Filed on behalf of Securus Technologies, Inc.
`By:
`Justin B. Kimble (JKimble-IPR@bcpc-law.com)
`
`Jeffrey R. Bragalone (jbragalone@bcpc-law.com)
`
`Daniel F. Olejko (dolejko@bcpc-law.com)
`
`Terry A. Saad (tsaad@bcpc-law.com)
`
`Nicholas C. Kliewer (nkliewer@bcpc-law.com)
`
`Bragalone Conroy PC
`
`2200 Ross Ave., Suite 4500W
`
`Dallas, TX 75201
`
`Tel: 214.785.6670
`
`Fax: 214.786.6680
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GLOBAL TEL*LINK CORPORATION,
`Petitioner,
`
`v.
`
`SECURUS TECHNOLOGIES, INC.,
`Patent Owner.
`
`
`Case IPR2016-01220
`U.S. Patent No. 9,007,420
`
`
`
`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
`UNDER 37 C.F.R. §§ 42.64(B)(1) AND 42.64(C)
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`
`By:
`Justin B. Kimble (JKimble-IPR@bcpc-law.com)
`
`Jeffrey R. Bragalone (jbragalone@bcpc-law.com)
`
`Daniel F. Olejko (dolejko@bcpc-law.com)
`
`Terry A. Saad (tsaad@bcpc-law.com)
`
`Nicholas C. Kliewer (nkliewer@bcpc-law.com)
`
`Bragalone Conroy PC
`
`2200 Ross Ave., Suite 4500W
`
`Dallas, TX 75201
`
`Tel: 214.785.6670
`
`Fax: 214.786.6680
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GLOBAL TEL*LINK CORPORATION,
`Petitioner,
`
`v.
`
`SECURUS TECHNOLOGIES, INC.,
`Patent Owner.
`
`
`Case IPR2016-01220
`U.S. Patent No. 9,007,420
`
`
`
`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
`UNDER 37 C.F.R. §§ 42.64(B)(1) AND 42.64(C)
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`
`
`TABLE OF CONTENTS
`
`INTRODUCTION ............................................................................................... 1
`
`
`I.
`
`II. PROCEDURAL BACKGROUND ..................................................................... 1
`
`III. ARGUMENTS AND AUTHORITIES ............................................................... 2
`
`A. Exhibit 1021 Is Not Relevant Under FRE 401, and Any Probative Value
`of Exhibit 1021 Is Outweighed by the Danger of Unfair Prejudice,
`Confusing the Issues, Undue Delay, and Wasting Time Under FRE 403... 2
`
`
`B. Exhibit 1021 Has Not Been Properly Authenticated under FRE 901. ........ 7
`
`C. Exhibit 1021 Is Inadmissible Hearsay Under FRE 802. ............................. 8
`
`
`IV. CONCLUSION ................................................................................................... 9
`
`
`
`
`
`
`
`
`i
`
`
`
`Case IPR2016-01220
`Patent 9,007,420
`
`EXHIBIT LIST
`
`Exhibit
`
`Description
`
`No.
`
`2001
`
`Dictionary of Computer and Information Technology 272 (2013)
`
`2002
`
`Declaration of Jeffrey R. Bragalone - PHV Motion
`
`2003
`
`Declaration of Daniel F. Olejko - PHV Motion
`
`2004
`
`Declaration of Patent Owner’s Expert Dr. Ioannis A. Kakadiaris
`
`2005 Webster’s Third New International Dictionary, 22
`
`2006
`
`Feb. 22, 2017 Deposition Transcript of Homayoon Beigi, D.Eng.Sc
`
`2007
`
`Curriculum Vitae of Anshuman Razdan
`
`2008
`
`Curriculum Vitae of Gerald Farin
`
`2009
`
`Xerxes Mazda & Fraidoon Mazda, The Focal Illustrated Dictionary
`
`of Telecommunications 555 (1999)
`
`2010
`
`Declaration of Professor Ioannis Kakadiaris in Support of Patent
`
`Owner’s Motion to Exclude
`
`
`
`
`
`ii
`
`
`
`I.
`
`INTRODUCTION
`
`Pursuant to 37 C.F.R. § 42.64(c) and the Board’s Scheduling Order (as
`
`modified by stipulation in Paper 16), Patent Owner Securus Technologies, Inc.
`
`(“Securus”) hereby files this motion to exclude GTL Exhibit 1021. Petitioner cherry
`
`picks a statement from Exhibit 1021 in an attempt to support its interpretation of
`
`“actual face,” but takes that statement completely out of context. Because
`
`Exhibit 1021’s use of the word “actual” is fundamentally different than the use of
`
`“actual” in the ’420 patent, Exhibit 1021 lacks relevance under Federal Rule of
`
`Evidence 401, and any probative value of Exhibit 1021 is outweighed by the danger
`
`of unfair prejudice, confusing the issues, undue delay, and wasting time under
`
`Federal Rule of Evidence 403. In addition, Exhibit 1021 has not been authenticated
`
`under Federal Rule of Evidence 901, and it is inadmissible hearsay under Federal
`
`Rule of Evidence 802. Accordingly, the Board should exclude Exhibit 1021.
`
`II. PROCEDURAL BACKGROUND
`
`Securus filed timely objections to Exhibit 1021 on June 29, 2017, pursuant to
`
`37 C.F.R. § 42.64(b)(1), after Exhibit 1021 was submitted with Petitioner’s Reply to
`
`Patent Owner Response. Paper No. 21. Petitioner did not serve any supplemental
`
`evidence in response to Securus’ objections.
`
`1
`
`
`
`Case IPR2016-01220
`Patent 9,007,420
`
`III. ARGUMENTS AND AUTHORITIES
`
`A. Exhibit 1021 Is Not Relevant Under FRE 401, and Any Probative Value
`of Exhibit 1021 Is Outweighed by the Danger of Unfair Prejudice,
`Confusing the Issues, Undue Delay, and Wasting Time Under FRE 403.
`
`Federal Rule of Evidence 401 provides that “[e]vidence is relevant if: (a) it
`
`has any tendency to make a fact more or less probable than it would be without the
`
`evidence; and (b) the fact is of consequence in determining the action.” Fed. R.
`
`Evid. 401. “Relevancy is not an inherent characteristic of any item of evidence but
`
`exists only as a relation between an item of evidence and a matter properly provable
`
`in the case.” Fed. R. Evid. 401, advisory committee note. “Whether the relationship
`
`exists depends upon principles evolved by experience or science, applied logically
`
`to the situation at hand.” Id.
`
`Petitioner does not contend that Exhibit 1021 is prior art to the ’420 patent for
`
`the purposes of showing obviousness under 35 U.S.C. § 103. Instead, Petitioner
`
`relies on a statement from Exhibit 1021 in an attempt to show that “Dr. Beigi’s
`
`understanding of ‘actual’ is consistent with how [Securus’ expert, Prof. Ioannis
`
`Kakadiaris,] has used the word in his own writings related to face detection and
`
`recognition.” Reply at 6-7. In particular, Petitioner asserts that “Dr. Kakadiaris
`
`describes an ‘actual geometry of the face’” in Exhibit 1021. Id. at 7 (emphasis
`
`added).
`
`Petitioner takes the statement “actual geometry of the face” completely out of
`
`2
`
`
`
`Case IPR2016-01220
`Patent 9,007,420
`
`context. Ex. 2010 (Declaration of Prof. Kakadiaris in Support of Securus’ Motion to
`
`Exclude) ¶ 3 (“Kakadiaris Decl.”). The full quotation states:
`
`We employ the Annotated Face Model (AFM) proposed by Kakadiaris
`
`et al. (2007) to generate geometry images (regularly sampled 2D
`
`images that have three channels) encoding geometric information (x, y,
`
`and z components of a vertex in R3). In this paper the number of
`
`channels in the geometry image is seven (three channels for
`
`representing the actual geometry of the face, three for representing the
`
`texture information, and one for the visibility map).
`
`Exhibit 1021 at 260.
`
`Exhibit 1021 does not use the word “actual” in the same sense as the
`
`’420 patent. Kakadiaris Decl. ¶¶ 3-4. The ’420 patent uses the term “actual” to
`
`modify the term “face.” ’420 patent, 11:10-11 (“to verify that an actual face was
`
`present in the image”), 11:49-50 (“to verify that an actual face was present in the
`
`image”); see also id., Fig. 4 (“to verify actual face present”); Abstract (“to verify
`
`that an actual face was present in the image”), 1:47-48 (“to verify that an actual
`
`face was present in the image”), 1:56-57 (“to verify that an actual face was present
`
`in the image”), 9:1-2 (“to verify that an actual face is present in the image”), 9:15-
`
`16 (“to determine that the actual face was presented in the image”); 10:15-16 (“to
`
`ensure that the actual authorized person’s face 601 is still present”). But
`
`Exhibit 1021 uses the term “actual” to modify the unrelated phrase “geometry of the
`
`face,” which is not used in the ’420 patent.
`
`3
`
`
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`Case IPR2016-01220
`Patent 9,007,420
`
`There is a clear difference between an “actual face” in an image, as claimed
`
`in the ’420 patent, and “the actual geometry of the face,” as described in
`
`Exhibit 1021. As explained by Prof. Kakadiaris, an “actual face,” as claimed in the
`
`’420 patent, does not mean the appearance of a “face”; it means a real, physical face,
`
`as opposed to a photograph or other facsimile of a person’s face. See Ex. 2004 ¶¶ 42-
`
`44, 89-94; see also Ex. 2005 at 22 (defining “actual” to mean, inter alia, “not
`
`spurious : REAL, GENUINE”). Exhibit 1021 uses the term “actual” in an entirely
`
`different context to refer to the existence of geometric information about a face.
`
`Kakadiaris Decl. ¶¶ 4-7; Ex. 2005 at 22 (defining “actual” to mean, inter alia,
`
`“existing in fact or reality” : really acted or acting or carried out – contrasted with
`
`ideal and hypothetical <in ~ life> <the ~ conditions>”) (emphasis in original).
`
`Exhibit 1021 uses geometric information as input to a model. Kakadiaris Decl.
`
`¶ 5. The model uses that information in an “enrollment” procedure to generate
`
`geometry images, having x, y, and z components, which correspond to the “actual”
`
`(i.e., existing in fact as opposed to hypothetical) “geometry of the face” used as the
`
`input. Kakadiaris Decl. ¶ 6. It does not characterize the type of “face” used as input
`
`to the model. Id. Because Exhibit 1021 uses “actual” in an entirely different context
`
`than the ’420 patent – to refer to geometric data in a model, as opposed to an “actual
`
`face” in an image – it lacks the necessary relationship to a matter probative in the
`
`case (i.e., the proper construction of “actual face” in the claims of the ’420 patent),
`
`4
`
`
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`Case IPR2016-01220
`Patent 9,007,420
`
`and should therefore be excluded as irrelevant. See id. ¶ 7.
`
`Petitioner further attempts to connect Exhibit 1021 to Prof. Kakadiaris’
`
`deposition testimony. Id. at 7. But Petitioner did not ask Prof. Kakadiaris about the
`
`substance of any statements in Exhibit 1021. Instead, Prof. Kakadiaris merely
`
`identified certain publications related to the broad topic of facial recognition,
`
`including a paper titled “Bidirectional Relighting for 3D-aided 2D Face
`
`Recognition”:
`
`Q. Okay. I think I understand. So, yeah, if you could point out which
`
`publications [listed in your CV] relate to identification and which
`
`publication relate to authentication, as you’ve just laid out?
`
`A. I will refer to section numbers first and then within the section
`
`numbers, to the publication number that I used.
`
`In Section Number 4.5.2, based on my recollection using the titles of
`
`the papers alone … Paper 9 refers to, “Bidirectional relighting for 3d-
`
`aided 2d face recognition.”
`
`Ex. 1022, 26:14-17, 27:5-6. Prof. Kakadiaris did not offer any testimony concerning
`
`the statement “actual geometry of the face” from Exhibit 1021, much less analogize
`
`it to the claim language in the ’420 patent.
`
`Even if the Board determines that Exhibit 1021’s reference to “actual
`
`geometry of the face” has some minimal relevance to the interpretation of “actual
`
`face” in the ’420 patent, it should still exclude Exhibit 1021 under Federal Rule of
`
`Evidence 403 because any probative value of Exhibit 1021 is substantially
`
`5
`
`
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`Case IPR2016-01220
`Patent 9,007,420
`
`outweighed by the danger of unfair prejudice, confusing the issues, undue delay, and
`
`wasting time. Notably, even if Exhibit 1021’s use of “actual geometry of the face”
`
`had some bearing on the meaning of “actual face” in the ’420 patent, it would be
`
`highly prejudicial for the Board to consider Exhibit 1021 in construing the
`
`challenged claims because Exhibit 1021’s use of “actual geometry of the face” is
`
`specific to the context of the model described in Exhibit 1021. See Kakadiaris Decl.
`
`¶ 7.
`
`As the Federal Circuit recently explained in In re NuVasive, Inc., --- F. Appx.
`
`----, 2017 WL 2365257, at *4 (Fed. Cir. May 31, 2017), it is unreasonable for the
`
`Board to rely on an expert’s testimony about the meaning of a claim term in the
`
`context of that expert’s own, prior art reference, as establishing how a person of
`
`ordinary skill would understand the term when considering the subject of the
`
`challenged patent:
`
`The Board was unreasonable in relying on Dr. Obenchain’s testimony,
`
`given in response to questions about the meaning of the word “lateral”
`
`in the context of his own, prior-art patent, as establishing how a person
`
`of ordinary skill would understand “lateral” when considering the
`
`subject of the ’767 patent. It is clear from the testimony surrounding the
`
`passage cited by the Board that his interpretation of “lateral” was
`
`specific to the context of one of his own patents, which he maintained
`
`discloses a species of anterior approach that does not involve traversing
`
`the nerve-rich part of the psoas.
`
`6
`
`
`
`Case IPR2016-01220
`Patent 9,007,420
`
`Id. Allowing Petitioner to rely on Exhibit 1021 as evidence at the Oral Hearing
`
`would only serve to confuse the Board with an unrelated reference, cause undue
`
`delay in concluding this proceeding, and waste the parties’ and the Board’s time at
`
`the hearing.
`
`B.
`
`Exhibit 1021 Has Not Been Properly Authenticated under FRE 901.
`
`“To satisfy the requirement of authenticating or identifying an item of
`
`evidence, the proponent must produce evidence sufficient to support a finding that
`
`the item is what the proponent claims it is.” Fed. R. Evid. 901.
`
`Despite Securus’ objections to Exhibit 1021, Petitioner has not attempted to
`
`produce any evidence showing that Exhibit 1021 is what Petitioner claims. There is
`
`no testimony from a witness with knowledge concerning the authenticity of
`
`Exhibit 1021. The only exhibits discussed during Prof. Kakadiaris’ deposition
`
`included Exhibit 2004 (Prof. Kakadiaris’ Declaration), Exhibit 1020 (a document
`
`purporting to be Stan Li & Anil Jain, Handbook of Face Recognition (2d ed.), which
`
`has apparently been withdrawn by Petitioner), Exhibit 1003 (Torgersrud),
`
`Exhibit 1009 (Zhang), Exhibit 1004 (Kenoyer), and Exhibit 1001 (the ’420 patent).
`
`Although Prof. Kakadiaris referenced “Bidirectional Relighting for 3D-Aided 2D
`
`Face Recognition” during his deposition, there is no evidence that Exhibit 1021 is
`
`(or includes) an authentic copy of that work.
`
`Because there is no other evidence that satisfies Federal Rule of Evidence 901,
`
`7
`
`
`
`Case IPR2016-01220
`Patent 9,007,420
`
`and Exhibit 1021 is not self-authenticating, it is inadmissible.
`
`C. Exhibit 1021 Is Inadmissible Hearsay Under FRE 802.
`
`Hearsay is a statement that is made by a declarant while not “testifying at [a]
`
`current trial or hearing,” where that statement is “offer[ed] in evidence to prove the
`
`truth of the matter asserted in the statement.” Fed. R. Evid. 801. “Hearsay is not
`
`admissible,” unless it falls under one of the exclusions in Rule 801, or some
`
`exception applies, such as those provided in Federal Rules of Evidence 803-07. Fed.
`
`R. Evid. 802.
`
`Because Petitioner seeks to offer Exhibit 1021 for the truth of the matter
`
`asserted – to show that it “describes an actual geometry of the face” – it is
`
`inadmissible hearsay. See Reply at 7 (emphasis in original). Exhibit 1021 is not
`
`excluded from hearsay as a declarant’s “prior statement” because Petitioner did not
`
`cross-examine Prof. Kakadiaris about the contents of Exhibit 1021. Fed. R.
`
`Evid. 801(d)(1). Exhibit 1021 is also not offered to show that it contains a statement
`
`that is inconsistent or consistent with Prof. Kakadiaris’ prior testimony, as required
`
`by Federal Rule of Evidence 801(d)(1)(A)-(B). Id. Instead, Petitioner seeks to use
`
`Exhibit 1021 to show consistency with Dr. Beigi. See Reply at 7.
`
`Exhibit 1021 also does not qualify under any of the hearsay exceptions. For
`
`example, it is not a present sense impression, an excited utterance, or a then-existing
`
`mental, emotional, or physical condition. Fed. R. Evid. 803(1)-(3). Exhibit 1021 also
`
`8
`
`
`
`Case IPR2016-01220
`Patent 9,007,420
`
`does not meet the requirements of a “learned treatise” under Federal Rule of
`
`Evidence 803(18) because its contents were never “called to the attention of
`
`[Prof. Kakadiaris] on cross-examination,” and the publication has not been
`
`“established as a reliable authority by the expert’s admission or testimony.”
`
`IV. CONCLUSION
`
`For the foregoing reasons, Securus respectfully requests that the Board
`
`exclude Exhibit 1021 because it is irrelevant and inadmissible under Federal Rule of
`
`Evidence 401-03, lacks evidence of authenticity, and constitutes inadmissible
`
`hearsay.
`
`Date: July 15, 2017
`
`Respectfully submitted,
`
`
`
`_____________________________
`Justin B. Kimble
`Attorney for Patent Owner
`Registration No. 58,591
`Bragalone Conroy PC
`2200 Ross Ave., Suite 4500W
`Dallas, TX 75201
`
`9
`
`
`
`Case IPR2016-01220
`Patent 9,007,420
`
`CERTIFICATE OF SERVICE
`
`
`
`The undersigned hereby certifies that document was served via electronic mail
`
`on July 15, 2017, to Petitioner via counsel, mspecht-PTAB@skgf.com, jmutsche-
`
`PTAB@skgf.com, and PTAB@skgf.com, pursuant to Petitioner’s consent in its
`
`Petition at page 60.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`_____________________________
`Justin B. Kimble
`Attorney for Patent Owner
`Registration No. 58,591
`Bragalone Conroy PC
`2200 Ross Ave., Suite 4500W
`Dallas, TX 75201
`
`10
`
`
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