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`Paper No. ___
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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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`SONY CORPORATION
`Petitioner,
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`v.
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`FUJIFILM CORPORATION
`Patent Owner.
`_____________
`
`Case No. IPR2018-00876
`Patent No. 6,462,905 B1
`_____________
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`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION TO EXCLUDE
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`I.
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`TABLE OF CONTENTS
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`THE ECMA 319 STANDARD IS RELEVANT, NOT PREJUDICIAL
`AND WAS TIMELY SERVED ...................................................................... 1
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`A.
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`B.
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`C.
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`The ECMA 319 Standard Is Relevant ................................................... 1
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`The ECMA 319 Standard Is Not Prejudicial ......................................... 4
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`The ECMA 319 Standard Was Timely Served ..................................... 5
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`II.
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`CONCLUSION ................................................................................................ 6
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`i
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`Patent Owner Fujifilm Corporation (“Fujifilm”) seeks to exclude evidence
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`Sony introduced with its Reply (Paper No. 25) to refute arguments Fujifilm made
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`in its Patent Owner Response (Paper No. 21). The lone piece of evidence Fujifilm
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`seeks to exclude—Exhibit 1034 (“the ECMA 319 Standard”)—is relevant to this
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`proceeding, and Fujifilm has not met its burden of proving it is entitled to the
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`extraordinary exclusionary relief it seeks. 37 C.F.R. § 42.20(c).
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`I.
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`THE ECMA 319 STANDARD IS RELEVANT, NOT PREJUDICIAL
`AND WAS TIMELY SERVED
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`A. The ECMA 319 Standard Is Relevant
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`In its POR, Fujifilm argued that “the McAllister-I figures (including Figure
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`2A) fail to show any clearance between the disclosed locking gear and reel hub.”
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`POR at 23. In his reply declaration, Mr. von Alten explained that such an
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`interpretation of the McAllister-I figures was impractical because clearance
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`necessarily exists between the locking gear and reel hub to permit the hub to rotate
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`around the locking gear. Ex. 1033 ¶¶ 9, 11 (cited in Paper No. 25 (“Reply”) at 3).
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`Among other evidence that Mr. von Alten cited to support his opinion was
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`Exhibit 1034—the ECMA 319 Standard. Ex. 1033 ¶ 16. As Mr. von Alten
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`explained, the ECMA 319 Standard was “the standard that the LTO consortium
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`prepared in the late 1990s and published in 2001.” Id. Because Fujifilm concedes
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`McAllister-I depicts an “LTO-type” cartridge (POR at 13),
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`the original
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`standardized design of such a cartridge is highly relevant to understanding how a
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`POSA would have interpreted McAllister-I. Unsurprising, as Mr. von Alten
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`demonstrated, the ECMA 319 Standard “clearly shows” that clearance between an
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`LTO cartridge’s locking gear and reel hub was a standard design. Ex. 1033 ¶ 16.
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`Fujifilm also argued that the initial LTO cartridge design “included tight
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`fitting male and female interlocking structures” such that the LTO consortium
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`“assumed that the braking member would be limited to a one-dimensional
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`movement parallel to the axis of rotation of the reel, without the potential for
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`misalignment.” POR at 10 (emphasis added). Fujifilm then argued that because
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`the cartridge depicted in McAllister-I was an LTO cartridge, a POSA would have
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`interpreted McAllister-I’s figures to depict a “tight fit” between its male and
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`female interlocking structures that eliminated any “clearance” between the
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`structures that would otherwise have caused brake misalignment. POR at 25.
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`The ECMA 319 Standard—which describes the “initial LTO cartridge
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`design” Fujifilm references—directly refutes Fujifilm’s argument. See Ex. 1033 ¶
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`¶ 24 (describing the ECMA 319 Standard as “the published standard for the first
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`generation of LTO cartridges”). As Mr. von Alten explained, the ECMA 319
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`Standard demonstrates that the “LTO consortium absolutely recognized that the
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`mating components that connect the braking member to the cartridge shell would
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`have clearances, and even specified the maximum effect of those clearances.” Ex.
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`1033 ¶ 24. For example, as Mr. von Alten explained, the standard permits the
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`2
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`cartridge reel to rotate and/or be displaced relative to its center by certain amounts
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`and clearance between the mating structures is a cause of such permitted rotation
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`and/or displacement. Ex. 1033 ¶¶ 24-26.
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`As it directly refutes arguments Fujifilm presented in its POR, the ECMA
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`319 Standard is relevant and admissible. Fed. R. Evid. 403 (“Evidence if relevant
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`if: (a) it has a tendency to make a fact more or less probable than it would be
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`without the evidence; and (b) the fact is of consequence in determining the
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`action.”). That the ECMA 319 Standard is not prior art because it did not publish
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`until 20011 does not make the exhibit inadmissible. Yeda Research v. Mylan
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`Pharms., 906 F.3d 1031, 1041 (Fed. Cir. 2018) (“Based on the statutory scheme,
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`the PTO’s own regulations, and prior Board decisions, the Board can rely on
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`evidence other than just prior art.”); Dominion Dealer Sols., LLC v. AutoAlert, Inc.,
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`IPR2014-00684, 2014 WL 5035359, at *5 (P.T.A.B. Oct. 6, 2014) (non-prior art
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`references properly relied on to demonstrate “how one with ordinary skill in the art
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`would have understood a prior art disclosure”). At best, its non-prior art status
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`goes to the weight the Board affords the evidence, not its admissibility. Incyte
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`Corp. v. Concert Pharrms., Inc., IPR2017-01256, Paper No. 119 at 41 (P.T.A.B.
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`1 It was, however, being prepared in the late 1990s, i.e., contemporaneous with the
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`’905 Patent and McAllister-I. Ex. 1033 ¶ 16. See also POR at 8 (“Linear Tape
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`Open (‘LTO’) is a type of magnetic tape cartridge developed in the late 1990s.”).
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`3
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`Apr. 8, 2019) (“[T]he post-filing publication date of a reference relied upon to
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`indicate general knowledge of a person of ordinary skill in the art is a factor that
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`we consider when we weigh the evidence.”).
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`B.
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`The ECMA 319 Standard Is Not Prejudicial
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`Fujifilm seeks to exclude the ECMA 319 Standard under Rule 403 as
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`“prejudicial” (Mot. at 1), but never even explains why the exhibit’s probative value
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`would be “substantially outweighed” by “unfair prejudice” or any of the other
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`considerations cited in Rule 403. Given the significant probative value of the
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`exhibit (see Section I.A), Fujifilm’s failure to explain how that value is outweighed
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`by a factor cited in Rule 403 is fatal to its motion. See 37 C.F.R. § 42.20(c) (“The
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`moving party has the burden of proof to establish that it is entitled to the requested
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`relief.”). That the issues in this proceeding will be tried by judges, not a jury,
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`further warrants denial of Fujifilm’s motion. See, e.g., 22 Charles Alan Wright &
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`Kenneth W. Graham Jr., Federal Practice and Procedure § 5213 (1978 & Supp.
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`1999) (“Since the judge must hear the evidence in ruling on the motion to exclude
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`the evidence under Rule 403, exclusion of the evidence on grounds of prejudice in
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`a bench trial is described as a ‘useless procedure.’”); Gulf States Utilities Co. v.
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`Ecodyne Corp., 635 F.2d 517, 519 (5th Cir. 1981) (finding unfair prejudice portion
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`of Rule 403 “has no logical application to bench trials”).
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`4
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`C. The ECMA 319 Standard Was Timely Served
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`While Fujifilm seeks to exclude the ECMA 319 Standard as being
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`“[u]ntimely” and “outside the proper scope of this proceeding” (Mot. at 1), it did
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`not raise such objections previously (Paper No. 27 at 2-3). Fujifilm thus waived its
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`right to seek exclusion on the basis of these new objections. 37 C.F.R. § 42.64(c).
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`Regardless, as discussed above in Section I.A, the ECMA 319 Standard is
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`proper rebuttal evidence to arguments Fujifilm raised for the first time in its POR.
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`Moreover, Fujifilm had an opportunity to respond to the evidence in its sur-reply
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`and did. Paper No. 29 at 5-6. There is nothing untimely or impermissible about
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`the manner in which Sony introduced the ECMA 319 Standard into this
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`proceeding. Genzyme Therapeutic Prods. LP v. Bio-marin Pharm. Inc., 825 F.3d
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`1360, 1366 (Fed. Cir. 2016) (“[T]he introduction of new evidence in the course of
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`the trial is to be expected in inter partes review trial proceedings and, as long as
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`the opposing party is given notice of the evidence and an opportunity to respond to
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`it, the introduction of such evidence is perfectly permissible under the APA.”).
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`Finally, although the ECMA 319 Standard is not expressly cited in Sony’s
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`Reply, those paragraphs of Mr. von Alten’s reply declaration discussing the ECMA
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`319 Standard and its relevance to his opinions are expressly cited in the Reply.
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`See, e.g., Paper No. 25 at 5 (citing Ex. 1033 ¶¶22-30), id. at 8 (citing Ex. 1033
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`¶¶13-16). The ECMA 319 Standard is thus within the proper scope of this trial.
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`5
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`
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`Cellco Partnership d/b/a Verizon Wireless v. Bridge and Post, Inc., IPR2018-
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`00054, Paper No. 40 at 75 (P.T.A.B. Apr. 15, 2019) (“The mere fact that the
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`exhibits are cited by an expert witness to support his or her testimony on the state
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`of the art, but not cited in the Petition, does not establish automatically that they
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`are irrelevant or an improper incorporation by reference, as Patent Owner
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`alleges.”).
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`II. CONCLUSION
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`For the reasons stated above, the Board should deny Fujifilm’s Motion.
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`Dated: May 28, 2019
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`Respectfully submitted,
`Sony Corporation
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`
` /Nathan R. Speed/
`Richard F. Giunta, Reg. No. 36,149
`Michael N. Rader, Reg. No. 52,146
`Randy J. Pritzker, Reg. No. 35,968
`Nathan R. Speed (pro hac vice)
`WOLF GREENFIELD & SACKS, P.C.
`600 Atlantic Avenue
`Boston, MA 02210
`(617) 646-8000 Phone
`(617) 646-8646 Fax
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`6
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`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6 (e)(4)
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`I certify that on May 28, 2019 I will cause a copy of the foregoing
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`document, including any exhibits or appendices referred to therein, to be served via
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`electronic mail, as previously consented to by Patent Owner, upon the following:
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`eliot.williams@bakerbotts.com
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`robert.scheinfeld@bakerbotts.com
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`robert.maier@bakerbotts.com
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`jennifer.tempesta@bakerbotts.com
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`margaret.welsh@bakerbotts.com
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`daniel.rabinowitz@bakerbotts.com
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`katharine.burke@bakerbotts.com
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`/MacAulay Rush/
`MacAulay Rush
`Paralegal
`WOLF GREENFIELD & SACKS, P.C.
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`Eliot D. Williams
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`Robert C. Scheinfeld
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`Robert L. Maier
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`Jennifer Tempesta
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`Margaret M. Welsh
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`Daniel Rabinowitz
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`Katharine M. Burke
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`Date: May 28, 2019
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