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`Case IPR2022-01413
`Patent 9,762,636
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`______________________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________________________________
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`GOOGLE LLC,
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`Petitioner
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`v.
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`WAG ACQUISITION, LLC
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`Patent Owner
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`U.S. Pat. No. 9,762,636
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`_______________________________________
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`Inter Partes Review Case No. IPR2022-01413
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`_______________________________________
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`PATENT OWNER’S OPPOSITION TO PETITIONER’S
`MOTION TO EXCLUDE
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`Case IPR2022-01413
`Patent 9,762,636
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`TABLE OF CONTENTS
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`INTRODUCTION ..................................................................................................... 2
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`I. GOOGLE FAILS TO SHOW THAT EXHIBITS 2003, 2004, AND 2009 ARE
`IMPROPER HEARSAY .................................................................................... 2
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`II. MR. HOARTY DOES NOT RELY ON THE CHALLENGED EXHIBITS TO
`REACH HIS CONCLUSIONS ......................................................................... 5
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`III. EXHIBIT 2008 AS A REASONED DECISION OF A SISTER TRIBUNAL
`IS BOTH RELEVANT AND PROBATIVE ...................................................... 7
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`IV. CONCLUSION .................................................................................................. 8
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`INTRODUCTION
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`Case IPR2022-01413
`Patent 9,762,636
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`Petitioner (Google) seeks to exclude as hearsay Exhibits 2003, 2004, and
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`2009 herein (testimony of other experts concerning the Carmel reference, Exhibit
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`1003), and portions of Patent Owner’s expert’s declaration (Exhibit 2002) that cite
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`these exhibits, as allegedly relying upon improper hearsay. Google also seeks to
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`exclude Exhibit 2008 (ITC decision also addressing Carmel) as allegedly
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`irrelevant.
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`Google has the burden on this motion. 37 C.F.R. § 42.20(c).
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`Patent Owner’s expert, Mr. Hoarty, cited Exhibits 2003, 2004, and 2009 to
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`reflect that others in the field who had considered Carmel reached like conclusions.
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`This goes to the reliability and credibility of Mr. Hoarty’s own opinions, set forth
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`at length in his declaration herein, not to the basis on which Patent Owner seeks to
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`prove its positions.
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`With regard to Exhibit 2008, Google offers no legal support for the
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`proposition that decisions from the ITC should be disregarded in the wholesale
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`manner sought by Google’s motion.
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`I.
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`GOOGLE FAILS TO SHOW THAT EXHIBITS 2003, 2004, AND 2009
`ARE IMPROPER HEARSAY
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`“‘Hearsay’ means a statement that: (1) the declarant does not make while
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`testifying at the current trial or hearing; and (2) a party offers in evidence to prove
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`the truth of the matter asserted in the statement.” FRE 801(c). The challenged
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`–2–
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`Case IPR2022-01413
`Patent 9,762,636
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`statements from Exhibits 2003, 2004, and 2009 are not offered to prove the truth of
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`the matter asserted therein, as WAG has submitted and relies on the independent
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`conclusions of its own expert, Mr. Hoarty, for such matters. Rather, the challenged
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`statements are provided for what they describe, and thus are not subject to
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`exclusion under FRE 802. See TCL Corp. v. Telefonaktiebolaget LM Ericsson,
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`IPR2015-01602 (PTAB Jan. 25, 2017), Paper 40 at 37 (denying motion to exclude
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`where the challenged exhibits “are offered for what they describe, and not for the
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`truth of the matter asserted.”).
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`Google’s motion (at 5) refers to Patent Owner’s arguments in an effort to
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`show that the Exhibits 2003, 2004, and 2009 are used to prove the truth of what
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`they assert. However, the motion only points to arguments that invoke Exhibit
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`2009, a transcript of Amazon’s expert Dr. Jeffay expressing the same conclusions
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`as Mr. Hoarty on the disclosures of Carmel. The arguments, however, are based on
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`Mr. Hoarty’s opinions that are thoroughly corroborated by Exhibit 2009.
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`The point in the Sur-reply that Google objects to is an argument that
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`addresses inherency, which (as the Sur-reply points out (at 11)) Google itself only
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`raised for the first time in its Reply.
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`The fact that Mr. Hoarty found that others had reached the same conclusions
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`as him is certainly something that Patent Owner is entitled to argue on its own
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`behalf. The referenced bullet points in the Sur-reply are directed at statements by
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`–3–
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`Case IPR2022-01413
`Patent 9,762,636
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`another expert that mirror the conclusions reached by Mr. Hoarty himself as
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`addressed in the POR (a congruence that Mr. Hoarty himself had noted in his
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`declaration).
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`Such statements constitute permissible argument to rebut a fallacious
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`allegation advanced by Google in its Reply as to the alleged inherency of
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`individual element requests under the HTTP protocol. WAG’s technical arguments
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`rely on Mr. Hoarty’s testimony, which itself was comprehensive in this regard, and
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`which did not rely upon the challenged exhibits to reach the ultimate conclusions
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`therein, as addressed below.
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`Concerning footnote 10 of the POR, which Google also objects to, WAG
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`does not present the “prior testimony of Dr. Kevin Jeffay” (Motion at 7) as forming
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`a basis for Mr. Hoarty’s own opinions, but rather, to support the reasonableness of
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`Mr. Hoarty’s analysis, pointing out that Dr. Jeffay’s ITC testimony aligns
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`completely with Mr. Hoarty’s independent conclusion that both Figures 6A and 6B
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`of Carmel represent “push” embodiments. See POR at 33 n.10 (“Patent Owner’s
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`expert agrees with the characterization in prior testimony of Dr. Kevin Jeffay….”).
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`WAG submits that it is entitled to point out by way of argument that Mr.
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`Hoarty is by no means alone in his opinions and has thus proffered credible
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`conclusions. The arguments Google objects to are therefore not subject to FRE
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`802.
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`–4–
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`Patent 9,762,636
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`The Board should also deny this motion because “there is a strong public
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`policy for making all information filed in an administrative proceeding available to
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`the public.” Pelican Biothermal, LLC, v. VA-Q-TEC AG, PGR2021-00085 (PTAB
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`June 16, 2023), Paper 35 at 30.
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`II. MR. HOARTY DOES NOT RELY ON THE CHALLENGED
`EXHIBITS TO REACH HIS CONCLUSIONS
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`Google objects under FRE 703 to Mr. Hoarty’s citation of Exhibits 2003,
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`2004, 2008, and 2009 in his expert declaration (Exhibit 2002). Motion at 2 n.1. The
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`citations in Exhibit 2002 that are objected to are in ¶ 67 (citing Exhibit 2003);
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`¶¶ 65-67 (citing Exhibit 2004); ¶ 74 (citing Exhibit 2008); and ¶¶ 54, 65, 66 (citing
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`Exhibit 2009). Simple inspection of these paragraphs, however, quickly reveals
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`that statements in these exhibits are being used to corroborate as well as explain
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`opinions Mr. Hoarty had already formed and thus go to the reliability and
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`credibility of Mr. Hoarty’s opinions.
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`The referenced paragraphs make clear that Mr. Hoarty did not rely on the
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`statements in these exhibits as the basis for his own opinions, but instead used
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`them to show that other people of skill in the art view aspects of Carmel in the
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`same way that Mr. Hoarty himself views them, or to address inconsistencies in the
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`contrary statements of others. E.g., EX2002 ¶ 54 (Mr. Hoarty’s conclusions are
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`also “explained by Dr. Jeffay”); id. ¶ 65 (“My view that Carmel consistently
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`discloses push embodiments is also reflected in prior testimony by Dr. Jeffay
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`–5–
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`Patent 9,762,636
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`concerning Carmel”); id. ¶ 66 (“Dr. Jeffay likewise stated at his deposition that the
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`process shown in Fig. 6B of Carmel represents a push” and addressing a related
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`inconsistent position of Dr. Jeffay); id. ¶ 67 (addressing inconsistent statements of
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`Dr. Jeffay); id. ¶ 74 (observing that “(ITC decision [made] a similar observation”
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`to Mr. Hoarty’s independent conclusions).
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`Because Mr. Hoarty did not base his ultimate conclusions simply on what he
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`read from these other sources, Mr. Hoarty’s statements are not proper subjects for
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`Google’s motion to strike under FRE 703. Alaska Fuel, IPR2019-00995, Paper 32
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`at 12-13 (“We are persuaded by Patent Owner’s argument that … Patent Owner is
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`not relying on the statements for the truth of the matter asserted but for the
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`independent purposes of showing how the Frac Shack was marketed and how it
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`was regarded by those in the market.”); Eli Lilly & Co. v. Teva Pharms. Int’l
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`GmbH, IPR2022-00796 (PTAB Oct. 11, 2023), Paper 45 at 102 (“Petitioner relies
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`on Goadsby, not for the truth of its assertions. Rather, Petitioner relies on Goadsby
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`for the non-hearsay purpose of showing its effect on the hypothetical person of
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`ordinary skill in the art.”); Cardiovascular Sys., Inc. v. Shockwave Med., Inc.,
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`IPR2019-00405 (PTAB Feb. 2, 2023), Paper 99 at 81 (“Patent Owner does not rely
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`on statements made in these exhibits for the truth of the matter asserted…. Rather,
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`Patent Owner relies upon these statements to show that industry actors took notice
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`of and commented on the Shockwave device.”). Indeed, as the complained-of
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`–6–
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`Case IPR2022-01413
`Patent 9,762,636
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`statements are offered to highlight the credibility of Mr. Hoarty’s opinions, this
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`Board may properly consider them. PNC Bank, N.A. v. U.S. Auto. Ass’n, IPR2021-
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`01073 (PTAB Jan. 19, 2023), Paper 72 at 76 (finding that alleged hearsay
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`statements may be “helpful to judge Dr. Mowry’s credibility”).1
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`Furthermore, as prior decisions have observed, “policy considerations for
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`excluding expert testimony, such as those implemented by the gatekeeping
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`framework established by the Supreme Court in Daubert . . . are less compelling in
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`bench proceedings such as inter partes reviews than in jury trials.” Protect Animals
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`with Satellites v. Onpoint Sys., LLC, IPR2021-01483 (PTAB Mar. 2, 2023), Paper
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`69 at 63 () (internal quotations and citations omitted).
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`For at least the above reasons, the Board should decline to strike any
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`portions of the declaration of Mr. Hoarty (EX2002).
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`III. EXHIBIT 2008 AS A REASONED DECISION OF A SISTER
`TRIBUNAL IS BOTH RELEVANT AND PROBATIVE
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`Exhibit 2008 is a decision issued by the ITC that discusses the Carmel
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`reference and finds that it operates as WAG argues herein. Patent Owner cites it as
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`persuasive authority. It is relevant because the ITC interpreted the same disclosures
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`1 Google had the opportunity to depose Mr. Hoarty, but failed to make any inquiry
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`as to Mr. Hoarty’s citations of any of the challenged exhibits.
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`–7–
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`Case IPR2022-01413
`Patent 9,762,636
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`of Carmel that are disputed in the present case in a manner that agrees with Patent
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`Owner’s analysis of those disclosures, and is inconsistent with Google’s.2
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`IV. CONCLUSION
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`For the foregoing reasons, the Board should deny Google’s motion to
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`exclude.
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`Dated: December 7, 2023
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`Respectfully submitted,
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`/Ronald Abramson/
`Ronald Abramson
`(Attorney for Patent Owner)
`Reg. No. 34,762
`212-257-1630
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`2 Patent Owner has also requested to file supplemental authority on recent PTAB
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`appeal decision in a related case that also reads the pertinent disclosures of Carmel
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`as reflecting transmission of a stream triggered by a single request, as Patent
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`Owner argues herein based on Mr. Hoarty’s testimony, as the prior testimony of
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`another expert (Dr. Jeffay) has confirmed, and as noted above, was accepted by the
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`ITC.
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`–8–
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`Case IPR2022-01413
`Patent 9,762,636
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.205(b), the undersigned certifies that on December
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`7, 2023, a complete and entire copy of this Patent Owner’s Opposition to
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`Petitioner’s Motion to Exclude was provided to the Petitioner by filing through the
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`Patent Trial and Appeal Case Tracking System and via email, as authorized in
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`Petitioner’s mandatory notices, by serving the following email address:
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`egardner@cooley.com
`oarmon@cooley.com
`nsoni@cooley.com
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`larissa.bifano@dlapiper.com
`thomas.fuller@us.dlapiper.com
`Jennifer.nall@us.dlapiper.com
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`Dated: December 7, 2023
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`Respectfully submitted,
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`/Ronald Abramson/
`Ronald Abramson
`(Attorney for Patent Owner)
`Reg. No. 34,762
`212-257-1630
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