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`Paper No. 35
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`___________________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`___________________________________________
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`Sony Corporation
`Petitioner
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`v.
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`FUJIFILM Corporation
`Patent Owner
`___________________
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`Case IPR2018-00876
`U.S. Patent No. 6,462,905
`___________________
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`REPLY TO OPPOSITION TO MOTION TO EXCLUDE
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`I.
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`INTRODUCTION
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`In Petitioner’s Reply, Petitioner submitted for the first time Exhibit 1034
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`(ECMA-319) in an attempt to fill gaps it recognized in the prior art. Petitioner’s
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`submission of Exhibit 1034 is irrelevant, untimely and prejudicial. Further,
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`Petitioner never cited to Exhibit 1034 in its Petitioner’s Reply (or Petition), and
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`instead, Petitioner tries to circumvent the rules by incorporating by reference the
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`alleged teachings of Exhibit 1034 into its Reply.
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`II. APPLICABLE LAW
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`Generally the Board follows the Federal Rules of Evidence (FRE). See 37
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`C.F.R. § 42.62. FRE 402 and 403 provide that irrelevant evidence is not admissible
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`and that even if evidence is relevant, it may be excluded if its probative value would
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`be substantially outweighed by the danger of unfair prejudice and confusion of the
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`relevant issues that it presents. Fed. R. Evid. 402, 403. Further, several regulations
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`are also in place to ensure the Petition sets forth the grounds of unpatentability and
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`evidence is not incorporated by reference. 37 C.F.R. § 42.22 (“each petition ….
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`must include … a detailed explanation of the significance of the evidence...”); §
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`42.6(a)(3) (“Arguments must not be incorporated by reference from one document
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`into another document.”).
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`III. EXHIBIT 1034 SHOULD BE EXCLUDED
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`A.
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`Patent Owner Did Not Waive Its Objection to Exhibit 1034
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`Petitioner argues that Patent Owner waived its right to exclude Exhibit 1034
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`as being untimely and outside the scope. Petitioner’s Opposition to Patent Owner’s
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`Motion (Paper No. 34) (“Opposition”) at 5. This is simply not true. In Patent
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`Owner’s Objections to Petitioner’s Reply, Patent Owner specifically objected to
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`Exhibit 1034 as not being “relied upon by Petitioner in any Ground of its inter partes
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`review Petition.” See Paper No. 27 at 3. Accordingly, Patent Owner has not “waived
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`its right to seek exclusion” of Exhibit 1034.
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`B.
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`Exhibit 1034 Is Unfairly Prejudicial As It Is Admittedly Not Prior
`Art But Used By Petitioner to Fill in the Gaps of McAllister-I
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`Further, Petitioner’s Opposition highlights the prejudicial nature of Exhibit
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`1034. As Petitioner admits in its Opposition, Petitioner’s expert relies on Exhibit
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`1034 to show the alleged specification that the “LTO consortium prepared in the late
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`1990s.” Opposition at 1. Petitioner further argues that “the original standardized
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`design” is “highly relevant” to show how a POSA would have interpreted the prior
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`art. See Opposition at 1-2. Moreover, Petitioner goes one step further and argues
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`that since Exhibit 1034 allegedly discloses clearances, the prior art on which
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`Petitioner relies does as well.
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`However, Petitioner does not dispute that Exhibit 1034 postdates the ’905
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`patent and is not prior art. Further, Petitioner has not provided any support for a
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`relationship between the disclosure of Exhibit 1034 and the prior art. Any alleged
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`clearance shown in Exhibit 1034 does not show or imply clearance in the prior art.
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`Petitioner’s reliance on Exhibit 1034, to imply features in the prior art and its
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`purported teaching of a motivation to combine the prior art, is prejudicial.
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`Accordingly, since Exhibit 1034 is not prior art but Petitioner relies on Exhibit
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`1034 to imply features in the prior art, Exhibit 1034 is confusing and unfairly
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`prejudicial.
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`C.
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`Petitioner Concedes Exhibit 1034 Is Not Cited In Its Reply, But
`Attempts to Improperly Incorporate Its Teachings By Reference
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`In opposition, Petitioner concedes that Exhibit 1034 is “not expressly cited”
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`in its Reply, and Exhibit 1034 is also not cited in the Petition. See Opposition at 5.
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`However, Petitioner argues that Mr. von Alten’s testimony which discusses Exhibit
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`1034 is cited in its Reply, and thus, Petitioner incorporates the teachings of Exhibit
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`1034 by reference. However, 37 CFR § 42.6(a)(3) expressly notes that “[a]rguments
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`must not be incorporated by reference from one document into another document.”
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`Petitioner cites to Cellco Partnership d/b/a Verizon Wireless v. Bridge and
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`Post, Inc., IPR2018-00054, Paper No. 40 at 75 (P.T.A.B. Apr. 15, 2019). Opposition
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`at 6. However, in Cellco, Petitioner relied on the cited references not to meet a claim
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`limitation, but instead to show the state of the art at the time of the invention. Id. at
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`73-75. In addition, the cited references in Cellco predate the challenged patent. See
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`Id. (Patent Owner filed a motion to exclude Exhibits 1012, 1020, 1021, 1028, and
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`1031, all of which predate the March 2007 priority date of the challenged patent).
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`In this case, Petitioner relies on postdated Exhibit 1034 to imply features into the
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`prior art. Specifically, Petitioner relies on Exhibit 1034 for its motivation to combine
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`the prior art. Indeed, Petitioner argues that Exhibit 1034 implies a “requirement for
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`operational clearance” in the prior art, and thus, a person of ordinary skill in the art
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`would allegedly add guide members to prevent misalignment or tilting of the locking
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`gear. See Ex. 1033 (von Alten Declaration) at 14. Thus, Petitioner relies on Exhibit
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`1034 for more than a showing of the state of the art, and cannot improperly
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`incorporate postdated Exhibit 1034 and related arguments by reference.
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`Accordingly, Exhibit 1034 should be excluded from the record.
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`IV. CONCLUSION
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`Because Exhibit 1034 cannot support Petitioner’s grounds submitted in the
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`Petition, Exhibit 1034 is irrelevant under FRE 401-402. Further, since Exhibit 1034
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`is not prior art, and Petitioner is using it to imply that certain features existed in the
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`prior art, Exhibit 1034 is unduly prejudicial under FRE 403.
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`June 4, 2019
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`Respectfully,
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`/Eliot D. Williams/
`Eliot D. Williams
`Reg. No. 50,822
`1001 Page Mill Road
`Building One, Suite 200
`Palo Alto, CA 94304
`Phone: (650) 739-7511
`Facsimile: (650) 739-7611
`eliot.williams@bakerbotts.com
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on the 4th day
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`of June 2019, a complete and entire copy of this Reply to Opposition to Motion to
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`Exclude was filed with the PTAB through its E2E system and served via email on
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`attorneys of record for Sony at the following address:
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`Richard F. Giunta
`RGiunta-PTAB@wolfgreenfield.com
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`Michael N. Rader
`MRader-PTAB@wolfgreenfield.com
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`Randy J. Pritzker
`RPritzker-PTAB@wolfgreenfield.com
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`Nathan Speed
`Nathan.Speed@WolfGreenfield.com
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`Respectfully submitted,
`BAKER BOTTS LLP
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`June 4, 2019
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`/Eliot D. Williams/
`Eliot D. Williams
`Reg. No. 50,822
`1001 Page Mill Road
`Building One, Suite 200
`Palo Alto, CA 94304
`Phone: (650) 739-7511
`Facsimile: (650) 739-7611
`eliot.williams@bakerbotts.com
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`FUJIFILM CORPORATION
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