`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 REPLY IN SUPPORT OF 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
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`INTRODUCTION ............................................................................................... 1
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`
`I.
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`II. GTL Ignores That Exhibit 1021 Uses the Word “Actual” in a Fundamentally
`Different Way Than the ’420 Patent. .................................................................. 1
`
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`III. Exhibit 1021 Is Not Authentic and Is Inadmissible Hearsay. ............................. 3
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`IV. The Board Should Deny GTL’s Request to Expunge Exhibit 2010. .................. 4
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`i
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`
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`I.
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`INTRODUCTION
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`The unrefuted evidence demonstrates that that Exhibit 1021 is irrelevant to
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`the interpretation of the ’420 patent because the exhibit’s use of “actual geometry of
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`the face” is particular to its context, and entirely distinct from the use of “actual face”
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`in the claims of the ’420 patent. Because GTL cannot refute the evidence on the
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`merits, it resorts to a procedural attack on the supporting declaration. But GTL’s
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`argument is bereft of any authority to expunge it. Further, Exhibit 1021’s distinctive
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`characteristics only undermine its authenticity, since the date of publication that
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`appears on the document is contradicted by other evidence of record. Exhibit 1021
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`is also inadmissible hearsay because GTL seeks to show that it describes an “actual
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`geometry of the face.” Accordingly, the Board should exclude Exhibit 1021.
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`II. GTL Ignores That Exhibit 1021 Uses the Word “Actual” in a Fundamentally
`Different Way Than the ’420 Patent.
`
`GTL contends that Exhibit 1021 is relevant because it allegedly shows how a
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`person of ordinary skill would understand the word “actual” and allegedly
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`contradicts Prof. Kakadiaris’ testimony. Paper 24 at 2-4. But GTL did not make these
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`arguments in its Reply. Paper 19 at 7. Instead, GTL attempted to use Exhibit 1021
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`to show that Dr. Beigi’s understanding of “actual” is consistent with how
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`Prof. Kakadiaris “has used the word in his own writing related to face detection and
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`recognition.” Id. But that alleged consistency is simply not relevant to the
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`interpretation of “actual face” in the ’420 patent or Prof. Kakadiaris’ credibility
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`Case IPR2016-01220
`Patent 9,007,420
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`because Exhibit 1021 uses “actual” in an entirely different context.
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`GTL does not meaningfully attempt to refute Prof. Kakadiaris’ explanation of
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`the fundamental differences between Exhibit 1021 and the ’420 patent. Instead, GTL
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`contends that Exhibit 1021 is relevant because it relates to the broad topic of facial
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`recognition. Paper 24 at 3. But GTL ignores the fact that “actual” has different
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`meanings within the art, depending upon the context. Paper 23 at 2-5. By attempting
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`to rely on the use of “actual geometry of the face” in prior art from a different context
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`to support its construction of “actual face” in the ’420 patent, GTL makes the same
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`error as the Board in In re NuVasive, Inc., --- F. Appx. ---, 2017 WL 2365257, at *5
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`(Fed. Cir. May 31, 2017). Paper 23 at 5-6.
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`Like the prior-art patent in NuVasive that “disclose[d] a species of anterior
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`approach that does not involve traversing the nerve-rich part of the psoas,” the
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`portion of Exhibit 1021 highlighted by GTL does not involve verifying that an
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`“actual face” is present in an image. Compare 2017 WL 2365257, at *5, with
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`Paper 23 at 3-5. Indeed, Exhibit 1021 uses “actual geometry of the face” to refer to
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`geometric information (x, y, and z components of a vertex in R3) in the context of
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`enrolling a 3D facial mesh into a model. Paper 23 at 3-5; Exhibit 2010 ¶¶ 4-7. Thus,
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`unlike the ’420 patent, the “actual geometry of the face” in Exhibit 1021 refers to
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`the existence of geometric data, not the presence of an “actual face” in an image.
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`GTL does not contend otherwise. Instead, it argues that “[w]hat the
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`Patent 9,007,420
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`’420 patent is saying when it describes ‘verify[ing] that an actual face was present
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`in the image’ is verifying whether the image includes the likeness, or geometry of
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`the face.” Paper 24 at 4. But GTL fails to demonstrate that the ’420 patent verifies
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`whether an image includes an “actual geometry of the face” in the context of
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`Exhibit 1021. Nor could it. The ’420 patent discloses verifying the presence of an
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`“actual face” in an image, not the existence of geometric information from a 3D
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`facial mesh. See Ex. 2004 ¶¶ 150-52.
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`GTL’s attempt to distinguish NuVasive fails. Although GTL posits that it is
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`not asking the Board to rely on and adopt any statements from Prof. Kakadiaris for
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`the meaning of “actual face,” GTL is clearly relying on Exhibit 1021 to support its
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`interpretation of “actual” in the ’420 patent, just like the Board erroneously relied
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`on testimony about the prior-art patent to support its construction in NuVasive. 2017
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`WL 2365257, at *3-7. Because Exhibit 1021 uses “actual” in an entirely different
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`context than the ’420 patent, it would be highly prejudicial (and in fact erroneous)
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`to consider the reference when evaluating the parties’ competing constructions of
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`“actual face” or the credibility of Prof. Kakadiaris.
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`III. Exhibit 1021 Is Not Authentic and Is Inadmissible Hearsay.
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`GTL contends that “Securus completely ignores [Exhibit 1021]’s intrinsic
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`characteristics,” which show it is a book chapter referenced in Prof. Kakadiaris’ CV.
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`Paper 24 at 8. But Exhibit 1021 states that it was “[f]irst published in 2011,” a year
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`Patent 9,007,420
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`after the reference identified in Prof. Kakadiaris’ CV. Compare Ex. 2004 at 92, with
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`Ex. 1021. Thus, the characteristics of the exhibit actually undermine, rather than
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`support the authenticity of Exhibit 1021.
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`While GTL argues that it is not offering Exhibit 1021 to show that the authors
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`in truth employed the model, or that the number of channels in the geometry is seven,
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`there is no dispute that GTL relies on Exhibit 1021 to show that the document in
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`truth “describes an actual geometry of the face” and that the description is allegedly
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`consistent with Dr. Beigi’s interpretation of “actual face.” Paper 24 at 10-11. This
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`argument relies on the truth of the matter asserted (e.g., whether and how the
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`document describes “an actual geometry of the face”). Moreover, GTL does not seek
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`to use Exhibit 1021 for impeachment purposes. See Paper 19 at 7.
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`IV. The Board Should Deny GTL’s Request to Expunge Exhibit 2010.
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`The Board should reject GTL’s improper request to expunge Exhibit 2010
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`through argument in its response brief, as the Board has not provided GTL with
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`authorization to make such a request. 37 C.F.R. §§ 42.20(a)-(b). To the extent the
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`Board considers GTL’s request, it should be denied.
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`Parties regularly file evidence in support of authorized motions to the Board.
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`For example, in Activision Blizzard, Inc. v. Acceleration Bay, LLC, the Patent Owner
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`filed deposition testimony with a motion to exclude certain publications based on a
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`lack of authenticity. See IPR2015-01951, Paper 77 at 9 (Ex. 2111) and 14 (Ex. 2110).
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`Patent 9,007,420
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`Responsive evidence can also be filed to oppose a motion to exclude. See, e.g.,
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`IPR2015-01996, Ex. 1156; IPR2015-01236, Ex. 1020; IPR2013-00593, Ex. 1025.
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`Indeed, the Board has encouraged the filing of expert declarations with motions to
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`avoid conclusory argument. IPR2012-00027, Paper 26 at 7-8.
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`GTL identifies no rule or case authority for the proposition that a party must
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`seek permission from the Board before submitting evidence in support of an
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`authorized motion to the Board. The cases cited by GTL involve attempts to submit
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`a supplemental declaration supporting a Patent Owner Response (IPR2016-00022,
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`Paper 30 at 8) and a new exhibit along with an opposition to a motion to exclude
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`(IPR2015-00300, Paper 54 at 29). Both of these cases are distinguishable.
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`Exhibit 2010 does not “supplement” any prior paper, and it addresses directly
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`the issues raised in the Motion to Exclude and supports those arguments. It is
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`therefore unlike the supplemental declaration in IPR2016-00022, which belatedly
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`sought to supplement a Patent Owner Response, as well as the new exhibit in
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`IPR2015-00300, which was “not responsive to the Motion to Exclude,” and thus did
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`not support the party’s opposition brief. IPR2015-00300, Paper 54 at 29.
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`Finally, GTL’s allegation that it has been deprived of any opportunity to cross-
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`examine Prof. Kakadiaris and file a motion for observation is a red herring. GTL’s
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`counsel has never requested to depose Prof. Kakadiaris about Exhibit 2010, and it
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`specifically declined to do so when asked during the parties’ meet and confer.
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`Case IPR2016-01220
`Patent 9,007,420
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`Date: July 26, 2017
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`Respectfully submitted,
`
`
`
`_____________________________
`Justin B. Kimble
`Attorney for Patent Owner
`Registration No. 58,591
`Bragalone Conroy PC
`2200 Ross Ave., Suite 4500W
`Dallas, TX 75201
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`CERTIFICATE OF SERVICE
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`
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`The undersigned hereby certifies that document was served via electronic mail
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`on July 26, 2017, to Petitioner via counsel, mspecht-PTAB@skgf.com, jmutsche-
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`PTAB@skgf.com, and PTAB@skgf.com, pursuant to Petitioner’s consent in its
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`Petition at page 60.
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`_____________________________
`Justin B. Kimble
`Attorney for Patent Owner
`Registration No. 58,591
`Bragalone Conroy PC
`2200 Ross Ave., Suite 4500W
`Dallas, TX 75201
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