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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`IN THE UNITED STATES PATENT TRIAL AND APPEAL BOARD
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
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`IN THE UNITED STATES PATENT TRIAL AND APPEAL BOARD
`______________________
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`AVER INFORMATION INC., AND IPEVO, INC.
`AVER INFORMATION INC., AND IPEVO, INC.
`PETITIONER
`
`v.
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`PATHWAY INNOVATIONS AND TECHNOLOGIES, INC.
`PATHWAY INNOVATIONS AND TECHNOLOGIES, INC.
`PATENT OWNER
`_______________________________
`
`CASE: IPR2017-02108
`U.S. PATENT NO. 8,508,751
`U.S. PATENT NO. 8,508,751
`__________________________
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`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION TO EXCLUDE EXPERT EVIDENCE
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`PETITIONER
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`V.
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`PATENT OWNER
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`CASE: IPR2017-02108
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`PETITIONER’S OPPOSITION TO PATENT OWNER’S
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`MOTION TO EXCLUDE EXPERT EVIDENCE
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`MAIL STOP PATENT BOARD
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`PATENT TRIAL AND APPEAL BOARD
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`U.S. PATENT AND TRADEMARK OFFICE
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`PO. BOX. 1450
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`MAIL STOP PATENT BOARD
`PATENT TRIAL AND APPEAL BOARD
`U.S. PATENT AND TRADEMARK OFFICE
`P.O. BOX. 1450
`ALEXANDRIA, VA 22313-1450
`ALEXANDRIA, VA 22313-1450
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`IPR2017-02108
`U.S. Patent No. 8,508,751
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`CONTENTS
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`I.
`II.
`
`Introduction ................................................................................................ 1
`The Motion to Exclude Does Not Comply With the Time Periods Set
`Forth in 37 C.F.R. 42.64 ............................................................................ 2
`PO’s Arguments Fail As A Substantive Matter ........................................ 4
`III.
`IV. Conclusion ................................................................................................. 8
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`i
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`IPR2017-02108
`U.S. Patent No. 8,508,751
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`I.
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`INTRODUCTION
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`AVer Information Inc. and IPEVO, Inc. (collectively, “Petitioner”)
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`requested inter partes review (“IPR”) of claims 1-5, 7-10, 12-14, 16, 18, and 20
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`(“Challenged Claims”) of U.S. Patent No. 8,508,751 (“‘751 Patent”) (Ex. 1001)
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`under 35 U.S.C. §§311–319 and 37 C.F.R. §42 on September 15, 2017.
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`The Institution Decision (“Decision,” Paper 9) instituted review of claims 1-
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`5 and 7 as obvious over Morichika (Ex. 1002), but declined to institute review on
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`any other Ground. (Paper 9, 26). Of particular relevance, the Board found that
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`claims 8-10, 12-14, and 16 are indefinite. (Id., 14-16). The Board later modified
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`the Decision to include all grounds/all claims in the Petition. (Paper 10, 2-3 (citing
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`SAS Inst., Inc. v. Iancu, 2018 WL 1914661, at *10 (U.S., Apr. 24, 2018))). Patent
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`Owner (“PO”) has since filed a non-contingent Motion to Amend (Paper 12), a
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`Patent Owner Response (Paper 11), and a Reply in support of its non-contingent
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`Motion to Amend (Paper 19). Petitioner has filed a Reply to the Patent Owner
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`Response (Paper 16) and an Opposition to the non-contingent Motion to Amend
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`(Paper 17).
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`Despite never filing objections to any of Petitioner’s evidence, PO filed a
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`Motion to Exclude Expert Evidence (“Motion” or “Motion to Exclude,” Paper 23)
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`on November 20, 2018. The Motion to Exclude states that each of the First
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`Declaration (Ex. 1020) and the Second Declaration (Ex. 1025) of Dr. Vijay
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`1
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`IPR2017-02108
`U.S. Patent No. 8,508,751
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`Madisetti should be excluded in their entireties, and that Petitioner should be
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`barred from using or citing these declarations at any hearing or oral argument.
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`II. THE MOTION TO EXCLUDE DOES NOT COMPLY WITH THE
`TIME PERIODS SET FORTH IN 37 C.F.R. §42.64
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`PO’s Motion to Exclude should be denied first and foremost because PO has
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`failed to comply with 37 C.F.R. §42.64(b)(1), which requires that objections to
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`evidence be filed within certain time periods of the evidence being submitted. The
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`rule states that objections must be filed within ten (10) days of institution for
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`evidence served in the preliminary proceeding, and that once trial has been
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`instituted, “any objection must be filed within five business days of service of
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`evidence to which the objection is directed.” 37 C.F.R. §42.64(b)(1).
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`In this case, PO never filed any objection to any evidence. Its first
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`indication that it intended to object to the admissibility of any evidence that is the
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`subject of the Motion to Exclude was the Motion to Exclude itself. The Motion’s
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`November 20, 2018 filing date is long after the due date for objections related to
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`both the First Declaration, filed on September 15, 2017, and the Second
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`Declaration, filed on October 15, 2018. PO’s indication that it intended to object
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`to the admissibility of any of Petitioner’s evidence far exceed the ten (10) business
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`days and five business days mandated by the regulations for the applicable
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`evidence.
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` 2
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`IPR2017-02108
`U.S. Patent No. 8,508,751
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`By failing to timely file any objections to evidence in the above-referenced
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`proceeding, PO’s Motion to Exclude facially fails by virtue of 37 C.F.R. §42.64(c).
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`PO argues that its Preliminary Response (Paper 6) contained its objection to
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`the First Declaration (Paper 23, 2), but cannot identify any objection it filed related
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`to the Second Declaration under 37 C.F.R. §42.64(c). Without even assessing the
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`adequacy of the Preliminary Response’s “objection,” PO’s Motion must be denied
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`as to the Second Declaration.
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`PO argued in its Preliminary Response that Petitioner’s Expert, Dr.
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`Madisetti, was “a paid oath-taker.” (Paper 6, 17). But this characterization, made
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`before the period for taking Dr. Madisetti’s deposition had even begun, is
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`insufficient to constitute an objection under 37 C.F.R. §42.64(b)(1). PO cites no
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`case law for the proposition that an argument about the weight of evidence in a
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`substantive paper constitutes an objection under 37 C.F.R. §42.64. Here, it cannot.
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`For example, PO’s Preliminary Response fails to “identify the grounds for the
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`objection with sufficient particularity to allow correction in the form of
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`supplemental evidence.” §37 C.F.R. 42.64(b)(1).
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`The import of PO’s conduct in this case is glaring. 37 C.F.R. §42.64
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`provides for an objection/exclusion protocol that permits the proponent of the
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`objected-to evidence to submit supplemental evidence to address the objections
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`raised to the underlying evidence. Because PO never filed objections, Petitioner
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` 3
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`had no opportunity to submit supplemental evidence to address any concerns PO
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`IPR2017-02108
`U.S. Patent No. 8,508,751
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`had about admissibility.
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`III. PO’S ARGUMENTS FAIL AS A SUBSTANTIVE MATTER
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`PO largely reiterates its prior complaint about an alleged similarity between
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`Dr. Madisetti’s First Declaration and the technical arguments in the Petition. PO’s
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`arguments fall particularly flat given the incredible fact that it did not even bother
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`to depose Dr. Madisetti on his First Declaration. The fact that Dr. Madisetti’s
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`declaration served as a basis for the technical arguments in the Petition is
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`unsurprising: the Petition stated that “Petitioner also provides the declaration of
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`Dr. Vijay Madisetti in support of its proposed grounds of unpatentability.” (Paper
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`3, 20) (emphasis added). The cases PO cites are inapposite; they relate to the
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`adequacy of analysis, not allegations of similarity between pleadings filed in
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`PTAB proceedings and declaration testimony.
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`Also underscoring the problem with PO’s argument is the fact that it did
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`indeed depose Dr. Madisetti on the Second Declaration. PO cites that deposition,
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`where Dr. Madisetti explained that he followed a “very similar” process to that of
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`the First Declaration. (Paper 23, 2). But what PO misleadingly omits from its
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`Motion is Dr. Madisetti’s testimony about how he created the Second Declaration
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`(and, by virtue of the cited testimony, the First Declaration).
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` Q. Can you describe the process you followed in creating that
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` 4
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`declaration?
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`IPR2017-02108
`U.S. Patent No. 8,508,751
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`A. I discussed with the attorneys the amended claims, and I
`identified certain art that I would -- that I would discuss in my
`declaration. I discussed the art in the context of the amended claims
`and provided the attorneys with the first draft of my declaration.
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`Q. Okay. So you created the first draft of the declaration, not
`your attorneys?
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`A. Yes, I created the first draft after discussing with the
`attorneys.
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`Q. How many drafts were there?
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`A. I don't recall. I think there was just one draft that was
`continuously.
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`Q. How many times was it revised?
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`A. I don't recall specific numbers, but I think it was
`continuously updated in terms of adding more detail, in terms of
`various claims and the various support that was identified from each
`reference for each particular combination.
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`(Ex. 2006, 25:8-26:3). Dr. Madisetti was then asked the question that led to PO’s
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`(partial) citation:
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`Q. How did the process of creating that second declaration
`differ from the way you created your first declaration?
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`A. Again, it's largely similar. Some of the art I got from the
`attorneys in the case. But, otherwise, they're very similar.
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` 5
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`IPR2017-02108
`U.S. Patent No. 8,508,751
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`(Ex. 2006, 26:18-23). PO’s allegations that due to the continuous creation of the
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`draft, potential copy-paste errors were introduced does not change the fact that Dr.
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`Madisetti’s sworn testimony about the creation of the documents involved his own
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`work in a feedback loop with counsel. (Paper 23, 3-4). The record actually
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`supports the conclusion that Dr. Madisetti created the first draft of both reports,
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`and engaged in continuous, back-and-forth regarding the reports’ contents.
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`Regarding PO’s arguments about Claim Construction (Paper 23, 4-5), Dr.
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`Madisetti’s opinion about how a POSA would understand certain terms is
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`admissible; should the Board wish to accord it differing weight, it certainly may do
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`so. But again, none of this testimony is impugned by cross examination, as PO
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`conducted none for the first declaration.
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`PO also argues about Dr. Madisetti’s obviousness arguments, which are
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`inapplicable per PO’s recent clarification that the Motion to Amend (Paper 12) is
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`indeed non-contingent. PO’s argument again amounts to complaints about
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`similarities between the Petition and the First Declaration, but provide no
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`articulation of any reason the opinions offered in the declaration are inadmissible.
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`Indeed, PO’s arguments about “one sentence” conclusions of obviousness are
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`belied by the very fact that PO itself recognizes that the analysis Dr. Madisetti
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`provided spanned several paragraphs and several pages of his report, and was not
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`cross examined at all.
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` 6
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`IPR2017-02108
`U.S. Patent No. 8,508,751
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`
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`PO chides Dr. Madisetti for reading from his deposition (Paper 23, 8-9). But
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`PO cites a small handful of passages from an 80 page declaration; perhaps had PO
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`asked questions not already answered in the declaration, it would have received
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`different answers. Dr. Madisetti’s declaration was sworn testimony, and indeed is
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`the very sworn testimony Petitioner relied on in opposition to PO’s Motion to
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`Amend. (Paper 17). Dr. Madisetti reiterating and standing on his sworn testimony
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`is wholly appropriate.
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`That Dr. Madisetti has offered opinions in the past that the Board has
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`ultimately not adopted does not render his testimony here inadmissible. (Paper 23,
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`8). Nor is it surprising that Dr. Madisetti does not stay up-to-date on how the
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`Board has handled two specific pieces of testimony he offered in cases finally
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`decided in 2014.
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`PO’s commentary on Morichika’s camera 4c can also be ignored. (Paper 23,
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`9). First, the positions PO articulates are indeed not contradictory. The Board
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`concluded that the pre-amendment version of the claims do not require video
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`(Paper 9, 13), so the fact that Dr. Madisetti did not provide a chapter and verse
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`opinion in the First Declaration (addressing the pre-amendment claims) is
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`unsurprising. (Paper 23, 9). Nor is it inconsistent with his recognition that
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`Morichika is not explicit whether camera 4c could be a video camera, or his
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`opinion (unrebutted with any expert testimony) that Morichika combined with
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` 7
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`IPR2017-02108
`U.S. Patent No. 8,508,751
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`Liang would have rendered such a feature obvious. See generally Ex. 1025.
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`PO’s last objection, that Dr. Madisetti is not a POSA, is perhaps easiest to
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`ignore. Dr. Madisetti has a PhD degree and has been teaching as a professor of
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`electrical and computer engineering at Georgia Tech for 25 to 30 years. (Ex. 2006,
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`18:5-7). He has no trouble understanding a patent that incorporates known image
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`processing techniques into known document cameras. PO also does not cite the
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`Board to the testimony it elicited in its deposition of Dr. Madisetti on his second
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`declaration, where Dr. Madisetti explained his relevant experience. (Ex. 2006,
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`19:3-21:12). Third, Dr. Rodriguez, PO’s own expert, did not express any opinion
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`as to whether Dr. Madisetti was capable offering the opinions he offered. (Ex.
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`1022, 38:5-13). Last, PO’s argument is a very concrete example of the glaring
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`problem with PO failing to follow the rules’ requirement for timely objecting to
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`evidence; this could readily have been addressed with supplemental evidence (or,
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`for that matter, a fulsome deposition conducted on this topic).
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`IV. CONCLUSION
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`PO’s Motion to Exclude does not comply with the applicable rules
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`(including 37 C.F.R. §42.64(b)(1) and 37 C.F.R. §42.64(c)), and should be denied
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`on that basis alone. Furthermore, any statements made in PO’s Preliminary
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`Response are insufficient to constitute an objection.
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` 8
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`IPR2017-02108
`U.S. Patent No. 8,508,751
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`Date: November 27, 2018
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`
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`Respectfully submitted,
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`/Benjamin E. Weed/
`Benjamin E. Weed
`Reg. No. 65,939
`K&L GATES LLP
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` 9
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`IPR2017-02108
`U.S. Patent No. 8,508,751
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`
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`CERTIFICATE OF SERVICE
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`I hereby certify that on November 27, 2018, a true and correct copy of the
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`foregoing was caused to be served electronically on the following counsel of
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`record for Patent Owner at the following email addresses:
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`Trevor Q. Coddington Ph.D. (trevorcoddington@sandiegoiplaw.com)
`Donny K. Samporna (donnysamporna@sandiegoiplaw.com)
`James K. Fazio III (jamesfazio@sandiegoiplaw.com)
`
`
`/Benjamin E. Weed/
`Benjamin E. Weed
`Reg. No. 65,939
`K&L GATES LLP
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`
`
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