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. 7,725,253
`
`Case No. IPR2022-01308
`
`
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`
`
`
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`
`
`____________________________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`
`META PLATFORMS, INC.,
`Petitioner
`
`v.
`
`THALES VISIONIX, INC.,
`Patent Owner
`
`
`U.S. PATENT NO. 7,725,253
`
`Case No. IPR2022-01308
`
`
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Petitioner’s Motion to Exclude Evidence
`
`IPR2022-01308
`
`I.
`II.
`
`TABLE OF CONTENTS
`INTRODUCTION ......................................................................................... 1
`THE BOARD SHOULD EXCLUDE PATENT OWNER’S
`INADMISSIBLE EVIDENCE ..................................................................... 1
`A.
`Paragraphs 396-99 and 409 of Exhibit 2007 ......................................... 1
`B.
`Exhibit 2010 .......................................................................................... 6
`1.
`Statement Of Material Facts ....................................................... 6
`2.
`The Board Already Ruled That Gentex Is Not A “Party”
`And Is Not Permitted To Elicit Deposition Testimony .............. 9
`There Is No Applicable Exception To The Board’s Prior
`Ruling ........................................................................................ 11
`Exhibit 2017 ........................................................................................ 14
`C.
`III. CONCLUSION ............................................................................................ 15
`
`
`3.
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`
`
`
`
`i
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`Petitioner’s Motion to Exclude Evidence
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`IPR2022-01308
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Abbott Labs. V. Cardinal Health 529, LLC,
`IPR2019-00098, Paper No. 10 (P.T.A.B. Feb. 14, 2019) ................................... 10
`Actifio, Inc. v. Delphix Corp.,
`IPR2015-00100, Paper 59 (P.T.A.B. May 11, 2016) ......................................... 14
`EMC Corp. v. ActivIdentity, Inc.,
`IPR2017-00338, Paper No. 9 (P.T.A.B. July 3, 2017) ......................................... 9
`SK Innovation Co. v. Celgard, LLC,
`IPR2014-00679, Paper 58 (P.T.A.B. Sept. 25, 2015) ......................................... 14
`Rules
`Fed. R. Evid. 402 ..................................................................................................... 14
`Fed. R. Evid. 702 ............................................................................................... 1, 2, 3
`Other Authorities
`37 C.F.R.
`§ 32.64 ................................................................................................................... 1
`§ 42.2 ........................................................................................................... 6, 9, 10
`§ 42.9 ................................................................................................................. 6, 9
`§ 42.10 ............................................................................................................. 6, 10
`§ 42.53 ............................................................................................................. 6, 13
`§ 42.61 ................................................................................................................... 6
`§ 42.64 ................................................................................................................. 11
`§ 42.65 ............................................................................................................... 5, 6
`
`
`
`
`
`
`ii
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`Petitioner’s Motion to Exclude Evidence
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`IPR2022-01308
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`
`
`Exhibit
`No.
`
`PETITIONER’S EXHIBIT LIST
`
`Description
`
`Previously
`Filed
`
`1001 U.S. Patent No. 6,922,632
`
`1002
`
`File History of U.S. Patent No. 6,922,632
`
`1003 U.S. Patent No. 7,725,253
`
`1004
`
`File History of U.S. Patent No. 7,725,253
`
`1005 Declaration of Dr. Ulrich Neumann in Support of Inter
`Partes Review of U.S. Patent No. 6,922,632
`
`1006 Curriculum Vitae of Dr. Ulrich Neumann
`
`1007 Welch, G. et al., “High-Performance Wide-Area
`Optical Tracking” (2001)
`
`1008 Welch, G. et al., “SCAAT: Incremental Tracking with
`Incomplete Information” (1997)
`
`1009 Welch G. “SCAAT: Incremental Tracking with
`Incomplete Information” PhD Thesis, University of
`North Carolina (1996)
`
`1010 U.S. Patent No. 5,615,132
`
`1011 U.S. Patent No. 5,307,289
`
`1012 Gentex’s Amended Preliminary Infringement
`Contentions and corresponding Exhibits 4 and 5 (’632
`and ’253 infringement charts)
`
`1013 Azuma, R. “Predictive Tracking for Augmented
`Reality” PhD Thesis, University of North Carolina
`(1995)
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`iii
`
`
`
`Petitioner’s Motion to Exclude Evidence
`
`Exhibit
`No.
`
`Description
`
`IPR2022-01308
`
`Previously
`Filed
`
`1014 You, S. and Neumann, U. “Orientation Tracking for
`Outdoor Augmented Reality Registration.” (1999)
`
`1015 Carlson, Neal A. and Berarducci, Michael P.
`“Federated Kalman Filter Simulation Results.”
`Navigation. Vol. 41, Issue 3 at 297-322. (Fall 1994)
`
`1016 Reitmayr, Gerhard and Schmalstieg. “An Open
`Software Architecture for Virtual Reality Interaction”
`VRST ’01 (November 2001)
`
`1017 Barfield, W. “Fundamentals of Wearable Computers
`and Augmented Reality” (2001)
`
`1018 Declaration of Rachel J. Watters regarding Welch, G.
`et al., “High-Performance Wide-Area Optical
`Tracking” (2001)
`
`1019 Declaration of Scott Delman regarding Welch, G. et al.,
`“SCAAT: Incremental Tracking with Incomplete
`Information” (1997)
`
`1020 Declaration of Dr. James L. Mullins regarding Welch
`G. “SCAAT: Incremental Tracking with Incomplete
`Information” PhD Thesis, University of North Carolina
`(1996)
`
`1021 Declaration of Scott Delman regarding Reitmayr,
`Gerhard and Schmalstieg. “An Open Software
`Architecture for Virtual Reality Interaction” VRST ’01
`(November 2001)
`
`1022 U.S. Patent No. 5,807,284
`
`1023 U.S. Patent No. 5,991,085
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`iv
`
`
`
`Petitioner’s Motion to Exclude Evidence
`
`Exhibit
`No.
`
`Description
`
`IPR2022-01308
`
`Previously
`Filed
`
`1024 Chen, Steven C. and Lee, Kang. “A mixed-mode smart
`transducer interface for sensors and actuators”, Sound
`& Vibration, 32(4), 24-27 (April 1998)
`
`1025 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.
`
`1026
`
`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
`
`1027 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), 24-27 (April 1998)
`
`1028 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.
`
`1029 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
`
`1030 U.S. Patent No. 5,592,401
`
`X
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`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`v
`
`
`
`Petitioner’s Motion to Exclude Evidence
`
`Exhibit
`No.
`
`Description
`
`IPR2022-01308
`
`Previously
`Filed
`
`1031 Case Management and Pretrial Order, Dkt. 116, Gentex
`Corporation et al. v Meta Platforms, Inc. et al.
`(October 18, 2022)
`
`1032 Declaration of Akshay S. Deoras in Support of
`Unopposed Motion to Appear Pro Hac Vice on Behalf
`of Petitioner
`
`1033 Deposition Transcript of Yohan Baillot, dated
`September 13, 2023
`
`1034
`
`1035
`
`Excerpts from Random House Webster’s Unabridged
`Dictionary, 2nd Ed. (2001)
`
`Excerpts from The Computer Engineering Handbook
`(2001)
`
`1036 Compare Benefits of CPUs, GPUs, and FPGAs for
`Different oneAPI Compute Workloads
`
`1037
`
`1038
`
`1039
`
`1040
`
`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
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
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`X
`
`
`
`
`
`
`
`
`
`
`
`vi
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`
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`Petitioner’s Motion to Exclude Evidence
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`IPR2022-01308
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`
`
`Exhibit
`No.
`2001
`
`PATENT OWNER’S EXHIBIT LIST
`
`Description
`Complaint, Gentex Corp. v. Meta Platforms, Inc., No.
`6:21- cv-00755-ADA (W.D. Tex. July 22, 2021), ECF
`No. 1.
`
`Filed
`X
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`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)
`
`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 14, 2023)
`
`Curriculum Vitae of Yohan Baillot
`
`Transcript of the Deposition of Dr. Ulrich Neumann
`(June 1, 2023)
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`vii
`
`
`
`Petitioner’s Motion to Exclude Evidence
`
`IPR2022-01308
`
`Exhibit
`No.
`2010
`
`Description
`Excerpt of Transcript of the Deposition of Dr. Ulrich
`Neumann (May 23, 2023)
`
`Filed
`X
`
`2011
`
`2012
`
`2013
`
`2014
`
`2015
`
`2016
`
`2017
`
`2018
`
`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)
`
`2019
`[not filed]
`
`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)
`
`2020
`[not filed]
`
`Declaration of Glen Parker (June 29, 2023)
`
`2021
`
`Couple, Merriam-Webster’s Collegiate Dictionary
`(10th ed. 1999)
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`
`
`
`
`X
`
`viii
`
`
`
`Petitioner’s Motion to Exclude Evidence
`
`IPR2022-01308
`
`Exhibit
`No.
`2022
`
`Description
`Couple, Random House Webster’s Unabridged
`Dictionary (2d ed. 2001)
`
`2023
`[not filed]
`
`Enumerate, Random House Webster’s Unabridged
`Dictionary (2d ed. 2001)
`
`2024
`[not filed]
`
`Enumerate, Merriam-Webster’s Collegiate Dictionary
`(10th ed. 1999)
`
`2025
`
`Transcript of the Deposition of Dr. Ulrich Neumann
`(October 20, 2023)
`
`Filed
`X
`
`
`
`
`
`X
`
`
`
`
`
`ix
`
`
`
`Petitioner’s Motion to Exclude Evidence
`
`IPR2022-01308
`
`I.
`
`INTRODUCTION
`Pursuant to 37 C.F.R. § 32.64(c) and the Federal Rules of Evidence (“FRE”),
`
`Petitioner respectfully moves to exclude the following exhibits:
`
`• Paragraphs 396-99 and 409 of Exhibit 2007 (the declaration of Patent
`Owner’s expert, Mr. Baillot);
`• Exhibit 2010 (excerpt of deposition testimony of Dr. Neumann taken in
`unrelated IPR2022-01294); and
`• Exhibit 2017 (purported printout from the IEEE website).
`II. THE BOARD SHOULD EXCLUDE PATENT OWNER’S
`INADMISSIBLE EVIDENCE
`A.
`Paragraphs 396-99 and 409 of Exhibit 2007
`The Board should exclude paragraphs 396-399 of Exhibit 2007, which is the
`
`
`
`expert declaration of Mr. Baillot, because they do not pass muster under FRE 702.1
`
`
`
`As background, paragraphs 396-99 of Mr. Baillot’s declaration set forth his
`
`reasoning as to why a POSITA would not have been motivated to combine the Welch
`
`2001 / Welch 1997 references with the Harris reference. See Ex. 2007 ¶¶ 396-99. In
`
`particular, Mr. Baillot sets forth his opinion that the combination of those references
`
`would require replacing Welch’s Field Programmable Gate Array (“FPGA”)
`
`processor with a different, “general-purpose processor.” Id. ¶396. Mr. Baillot then
`
`
`1 Petitioner timely objected to the admissibility of this exhibit under FRE 702. See
`
`Paper 30 at 1-2.
`
`1
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`
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`Petitioner’s Motion to Exclude Evidence
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`IPR2022-01308
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`proceeds to provide four reasons why such a switch would be disadvantageous: “it
`
`would be [1] time-intensive, [2] more expensive[,] [3] likely slower at performing”
`
`computations on account of increased “complexity,” and [4] it would require “more
`
`memory and storage” that prevents beneficial “small packaging.” See id. ¶¶396-99.
`
`
`
`As explained in Petitioner’s Reply, Mr. Baillot’s underlying premise that a
`
`POSITA would be required to switch Welch’s FPGA with a general-purpose
`
`processor is incorrect, and if the Board agrees with Petitioner, then this portion of
`
`Mr. Baillot’s testimony is irrelevant and this portion of the motion to exclude is
`
`moot. See Paper 33 at 16-17. However, if the Board disagrees with Petitioner and
`
`finds that Welch’s FPGAs would have had to be replaced with general-purpose
`
`processors, then Mr. Baillot’s testimony is irrelevant and this portion of the motion
`
`to exclude is not moot.
`
`The problem with Mr. Baillot’s opinion is that it is not based on any facts or
`
`data as required by FRE 702(b), and it is not the product of any discernable principle
`
`or method, let alone a reasonable one, as required by FRE 702(c). As explained
`
`further below, Mr. Baillot’s failure to comply with FRE 702 prejudiced Petitioner’s
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`ability to fully cross-examine him, which warrants exclusion, rather than merely
`
`affording his testimony little to no weight.
`
`The flaws in Mr. Baillot’s opinion begin to appear in his declaration, as there
`
`is no citation to any evidence in paragraphs 396-99 of Mr. Baillot’s opinion, except
`
`2
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`Petitioner’s Motion to Exclude Evidence
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`IPR2022-01308
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`for a few citations to Welch that are presented for context and that Mr. Baillot does
`
`not directly rely on to support the four motivations against combination recited
`
`above. See Ex. 2007 ¶¶ 396-99. And when asked at deposition where Mr. Baillot has
`
`“any evidence available to [him] to support this last statement” in paragraph 396
`
`regarding purported [1] time-intensiveness, [2] increase expense, and [3] slower
`
`performance, Mr. Baillot responded: “As I stand here today, I don’t have some
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`specific evidence”; instead, his opinion was based entirely on some unspecified
`
`“knowledge” in his mind. See Ex. 1033 at 84:21-86:16. The same applied to the
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`fourth motivation against combination regarding alleged additional memory and
`
`storage that would prevent small packaging—again Mr. Baillot confirmed he had no
`
`evidence. See id. at 107:5-108:5 (“You have no documentary evidence beyond and
`
`separate from your experience that that modification would require more memory
`
`and storage, correct? A. … So I don’t have one as I stand today….”), 111:8-13 (“So
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`you didn’t look at any documents comparing FPGA’s and general-purpose
`
`processors at the time and what their size and weights were, correct? A. No….”).
`
`Without any basis in examinable or testable fact, Mr. Baillot necessarily could
`
`not have, and indeed did not, apply any discernable principle or method to arrive at
`
`his opinion, as required by FRE 702(c). That, in turn, prejudiced Petitioner’s ability
`
`to adequately cross-examine Mr. Baillot, such that exclusion is warranted. For
`
`example, when asked “do you know how much more expensive it would be” to
`
`3
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`Petitioner’s Motion to Exclude Evidence
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`IPR2022-01308
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`replace Welch’s FPGA with a general-purpose processor, Mr. Baillot responded “I
`
`don’t have a good idea of that” and could not say whether “it would be one dollar
`
`more expensive or a thousand dollars more expensive or a million dollars more
`
`expensive.” See Ex. 1033 at 87:2-21. If Mr. Baillot had any particular methodology
`
`for his opinion, Petitioner could have shown through cross-examination that any
`
`additional expense “would be closer to one dollar,” as Mr. Baillot himself suspected
`
`and which would have mooted his contention regarding additional expense. See Ex.
`
`1033 at 87:22-88:6. However, because Mr. Baillot had no methodology for
`
`determining the magnitude of additional expense, he refused to answer questions
`
`about whether the alleged additional expense would “be material in the design … of
`
`the system,” claiming that he had not “form[ed] an opinion on” that. See Ex. 1033
`
`at 88:13-89:1. Mr. Baillot should not be permitted to render an opinion without any
`
`factual basis and then dodge questions assailing his conclusions because he lacked
`
`any testable methodology for his opinions.
`
`Mr. Baillot likewise had no testable methodology with respect to his opinions
`
`on the other three alleged motivations against combination. For example, Mr. Baillot
`
`had no opinion on how time intensive the switch would allegedly be or “whether the
`
`additional time would be one minute or one week or one month or one year.” See id.
`
`at 90:2-19. Similarly, when asked “do you know how much more memory and
`
`storage would be required” and “how much more expensive that additional memory
`
`4
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`Petitioner’s Motion to Exclude Evidence
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`IPR2022-01308
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`and storage would be,” Mr. Baillot responded: “No.” See Ex. 1033 at 109:3-11. And,
`
`similarly, Mr. Baillot didn’t “have an opinion at this time” on the “magnitude of
`
`additional complexity” in combining references, including because he did not have
`
`“enough data” to “perform the analysis to determine” the complexity. See id. at
`
`112:5-14, 114:19-116:10. Again, Mr. Baillot should not be permitted to render a
`
`black-box opinion that cannot be subjected to proper cross-examination.
`
`This is not a situation under 37 C.F.R. § 42.65(a) where Mr. Baillot simply
`
`did “not disclose the underlying facts or data on which the opinion is based” such
`
`that his opinion should just be “entitled to little or no weight” but retained in the
`
`record. If that were the situation, in theory Petitioner could have discovery on the
`
`facts and methodology underlying Mr. Baillot’s opinions and cross-examined him
`
`on them. But in the present situation, there were no such facts or methodology to
`
`speak of, so there was nothing for Petitioner to discover or properly cross-examine.
`
`For that reason, paragraphs 396-99 of Mr. Baillot’s declaration should be excluded.
`
`Relatedly, paragraph 409 of Mr. Baillot’s declaration references his analysis
`
`in paragraphs 396-99 in order to offer the same opinion against motivation to replace
`
`Welch’s FPGA in the context of Welch’s combination with the Reitmayr reference.
`
`See Ex. 2007 ¶ 409. Once again, this testimony is irrelevant because no such switch
`
`is required, as noted in Petitioner’s Reply. See Paper 33 at 18-19. Therefore, once
`
`again, if the Board agrees with Petitioner on that point, this portion of the motion to
`
`5
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`Petitioner’s Motion to Exclude Evidence
`
`IPR2022-01308
`
`exclude is moot. But, in the event the Board believes switching Welch’s FPGA
`
`would be required as Mr. Baillot contends, then his testimony at paragraph 409 is
`
`relevant but also prejudicial and excludable for the same reasons as his testimony in
`
`paragraphs 396-99.
`
`B.
`Exhibit 2010
`Petitioner objects to Exhibit 2010 in its entirety, or in the alternative, to
`
`exclude the following portions of Exhibit 2010: 18:15-19:24.2 Petitioner makes its
`
`objections pursuant to 37 C.F.R. §§ 42.2, 42.9, 42.10, 42.53, 42.61, and 42.65 as
`
`offering inadmissible expert testimony improperly elicited by non-party Gentex
`
`Corporation (“Gentex”) over Petitioner’s timely objections. Patent Owner should
`
`not be able to benefit from the unauthorized practice of law by counsel for non-party
`
`Gentex.
`
`1.
`Statement Of Material Facts
`Patent Owner’s original Mandatory Notices identified non-party
`
`1)
`
`“licensee” Gentex as a real party-in-interest. Paper 3 at 1; IPR2022-01294, Paper 3
`
`at 1.
`
`
`2 These are the portions of the improperly elicited deposition testimony that are cited
`
`by Patent Owner anywhere in its briefing or in Patent Owner’s expert’s declaration.
`
`6
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`
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`Petitioner’s Motion to Exclude Evidence
`
`IPR2022-01308
`
`2)
`
`Non-party Gentex has not been the owner of the ’024 Patent at any point
`
`during this proceeding, nor has it been an exclusive licensee with all substantial
`
`rights at any point during this proceeding. See Ex-2001 ¶¶ 2, 4-6.
`
`3)
`
`At the same time as it filed its Mandatory Notices, Patent Owner also
`
`filed a Power of Attorney appointing individuals exclusively from the law firm of
`
`AddyHart P.C. as its attorneys for this proceeding. Paper 5 at 2; IPR2022-01294,
`
`Paper 4 at 2.
`
`4)
`
`Patent Owner’s original Power of Attorney was signed by its Chief
`
`Operating Officer (“COO”), Mr. Glen Parker. Paper 5 at 3; IPR2022-01294, Paper
`
`4 at 3.
`
`5)
`
`Separately, non-party Gentex filed its own Power of Attorney
`
`identifying only attorneys from Williams & Connolly LLP. Paper 4 at 1; IPR2022-
`
`01294, Paper 5 at 1.
`
`6)
`
`Gentex’s Power of Attorney was executed by Kathryn L. Eary, General
`
`Counsel of Gentex; it was not signed by Mr. Parker (Patent Owner’s COO), and
`
`there is no evidence that Ms. Eary has any authority to act on behalf of Patent Owner.
`
`See Paper 4 at 2; IPR2022-01294, Paper 5 at 2.
`
`7)
`
`At no point from August 11, 2022 (the date Patent Owner filed its
`
`original Power of Attorney) until May 31, 2023 did Patent Owner update its Power
`
`of Attorney or Mandatory Notices to include any attorneys at Williams & Connolly
`
`7
`
`
`
`Petitioner’s Motion to Exclude Evidence
`
`IPR2022-01308
`
`LLP as Patent Owner’s counsel. See Papers 5, 21, 26, 27; IPR2022-01294, Papers
`
`4, 21, 25, 26.
`
`8)
`
`Petitioner’s expert, Dr. Neumann, was deposed in IPR2022-01294 on
`
`May 23, 2023.
`
`9)
`
`At the start of that May 23, 2023 deposition in IPR2022-01294,
`
`although Patent Owner’s counsel of record (Messrs. Gregory Gulliver and Brandon
`
`Helms) were present, counsel for non-party Gentex (Mr. David Krinsky) began to
`
`pose questions. Ex-2010, 7:5-7 (“David Krinsky of Williams & Connolly LLP on
`
`behalf of Gentex”).
`
`10) Counsel for Petitioner immediately objected on the record to all
`
`questioning by Mr. Krinsky because Mr. Krinsky was only counsel for non-party
`
`Gentex and not counsel for Patent Owner.
`
`11) Mr. Krinsky (counsel for non-party Gentex) disagreed with Petitioner’s
`
`objection and proceeded to cross-examine Dr. Neumann anyway.
`
`12) Patent Owner’s counsel of record was present for the entire deposition,
`
`but did not pose a single question; only counsel for non-party Gentex posed cross-
`
`examination and re-cross-examination questions.
`
`13) Although Patent Owner added a number of Williams & Connolly
`
`attorneys (including Mr. Krinsky) as counsel of record in its May 31, 2023 Updated
`
`Power of Attorney (a week after Dr. Neumann’s deposition in IPR2022-01294),
`
`8
`
`
`
`Petitioner’s Motion to Exclude Evidence
`
`IPR2022-01308
`
`Patent Owner has expressly confirmed that “it did not have an attorney-client
`
`relationship with any attorney at Williams & Connolly before or during the May 23,
`
`2023 deposition of Dr. Neumann.” See Ex-1040.
`
`14) Patent Owner filed its Updated Power of Attorney after and on the same
`
`day as the Board’s ruling that “only counsel for Patent Owner may question
`
`Petitioner’s expert.” See Ex-1039; Papers 26, 27; IPR2022-01294, Papers 25, 26.
`
`2.
`
`The Board Already Ruled That Gentex Is Not A “Party” And
`Is Not Permitted To Elicit Deposition Testimony
`Counsel for non-party Gentex (a mere licensee) was not permitted to take
`
`deposition testimony of Dr. Neumann on May 23, 2023 in IPR2022-01294. See
`
`EMC Corp. v. ActivIdentity, Inc., IPR2017-00338, Paper No. 9 at 2 (P.T.A.B. July
`
`3, 2017) (35 U.S.C. § 313 means that “it is the patent owner, not a licensee, who
`
`has the right to participate in inter partes review proceedings.”).3 37 C.F.R. § 42.9
`
`sets forth actions that “a party,” not a non-party, may take related to depositions, and
`
`the definition of “party” does not include mere licensees like Gentex. See 37 C.F.R.
`
`§ 42.2 (“[P]arty” means “at least the petitioner and the patent owner and, in a
`
`derivation proceeding, any applicant or assignee of the involved application”). It is
`
`irrelevant whether Gentex is a real party-in-interest; as a mere licensee without all
`
`substantial rights, Gentex was simply not a “party” that is allowed to appear before
`
`
`3 Unless otherwise specified, all emphasis is added.
`
`9
`
`
`
`Petitioner’s Motion to Exclude Evidence
`
`IPR2022-01308
`
`the Board or take part in this proceeding. See Abbott Labs. V. Cardinal Health 529,
`
`LLC, IPR2019-00098, Paper No. 10 at 2 (P.T.A.B. Feb. 14, 2019) (“An entity’s
`
`status as a real party in interest, however, does not necessarily qualify that entity as
`
`a ‘party’ to the proceeding.”).
`
`Petitioner already raised the propriety of non-party Gentex’s improper
`
`questioning in IPR2022-01294 with the Board on May 26, 2023, in anticipation of
`
`the same issue arising in this and other IPR proceedings involving the same parties
`
`and counsel. See Ex-1039. The Board agreed that non-party Gentex was not
`
`permitted to cross-examine Petitioner’s expert, stating:
`
`The parties to these proceedings are Petitioner and Patent Owner. See
`37 C.F.R. §§ 42.2, 42.10(a). Accordingly, only counsel for which
`Patent Owner has filed a power of attorney (and subsequent
`mandatory notices) may ask questions of Petitioner’s expert in a
`deposition. See 37 C.F.R. § 42.10(b). The panels are not aware of
`any Rule or other authority that permits a real party in interest to
`conduct a deposition of an opposing party’s expert. To the extent that
`Patent Owner desires another attorney not currently of record on behalf
`of Patent Owner to ask questions during a deposition, Patent Owner
`must file an updated power of attorney identifying that person and
`subsequent mandatory notices indicating whether that individual is lead
`or back-up counsel. To the extent Patent Owner does not seek to file a
`new power of attorney, counsel for Gentex Corporation may still attend
`the deposition and may provide questions that counsel for Patent Owner
`
`10
`
`
`
`Petitioner’s Motion to Exclude Evidence
`
`IPR2022-01308
`
`asks of Petitioner’s expert. But, only counsel for Patent Owner may
`question Petitioner’s expert.
`
`Ex-1039. Based on the Board’s prior ruling, the entirety of Exhibit 2010 (or in the
`
`alternative, the portion identified in Section II.B supra) must be excluded as
`
`inadmissible deposition
`
`testimony because
`
`it was
`
`improperly elicited by
`
`Mr. Krinsky who was, at the time, solely counsel for non-party Gentex and not
`
`counsel for Patent Owner.
`
`3.
`
`There Is No Applicable Exception To The Board’s Prior
`Ruling
`Notwithstanding the Board’s ruling, on June 14, 2023, Patent Owner filed its
`
`Patent Owner’s Response, which relied on the improperly elicited testimony of
`
`Dr. Neumann as Exhibit 2010. See generally Paper 29; Ex-2007, ¶¶ 16-17.
`
`Petitioner timely filed Objections to Evidence that objected to the inclusion of
`
`Dr. Neumann’s improperly elicited cross-examination testimony. See Paper 30;
`
`37 C.F.R. § 42.64(b)(1).4 In response to Petitioner’s objections, Patent Owner
`
`served supplemental evidence in the form of a June 29, 2023 Declaration of Glen
`
`Parker (“Parker Declaration”), in an attempt to retroactively cure the issues with Mr.
`
`Krinsky’s improper questioning of Dr. Neumann in IPR2022-01294 in two ways.
`
`
`4 June 19, 2023 (Juneteenth) was a federal holiday.
`
`11
`
`
`
`Petitioner’s Motion to Exclude Evidence
`
`IPR2022-01308
`
`First, Patent Owner appears to be relying on Mr. Parker’s declaration to
`
`contend that it effectively consented to Mr. Krinsky (counsel for non-party Gentex)
`
`posing questions on Patent Owner’s behalf. Any such alleged consent is ineffective
`
`and irrelevant, however. Again, Patent Owner has expressly confirmed that “it did
`
`not have an attorney-client relationship with any attorney at Williams & Connolly
`
`before or during the May 23, 2023 deposition of Dr. Neumann,” so Mr. Krinsky was
`
`not Patent Owner’s attorney. Ex-1039. However, “only counsel for Patent Owner
`
`may question Petitioner’s expert.” Ex-1040. It is similarly ineffective and irrelevant
`
`whether Patent Owner has a common interest or joint defense agreement with non-
`
`party Gentex, because neither the Rules nor the Board’s prior ruling in this matter
`
`provide any exception for non-parties that share a common interest or joint defense
`
`agreement with a party to ask questions in depositions.
`
`Second, Patent Owner appears to be relying on Mr. Parker’s declaration to
`
`contend that Petitioner waived its objection to questioning by non-party Gentex in
`
`IPR2022-01294 on account of Petitioner’s alleged delay. As background, Patent
`
`Owner contends that it provided notice in IPR2022-01294 that non-party Gentex’s
`
`counsel would ask questions in Patent Owner’s Notice of Deposition, but Petitioner
`
`did not object to such questioning until the day of the deposition. See IPR2022-
`
`12
`
`
`
`Petitioner’s Motion to Exclude Evidence
`
`IPR2022-01308
`
`01294, Paper 24 at 1.5 Patent Owner then relies on the Parker Declaration to contend
`
`that, had Petitioner notified Patent Owner of Petitioner’s objection after receiving
`
`such notice and before the day of the deposition, Patent Owner would have updated
`
`its Power of Attorney so that Mr. Krinsky would have been counsel of record by the
`
`time of the deposition. However, Patent Owner filed its Notice of Deposition for
`
`IPR2022-01294 on May 12, which is late; Dr. Neumann’s May 23 deposition
`
`required Patent Owner to file its notice of deposition no later than May 9. See
`
`IPR2022-01294, Paper 24; 37 C.F.R. § 42.53(d)(4) (“The party seeking the
`
`deposition must file a notice of the deposition at least ten business days before a
`
`deposition.”). Patent Owner’s notice was therefore itself untimely, so Patent Owner
`
`cannot now point to its own tardy and noncompliant Notice of Deposition to argue
`
`that Petitioner was untimely in Petitioner’s objection. See IPR2022-01294, Paper
`
`24 at 1. Additionally, Patent Owner was able file an Updated Power of Attorney on
`
`the same day as and after the Board’s ruling. See Ex-1040; Papers 26, 27; IPR2022-
`
`
`5 Patent Owner’s Notice of Deposition falsely stated that “[c]ounsel for the parties
`
`have conferred and agreed” that Patent Owner and Gentex “will conduct cross-
`
`examination.” IPR2022-01294, Paper 24 at 1. This is incorrect. Petitioner never
`
`agreed that counsel for non-party Gentex could conduct cross-examination or re-
`
`cross for IPR2022-01294. See Ex-1039.
`
`13
`
`
`
`Petitioner’s Motion to Exclude Evidence
`
`IPR2022-01308
`
`01294, Papers 25, 26. Patent Owner could thus have filed an updated Power of
`
`Attorney on the same day as and after Petitioner’s objection at the start of
`
`Dr. Neumann’s deposition in IPR2022-01294. In short, Petitioner timely objected
`
`to Mr. Krinsky’s questioning, and any delay was Patent Owner’s fault, not
`
`Petitioner’s.
`
`As counsel for non-party Gentex improperly posed all cross-examination and
`
`re-cross questions to Petitioner’s expert in IPR2022-01294, Petitioner respectfully
`
`requests exclusion of the deposition transcript (Exhibit 2010) in its entirety, or in the
`
`alternative, the specific portions identified in Section II.B supra.
`
`C. Exhibit 2017
`None of the briefing in this proceeding cites Exhibit 2017, so it is irrelevant
`
`
`
`and thus inadmissible under FRE 402.6 See, e.g., SK Innovation Co. v. Celgard, LLC,
`
`IPR2014-00679, Paper 58 at 49 (P.T.A.B. Sept. 25, 2015) (“Because Patent Owner
`
`did not cite Exhibits 2013 and 2016 in this proceeding, we grant Petitioner’s Motion
`
`to Exclude Exhibits
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