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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`____________
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`Apple Inc., Google Inc. and Motorola Mobility LLC,
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`Petitioners,
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`v.
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`Arendi S.A.R.L.,
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`Patent Owner.
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`____________
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`Case No. IPR2014-00208
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`Patent No. 7,917,843
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`____________
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`PATENT OWNER ARENDI S.A.R.L.’S
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`MOTION TO EXCLUDE EVIDENCE PURSUANT TO 37 C.F.R. § 42.64
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`1
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`Apple Inc., Google Inc. and Motorola Mobility LLC,
`
`Petitioners,
`
`v.
`
`Arendi S.A.R.L.,
`
`Patent Owner.
`
`____________
`
`Case No. IPR2014-00208
`
`Patent No. 7,917,843
`
`____________
`
`PATENT OWNER ARENDI S.A.R.L.’S
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`MOTION TO EXCLUDE EVIDENCE PURSUANT TO 37 C.F.R. § 42.64
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`1
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` I. Statement of Relief Requested
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`Pursuant to 37 C.F.R. §42.64(c), the undersigned, on behalf of Patent Owner
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`Arendi S.A.R.L. (“Arendi” or “Patent Owner”) hereby moves to exclude certain of
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`Petitioners’ submissions in this proceeding.
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`The Patent Owner moves to exclude Exhibit 1013 – the transcript of the
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`deposition of Petitioners’ expert, Daniel A. Menascé.
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`II. Statement of Material Fact
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`1. This case was instituted on June 11, 2014 pursuant to the Decision for the
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`Institution of Inter Partes Review.
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`2. The Petitioners have previously filed a Declaration of Petitioners’ expert,
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`Dr. Daniel A. Menascé, dated December 2, 2013, as Exhibit 1002, which
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`Declaration addressed, among other things, the Domini reference (US patent
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`6,085,206) as prior art, and the knowledge of one of ordinary skill in the art.
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`3. The Patent Owner deposed the Petitioners’ expert, Daniel A. Menascé, on
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`August 7, 2014.
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`4. Prior to the Petitioners’ November 11, 2014 Reply to Patent Owner’s
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`Response, the Petitioners did not take any action to authorize or file a
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`motion to submit supplemental information.
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`2
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`5. In their November 11, 2014 Reply to Patent Owner’s Response, the
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`Petitioners now seek to submit the transcript of Menascé’s deposition as
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`“Exhibit 1013.”
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`III. Statement of the Reason for the Relief Requested
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`37 C.F.R. §42.64(c) provides that a motion to exclude “must identify the
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`objections in the record in order and must explain the objections.” The Trial
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`Practice Guide, 77 Fed. Reg. 48756 (August 14, 2012), Section II, Part K, provides
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`that a “motion to exclude must: (a) Identify where in the record the objection
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`originally was made; (b) Identify where in the record the evidence sought to be
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`excluded was relied upon by an opponent; (c) Address objections to exhibits in
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`numerical order; and (d) Explain each objection. A motion to exclude must explain
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`why the evidence is not admissible (e.g., relevance or hearsay) but may not be used
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`to challenge the sufficiency of the evidence to prove a particular fact.”
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`1. Evidence: Exhibit 1013 – the Transcript of the Menascé Deposition
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`The Petitioners’ Exhibit 1013 is the transcript of the deposition of the
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`Petitioners’ expert, Daniel A. Menascé, dated August 7, 2014 (herein, the
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`“Menascé Deposition”).
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`3
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`(a) Objection in the record:
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`The Patent Owner objected to the Petitioners’ introduction of Exhibit 1013
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`(the Menascé Deposition) at page 2 of the Patent Owner Arendi S.A.R.L.’s
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`Objections to Evidence Pursuant to 37 C.F.R. § 43.64, dated November 18, 2014
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`(Paper 22), which objections were timely served within 5 business days of service
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`of the Petitioners Reply and associated exhibits.
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` (b) Petitioners’ reliance on the evidence:
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`Neither the Petitioners’ Reply, nor any other filing by Petitioners, makes
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`mention of or reference to any testimony in the Menascé Deposition.
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`(c) Objections to exhibits:
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`(i) The Patent Owner objects that the Menascé Deposition is irrelevant.
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`(ii) The Patent Owner objects that Petitioners failed to comply with the
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`requirements of 37 C.F.R. §42.123 for the submission of supplemental
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`information as found in the Menascé Deposition.
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`(d) Explanation of each objection:
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` (i) The Menascé Deposition is irrelevant
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`Neither the Petitioners’ Reply (except in the Exhibit List on page iii of that
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`Reply), nor any other filing by Petitioners or by Patent Owner, makes mention of
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`or reference to the Menascé Deposition (Exhibit 1013).
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`Consequently, the Menascé Deposition is not relevant.
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`4
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`(ii) The Petitioners failed to comply with the requirements of 37 C.F.R.
`§42.123 for the submission of supplemental information as found in
`Menascé’s Deposition
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`The Menascé Deposition (Exhibit 1013) is not admissible because it
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`contains supplemental information within the meaning of 37 C.F.R. § 42.123, and
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`the Petitioners failed to submit the information in compliance with the rules at 37
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`C.F.R. § 42.123.
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`The rules at 37 C.F.R. § 42.123(a) specifies that, “[o]nce a trial has been
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`instituted, a party may submit supplemental information only by requesting
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`authorization to submit a motion to submit supplemental information,” and the rule
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`at 37 C.F.R. § 42.61(a) provides that “Evidence that is not taken, sought, or filed in
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`according with this subpart is not admissible.”
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`The Menascé Deposition is supplemental information because it has not
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`been previously presented or even mentioned by Petitioners.
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`The Petitioners have not filed any request for authorization to file a motion
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`to submit the information, and no authorization has been granted by the Board.
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`For at least that reason, the Menascé Deposition (Exhibit 1013) is not admissible,
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`and should be excluded.
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`5
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`In addition, the Petitioners late proffer of the Menascé Deposition fails to
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`meet the other 37 C.F.R. § 42.123 criteria for late submission of supplemental
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`information.
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`Under 37 C.F.R. § 42.123(b), a request for authorization to file a motion to
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`submit supplemental information may be submitted more than one month after the
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`date the trial is instituted, but “must show why the supplemental information
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`reasonably could not have been obtained earlier, and that consideration of the
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`supplemental information would be in the interests-of-justice.” Those showings
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`must also be made by a party seeking to submit supplemental information that is
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`not relevant to a claim for which the trial has been instituted, under 37 C.F.R. §
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`42.123(c).
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`At this late stage (more than one month after the date the trial was
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`instituted), the Petitioners have not made, and indeed could not make, the showing
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`required under 37 C.F.R. § 42.123(b) and 37 C.F.R. § 42.123(c) as to “why the
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`supplemental information reasonably could not have been obtained earlier,”
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`because the Petitioners had access to Dr. Menascé since well before filing his
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`declaration along with the Petition of December 2, 2013 and to the Menascé
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`Deposition since August of 2014, yet did not proffer the Menascé Deposition until
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`November 2014.
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`Also, given that Dr. Menascé is the Petitioners’ expert, allowing the
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`6
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`introduction of Dr. Menascé’s deposition testimony at this stage would not be in
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`the interests-of-justice as required under 37 C.F.R. § 42.123(b) and 37 C.F.R. §
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`42.123(c), since the Petitioners’ surely could have included such testimony in Dr.
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`Menascé’s Declaration (Exhibit 2002). Instead, the Petitioners waited until this
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`late stage to offer Dr. Menascé’s supplemental testimony. Petitioners’ delay and
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`late submission of the deposition testimony of Petitioners’ own expert thus stands
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`to prejudice the Patent Owner, and admitting Exhibit 1013 at this stage is therefore
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`not in the interests-of-justice.
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`Date: December 30, 2014 Respectfully submitted,
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` /Robert M. Asher, #30,445/
`
` Robert M. Asher
`Registration No. 30,445
`Bruce D. Sunstein
`Registration No. 27,234
`John J. Stickevers
`Registration No. 39,387
`Thomas J. Tuytschaevers
`Registration No. 42,190
`Sunstein Kann Murphy & Timbers LLP
`125 Summer Street
`Boston, MA 02110
`Tel: (617) 443-9292
`Fax: (617) 443-0004
`03324/00504 2232064.1
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`
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`7
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`CERTIFICATE OF SERVICE
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` It is certified that on December 30, 2014, copies of the PATENT OWNER
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`ARENDI S.A.R.L.’s MOTION TO EXCLUDE EVIDENCE PURSUANT TO 37
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`C.F.R. § 42.64 have been served on Petitioners as provided in 37 C.F.R. § 42.6(e)
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`via electronic mail transmission addressed to the persons at the following
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`addresses:
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`LEAD COUNSEL FOR PETITIONER
`APPLE INC.
`
`DAVID L. FEHRMAN
`dfehrman@mofo.com
`Registration No. 28,600
`MORRISON & FOERSTER LLP
`707 Wilshire Blvd., Suite 6000
`Los Angeles, CA 90017-3543
`Tel: (213) 892-5601
`Fax: (213) 892-5454
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`LEAD COUNSEL FOR
`PETITIONERS MOTOROLA
`MOBILITY LLC and GOOGLE INC.
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`MATTHEW A. SMITH
`smith@turnerboyd.com
`Registration No. 49,003
`TURNER BOYD LLP
`2570 W. El Camino Real, Suite 380
`Mountain View, CA 94040
`Tel: (650) 265-6109
`Fax: (650) 521-5931
`
`
`
`
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`BACK-UP COUNSEL FOR
`PETITIONER APPLE INC.
`
`MEHRAN ARJOMAND
`marjomand@mofo.com
`Registration No. 48,231
`MORRISON & FOERSTER LLP
`707 Wilshire Blvd., Suite 6000
`Los Angeles, CA 90017-3543
`Tel: (213) 892-5630
`Fax: (213) 892-5454
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`BACK-UP COUNSEL FOR
`PETITIONERS MOTOROLA
`MOBILITY LLC and GOOGLE INC.
`
`ZHUANJIA GU
`gu@turnerboyd.com
`Registration No. 51,758
`TURNER BOYD LLP
`2570 W. El Camino Real, Suite 380
`Mountain View, CA 94040
`Tel: (650) 265-6109
`Fax: (650) 521-5931
`
`JULIE S. TURNER
`turner@turnerboyd.com
`TURNER BOYD LLP
`2570 W. El Camino Real, Suite 380
`Mountain View, CA 94040
`Tel: (650) 265-6109
`Fax: (650) 521-5931
`
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`8
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`
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`ROBERT J. KENT
`kent@turnerboyd.com
`TURNER BOYD LLP
`2570 W. El Camino Real, Suite 380
`Mountain View, CA 94040
`Tel: (650) 265-6109
`Fax: (650) 521-5931
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`
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`
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`Date: December 30, 2014 /Robert M. Asher, #30,445/
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` Robert M. Asher
`Registration No. 30,445
`Sunstein Kann Murphy & Timbers LLP
`125 Summer Street
`Boston, MA 02110
`Tel: (617) 443-9292
`Fax: (617) 443-0004
`
`9
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