Paper No. 22
`Filed: April 10, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GRÜNENTHAL GMBH,
`
`Petitioner
`
`v.
`
`ANTECIP BIOVENTURES II LLC,
`
`Patent Owner.
`____________
`
`PGR2019-00028
`U.S. Patent No. 10,052,338
`____________
`
`PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE
`
`
`Filed: April 10, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GRÜNENTHAL GMBH,
`
`Petitioner
`
`v.
`
`ANTECIP BIOVENTURES II LLC,
`
`Patent Owner.
`____________
`
`PGR2019-00028
`U.S. Patent No. 10,052,338
`____________
`
`PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE
`
`
`
`TABLE OF CONTENTS
`
`II. Dr. Poree’s Declaration (Ex. 1004) Is Based Upon Admissible
`
`Evidence........................................................................................................... 1
`
`III-VII. Exhibits 1006-1010 Are Not Inadmissible Hearsay .................................... 1
`
`IX. Exhibits 1040, 1043, 1044, 1045, and 1046 Are Not “Untimely” ..................... 6
`
`VIII/X. Exhibits 1038 and 1040 Are Relevant to Corroborate
`
`Varenna 2011’s Publication Date .................................................................. 10
`
`XI. Exhibit 1043 Is Relevant to Show Muratore Is Prior Art and Is
`
`Based Upon the Declarant’s Personal Knowledge and
`
`Experience ..................................................................................................... 11
`
`XII. Exhibit 1044 Is Relevant to Show Gatti Is Prior Art ...................................... 12
`
`XIII. Exhibits 1045 and 1046 Are Relevant to Show Varenna 2011 Is
`
`Prior Art and Are Not Inadmissible Hearsay ................................................ 13
`
`Conclusion ............................................................................................................... 15
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`Cases
`Apple Inc. v. VirnetX Inc.,
`IPR2016-00332, Paper 29 (P.T.A.B. June 22, 2017) ...................................... 3
`EMC Corp. v. PersonalWeb Techs., LLC,
`IPR2013-00086, Paper 66 (P.T.A.B. May 15, 2014) ...................................... 4
`Ericsson Inc. v. Intellectual Ventures I LLC,
`IPR2014-00527, Paper 41 (P.T.A.B. May 18, 2015) ............................. 2, 3, 4
`Genzyme Therapeutic Prods. Ltd. P’ship v. Biomarin Pharm. Inc.,
`825 F.3d 1360 (Fed. Cir. 2016) .....................................................................10
`GoPro, Inc. v. Contour IP Holding LLC,
`908 F.3d 690 (Fed. Cir. 2018) .......................................................................13
`Grünenthal GmbH v. Antecip Bioventures II LLC,
`PGR2018-00062, Paper 32 (P.T.A.B. Oct. 29, 2019) ...................... 5, 6, 7, 10
`Grünenthal GmbH v. Antecip Bioventures II LLC,
`PGR2018-00092, Paper 24 (P.T.A.B. Feb. 25, 2020) .................................6, 7
`Hulu, LLC v. Sound View Innovations, LLC,
`IPR2018-01039, Paper 29 (P.T.A.B. Dec. 20, 2019) ............................. 6, 7, 8
`Jazz Pharms., Inc. v. Amneal Pharms., LLC,
`895 F.3d 1347 (Fed. Cir. 2018) .............................................................. 12, 13
`Joy Techs., Inc. v. Manbeck,
`751 F. Supp. 225 (D.D.C. 1990), aff’d, 959 F.2d 226 (Fed. Cir. 1992) .......... 6
`Motorola Mobility LLC v. Intellectual Ventures I LLC,
`IPR2014-00501, Paper 48 (P.T.A.B. Sept. 9, 2015) ....................................... 7
`Statutes
`28 U.S.C. § 1746 ......................................................................................................15
`Rules
`Fed. R. Evid. 401 ........................................................................................ 10, 11, 12
`
`ii
`
`
`
`Fed. R. Evid. 402 .....................................................................................................12
`Fed. R. Evid. 602 .....................................................................................................12
`Fed. R. Evid. 803(17) .............................................................................................2, 3
`Fed. R. Evid. 803(18) ................................................................................................. 5
`Fed. R. Evid. 807 .................................................................................................3, 15
`Regulations
`37 C.F.R. § 42.223 ..................................................................................................... 8
`37 C.F.R. § 42.23 ....................................................................................................... 8
`
`iii
`
`
`
`II. Dr. Poree’s Declaration (Ex. 1004) Is Based Upon Admissible Evidence
`Patent Owner does not challenge Dr. Poree’s qualifications as an expert in
`
`this PGR, and as the only expert testifying in this PGR, his opinions stand
`
`unrebutted. Instead, Patent Owner resorts to attempting to exclude Dr. Poree’s
`
`declaration by alleging that the prior art references he relies on are inadmissible.
`
`As discussed below, the Varenna 2011 (Ex. 1006), Muratore (Ex. 1007), Gatti (Ex.
`
`1008), Harden (Ex. 1009), and Drummond (Ex. 1010) references Dr. Poree relies
`
`upon are all admissible. As a result, there is no basis for excluding Dr. Poree’s
`
`declaration.
`
`III-VII. Exhibits 1006-1010 Are Not Inadmissible Hearsay
`Patent Owner contends that certain “date information appearing on the face
`
`of” Exhibits 1006-1010, Petitioner’s principal prior art references, should be
`
`excluded as inadmissible hearsay. The statements in question appear in the table
`
`below.
`
`Reference Periodical
`Journal
`
`Publisher
`
`“Date Information”
`Statements
`
`Varenna
`2011
`(Ex. 1006)
`
`Giornale
`Italiano di
`Ortopedia e
`Traumatologia
`
`Muratore
`(Ex. 1007)
`
`Progressi in
`Reumatologia
`
`Pacini Editore
`SRL
`
`Collegio dei
`Reumatologi
`Ospedalieri
`
` “OTTOBRE 2011”
` “ARTICOLO ORGINALE”
` “Ricevuto il 15 luglio 2011”
` “Accettato il 30 agosto2011”
` “S/2004”
` “2004-07-19”
` “Volume 5”
` “Supplemento 1/2004”
`
`1
`
`
`
`Gatti
`(Ex. 1008)
`
`Expert Opinion
`on Drug
`Metabolism &
`Toxicology
`
`Informa UK
`Ltd., Taylor &
`Francis
`
`Harden
`(Ex. 1009)
`
`Pain
`
`Elsevier B.V.
`
`Drummond
`(Ex. 1010)
`
`Pain Medicine Wiley
`Periodicals,
`Inc.
`
` “2004 Issue 1 Supplement”
` “Maratea (PZ), 16-18 aprile
`2004”
` “Published online: 17 Sep
`2009”
` “© 2009 Informa UK Ltd”
`
` “PAIN 150 (2010) 268-274”
` “Received 18 November
`2009”
` “Received in revised form
`19 March 2010”
` “Accepted 20 April 2010”
` “© 2010 International
`Association for the Study of
`Pain.”
` “Pain Medicine 2010”
`
`The date information on the faces of Exhibits 1006-1010 is admissible
`
`because it falls within at least three hearsay exceptions. First, the statements are
`
`admissible under Federal Rule of Evidence 803(17), which applies to “lists,
`
`directories, or other compilations that are generally relied on by the public or by
`
`persons in particular occupations.” See Ericsson Inc. v. Intellectual Ventures I
`
`LLC, IPR2014-00527, Paper 41 at 10-11 (P.T.A.B. May 18, 2015) (“Ericsson”)
`
`(finding information published on the copyright line of an IEEE publication met
`
`Fed. R. Evid. 803(17)). The unrebutted testimony of Plaintiffs’ expert Dr. Poree
`
`establishes that a POSA would have relied upon the publication dates printed on
`
`2
`
`
`
`the faces of the references and concluded that they were published no later than
`
`those printed dates. See Ex. 1004 ¶¶39-40, 46, 50, 60, 72. In addition, the Board
`
`may take judicial notice of the fact that, absent any evidence to the contrary, a
`
`POSA would have relied upon the publication dates appearing on what are clearly
`
`articles published in periodical scientific journals. See Ericsson at 10-11. As a
`
`result, Exhibits 1006-1010 are admissible under Rule 803(17).
`
`Second, the date information is alternatively admissible under the residual
`
`exception of Federal Rule of Evidence 807. See id. at 11-12. Rule 807 provides
`
`that a hearsay statement is admissible if (1) it “is supported by sufficient
`
`guarantees of trustworthiness—after considering the totality of circumstances
`
`under which it was made and evidence, if any, corroborating the statement;” and
`
`(2) “it is more probative on the point for which it is offered than any other
`
`evidence that the proponent can obtain through reasonable efforts.”
`
`Here, the date information in question has the required circumstantial
`
`guarantees of trustworthiness because the publication dates were affixed to articles
`
`in periodical scientific journals long before the instant dispute began by wholly
`
`disinterested parties. See Apple Inc. v. VirnetX Inc., IPR2016-00332, Paper 29 at
`
`84 (P.T.A.B. June 22, 2017). Further establishing its trustworthiness Dr. Poree,
`
`has testified that a POSA would have relied upon and credited the date
`
`information. See Ex. 1004 ¶¶39-40, 46, 50, 60, 72. Plaintiff has also provided
`
`3
`
`
`
`evidence corroborating the date information appearing on the face of Exhibits
`
`1006, 1007, and 1008 in the form of declarations made by persons with knowledge
`
`showing that the references were publicly accessible on the dates printed on the
`
`references. And the publication dates, copyright dates, and other date information
`
`appearing on the face of each reference itself are more probative on the point of
`
`establishing when Exhibits 1006-1010 were made publicly accessible than any
`
`other evidence that Petitioner could have obtained through reasonable efforts. See
`
`Ericsson at 11-12. After all, the very purpose of such publication dates is to
`
`indicate to readers the date upon which a scientific journal article was made
`
`accessible to the public.1 Thus, Exhibits 1006-1010 are admissible under Rule 807.
`
`In fact, in deciding a similar issue in a related PGR, a panel of this Board
`
`accepted Petitioner’s position that the publication and copyright dates appearing on
`
`the face of an article published in a known periodical journal by a known publisher
`
`satisfied the requirements of Rules 803(17) and 807. Grünenthal GmbH v. Antecip
`
`1 Notably, Patent Owner has not objected to the computer-generated date/time
`
`stamp appearing on the cover of Muratore indicating when it received by the NLM.
`
`Such a computer-generated date/time stamp cannot constitute hearsay because it
`
`was not “uttered by a person.” See EMC Corp. v. PersonalWeb Techs., LLC,
`
`IPR2013-00086, Paper 66 at 32-33 (P.T.A.B. May 15, 2014).
`
`4
`
`
`
`Bioventures II LLC, PGR2018-00062, Paper 32 at 12 (P.T.A.B. Oct. 29, 2019).
`
`This proceeding presents similar facts and the Board should reach the same
`
`conclusion here.
`
`Finally, the date information is also admissible under Federal Rule of
`
`Evidence 803(18) as “statement[s] contained in a treatise, periodical, or pamphlet.”
`
`Such statements are admissible when the statement is “relied on by the expert on
`
`direct examination” and “the publication is established as a reliable authority by
`
`the expert’s admission or testimony, by another expert’s testimony, or by judicial
`
`notice.” Dr. Poree relied upon the date information on the face of Exhibits 1006-
`
`1010 and opined that a POSA would have credited and relied upon the date
`
`information as well, establishing the date information as coming from a reliable
`
`authority. See Ex. 1004 ¶¶39-40, 46, 50, 60, 72. Thus, the date information is also
`
`admissible under Rule 803(18).
`
`In addition, Patent Owner’s motion purports to “request[] exclusion of at
`
`least the date information appearing on the face of” Exhibits 1006-1010. Motion
`
`at 2-5 (emphasis added). This suggests that Patent Owner requests exclusion of
`
`other, unspecified portions of Exhibits 1006-1010, or the exhibits in their entirety.
`
`But Patent Owner does not even purport to provide a basis for excluding other
`
`portions of the documents. Indeed, the substantive disclosures of these references
`
`are plainly not hearsay because they are offered as part of the prior art for what
`
`5
`
`
`
`they teach and suggest to a POSA, not for the truth of the matters asserted therein.
`
`Joy Techs., Inc. v. Manbeck, 751 F. Supp. 225, 233 n.2 (D.D.C. 1990), aff’d, 959
`
`F.2d 226 (Fed. Cir. 1992) (prior art is “offered simply as evidence of what it
`
`describes, not for proving the truth of the matters addressed in the document”).
`
`Thus, there is no basis for Patent Owner’s apparent request to exclude Exhibits
`
`1006-1010 in their entirety.2
`
`IX. Exhibits 1040, 1043, 1044, 1045, and 1046 Are Not “Untimely”
`For the third time in the series of PGRs between these parties, Patent Owner
`
`argues that evidence submitted with Petitioner’s Reply to the Patent Owner’s
`
`Response (“POR”) is “untimely.” See Grünenthal, PGR2018-00062, Paper 32 at
`
`13; Grünenthal GmbH v. Antecip Bioventures II LLC, PGR2018-00092, Paper 24
`
`at 3-4 (P.T.A.B. Feb. 25, 2020). Each time Patent Owner has argued that the
`
`Board should not receive evidence submitted with Petitioner’s Reply that directly
`
`rebuts Patent Owner’s post-institution attorney argument that references cited in
`
`2 Whether a reference qualifies as a prior art printed publication is not an
`
`evidentiary issue, but rather a substantive determination made after an inquiry into
`
`the totality of the facts and circumstances surrounding a reference. See Hulu, LLC
`
`v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 9 (P.T.A.B. Dec. 20,
`
`2019) (precedential) (“Hulu”).
`
`6
`
`
`
`the Petition do not qualify as prior art printed publications. The Board rejected
`
`similar arguments in PGR2018-00062 and PGR2018-00092 and it should do the
`
`same here. See id.
`
`It is well-established that “if the patent owner challenges a reference’s status
`
`as a printed publication, a petitioner may submit a supporting declaration with its
`
`reply to further support its argument that a reference qualifies as a printed
`
`publication.” Hulu at 15; see also Motorola Mobility LLC v. Intellectual Ventures
`
`I LLC, IPR2014-00501, Paper 48 at 15-17 (P.T.A.B. Sept. 9, 2015). Contrary to
`
`Patent Owner’s arguments, “[t]he standard is not whether Petitioner could have
`
`raised the arguments or evidence in the Petition, but whether they respond to
`
`arguments raised by Patent Owner.” Grünenthal, PGR2018-00092, Paper 24 at 3.
`
`Here, as in PGR2018-00092, Patent Owner did not file a Preliminary
`
`Response and the Board instituted trial on all claims. See Paper 6, Decision to
`
`Institute at 10-23, 25-29. Upon institution, the Board concluded that, based on the
`
`evidence before it, Petitioner made a threshold showing that the cited references
`
`were invalidating prior art printed publications. See id. Then, for the first time in
`
`the POR, Patent Owner argued that Petitioner failed to prove that the cited non-
`
`patent references qualified as prior art printed publications. Petitioner directly
`
`rebutted these arguments in its Reply and submitted Exhibits 1040, 1043, 1044,
`
`1045, and 1046 in support of those arguments as further evidence showing that the
`
`7
`
`
`
`Gatti, Varenna 2011, and Muratore references were publicly accessible before the
`
`critical date. Thus, this evidence is timely and proper.
`
`Patent Owner’s contention that a motion to submit supplemental information
`
`under 37 C.F.R. § 42.223 is required is also meritless. Reply evidence and
`
`supplemental information are two completely separate mechanisms for submitting
`
`evidence. Hulu at 12-15; 37 C.F.R. §§ 42.23, 42.223. The former requires only
`
`that the evidence “be responsive to the prior briefing” and no motion is necessary.
`
`Hulu at 12. Only “if a patent owner does not challenge the reference’s status as a
`
`printed publication” must Petitioner “move to submit the [evidence] through the
`
`supplemental information process.” Id. at 15 (emphasis added).
`
`With respect to Exhibits 1040, 1045, and 1046, Patent Owner accuses
`
`Petitioner of changing its theory of public accessibility of the Varenna 2011
`
`reference from “availability” to “dissemination.” But this is plainly false. To the
`
`extent that “availability” and “dissemination” are separate and distinct concepts as
`
`Patent Owner contends, Petitioner has consistently maintained that Varenna 2011
`
`was both “disseminated” as a journal article and made “available” on the internet.
`
`This is made clear in Dr. Lawrence Poree’s expert declaration at paragraph 40,
`
`which is discussed and cited in the Petition (Paper 2, “Pet.”) at page 27:
`
`Varenna 2011 is an article published in volume 5,
`October 2011 of . . . the “Italian Journal of Orthopedics
`and Traumatology.” Exhibit 1006. An electronic copy of
`8
`
`
`
`Varenna 2011 can also be found on the GIOT which
`confirms its original publication date. Exhibit 1038.
`Based on the publication date printed on Varenna 2011,
`which is confirmed by the website, a POSA would have
`concluded that Varenna 2011 was published no later than
`October 2011.
`Ex. 1004 ¶40. Thus, Petitioner’s arguments have not changed. Petitioner’s Reply
`
`evidence is further support for its original contention that “Varenna 2011 is an
`
`article published in volume 5, October 2011 of ‘Italian Journal of Orthopedics and
`
`Traumatology’” and “[a]n electronic copy of Varenna 2011 can also be found on
`
`the GIOT website which confirms its original publication date.” Pet. at 27.
`
`Finally, Patent Owner’s accusations of “unfairness” and “lack of notice” are
`
`disingenuous and unavailing. Patent Owner had the opportunity to respond—and
`
`did, in fact, respond—to Petitioner’s Reply arguments and evidence in its Sur-
`
`Reply. It also could have deposed any of Petitioner’s declarants but chose not to.
`
`In fact, Patent Owner has even chosen to forego the deposition of Dr. Poree in this
`
`and several related proceedings. There certainly is no indication that Patent Owner
`
`had any desire whatsoever to depose any of the declarants here and, therefore,
`
`cannot genuinely now assert prejudice. Similarly, if time or space were issues,
`
`Patent Owner could have requested more pages or additional time for its Sur-
`
`Reply, yet it did not.
`
`Patent Owner cannot now complain of unfairness or lack of notice. Indeed,
`9
`
`
`
`“[t]he introduction of new evidence in the course of the [P.T.A.B.] trial is to be
`
`expected . . . and, as long as the opposing party is given notice of the evidence and
`
`an opportunity to respond to it, the introduction of such evidence is perfectly
`
`permissible.” Genzyme Therapeutic Prods. Ltd. P’ship v. Biomarin Pharm. Inc.,
`
`825 F.3d 1360, 1366 (Fed. Cir. 2016). This Patent Owner in particular should have
`
`known that such Reply evidence was proper based on the Board’s decision to
`
`admit similar evidence in PGR2018-00062 on October 29, 2019. For all of the
`
`foregoing reasons, Exhibits 1040 and 1043-1046 are timely and proper reply
`
`evidence and Patent Owner’s motion to exclude them should be denied.
`
`VIII/X. Exhibits 1038 and 1040 Are Relevant to Corroborate Varenna 2011’s
`Publication Date
`Patent Owner objects to Exhibits 1038 and 1040 solely on relevance
`
`grounds. “Evidence is relevant if it has any tendency to make a fact more or less
`
`probable than it would be without the evidence” and “the fact is of consequence in
`
`determining the action.” Fed. R. Evid. 401. Petitioner and its expert Dr. Poree
`
`relied upon Exhibit 1038 as evidence corroborating the October 2011 publication
`
`date printed on the face of Varenna 2011 (Ex. 1006). Exhibit 1038 is a printout
`
`from the GIOT journal website indicating that the Varenna 2011 article appeared
`
`in the fifth volume of GIOT published in 2011. The website links to a PDF of the
`
`Varenna article, also included in Exhibit 1038, that contains the October 2011
`
`publication date. Exhibit 1040 provides similar information showing Varenna was
`10
`
`
`
`published in a 2011 issue of GIOT. Regardless of when the websites were
`
`retrieved or when the content was uploaded, the exhibits provide further probative,
`
`independent evidence tending to support the fact that Varenna 2011 was, in fact,
`
`published in October 2011. At best, Patent Owner’s arguments go to the weight to
`
`be afforded the evidence and are improper in an evidentiary motion to exclude.
`
`Thus, Patent Owner’s motion to exclude Exhibits 1038 and 1040 as irrelevant
`
`should be denied.
`
`XI. Exhibit 1043 Is Relevant to Show Muratore Is Prior Art and Is Based
`Upon the Declarant’s Personal Knowledge and Experience
`Patent Owner objects to Exhibit 1043, the Declaration of David E. Cannady,
`
`on relevance grounds, but it is plainly relevant to the issue of whether the Muratore
`
`reference (Ex. 1007) is a prior art printed publication. Mr. Cannady testified that
`
`he was able to retrieve a copy of the Muratore reference from the National Library
`
`of Medicine (NLM) in December 2017. He further testifies that the copy of the
`
`document he retrieved bore a time and date stamp indicating that the document
`
`would have been similarly accessible to the public within seven to ten days of July
`
`19, 2004. This evidence clearly makes it more probable that Muratore qualifies as
`
`a prior art printed publication. See Fed. R. Evid. 401. Patent Owner’s contentions
`
`that Mr. Cannady’s testimony, which avers that the reference was available at the
`
`NLM before the critical date, says nothing about its accessibility to a POSA is
`
`nonsensical. Moreover, Patent Owner’s contentions that the evidence must show
`11
`
`
`
`that Muratore was “indexed” or locatable via a “subject matter search” are
`
`requirements of Patent Owner’s own creation that find no support in the law. See
`
`Jazz Pharms., Inc. v. Amneal Pharms., LLC, 895 F.3d 1347, 1359 (Fed. Cir. 2018)
`
`(indexing or searchability is not required for a reference to qualify as a printed
`
`publication). As with its other relevance objections, Patent Owner appears to be
`
`using its motion to exclude as an additional opportunity to argue about the weight
`
`the Board should give certain evidence, which is completely improper in an
`
`evidentiary motion to exclude.
`
`Citing Rule 602, Patent Owner next accuses Mr. Cannady of making
`
`statements in his declaration without personal knowledge. But Mr. Cannady
`
`expressly stated that his declaration was based upon his personal knowledge and
`
`experience (Ex. 1043 ¶¶10-11), and he testified based upon his “nearly forty years
`
`of experience retrieving articles from the NLM” and his personal understanding
`
`of NLM procedures (id. ¶7, emphasis added). Patent Owner could have deposed
`
`Mr. Cannady if it wished to test or question the basis for his knowledge and
`
`understanding, but chose not to. In sum, Exhibit 1043 is admissible under Rules
`
`401, 402, and 602 and Patent Owner’s motion to exclude it should be denied.
`
`XII. Exhibit 1044 Is Relevant to Show Gatti Is Prior Art
`Patent Owner objects to Exhibit 1043, the Declaration of Corinne Militello,
`
`Esq. on relevance grounds, but it is plainly relevant to the issue of whether the
`
`12
`
`
`
`Gatti reference (Ex. 1008) is a prior art printed publication. Ms. Militello testifies
`
`that Gatti was publicly accessible on September 7, 2009 based on her personal
`
`knowledge of the publisher’s practices for uploading documents to its website and
`
`affixing publication dates. The relevance of this testimony to Gatti’s prior art
`
`status cannot be seriously disputed.
`
`Patent Owner again argues, without support, that the evidence fails to satisfy
`
`fictitious requirements such as a showing “index[ing]” or “that the website was one
`
`to which persons of ordinary skill in the art would have turned when researching
`
`the subject matter of the patent at issue before the priority date.” As discussed
`
`above, indexing is not required. See Jazz, 895 F.3d at 1359. And the law certainly
`
`does not require a showing that a source was popular or a “go-to” among those of
`
`skill in the art because even relatively obscure documents qualify as prior art so
`
`long as the relevant public has a means of accessing them. GoPro, Inc. v. Contour
`
`IP Holding LLC, 908 F.3d 690, 693 (Fed. Cir. 2018). In any event, Patent Owner’s
`
`arguments, at best, go to the weight to be afforded the evidence, not its
`
`admissibility. Exhibit 1044 is plainly relevant and Patent Owner’s motion to
`
`exclude it should be denied.
`
`XIII. Exhibits 1045 and 1046 Are Relevant to Show Varenna 2011 Is Prior
`Art and Are Not Inadmissible Hearsay
`Patent Owner objects to Exhibits 1045 and 1046, the Declaration of Antonio
`
`Tarquini and the Declaration of Pacini Editore SRL from Susanna Campigli on
`13
`
`
`
`relevance grounds, but these exhibits are relevant to the issue of whether the
`
`Varenna 2011 reference (Ex. 1006) is a prior art printed publication. The Tarquini
`
`and Pacini Editore declarations establish that Varenna 2011 was both disseminated
`
`at the Rimini Convention Center on 26 September 2011 and was sent by mail to
`
`the subscription list of SIOT Members in October of 2011. Patent Owner’s
`
`arguments that this evidence fails to make it more probable than not that Varenna
`
`2011 is prior art are untenable. Indeed, Patent Owner again invents entirely novel
`
`and unsupported requirements for showing that a reference is a printed publication,
`
`including the “position[ing]” of the publisher’s stand where the references were
`
`distributed, that the reference was “publicized,” or “announced,” and that
`
`conference attendees would “understand” the reference’s teachings. In any event,
`
`Petitioner completely ignores the fact that in addition to being disseminated at the
`
`conferences, the journal issue containing Varenna 2011 was also publicly
`
`disseminated to the journal’s subscribers.
`
`Also irrelevant are Patent Owner’s comments that neither declarant “purport
`
`to be persons having ordinary skill in the art.” Setting aside again Patent Owner’s
`
`misbelief that a person of ordinary skill in the art is not a hypothetical construct,
`
`such is certainly not a qualification for someone to act as a declarant setting forth
`
`evidence establishing that a reference is in fact prior art.
`
`14
`
`
`
`Last, the fact that the Pacini Editore declaration is not a sworn declaration
`
`under 28 U.S.C. § 1746 does not render it inadmissible as it falls under the residual
`
`exception of Fed. R. Evid. 807. Rule 807 provides that a hearsay statement is
`
`admissible if (1) it “is supported by sufficient guarantees of trustworthiness—after
`
`considering the totality of circumstances under which it was made and evidence, if
`
`any, corroborating the statement;” and (2) “it is more probative on the point for
`
`which it is offered than any other evidence that the proponent can obtain through
`
`reasonable efforts.”
`
`Here, the date information in question has the required circumstantial
`
`guarantees of trustworthiness because the extremely detailed factual information
`
`regarding the public dissemination of Varenna 2011 were provided by a
`
`disinterested representative of the editor of the publication. Moreover, Petitioner is
`
`not in a position where it can obtain more probable evidence of the dissemination
`
`beyond the information set forth on the face of Varenna 2011 itself and the
`
`journal’s website through reasonable efforts. Thus, Exhibits 1045 and 1046 are
`
`admissible under Rule 807.
`
`Conclusion
`For the foregoing reasons, Petitioner respectfully requests that the Board
`
`Deny Patent Owner’s Motion to Exclude in its entirety.
`
`15
`
`
`
`Dated: April 10, 2020
`
`By: /Daniel J. Minion/
`Daniel J. Minion (Reg. No. 53,329)
`VENABLE LLP
`1290 Avenue of the Americas
`New York, NY 10104
`Tel: 212-218-2538
`Fax: 212-218-2200
`dminion@venable.com
`
`16
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that copies of Petitioner’s Opposition to Patent
`
`Owner’s Motion to Exclude were served on April 10, 2020 as follows:
`
`VIA ELECTRONIC MAIL
`
`Brent A. Johnson (Reg. No. 51,851)
`Maschoff Brennan
`100 Spectrum Center Dr.
`Ste. 1200
`Irvine, CA 92618
`Tel: 949-202-1900
`Fax: 949-453-1104
`bjohnson@mabr.com
`
`R. Parrish Freeman (Reg. No. 42,556)
`Maschoff Brennan
`1389 Center Drive, Suite 300
`Park City, UT 84098
`Tel: 435-252-1360
`pfreeman@mabr.com
`
`Dated: April 10, 2020
`
`By: /Daniel J. Minion/
` Daniel J. Minion
` Reg. No. 53,329
`
`
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