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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.
`_____________
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`Case No. IPR2018-00877
`Patent No. 6,462,905 B1
`_____________
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`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION TO EXCLUDE
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`As the Board is aware, Patent Owner Fujifilm Corporation (“Fujifilm”) and
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`Petitioner Sony Corporation (“Sony”) are currently involved in two IPR trials
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`before the Board concerning U.S. Patent No. 6,462,905: IPR No. 2018-00876 and
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`IPR No. 2018-00877. Because the same claims and the same patent are involved
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`in each of the -00876 and -00877 trials and to avoid potential confusion from
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`overlapping or mismatched exhibit numbering between the two trials, Sony has
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`introduced into each proceeding the same exhibits. In other words, Exhibits 1001
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`to 1037 are the same in each proceeding.
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`The lone exhibit that Fujifilm seeks to exclude in this trial is Exhibit 1034
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`(“the ECMA 319 Standard”). As explained in Sony’s Opposition to Fujifilm’s
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`Motion to Exclude in the co-pending -00876 trial, Exhibit 1034 is highly relevant
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`to disputed issues in that trial. Those issues, however, are unique to the -00876
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`trial, and Sony does not rely on Exhibit 1034 in this trial. Fujifilm also did not cite
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`or otherwise discuss Exhibit 1034 in its papers for this trial. As neither party relies
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`on Exhibit 1034 for an issue in this trial, the Board has no need to rely on the
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`exhibit when issuing a final written decision in this trial and Fujifilm’s motion to
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`exclude should thus be denied as moot. E.g., Merck Sharp & Dohme Corp. v.
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`Wyeth LLC, IPR2017-00390, 2018 WL 2943368, at *24 (PTAB June 8, 2018)
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`(“Accordingly, because we have not reached the merits of Patent Owner’s
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`evidence of secondary considerations of nonobviousness, we dismiss Petitioner’s
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`Motion to Exclude regarding those exhibits as moot.”); Apple, Inc. v. VirnetX Inc.,
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`No. IPR2015-00868, 2016 WL 6595312, at *24 (PTAB Sept. 28, 2016) (denying
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`motion to exclude evidence: “because we do not rely on any evidence subject to
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`the motion, the listed exhibits are irrelevant and we dismiss this request as moot”),
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`aff’d, 715 Fed. Appx. 1024 (Fed. Cir. 2018).
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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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`2
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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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