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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Google LLC,
`Petitioner,
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`v.
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`WAG Acquisition, L.L.C.,
`Patent Owner.
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`
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`IPR2022-01413
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`U.S. Patent No. 9,762,636 B2
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`PETITIONER’S REPLY IN SUPPORT OF ITS MOTION TO EXCLUDE
`PURSUANT TO 37 C.F.R. § 42.64
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`TABLE OF CONTENTS
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`Page
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`I.
`II.
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`INTRODUCTION .......................................................................................... 1
`THE ENTIRETY OF EXHIBITS 2003, 2004, AND 2009 ARE
`INADMISSIBLE HEARSAY ........................................................................ 2
`A.
`PO and Mr. Hoarty Rely on Exhibits 2003, 2004, and 2009 for
`the Truth of the Matter Asserted .......................................................... 3
`III. EXHIBIT 2008 IS IRRELEVANT................................................................. 5
`CERTIFICATE OF SERVICE ................................................................................. 7
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`-i-
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
`Alaska Fuel Distributors v. Frac Shack, Inc.,
`IPR2019-00995, Paper 32 (P.T.A.B. Oct. 15, 2020) ............................................ 4
`Cardiovascular Systems v. Shockwave Medical, Inc.,
`IPR2019-00405, Paper 99 (P.T.A.B. Feb. 2, 2023) .............................................. 5
`Eli Lilly & Co. v. Teva Pharmaceuticals International, GmbH,
`IPR2022-00796, Paper 45 (P.T.A.B. Oct. 11, 2023) ........................................ 4, 5
`PNC Bank NA v. United Services Automobile Association,
`IPR2021-01073, Paper 72 (P.T.A.B. Jan. 19, 2023) ............................................ 5
`The Data Co. Techs. Inc. v. Bright Data, Ltd.,
`IPR2022-00135, Paper 51 (P.T.A.B. May 31, 2023) ........................................... 2
`Other Authorities
`Federal Rules of Evidence
`401 ......................................................................................................................... 2
`403 ......................................................................................................................... 2
`801(c) .................................................................................................................... 3
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`-ii-
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`IPR2022-01413
`U.S. Patent No. 9,762,636 B2
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`I.
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`INTRODUCTION
`PO’s Opposition (Paper No. 26 (“Opp.”)) to Google’s Motion to Exclude
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`(Paper No. 25 (“Motion”)) attempts to recharacterize PO’s and Mr. Hoarty’s reliance
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`on Exhibits 2003, 2004, and 2009 as for reasons unrelated to the truth of the
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`statements. But PO’s Patent Owner Response (Paper No. 10 (“POR”)), Sur-Reply
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`(Paper No. 16), and Mr. Hoarty’s Declaration (Exhibit 2002) belie PO’s recasting.
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`When PO and Mr. Hoarty cite these exhibits, they do so as purported evidence of
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`the truth of the matter asserted—that a person of ordinary skill in the art would
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`interpret Carmel (Exhibit 1003) in a particular way. (See, e.g., Sur-Reply at 11-13
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`(citing Exhibit 2009); POR at 33 n.10.)
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`Exhibits 2003, 2004, and 2009 constitute expert testimony from experts not
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`involved in this proceeding whom Google never had the opportunity to cross-
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`examine. Like the excluded expert testimony in the cases cited by Google—cases
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`PO does not mention, let alone distinguish on any grounds—these exhibits should
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`be excluded. (See Motion at 5-8.)
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`The intention of the Federal Rules of Evidence regarding hearsay is to exclude
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`such out-of-court statements when they are offered for the truth of the statements, as
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`they are here. Even if PO and Mr. Hoarty are allegedly relying on these exhibits for
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`“corroboration” or to show that other experts have “express[ed] the same
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`IPR2022-01413
`U.S. Patent No. 9,762,636 B2
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`conclusions as Mr. Hoarty on the disclosures of Carmel” (see Opp. at 3), to be
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`“corroborat[ory,]” the statements must be taken as true.
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`With respect to Exhibit 2008, which Google objects to under Federal Rules of
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`Evidence (“FRE”) 401 and 403, PO states in a conclusory fashion that the ITC Initial
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`Determination is “relevant,” and does not refute Google’s distinctions between the
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`analysis in the Initial Determination and here. (See Opp. at 7-8.)
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`For these reasons, and as explained further below, Google respectfully
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`requests that the Board grant Google’s Motion and exclude Exhibits 2003, 2004,
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`2008, and 2009 from this IPR.
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`II. THE ENTIRETY OF EXHIBITS 2003, 2004, AND 2009 ARE
`INADMISSIBLE HEARSAY
`Exhibits 2003, 2004, and 2009 are in their entirety the types of exhibits that
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`the Board has previously excluded from IPRs—they are deposition transcripts,
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`declarations, and hearing transcripts that constitute expert testimony from other
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`cases involving other parties and are from experts that Google did not have an
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`opportunity to cross-examine. As explained in Google’s Motion (at 5-8), and
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`unrefuted by PO, the Board has previously excluded expert evidence as hearsay
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`under similar circumstances. See The Data Co. Techs. Inc. v. Bright Data, Ltd.,
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`IPR2022-00135, Paper 51, 82 (P.T.A.B. May 31, 2023) (“We agree with [p]etitioner
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`that prior testimony from another case, which is not subject to cross-examination by
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`-2-
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`IPR2022-01413
`U.S. Patent No. 9,762,636 B2
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`the opposing party, is hearsay if offered for the truth of the matter.”).
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`Thus, PO’s exhibits are entirely statements “the declarant does not make
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`while testifying at the current trial or hearing[,]” offered “to prove the truth of the
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`matter asserted in the statement.” FRE 801(c).
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`A.
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`PO and Mr. Hoarty Rely on Exhibits 2003, 2004, and 2009 for the
`Truth of the Matter Asserted
`PO and Mr. Hoarty rely on these exhibits for the truth of the matter asserted—
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`to allegedly show “that others had reached the same conclusions as him[.]” (See
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`Opp. at 3.) Despite admitting this, PO attempts to recharacterize the reliance on
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`these exhibits as merely providing “corroborat[ion]” to Mr. Hoarty’s opinions. (Id.
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`at 2-7.) This argument makes no sense. The only way these exhibits could possibly
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`provide “corroborat[ion]” is if the statements were treated as true. For example, PO
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`and Mr. Hoarty attempt to rely on testimony from Dr. Jeffay—an expert not involved
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`in this case—as proof that a person of ordinary skill in the art would “view that
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`Carmel consistently discloses push embodiments[,]” because Dr. Jeffay purportedly
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`said so in an ITC matter in which Google was not involved. (See id. at 5-6 (citing
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`Mr. Hoarty’s Decl. at ¶¶ 65-67, 74).) This is the definition of using an out-of-court
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`statement (testimony from another matter not involving Google) for the purported
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`truth of the matter asserted (that a person of ordinary skill in the art would view
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`Carmel the way Dr. Jeffay purportedly explained).
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`IPR2022-01413
`U.S. Patent No. 9,762,636 B2
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`If parties were allowed to rely on such statements—testimony from experts
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`not involved in the present proceeding—under the guise of “corroborat[ion],” parties
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`may be encouraged to play with the line between what the PTAB finds as
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`“corroborat[ory]” and hearsay.1 Unsurprisingly, PO fails to cite any case where
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`testimony from an unavailable expert was allowed as “corroborat[ion]” on the
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`ultimate issue.
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`Indeed, the cases cited by PO do not support its argument. In Alaska Fuel
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`Distributors, the exhibits patent owner relied on were photographs, videos, and
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`marketing materials for a product that patent owner and its expert contended
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`practiced the challenged claims. IPR2019-00995, Paper 32, 12 (P.T.A.B. Oct. 15,
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`2020). Similarly, in Eli Lilly & Co., the Board and petitioner were relying on
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`1 Notably, in this case, more experts “corroborate” the opinions of Google’s expert,
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`Nathaniel Polish, than those who “corroborate” the opinions of Mr. Hoarty. (See
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`Reply (Paper No. 13) at 16-17 (noting that “at least 4 experts have expressed the
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`understanding that Carmel discloses client-side control and ‘pull,’ while only PO’s
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`expert has consistently asserted it discloses ‘push.’”) (citations omitted).)
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`Nonetheless, Google is advancing the legal position that is correct—that such out-
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`of-court expert statements are hearsay and should be excluded.
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`-4-
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`IPR2022-01413
`U.S. Patent No. 9,762,636 B2
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`Goadsby, a clinical trial report, to support whether a person of ordinary skill “would
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`have expected success” and not for the truth of Goadsby’s assertions. IPR2022-
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`00796, Paper 45, 102-03 (P.T.A.B. Oct. 11, 2023). In Cardiovascular Systems, the
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`patent owner was relying on news articles, materials from financial analysis or
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`investment bankers, FDA materials, Yahoo Finance data, and a 10-Q submission for
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`evidence of secondary indicia. IPR2019-00405, Paper 99, 80-82 (P.T.A.B. Feb. 2,
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`2023). Finally, in PNC Bank, the challenged exhibits were “web page printouts of
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`articles”—not declarations, deposition
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`transcripts, and hearing
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`transcripts
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`constituting out-of-court expert testimony. IPR2021-01073, Paper 72, 74-76
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`(P.T.A.B. Jan. 19, 2023).
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`Here, the exhibits at issue are indisputably out-of-court statements, and PO is
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`solely relying on the purported truth of those statements. Moreover, PO does not
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`dispute these exhibits are “not the sort of ‘facts or data’ that experts in the field []
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`would reasonably rely on in forming their own opinions.” (Motion at 10 (citation
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`omitted).)
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`III. EXHIBIT 2008 IS IRRELEVANT
`Exhibit 2008 is neither relevant nor probative—it is a nonbinding decision
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`from an unrelated ITC investigation involving different parties, different patents,
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`claims, and inventions, different experts, different analysis, and different testimony.
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`(Motion at 10-12.) Thus, this exhibit too should be excluded.
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`-5-
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`IPR2022-01413
`U.S. Patent No. 9,762,636 B2
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`
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`Dated: December 14, 2023
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`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Avenue NW
`Suite 700
`Washington, DC 20004
`Tel: (202) 842-7885
`Fax: (202) 842-7899
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`Respectfully submitted,
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`By:
`/Eamonn Gardner/
`
` Eamonn Gardner
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` (Reg. No. 63,322)
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`-6-
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`Pursuant to 37 C.F.R. §§42.6(e)(4)(i) et seq., a complete copy of the attached
`PETITIONER’S REPLY IN SUPPORT OF ITS MOTION TO EXCLUDE
`PURSUANT TO 37 C.F.R. § 42.64 is being served via email on the 30th day of
`November 2023, upon Patent Owner’s appointed attorneys of record:
`
`
`CERTIFICATE OF SERVICE
`
`Ronald Abramson
`ron.abramson@listonabramson.com
`M. Michael Lewis
`michael.lewis@listonabramson.com
`Ari J. Jaffess
`ari.jaffess@listonabramson.com
`Gina K. Kim
`gina.kim@listonabramson.com
`LISTON ABRAMSON LLP
`405 Lexington Ave, 46th Floor
`New York, NY 10174
`Telephone: (212) 257-1630
`Facsimile: (914) 462-4175
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`
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`
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`Dated: December 14, 2023
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`COOLEY LLP
`ATTN: Patent Docketing
`1299 Pennsylvania Avenue NW
`Suite 700
`Washington, D.C. 20004
`Tel: (202) 842-7885
`Fax: (202) 842-7899
`
`
`
`
`/Eamonn Gardner/
`Eamonn Gardner
`(Reg. No. 63,322)
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`-7-
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