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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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`AVER INFORMATION INC., AND IPEVO, INC.
`Petitioner
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`v.
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`PATHWAY INNOVATIONS AND TECHNOLOGIES, INC.
`Patent Owner
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`_____________________
`CASE: IPR2017-02108
`U.S. PATENT NO. 8,508,751
`_____________________
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`PATENT OWNER’S REPLY IN SUPPORT OF ITS MOTION TO
`EXCLUDE EXPERT EVIDENCE
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`Case No. IPR2017-02108
`Patent No. 8,508,751
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`TABLE OF CONTENTS
`ARGUMENT .................................................................................................. 1
`A.
`Patent Owner Did Object to the Madisetti Declarations and Any
`Non-Compliance With 37 C.F.R. §42.64(b)(1) Was Non-
`Prejudicial ............................................................................................. 1
`Petitioner’s Substantive Arguments Lack Merit. ................................. 2
`1.
`Petitioner Ignores Most of the Arguments Concerning
`Madisetti’s Conclusory Invalidity Opinions. ............................. 3
`Petitioner Fails to Establish that Madisetti is a POSITA. .......... 5
`2.
`CONCLUSION .............................................................................................. 5
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`B.
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`I.
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`II.
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`i
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`Case No. IPR2017-02108
`Patent No. 8,508,751
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`TABLE OF AUTHORITIES
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`
`Cases
`Blackberry Corp. v. Mobilemedia Ideas, LLC, IPR2013-00036 (PTAB 2014) ....... 2
`Gardner v. TEC Sys., Inc., 725 F.2d 1338 (Fed. Cir. 1984) ..................................... 1
`IPR Licensing, Inc. v. ZTE Corp., 685 Fed. App’x. 933 (Fed. Cir. 2017) ................ 1
`ZTE Corp. v. PR Licensing, Inc., IPR2014-00525 (PTAB 2010) ......................... 1, 2
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`
`Regulations
`37 C.F.R. § 42.64 ...................................................................................................... 1
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`ii
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`Case No. IPR2017-02108
`Patent No. 8,508,751
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`I.
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`ARGUMENT
`A.
`Patent Owner Did Object to the Madisetti Declarations and Any
`Non-Compliance With 37 C.F.R. §42.64(b)(1) Was Non-
`Prejudicial
`Petitioner argues that Patent Owner failed to comply with 37 C.F.R. §
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`42.64(b)(1) and that the first indication Patent Owner intended to object to evidence
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`was Patent Owner’s motion to exclude itself, but that is incorrect. Patent Owner has
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`cried foul prior to institution of trial by specifically complaining of the Madisetti
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`Dec. in its Preliminary Response. Paper 6 at 17-18. That Patent Owner did not file a
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`formal “objection,” but rather protested the Madisetti Dec. in its Preliminary
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`Response is a harmless error that does not affect the substantive rights of Petitioner.
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`See Gardner v. TEC Sys., Inc., 725 F.2d 1338, 1345 (Fed. Cir. 1984) (courts should
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`disregard harmless errors which do not affect the parties’ substantive rights); ZTE
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`Corp. v. PR Licensing, Inc., IPR2014-00525, Paper 59 at 9 (PTAB 2010)
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`(disregarding harmless error because patent owner could not show any detriment)
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`(citing IPR Licensing, Inc. v. ZTE Corp., 685 Fed. App’x. 933, 936 (Fed. Cir. 2017)
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`(cert. denied, 138 S. Ct. 1692 (2018)).
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`Regardless, even if Patent Owner had filed a formal objection in accordance
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`with 37 C.F.R. §42.64(b)(1), Petitioner could not have gone back in time and cured
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`the defect by filing a Petition that was not word-for-word identical to its expert
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`declaration (or vice versa) so any non-compliance is harmless error.
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`1
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`Case No. IPR2017-02108
`Patent No. 8,508,751
`B.
`Petitioner’s Substantive Arguments Lack Merit.
`Petitioner argues it is not improper for the Madisetti Declarations to be similar
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`to technical arguments in the Petition because the Madisetti Declarations “involved
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`his own work [created] in a feedback loop with counsel.” Opp. Mem. at 6. To start,
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`Petitioner’s blithe statement that the Madisetti Declarations are “similar” to the
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`Petition is a gross mischaracterization. As shown in the motion and the side-by-side
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`comparison attached as Ex. A thereto, most of Madisetti’s invalidity discussion and
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`opinions spanning dozens of pages are lifted verbatim from the Petition, with only a
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`few minor exceptions.
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`Petitioner argues it should not be surprising Dr. Madisetti does not “stay up-
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`to-date” on how the Board ultimately considered his testimony in prior cases.
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`Interestingly, this position is contrary to Dr. Madisetti’s actual testimony: “Do you
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`keep track of how your opinions are used by the Board? I do read the decisions as
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`much as I can.” Ex. 2006 at 24:6-8. At the very least, it is incredulous to believe that
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`Dr. Madisetti was not apprised that the Board found his testimony to be not credible
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`in two cases shortly after his testimony was given. See ZTE Corp. v. Interdigital
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`Tech. Corp., IPR2014-00275, Paper 11 at 13 (PTAB 2014) (“Likewise, Dr.
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`Madisetti does not provide sufficient and persuasive evidence demonstrating that a
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`person of ordinary skill in the art would have understood . . .”); Blackberry Corp. v.
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`Mobilemedia Ideas, LLC, IPR2013-00036, Paper 65 at 18 (PTAB 2014) (“We do
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`not credit the testimony of Dr. Madisetti, that one skilled in the art at the time of the
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`2
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`Case No. IPR2017-02108
`Patent No. 8,508,751
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`invention of the ‘048 patent would understand . . .”).
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`1.
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`Petitioner Ignores Most of the Arguments Concerning
`Madisetti’s Conclusory Invalidity Opinions.
`More fundamentally, Madisetti fails to provide any particularized reasoning
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`for his invalidity opinions as required. For example, Madisetti summarily concludes
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`it would have been obvious to a POSITA to modify “the Morichika device to use a
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`video camera” and “modify the PC’s software accordingly.” Ex. 1020 at ¶ 56.
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`Madisetti also opines in one sentence that a POSITA “would understand that the
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`manipulations performed by the PC would not affect the resolution of the image that
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`is projected by the projector.” Id. at ¶ 97. But again, Madisetti fails to provide any
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`articulated reasoning for these opinions as required. Petitioner argues that Patent
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`Owner should have deposed Dr. Madisetti on the First Declaration, but it is not
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`Patent Owner’s responsibility to supply Petitioner with the required factual support
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`missing from its own expert’s opinions.
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`Petitioner also fails to address the argument that (with the exception of one
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`minor sentence) Madisetti’s entire discussion spanning 12 pages that Krisbergh in
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`view of Hara renders claims 8-10, 12, 14 and 16 obvious is lifted verbatim from the
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`Petition (Ground 2 for invalidity) without any explanation or analysis. Compare
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`Petition (Paper 3 at 44-56) with Madisetti Dec. (Ex. 1020 at ¶¶ 116-41); see also
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`Exhibit A at 32-44.
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`Petitioner also fails to address that Madisetti’s entire discussion that Krisbergh
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`3
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`Case No. IPR2017-02108
`Patent No. 8,508,751
`in view of Hara and Mitsui renders claims 13 and 16 obvious (Ground 3 for
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`invalidity) is lifted verbatim from the Petition with no analysis or factual
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`underpinning. Compare Petition (Paper 3 at 56-59) with Madisetti Dec. (Ex. 1020 at
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`¶¶ 142-47); see also Exhibit A at 44-47. Further, Madisetti concludes in one sentence
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`that it would have been obvious for a POSITA “to incorporate Hara’s technique for
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`reducing the volume of transmitted data,” but Madisetti again provides no
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`explanation or factual basis for this opinion. Madisetti Dec. (Ex. 1020 at ¶ 145).
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`Madisetti concludes in one sentence that it would have been obvious for a POSITA
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`“to combine the image rotation feature of Mitsui into the videophone disclosed in
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`Krisbergh,” but Madisetti provides no articulated reasoning for this opinion. Id.
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`Petitioner argues that the Board may give Madisetti’s opinions as much or as little
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`weight as it desires, but Petitioner fails to address any of these arguments in its
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`opposition.
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`Petitioner also ignores that Madisetti’s entire discussion spanning 14 pages
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`that Ishii renders claims 1-5, 8, and 16 obvious is lifted verbatim from the Petition
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`(Ground 4 for invalidity) with no explanation or analysis. Compare Petition (Paper
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`3 at 59-72) with Madisetti Dec. (Ex. 1020 at ¶¶152-87); see also Exhibit A at 48-60.
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`Madisetti opines that it would have been obvious for a POSITA to employ Ishii to
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`render the ‘751 patent obvious, but Madisetti provides no articulated reasoning for
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`his opinion. Ex. 1020 at ¶ 153. Again, Petitioner ignores all of these specific
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`arguments in its opposition.
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`4
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`Case No. IPR2017-02108
`Patent No. 8,508,751
`2.
`Petitioner Fails to Establish that Madisetti is a POSITA.
`Lastly, Petitioner argues that Dr. Madisetti is a POSITA because he has a
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`Ph.D. degree and has been a professor of engineering for over 25 years. But as
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`Madisetti acknowledged, a POSITA is a person not just with an academic pedigree,
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`but also one with “at least one year of direct technical experience in capturing real-
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`time video with zooming capability via a portable document camera.” Ex. 1020 at
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`5. Yet, that the record fails to indicate that Dr. Madisetti has at least one year of
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`direct technical experience in (1) capturing real-time video with (2) zooming
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`capability via (3) a portable document camera. All of these elements have not been
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`met. That Patent Owner’s expert may not have expressed an opinion on Madisetti’s
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`qualifications does not supply Madisetti with the necessary work experience that he
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`himself declared is a requirement for a POSITA.
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`II. CONCLUSION
`For these reasons, Dr. Madisetti’s claim construction and invalidity opinions
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`in his First and Second Declarations should be excluded. If the Board is inclined to
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`admit the Madisetti Declarations, they should be accorded zero weight.
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`Respectfully submitted,
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`Dated: December 4, 2018
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`San Diego IP Law Group LLP
`703 Palomar Airport Rd., Ste 210
`Carlsbad, CA 92011
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`Tel.: (442) 325-1024
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`Fax: (858) 408-4422
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`uspto@sandiegoiplaw.com
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`Pathway Innovations and Technologies, Inc.
`By counsel: /s/ Donny Samporna
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`TREVOR Q. CODDINGTON, PH.D.
`PTO REG. NO. 46,633
`DONNY K. SAMPORNA
`PTO EG. NO. 76,604
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`5
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing
`PATENT OWNER’S REPLY IN SUPPORT OF ITS MOTION TO
`EXCLUDE EXPERT EVIDENCE
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`and any supporting exhibits was served on December 4, 2018, by filing this
`document through the Patent Review Processing System as well as delivering a
`copy via email directed to the attorneys of record for Petitioners:
`K&L Gates LLP
`Jackson Ho
`Jackson.ho@klgates.com
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`Benjamin Weed
`Benjamin.weed.ptab@klgates.com
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`Kevin McCormick
`Kevin.mccormick@klgates.com
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`Respectfully submitted,
`/s/ Donny Samporna
`Donny K. Samporna
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