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
`
`IPR2022-01308
`__________________
`
`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. 7,725,253
`
`IPR2022-01308
`__________________
`
`PATENT OWNER’S OPPOSITION TO
`MOTION TO EXCLUDE
`
`November 21, 2023
`
`
`
`Paper No. 41
`
`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES.....................................................................................ii
`
`LIST OF EXHIBITS ................................................................................................iii
`
`I.
`
`Paragraphs 396-99 and 409 of Exhibit 2007...................................................1
`
`A.
`
`B.
`
`Background ...........................................................................................2
`
`Argument ..............................................................................................4
`
`II.
`
`Exhibit 2010 ....................................................................................................7
`
`A.
`
`B.
`
`C.
`
`Background ...........................................................................................8
`
`Petitioner Waived Its Objection............................................................9
`
`Petitioner’s Motion Is Meritless..........................................................13
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`Paper No. 41
`
`CASES
`Abbott Labs. v. Cardinal Health 529, LLC,
`IPR2019-00098, Paper 10 (P.T.A.B. Feb. 14, 2019)..........................................15
`Biomarin Pharm. Inc. v. Genzyme Therapeutic Prods. Ltd.,
`IPR2013-00537, 2015 WL 1009197 (P.T.A.B. Feb. 23, 2015) ...........................7
`EMC Corp. v. ActivIdentity, Inc.,
`IPR2017-00338, Paper 9 (P.T.A.B. July 3, 2017)..............................................15
`ZTE (USA), Inc. v. Cywee Grp.,
`IPR2019-00143, 2021 WL 641742 (P.T.A.B. Feb. 17, 2021) .....................10, 13
`RULES AND REGULATIONS
`37 C.F.R. § 42.20.....................................................................................................14
`37 C.F.R. § 42.22.....................................................................................................14
`37 C.F.R. § 42.53..............................................................................................passim
`37 C.F.R. § 42.64.........................................................................................10, 12, 13
`Fed. R. Evid. 402.....................................................................................................13
`OTHER AUTHORITIES
`Wright & Miller, 8A Fed. Prac. & Proc. Civ. § 2150 (3d ed., Apr. 2023
`update) ................................................................................................................15
`75 Am. Jur. 2d Trial § 314 (Oct. 2023 update) .......................................................10
`
`ii
`
`
`
`Paper No. 41
`
`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. 41
`
`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. 41
`
`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. 41
`
`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. 41
`
`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. 41
`
`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. 41
`
`Petitioner Meta Platforms, Inc. (“Petitioner”) moves to exclude portions of
`
`Exhibit 2007 and all of Exhibit 2010. As to Exhibit 2007, the declaration of Patent
`
`Owner Thales Visionix, Inc.’s (“Patent Owner” or “Thales”) expert, Petitioner’s
`
`objections are either moot or meritless. 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. For the reasons described below,
`
`Petitioner’s objections fail and the evidence should be admitted.
`
`I.
`
`Paragraphs 396-99 and 409 of Exhibit 2007
`
`Petitioner’s motion to exclude certain paragraphs from the declaration of
`
`Patent Owner’s expert, Yohan Baillot, conflates multiple different opinions as to
`
`why the POSITA would not have been motivated to introduce distributed processing
`
`as described by Harris into Welch 2001’s HiBall system.
`
`Patent Owner agrees that any dispute about the admissibility of certain
`
`specific opinions1 offered by Mr. Baillot is moot, because they do not appear to bear
`
`1 Namely, the last sentence of paragraph 396, paragraph 397, and the fourth sentence
`
`of paragraph 409.
`
`1
`
`
`
`on Petitioner’s proposed modification. But the remainder of the opinions2 Petitioner
`
`seeks to exclude are relevant and admissible, and Petitioner’s motion to exclude
`
`Paper No. 41
`
`should be denied.
`
`A.
`
`Background
`
`The Petition did not specify a particular proposed modification when it
`
`asserted that the POSITA would have combined the Welch HiBall system with the
`
`distributed processing of Harris or Reitmayr (Grounds II and III). Its vague assertion
`
`that “some aspects of the computation” in Welch 2001 would be “carried out by the
`
`sensor devices,” Petition 43, did not explain what computations would purportedly
`
`take place on the HiBalls, or how the HiBalls would be programmed to do so.
`
`Accordingly, Mr. Baillot’s opinion addresses three separate theoretical possibilities,
`
`and explains why the POSITA would not have been motivated to undertake any of
`
`them. Patent Owner explained in its Sur-Reply, prior to this motion to exclude, that
`
`these opinions are independent from one another. Sur-Reply 14 n.4.
`
`First possible modification. Mr. Baillot opines that the “POSITA would not
`
`have been motivated to program the HiBall FPGA to carry out any ‘computation’ as
`
`taught by Welch 2001, Welch 1997, Harris, or the ’253 patent.” Such computations
`
`2 All but the last sentence of paragraph 396, paragraphs 398-399, and all but the
`
`fourth sentence of paragraph 409.
`
`2
`
`
`
`Paper No. 41
`
`are performed in the references by general-purpose processors. Because FPGAs are
`
`configured to perform a specific function, moving those computations from general
`
`purpose processors to FPGAs specifically-configured to perform those particular
`
`computations “would have drastically reduced the flexibility of the system.” This
`
`opinion is stated in the first part of paragraph 396 of Mr. Baillot’s declaration. Ex.
`
`2007 ¶396.
`
`Second possible modification. Mr. Baillot anticipated that Petitioner may
`
`attempt to rebut this lack of flexibility point—a severe flaw in the first possibility—
`
`by claiming on reply that its proposed modification actually would entail
`
`programming the HiBall FPGAs to be able to perform multiple different functions
`
`not specified in advance, i.e., “program an FPGA to function as a general-purpose
`
`processor.” It is this that Mr. Baillot opines “would be time-intensive, more
`
`expensive and likely slower at performing general-purpose applications,” and thus
`
`“less desirable than using a general-purpose processor in the first place.” This
`
`opinion is stated in the final sentence of paragraph 396 of Mr. Baillot’s declaration.
`
`Ex. 2007 ¶396.
`
`Third possible modification. Mr. Baillot separately anticipated that Petitioner
`
`may claim on reply that its proposed modification would involve adding general
`
`purpose processing capabilities to the HiBall, rather than programing the FPGA that
`
`already existed in the HiBall unit. This, Mr. Baillot opined, would require “more
`
`3
`
`
`
`Paper No. 41
`
`memory and storage,” and “would undermine Welch 2001’s stated goal of small
`
`packaging.” This opinion is stated in paragraph 397 of Mr. Baillot’s declaration.
`
`Ex. 2007 ¶397.
`
`In addition to opining on each of these three possible approaches to
`
`modification, Mr. Baillot also opined that—no matter which of the three approaches
`
`Petitioner pursued—the POSITA would not have been motivated to pursue Harris’s
`
`distributed processing in the Welch 2001 system because Welch 2001 already
`
`described itself as “very fast” due to its “drastically reduced” “algorithmic
`
`complexity,” and as having a “simple” communications protocol. This opinion is
`
`independent of the particular programming approaches discussed above, and is
`
`stated in paragraphs 398-399 of Mr. Baillot’s declaration. Ex. 2007 ¶¶398-399.
`
`Paragraph 409 references all of Mr. Baillot’s opinions on these topics, in the
`
`context of a different secondary reference, Reitmayr. Id. ¶409.
`
`On reply, Petitioner contends
`
`that
`
`its modification would
`
`involve
`
`“configur[ing] Welch-2001’s existing FPGAs to perform the prior art’s tracking
`
`calculations.” Reply 16. This is the first approach about which Mr. Baillot opined.
`
`B.
`
`Argument
`
`As an initial matter, Petitioner’s motion to exclude is directed primarily to
`
`purported flaws in the second and third possible approaches about which Mr. Baillot
`
`opined. Petitioner criticizes Mr. Baillot’s opinions regarding the “[1] time-
`
`4
`
`
`
`Paper No. 41
`
`intensiveness, [2] increase[d] expense, and [3] slower performance” of Mr. Baillot’s
`
`opinion as to the second approach, Mot. 3, and the “memory and storage” of Mr.
`
`Baillot’s opinion as to the third approach, id., 4. Patent Owner disagrees that Mr.
`
`Baillot’s opinions on these topics are inadmissible—they are based on his
`
`knowledge and experience, e.g., Ex. 1033, 85:9-86:19; 107:5-108:5, 111:3-13, and
`
`any supposed shortcomings in quantifying details are attributable to the fact that
`
`Petitioner did not explain (and still has not explained) exactly what processing in
`
`Welch would be done on the HiBalls in its asserted combination. But so long as
`
`Petitioner is held to its argument that Welch 2001’s FPGAs would be programmed
`
`to perform specific computations—i.e., the first possibility about which Mr. Baillot
`
`opined—then Patent Owner agrees that any dispute over Mr. Baillot’s opinions on
`
`the second and third possibilities is moot. These opinions are laid out in the last
`
`sentence of paragraph 396, paragraph 397, and the fourth sentence of paragraph 409.
`
`The remaining opinions—set out in the first part of paragraph 396, as well as
`
`the full paragraphs 398 and 399 and the remainder of paragraph 409—are
`
`independent, relevant, and admissible.
`
`First, Mr. Baillot’s opinion that the POSITA would not have been motivated
`
`to program the HiBall FPGA to perform the computations in Welch, Ex. 2007 ¶396,
`
`is plainly relevant to Petitioner’s contention that “Welch-2001’s existing FPGAs”
`
`would be configured “to perform the prior art’s tracking calculations,” Reply 16.
`
`5
`
`
`
`Paper No. 41
`
`Petitioner’s motion does not direct any arguments toward this particular opinion.
`
`Petitioner does not dispute that programming the HiBall FPGAs to carry out specific
`
`computations would “drastically reduce the flexibility of the system,” Ex. 2007
`
`¶396; see also id. ¶409 (same), and does not criticize the basis for that opinion. Nor
`
`does Petitioner claim that it was unable to cross-examine Mr. Baillot about this
`
`opinion; indeed, Petitioner did cross-examine Mr. Baillot about the FPGA’s lack of
`
`flexibility. Ex. 1033, 93:22-94:1.
`
`Second, Petitioner appears to take (brief) issue with Mr. Baillot’s opinion (Ex.
`
`2007 ¶¶398-399) that the POSITA would not have had reason to introduce the
`
`complexity of Harris’s distributed processing into the Welch system. Mot. 4-5. This
`
`opinion is grounded in the Welch and Harris references themselves. Welch explains
`
`that its system already achieved the benefits that Harris proposes, which Petitioner
`
`asserts would improve the Welch system. Ex. 2007 ¶¶398-99 (citing Ex. 1007, 7,
`
`11 and Ex. 1011, 10:36-39).
`
`Petitioner complains that Mr. Baillot did not opine “on the ‘magnitude of
`
`additional complexity,’” Mot. 5, but Mr. Baillot explained at deposition he could not
`
`quantify the additional complexity because Petitioner’s expert’s declaration was
`
`“incomplete,” in that it did not specify what computations Petitioner contended
`
`would be running on the HiBall FPGAs in its proposed combination. Ex. 1033,
`
`112:5-14. In other words, Mr. Baillot did not have “enough data” to answer, Mot.
`
`6
`
`
`
`Paper No. 41
`
`5, because Petitioner—who bears the burden—did not provide it. Excluding Mr.
`
`Baillot’s opinion because he could not answer a question Petitioner did not provide
`
`sufficient information to answer would be improper and prejudicial. Further, Mr.
`
`Baillot’s opinion that there would be no motivation to introduce complexity into the
`
`already-fast and already-simple Welch system does not turn on the magnitude of that
`
`complexity, and any concerns about magnitude would go to weight, not
`
`admissibility.
`
`In short, none of Petitioner’s quibbles with these opinions “warrant the
`
`extreme remedy of exclusion.” Biomarin Pharm. Inc. v. Genzyme Therapeutic
`
`Prods. Ltd., IPR2013-00537, 2015 WL 1009197, at *14 (P.T.A.B. Feb. 23, 2015).
`
`Accordingly, there is no basis to exclude Mr. Baillot’s opinions set out in the
`
`first five sentences of paragraph 396, paragraphs 398 and 399, and all but the fourth
`
`sentence of paragraph 409 of his declaration. Patent Owner stands by Mr. Baillot’s
`
`opinions as to the last sentence of paragraph 396, paragraph 397, and the fourth
`
`sentence of paragraph 409, but agrees that any dispute over those particular opinions
`
`is moot.
`
`II.
`
`Exhibit 2010
`
`Petitioner also 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
`
`7
`
`
`
`Paper No. 41
`
`in any event offers no legal justification for exclusion.
`
`A.
`
`Background
`
`Petitioner’s Motion includes a long “statement of material facts.” Mot. 6-9.
`
`The chronology is incomplete but largely correct, and Patent Owner will not respond
`
`to it point-by-point other than to disagree with the characterization of Petitioner’s
`
`objection as “immediate[],” Mot. ¶ 10, at 8. 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.
`
`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 3, 4, and even filed pro hac vice motions, to which Petitioner consented,
`
`Papers 19, 20. 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
`
`8
`
`
`
`Paper No. 41
`
`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 14, 11; Paper 15, 3;
`
`Paper 23, 4. In short, not until the start of Dr. Neumann’s deposition in the -1294
`
`IPR was Gentex given any indication that Petitioner (or the Board) believed Gentex
`
`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
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`to quash it, or else any objection is waived. 37 C.F.R. § 42.53(d)(6). The policy
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`underlying this rule is obvious and sensible; the rule allows parties to cure any issues
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`in advance of the deposition. “Waiting until after the deposition deprives the
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`9
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`
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`Paper No. 41
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`opposing party of that opportunity.” ZTE (USA), Inc. v. Cywee Grp., IPR2019-
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`00143, 2021 WL 641742, at *48 (P.T.A.B. Feb. 17, 2021) (cleaned up; addressing
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`analogous § 42.64(a), which governs deposition exhibits). And the rule further
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`accords with the general waiver principle that objections should be raised “as soon
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`as the objecting party knows or should know that an error has occurred.” 75 Am.
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`Jur. 2d Trial § 314 (Oct. 2023 update). An objection is untimely if made “too late
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`to give opposing counsel an opportunity to correct any deficiencies.” Id.
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`Petitioner does not dispute that it was in fact on notice that counsel for Gentex
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`would ask questions no later than May 12, eleven days prior to Dr. Neumann’s
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`deposition, when Gentex and Thales served a joint Notice of Deposition. The Notice
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`of Deposition stated: “Counsel for the parties have conferred and agreed that Patent
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`Owner and Real Party-in-Interest, Thales Visionix, Inc. and Gentex Corp., will
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`conduct cross-examination by deposition of Petitioner’s witness
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`[Dr.
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`Neumann] . . . .” IPR2022-01294, Paper 24, 1. Petitioner protests that it never
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`agreed that Gentex, not just Thales, would conduct questioning. Mot. 13 n.5. That
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`is a surprise to Gentex’s counsel, which did the conferring, going back as early as
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`May 3—weeks before the deposition—about both the dates and about responsibility
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`for the court reporting (an unusual responsibility to put on a non-questioning party,
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`see 37 C.F.R. § 42.53(f)(7)). Ex. 2027. Petitioner continued to sit quietly and say
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`nothing when Gentex’s counsel confirmed that Mr. Krinsky would travel across the
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`10
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`
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`Paper No. 41
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`country to participate in person, whereas Thales’s counsel noted its attorneys would
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`“be joining remotely.” Ex. 2028. The first Gentex or Thales heard of any issue was
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`during the deposition in San Francisco on May 23.
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`By waiting until the deposition had begun to raise its objection—and then
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`proceeding with the deposition—Petitioner deprived Thales and Gentex of the
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`opportunity to cure the problem. Thales’s existing counsel appeared for the
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`deposition only remotely, had not prepared to question the witness (leaving that to
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`Gentex), and did not ask questions. See Ex. 2010; Ex. 2020 ¶4. As soon as Thales
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`was on notice of the objection, it acted quickly to permit Williams & Connolly to
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`represent it before the Board. As Thales’s COO declared:
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`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,
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`the objection would have been resolved without disruption. By failing to do so,
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`Petitioner waived any objection.
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`Petitioner argues in response that the deposition notice was untimely. Mot.
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`13. But that objection, too, was waived. Gentex’s counsel explicitly raised the issue
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`11
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`
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`Paper No. 41
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`on May 12, indicating that it would re-notice the deposition for another date more
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`than 14 days in the future if Petitioner requested. Ex. 2028, 1-3. Petitioner elected
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`to move forward under the notice without filing a motion to quash or requesting a
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`new date. In any case, the timeliness of the notice is no excuse. The fact that it was
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`filed 11 days rather than 14 days ahead might have given Petitioner a basis to object
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`to proceeding on May 23 rather than a later date, i.e., an additional basis to quash
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`the deposition notice, but it cannot explain why Petitioner did not object, given that
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`Petitioner had agreed to the date. Petitioner does not argue that it had inadequate
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`time to raise an objection or move to quash the notice in advance of the deposition
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`under § 42.53(d)(6). Petitioner also cited the notice after the deposition—seeking
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`the notice’s expungement “based at least in part on 37 C.F.R. § 42.53(d)(6)”—when
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`it belatedly raised the issue with the Board in advance of the deposition in this
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`proceeding. Ex. 1039, 3. It does not and cannot argue that it lacked an objection to
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`the notice. And, of course, Petitioner appeared with Dr. Neumann on the previously
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`agreed and noticed date, illustrating that the timeliness of the notice was of no
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`moment until Petitioner latched onto it as an excuse. In short, Petitioner waived its
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`objection to the notice by failing to “promptly seek[] authorization to file a motion
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`to quash.” 37 C.F.R. § 42.53(d)(6).
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`Petitioner also argues that it “timely” objected to the evidence under
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`“37 C.F.R. § 42.64(b)(1).” Mot. 11. But by its terms that provision only applies to
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`12
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`
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`Paper No. 41
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`“evidence other than deposition evidence.” 37 C.F.R. § 42.64(b). Objections to the
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`admissibility of deposition evidence are governed by § 42.64(a), which Petitioner
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`has not cited. And as the Board has recognized, “[w]aiting until after the deposition”
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`to raise an admissibility objection to testimony “deprives the opposing party of [the]
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`opportunity” to “submit evidence to cure the objection during the deposition.” ZTE,
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`2021 WL 641742, at *48 (cleaned up). Petitioner’s citation to § 42.64(a) does not
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`make its objection timely.
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`Finally, Petitioner suggests Thales’s prompt response to the Board’s May 31
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`guidance shows Thales is to blame for any delay. Mot. 13-14. Not so. By May 31,
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`Thales and Gentex were on notice of the issue for over a week. There is no basis to
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`infer that Gentex and Thales could have cured the issue during the deposition, let
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`alone at the start and before Mr. Krinsky elicited the disputed testimony.
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`C.
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`Petitioner’s Motion Is Meritless
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`Petitioner’s motion also fails on the merits. Petitioner offers no authority at
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`all for the proposition that any of Dr. Neumann’s testimony is inadmissible.
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`Petitioner cites no Federal Rule of Evidence in its Motion, Mot. 6-14, and no rule
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`justifying exclusion exists. In the absence of any other governing exclusion, Federal
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`Rule of Evidence 402 controls: “Relevant evidence is admissible.”
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`Nor does Petitioner explain why the hodgepodge of regulations it cites
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`supports exclusion. Dr. Neumann’s testimony was plainly proper under 37 C.F.R.
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`13
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`
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`Paper No. 41
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`§ 42.53(a) (cross-examination testimony shall be in the form of a deposition
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`transcript) and § 42.53(f) (specifying rules for manner of taking depositions, none
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`of which Petitioner disputes were satisfied). Because Petitioner has failed to explain
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`the reasons for the relief requested, the motion should be denied. 37 C.F.R. §§ 42.20,
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`42.22.
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`That leaves Petitioner with the Board’s ruling, after the deposition, that only
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`counsel for Thales, not counsel for Gentex, could ask deposition questions. Ex.
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`1039, 1. But the issue was raised to the Board in the context of future depositions.
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`The Board did not address past depositions at all, let alone decide the question of
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`whether testimony previously elicited by counsel for Gentex was admissible. In fact,
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`Petitioner specifically asked for “authorization to move to preclude [] the submission
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`into the record of the portions of the prior deposition transcript containing cross-
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`examination conducted by counsel for Gentex.” Id., 2. Thales and Gentex
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`responded by arguing waiver, as well as opposing Petitioner’s “extraordinary
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`request.” Id., 4. Given the Board’s silence on Petitioner’s requested exclusionary
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`remedy, Petitioner cannot now argue that “[b]ased on the Board’s prior ruling, the
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`entirety of Exhibit 2010 . . . must be excluded as inadmissible.” Mot. 11.
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`Finally, Petitioner points to two cases that have nothing to do with exclusion
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`of evidence. See Mot. 9-10 (first citing EMC Corp. v. ActivIdentity, Inc. (EMC),
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`IPR2017-00338, Paper 9, at 2 (P.T.A.B. July 3, 2017), then citing Abbott Labs. v.
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`14
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`
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`Paper No. 41
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`Cardinal Health 529, LLC (Cardinal), IPR2019-00098, Paper 10, at 2 (P.T.A.B.
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`Feb. 14, 2019)). Neither helps its cause. In EMC, the Board noted that an “exclusive
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`licensee” filed a POPR, but it still considered “the arguments set forth by [the
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`licensee].” EMC, Paper 9, at 2-3 & n.3. And the exclusive licensee went on to
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`depose petitioner’s expert. EMC, Paper 23, at 1 (P.T.A.B. Sept. 14, 2017). In
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`Cardinal, the patent owner included real party-in-interest’s arguments that patent
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`owner “neither join[ed] in nor endorse[d]”. Cardinal, Paper 10, at 2. The Board—
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`only after the patent owner expressly declined to amend—expunged the POPR at
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`issue. Id., 3. So EMC and Cardinal support allowing Thales t
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