit 2010 is an excerpt of Petitioner’s expert’s testimony in
`
`another inter partes review between the parties. Petitioner objects to the identity of
`
`the questioner, but it has waived that objection and offers no rule of evidence that
`
`requires exclusion. Petitioner’s authenticity and hearsay objections to Exhibit 2017
`
`are no more persuasive. For the reasons described below, Petitioner’s objections fail
`
`and the evidence should be admitted.
`
`I.
`
`Exhibit 2010
`
`Petitioner moves to exclude Exhibit 2010, an excerpt from the deposition of
`
`Petitioner’s expert, Dr. Ulrich Neumann, in a different proceeding between the
`
`parties, IPR2022-01294. But Petitioner has waived its objection, and in any event
`
`offers no legal justification for exclusion.
`
`A.
`
`Background
`
`Petitioner’s Motion includes a long “statement of material facts.” Mot. 2-4.
`
`The chronology is incomplete but largely correct, and Patent Owner Thales Visionix,
`
`Inc. (“Patent Owner” or “Thales”) will not respond to it point-by-point other than to
`
`disagree with the characterization of Petitioner’s objection as “immediate[],” Mot.
`
`¶ 10, at 3. It was “immediate” only in the sense that, having decided to object for
`
`the first time at the start of Dr. Neumann’s deposition, Petitioner raised it at the
`
`beginning of the day. Ex. 2010, 7:24-25.
`
`1
`
`
`
`Paper No. 42
`
`What Petitioner omits is the broader picture. Petitioner is in district court
`
`litigation with Real Party-in-Interest Gentex Corp. (“Gentex”), the field-exclusive
`
`licensee of the relevant patents, and Gentex has been represented by the same firm—
`
`Williams & Connolly LLP—in that litigation and this IPR since the outset. Gentex
`
`filed mandatory notices and a power of attorney at the beginning of the proceeding,
`
`Papers 4, 6, and even filed pro hac vice motions, to which Petitioner consented,
`
`Papers 20, 21. Gentex and Thales also jointly filed the notice of deposition of Dr.
`
`Neumann in the -1294 IPR. IPR2022-01294, Paper 24.
`
`Although Petitioner now complains that the notice was untimely, it neglects
`
`to mention that Gentex and Thales flagged this issue along with its notice and
`
`indicated that they would re-notice the deposition for a different date if Petitioner
`
`would like. Ex. 2028, 1-3. Petitioner did not respond, and instead showed up to the
`
`deposition on the noticed date. Id. Before the deposition, Petitioner’s counsel also
`
`corresponded with Gentex’s counsel about the deposition logistics, and in the
`
`ensuing emails, Gentex informed Petitioner that its attorneys—and only its
`
`attorneys, not Thales’s—would be attending the deposition in person, traveling from
`
`Washington, DC, to San Francisco in order to do so. Id. All along the way,
`
`Petitioner served Gentex with papers as a party. E.g., Paper 15, 11; Paper 16, 3;
`
`Paper 25, 4. In short, not until the start of Dr. Neumann’s deposition in the -1294
`
`2
`
`
`
`IPR was Gentex given any indication that Petitioner (or the Board) believed Gentex
`
`Paper No. 42
`
`lacked the full ability to participate.
`
`B.
`
`Petitioner Waived Its Objection
`
`Petitioner ignores—and flouts—bedrock waiver law. Put simply, Petitioner
`
`knew in advance that attorneys from Williams & Connolly LLP, then counsel solely
`
`for Gentex, would be questioning Dr. Neumann. It chose to say nothing, depriving
`
`Thales and Gentex of the opportunity to cure the problem. That effected a waiver,
`
`which even without more is reason to deny Petitioner’s motion.
`
`The Board’s governing regulations endorse the obvious conclusion that these
`
`facts establish a waiver. Parties must object to any “defect in the notice” by moving
`
`to quash it, or else any objection is waived. 37 C.F.R. § 42.53(d)(6). The policy
`
`underlying this rule is obvious and sensible; the rule allows parties to cure any issues
`
`in advance of the deposition. “Waiting until after the deposition deprives the
`
`opposing party of that opportunity.” ZTE (USA), Inc. v. Cywee Grp., IPR2019-
`
`00143, 2021 WL 641742, at *48 (P.T.A.B. Feb. 17, 2021) (cleaned up; addressing
`
`analogous § 42.64(a), which governs deposition exhibits). And the rule further
`
`accords with the general waiver principle that objections should be raised “as soon
`
`as the objecting party knows or should know that an error has occurred.” 75 Am.
`
`Jur. 2d Trial § 314 (Oct. 2023 update). An objection is untimely if made “too late
`
`to give opposing counsel an opportunity to correct any deficiencies.” Id.
`
`3
`
`
`
`Paper No. 42
`
`Petitioner does not dispute that it was in fact on notice that counsel for Gentex
`
`would ask questions no later than May 12, eleven days prior to Dr. Neumann’s
`
`deposition, when Gentex and Thales served a joint Notice of Deposition. The Notice
`
`of Deposition stated: “Counsel for the parties have conferred and agreed that Patent
`
`Owner and Real Party-in-Interest, Thales Visionix, Inc. and Gentex Corp., will
`
`conduct cross-examination by deposition of Petitioner’s witness
`
`[Dr.
`
`Neumann] . . . .” IPR2022-01294, Paper 24, 1. Petitioner protests that it never
`
`agreed that Gentex, not just Thales, would conduct questioning. Mot. 8 n.4. That is
`
`a surprise to Gentex’s counsel, which did the conferring, going back as early as May
`
`3—weeks before the deposition—about both the dates and about responsibility for
`
`the court reporting (an unusual responsibility to put on a non-questioning party, see
`
`37 C.F.R. § 42.53(f)(7)). Ex. 2027. Petitioner continued to sit quietly and say
`
`nothing when Gentex’s counsel confirmed that Mr. Krinsky would travel across the
`
`country to participate in person, whereas Thales’s counsel noted its attorneys would
`
`“be joining remotely.” Ex. 2028. The first Gentex or Thales heard of any issue was
`
`during the deposition in San Francisco on May 23.
`
`By waiting until the deposition had begun to raise its objection—and then
`
`proceeding with the deposition—Petitioner deprived Thales and Gentex of the
`
`opportunity to cure the problem. Thales’s existing counsel appeared for the
`
`deposition only remotely, had not prepared to question the witness (leaving that to
`
`4
`
`
`
`Paper No. 42
`
`Gentex), and did not ask questions. See Ex. 2010; Ex. 2020 ¶4. As soon as Thales
`
`was on notice of the objection, it acted quickly to permit Williams & Connolly to
`
`represent it before the Board. As Thales’s COO declared:
`
`If Petitioner had timely raised its objection in advance of the . . .
`deposition . . . , allowing the Board to provide guidance to the parties,
`I would have executed the updated Powers of Attorney appointing
`the . . . Williams & Connolly LLP attorneys [including Mr. Krinsky] as
`attorneys authorized to act on behalf of Thales . . . in advance of the . . .
`deposition. I did not do so only because Meta did not make its
`objection known in time.
`Ex. 2020 ¶8; see also Ex. 2026, 52:13-15. In short, had Petitioner timely objected,
`
`the objection would have been resolved without disruption. By failing to do so,
`
`Petitioner waived any objection.
`
`Petitioner argues in response that the deposition notice was untimely. Mot. 8-
`
`9. But that objection, too, was waived. Gentex’s counsel explicitly raised the issue
`
`on May 12, indicating that it would re-notice the deposition for another date more
`
`than 14 days in the future if Petitioner requested. Ex. 2028, 1-3. Petitioner elected
`
`to move forward under the notice without filing a motion to quash or requesting a
`
`new date. In any case, the timeliness of the notice is no excuse. The fact that it was
`
`filed 11 days rather than 14 days ahead might have given Petitioner a basis to object
`
`to proceeding on May 23 rather than a later date, i.e., an additional basis to quash
`
`the deposition notice, but it cannot explain why Petitioner did not object, given that
`
`5
`
`
`
`Paper No. 42
`
`Petitioner had agreed to the date. Petitioner does not argue that it had inadequate
`
`time to raise an objection or move to quash the notice in advance of the deposition
`
`under § 42.53(d)(6). Petitioner also cited the notice after the deposition—seeking
`
`the notice’s expungement “based at least in part on 37 C.F.R. § 42.53(d)(6)”—when
`
`it belatedly raised the issue with the Board in advance of the deposition in this
`
`proceeding. Ex. 1039, 3. It does not and cannot argue that it lacked an objection to
`
`the notice. And, of course, Petitioner appeared with Dr. Neumann on the previously
`
`agreed and noticed date, illustrating that the timeliness of the notice was of no
`
`moment until Petitioner latched onto it as an excuse. In short, Petitioner waived its
`
`objection to the notice by failing to “promptly seek[] authorization to file a motion
`
`to quash.” 37 C.F.R. § 42.53(d)(6).
`
`Petitioner also argues that it “timely” objected to the evidence under
`
`“37 C.F.R. § 42.64(b)(1).” Mot. 6-7. But by its terms that provision only applies to
`
`“evidence other than deposition evidence.” 37 C.F.R. § 42.64(b). Objections to the
`
`admissibility of deposition evidence are governed by § 42.64(a), which Petitioner
`
`has not cited. And as the Board has recognized, “[w]aiting until after the deposition”
`
`to raise an admissibility objection to testimony “deprives the opposing party of [the]
`
`opportunity” to “submit evidence to cure the objection during the deposition.” ZTE,
`
`2021 WL 641742, at *48 (cleaned up). Petitioner’s citation to § 42.64(a) does not
`
`make its objection timely.
`
`6
`
`
`
`Paper No. 42
`
`Finally, Petitioner suggests Thales’s prompt response to the Board’s May 31
`
`guidance shows Thales is to blame for any delay. Mot. 9. Not so. By May 31,
`
`Thales and Gentex were on notice of the issue for over a week. There is no basis to
`
`infer that Gentex and Thales could have cured the issue during the deposition, let
`
`alone at the start and before Mr. Krinsky elicited the disputed testimony.
`
`C.
`
`Petitioner’s Motion Is Meritless
`
`Petitioner’s motion also fails on the merits. Petitioner offers no authority at
`
`all for the proposition that any of Dr. Neumann’s testimony is inadmissible.
`
`Petitioner cites no Federal Rule of Evidence in its Motion, Mot. 1-9, and no rule
`
`justifying exclusion exists. In the absence of any other governing exclusion, Federal
`
`Rule of Evidence 402 controls: “Relevant evidence is admissible.”
`
`Nor does Petitioner explain why the hodgepodge of regulations it cites
`
`supports exclusion. Dr. Neumann’s testimony was plainly proper under 37 C.F.R.
`
`§ 42.53(a) (cross-examination testimony shall be in the form of a deposition
`
`transcript) and § 42.53(f) (specifying rules for manner of taking depositions, none
`
`of which Petitioner disputes were satisfied). Because Petitioner has failed to explain
`
`the reasons for the relief requested, the motion should be denied. 37 C.F.R. §§ 42.20,
`
`42.22.
`
`That leaves Petitioner with the Board’s ruling, after the deposition, that only
`
`counsel for Thales, not counsel for Gentex, could ask deposition questions. Ex.
`
`7
`
`
`
`Paper No. 42
`
`1039, 1. But the issue was raised to the Board in the context of future depositions.
`
`The Board did not address past depositions at all, let alone decide the question of
`
`whether testimony previously elicited by counsel for Gentex was admissible. In fact,
`
`Petitioner specifically asked for “authorization to move to preclude [] the submission
`
`into the record of the portions of the prior deposition transcript containing cross-
`
`examination conducted by counsel for Gentex.” Id., 2. Thales and Gentex
`
`responded by arguing waiver, as well as opposing Petitioner’s “extraordinary
`
`request.” Id., 4. Given the Board’s silence on Petitioner’s requested exclusionary
`
`remedy, Petitioner cannot now argue that “[b]ased on the Board’s prior ruling, the
`
`entirety of Exhibit 2010 . . . must be excluded as inadmissible.” Mot. 6.
`
`Finally, Petitioner points to two cases that have nothing to do with exclusion
`
`of evidence. See Mot. 4-5 (first citing EMC Corp. v. ActivIdentity, Inc. (EMC),
`
`IPR2017-00338, Paper 9, at 2 (P.T.A.B. July 3, 2017), then citing Abbott Labs. v.
`
`Cardinal Health 529, LLC (Cardinal), IPR2019-00098, Paper 10, at 2 (P.T.A.B.
`
`Feb. 14, 2019)). Neither helps its cause. In EMC, the Board noted that an “exclusive
`
`licensee” filed a POPR, but it still considered “the arguments set forth by [the
`
`licensee].” EMC, Paper 9, at 2-3 & n.3. And the exclusive licensee went on to
`
`depose petitioner’s expert. EMC, Paper 23, at 1 (P.T.A.B. Sept. 14, 2017). In
`
`Cardinal, the patent owner included real party-in-interest’s arguments that patent
`
`owner “neither join[ed] in nor endorse[d]”. Cardinal, Paper 10, at 2. The Board—
`
`8
`
`
`
`Paper No. 42
`
`only after the patent owner expressly declined to amend—expunged the POPR at
`
`issue. Id., 3. So EMC and Cardinal support allowing Thales to cure the defect after
`
`the fact—as in fact it has done, by endorsing Mr. Krinsky’s conduct, then submitting
`
`a power of attorney and mandatory notice appointing Mr. Krinsky as its counsel.
`
`Ex. 2020 ¶4; Ex. 2026, 40:25-41:2; Papers 27, 28. Neither case provides any support
`
`for Petitioner’s position that the defect is incurable and that Gentex and Thales
`
`should be prohibited from relying on Dr. Neumann’s testimony.
`
`Simply put, Petitioner provides no justification suggesting—let alone
`
`showing—that the proper remedy now is to exclude Dr. Neumann’s testimony. In
`
`fact, depositions from other cases involving the same defending party are often
`
`admissible, because the attorney has ample motivation to defend the witness. Wright
`
`& Miller, 8A Fed. Prac. & Proc. Civ. § 2150 & n.5 (3d ed., Apr. 2023 update). The
`
`same principles apply here: admission, not exclusion, is appropriate.
`
`II.
`
`Exhibit 2017
`
`Petitioner also moves to exclude Exhibit 2017. In its Petition, Petitioner
`
`argued that the POSITA would have been motivated to combine Kramer (Ex. 1030)
`
`with Chen (Ex. 1024) in part because “Chen explains that the IEEE P1451.4 . . .
`
`standard would enable” certain sensor functionality. Petition 61. In response, Patent
`
`Owner observed that “Chen discloses only that a standard will be ‘proposed’ in the
`
`future, not that one existed.” POR 63 (citing Ex. 1024). Patent Owner further cited
`
`9
`
`
`
`Paper No. 42
`
`Exhibit 2017, a printout from the IEEE website, to explain that the “standard
`
`proposed by Chen was not adopted until 2004.” Id.
`
`Petitioner raises hearsay and authenticity objections. Mot. 9. But in
`
`complaining that Patent Owner looked to the IEEE Standards Association website
`
`to establish when an IEEE standard was issued, Petitioner does not proffer any actual
`
`facts calling into question the veracity or authenticity of the exhibit. As the Board
`
`has noted, “a proponent’s ‘burden of proof for authentication is slight,’” and the
`
`proponent only must “make a showing ‘sufficient to support a finding that the item
`
`is what the proponent claims it is.’” Satco Prods., Inc. v. Regents of Univ. of Cal.,
`
`IPR2021-00662, 2022 WL 16726349, at *24–25 (P.T.A.B. Nov. 4, 2022) (quoting
`
`Lexington Ins. Co. v. W. Pa. Hosp., 423 F.3d 318, 328 (3d Cir. 2005), and Fed. R.
`
`Evid. 901(a)). Exhibit 2017 lists on its face the URL of the IEEE website, it includes
`
`the logo of the IEEE Standards Association, and it corresponds to the version of the
`
`same website available on the Internet today. See https://standards.ieee.org/ieee/
`
`1451.4/2168/. The exhibit therefore is admissible under Federal Rule of Evidence
`
`901.
`
`Moreover, the statement in Exhibit 2017 about the publication date of the
`
`P1451.4 standard has “sufficient guarantees of trustworthiness,” Fed. R. Evid.
`
`807(a)(1), because it appears on IEEE’s own website, as shown by the indicia
`
`discussed above. And Exhibit 2017 is “more probative” regarding the publication
`
`10
`
`
`
`Paper No. 42
`
`date of the standard than any other evidence Patent Owner could obtain “through
`
`reasonable efforts.” Fed. R. Evid. 807(a)(2). As such, the statement is admissible
`
`under Federal Rule of Evidence 807. See QSC Audio Prods., LLC v. Crest Audio,
`
`Inc., IPR2014-00127, 2015 WL 1967347, at *7–8 (P.T.A.B. Apr. 29, 2015)
`
`(rejecting hearsay objection to website printout offered to show that preprint
`
`publications “were presented at [a] convention on the date stated on the cover page”).
`
`In any event, the precise date on which the standard was adopted is not
`
`essential to Patent Owner’s point that the P1451.4 standard was “a proposed
`
`standard that could change in the future or never issue,” Sur-Reply 26; see POR 63-
`
`64, which is established by Chen’s own acknowledgement that the standard was only
`
`a “proposed” one, Ex. 1024, 24.
`
`Date: November 21, 2023
`
`Respectfully submitted,
`
`/ Meredith Martin Addy /
`Meredith Martin Addy (Reg. No. 37,883)
`ADDYHART P.C.
`10 Glenlake Parkway
`Suite 130
`Atlanta, GA 30328
`312.320.4200
`312.264.2547 (fax)
`meredith@addyhart.com
`
`Lead Counsel for Patent Owner Thales
`Visionix Inc.
`
`Robert P. Hart (Reg. No. 35,184)
`Gregory B. Gulliver (Reg. No. 44,138)
`
`11
`
`
`
`Paper No. 42
`
`Brandon C. Helms (Reg. No. 61,742)
`ADDYHART P.C.
`401 N. Michigan Avenue
`Suite 1200-1
`Chicago, IL 60611
`Thales-Meta-IPRs@addyhart.com
`
`Backup Counsel for Patent Owner Thales
`Visionix Inc.
`
`David M. Krinsky (Reg. No. 72,339)
`WILLIAMS & CONNOLLY LLP
`680 Maine Avenue SW
`Washington, DC 20024
`T: (202) 434-5000
`F: (202) 434-5029
`dkrinsky@wc.com
`
`Lead Counsel for Real-Party-in-Interest
`Gentex Corp. and Backup Counsel for Patent
`Owner Thales Visionix Inc.
`
`Adam D. Harber (pro hac vice)
`Melissa B. Collins (pro hac vice)
`D. Shayon Ghosh (Reg. No. 75,865)
`Arthur J. Argall III (Reg. No. 73,005)
`WILLIAMS & CONNOLLY LLP
`680 Maine Avenue SW
`Washington, DC 20024
`T: (202) 434-5000
`F: (202) 434-5029
`Gentex-IPR@wc.com
`
`Backup Counsel for Real-Party-in-Interest
`Gentex Corp. and Patent Owner Thales
`Visionix Inc.
`
`12
`
`
`
`Paper No. 42
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certifies that a true
`
`and correct copy of the foregoing was served on November 21, 2023, by delivering
`
`a copy via electronic mail on the following counsel of record for the Petitioner:
`
`Meta-Thales-IPR@kirkland.com
`
`Date: November 21, 2023
`
`/ Meredith Martin Addy /
`Meredith Martin Addy
`Reg. No. 37,883
`
`13
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
