throbber
Filed on behalf of Intellectual Ventures II LLC
`By: Herbert D. Hart III
`David Z. Petty
`McAndrews, Held & Malloy, Ltd.
`500 W. Madison St., 34th Floor
`Chicago, IL 60661
`Tel: 312-775-8000
`Fax: 312-775-8100
`E-mail:
`hhart@mcandrews-ip.com
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`CANON INC.
`Petitioner
`
`v.
`
`INTELLECTUAL VENTURES II LLC
`Patent Owner
`_____________
`Case IPR2014-006311
`Patent No. 7,817,914
`_____________
`
`PATENT OWNER MOTION TO EXCLUDE EVIDENCE
`
`
`
`1 Case IPR2014-00632 has been consolidated with the instant proceeding.
`
`

`

`Patent Owner Motion To Exclude Evidence
`IPR2014-00631
`
`TABLE OF CONTENTS
`
`
`
`
`I. 
`
`II. 
`
`SUMMARY OF ARGUMENT ....................................................................... 1 
`
`EXCERPTS FROM DR. BOVIK’S CROSS-EXAMINATION
`TESTIMONY (EXHIBIT 1018) SHOULD BE EXCLUDED ....................... 1 
`
`A.  Dr. Bovik’s Cross-Examination Testimony at 71:1 to 73:18,
`90:1 to 95:25, and 175:15 to 176:24 ..................................................... 2 
`
`B. 
`
`Dr. Bovik’s Cross-Examination Testimony at 71:9 to 84:12,
`86:10 to 87:3, 87:20 to 88:10, and 90:1 to 96:12 .................................. 4 
`
`C. 
`
`Dr. Bovik’s Cross-Examination Testimony at 212:20 to 213:3 ........... 6 
`
`D.  Dr. Bovik’s Cross-Examination Testimony at 221:16 to 225:20 ......... 7 
`
`E. 
`
`F. 
`
`Dr. Bovik’s Cross-Examination Testimony at 38:19 to 39:13 ............. 8 
`
`Dr. Bovik’s Cross-Examination Testimony at 54:6–18 ........................ 9 
`
`III. 
`
`PARAGRAPHS 9-28, 32-38, 42, 48-50, 54-55, 58-59, and 62-65 OF
`DR. STEVENSON’S REBUTTAL DECLARATION AND EXHIBIT
`1019 SHOULD BE EXCLUDED ................................................................... 9 
`
`A. 
`
`B. 
`
`Paragraphs 9–28 of the Rebuttal Declaration and Ex. 1019 ............... 10 
`
`Paragraphs 32–38, 42, 48–50, 54–55, 58–59, and 62–65 of the
`Rebuttal Declaration ............................................................................ 13 
`
`IV.  CONCLUSION .............................................................................................. 15 
`
`
`
`
`
`
`
`
`
`
`
`
`
`i
`
`

`

`Patent Owner Motion To Exclude Evidence
`IPR2014-00631
`
`
`Cases 
`
`TABLE OF AUTHORITIES
`
`
`
`Union Oil Co. v. Atlantic Richfield Co.,
`208 F.3d 989 (Fed. Cir. 2000) .............................................................................. 11
`
`Other Authorities 
`
`77 Fed. Reg. 48612 (Aug. 14, 2012) .......................................................... 10, 12, 14
`
`Rules 
`
`37 C.F.R. § 42.23(b) ................................................................................... 10, 12, 14
`
`37 C.F.R. § 42.64 ....................................................................................................... 1
`
`37 CFR § 42.53(d)(5)(ii) ............................................................................................ 2
`
`Fed. R. Evid. 611(b) ................................................................................................... 2
`
`
`
`
`
`
`
`
`
`ii
`
`

`

`Patent Owner Motion To Exclude Evidence
`IPR2014-00631
`
`I.
`
`SUMMARY OF ARGUMENT
`
`
`
`The Board should exclude inadmissible evidence filed with Petitioner’s
`
`Reply.
`
`A question asked on cross-examination must not exceed the scope of direct
`
`testimony. Petitioner examined Patent Owner’s expert, Dr. Alan Bovik, on subjects
`
`that were far beyond the scope of Dr. Bovik’s direct testimony. Patent Owner’s
`
`counsel timely objected, and the Board should exclude responses to the questions
`
`on cross-examination that were beyond the scope of Dr. Bovik’s direct testimony.
`
`New testimony not rebutting arguments made in the Patent Owner’s
`
`Response is not permitted in a Rebuttal Declaration. Petitioner relies on new
`
`arguments found in a so-called Rebuttal Declaration from its expert and on a new
`
`exhibit of dictionary definitions. Patent Owner timely objected to this evidence
`
`pursuant to 37 C.F.R. § 42.64. Therefore, the Board should exclude the new
`
`declaration testimony and exhibit.
`
`II. EXCERPTS FROM DR. BOVIK’S CROSS-EXAMINATION
`TESTIMONY (EXHIBIT 1018) SHOULD BE EXCLUDED
`
`During the cross-examination of Dr. Bovik, Petitioner’s counsel repeatedly
`
`asked questions that were outside the scope of Dr. Bovik’s direct declaration
`
`testimony (Ex. 2006). Patent Owner’s counsel timely objected to these questions.
`
`Petitioner used this improperly-elicited testimony in both its Reply and its Rebuttal
`
`Declaration. The Board should exclude argument based on that testimony because
`
`
`
`1
`
`

`

`Patent Owner Motion To Exclude Evidence
`IPR2014-00631
`
`
`the rebuttal testimony is outside the scope of the direct testimony of Dr. Bovik’s
`
`declaration. See Fed. R. Evid. 611(b) (“Cross-examination should not go beyond
`
`the subject matter of the direct examination”); 37 CFR § 42.53(d)(5)(ii) (“For
`
`cross-examination testimony, the scope of the examination is limited to the scope
`
`of the direct testimony.”).
`
`In particular, the following cross-examination testimony (Ex. 1018) upon
`
`which Petitioner relies in its Reply and Petitioner’s expert relies in the Rebuttal
`
`Declaration should be excluded: 38:19 to 39:13, 54:6–18, 71:1 to 84:12, 86:10 to
`
`87:3, 87:20 to 88:10, 90:1 to 96:12, 175:15 to 176:24, 212:20 to 213:3, and 221:16
`
`to 225:20.
`
`A. Dr. Bovik’s Cross-Examination Testimony at 71:1 to 73:18, 90:1
`to 95:25, and 175:15 to 176:24
`
`Petitioner’s Reply argues that Dr. Bovik “admits that some of the disclosed
`
`embodiments [of the ’914 patent] involve threshold levels that a user could not
`
`enter due to their complexity (e.g., for soccer balls, faces, etc.).” Paper 33 at 2–3.
`
`Petitioner seeks to support this argument by relying on the following excerpts from
`
`the Bovik transcript (Exhibit 1018): 71:9 to 73:3, 89:1 to 94:14, and 175:15 to
`
`176:24. Id. at 3. The Rebuttal Declaration of Petitioner’s expert relies on pages 71–
`
`73, 89–95, and 175–176 of the Bovik transcript as support for a similar argument.
`
`See Ex. 1016 at 5–6, 26. For the reasons discussed below, the excerpts at 71:1 to
`
`
`
`2
`
`

`

`Patent Owner Motion To Exclude Evidence
`IPR2014-00631
`
`
`73:18, 90:1 to 95:25, and 175:15 to 176:24 of Dr. Bovik’s cross-examination
`
`testimony should be excluded as being beyond the scope of his direct testimony.
`
`At 71:1 to 73:18 and 90:1 to 95:25 of the transcript, Petitioner’s counsel
`
`repeatedly asked Dr. Bovik if a user could enter a threshold corresponding to an
`
`image trigger condition of a face, animal, or certain person’s voice. See Ex. 1018 at
`
`71:1 to 73:18 and 90:1 to 95:25. This entire line of questioning was outside the
`
`scope of Dr. Bovik’s direct testimony because nothing in Dr. Bovik’s declaration
`
`mentions a user entering a threshold for a trigger condition such as a face, animal,
`
`or person’s voice, or discusses whether an animal or a voice could serve as a
`
`trigger condition. In fact, Dr. Bovik responded to Petitioner’s counsel’s line of
`
`questioning by stating that “I haven’t discussed this in my report” and “I’m not
`
`going to speculate.” Id. at 92:13–16; 95:24–25. Moreover, Patent Owner’s counsel
`
`timely and repeatedly objected to this line of questioning as being beyond the
`
`scope of Dr. Bovik’s declaration. See id. at 71:2, 21; 72:20; 73:9–10; 90:11; 91:14;
`
`92:12; 93:2; 94:5; 94:18; 95:4.
`
`At pages 175:15 to 176:24 of Dr. Bovik’s transcript, Petitioner’s counsel
`
`asked Dr. Bovik if a soccer ball or a smile could be an automatic trigger condition.
`
`See id. at 175:15 to 176:24. This line of questioning was also outside of the scope
`
`of Dr. Bovik’s direct testimony. Dr. Bovik did not testify in his declaration about
`
`whether a soccer ball or smile constitutes a trigger condition, and Dr. Bovik
`
`
`
`3
`
`

`

`Patent Owner Motion To Exclude Evidence
`IPR2014-00631
`
`
`testified on cross-examination that “I haven’t studied it” in response to Petitioner’s
`
`counsel’s questions on this topic. Id. at 176:5–6. Patent Owner’s counsel timely
`
`objected to this line of questioning as being beyond the scope of direct testimony.
`
`See id. at 175:20; 176:4, 16.
`
`Therefore, the Board should exclude the cross-examination testimony at
`
`71:1 to 73:18, 90:1 to 95:25, and 175:15 to 176:24.
`
`B. Dr. Bovik’s Cross-Examination Testimony at 71:9 to 84:12, 86:10
`to 87:3, 87:20 to 88:10, and 90:1 to 96:12
`
`Petitioner’s Reply argues that Dr. Bovik “conclude[s] that the claims [of the
`
`914 patent] exclude embodiments requiring… ‘complex’ thresholds.” Paper 33 at
`
`3. Petitioner relies very generally upon more than 25 pages (69:5 to 96:12) of the
`
`Bovik transcript to support this argument. Id. at 3. The vast majority of that
`
`testimony should be excluded because it is beyond the scope of Dr. Bovik’s direct
`
`testimony. Specifically, as discussed below, the testimony at 71:9 to 84:12, 86:10
`
`to 87:3, 87:20 to 88:10, and 90:1 to 96:12 should be excluded.
`
`For the reasons stated above, Dr. Bovik’s testimony at 71:9 to 73:3 and 90:1
`
`to 94:14 regarding whether a user could enter a threshold corresponding to the
`
`trigger condition of a face or animal should be excluded.
`
`Moreover, at 73:4 to 84:12 and 87:20 to 88:10 of the transcript, Petitioner’s
`
`counsel repeatedly asked Dr. Bovik whether a certain person’s voice could be a
`
`
`
`4
`
`

`

`Patent Owner Motion To Exclude Evidence
`IPR2014-00631
`
`
`trigger condition and whether a threshold associated with such a trigger condition
`
`would be too complex for a user to enter. See Ex. 1018 at 73:4 to 84:12; 87:20 to
`
`88:10. These questions addressed a topic outside the scope of Dr. Bovik’s direct
`
`testimony, which did not address whether a certain person’s voice could be a
`
`trigger condition or whether a user could enter a threshold for such a trigger
`
`condition. Indeed, Dr. Bovik repeatedly responded to this line of questioning by
`
`saying that he did not want to speculate and that he had not researched the issue.
`
`See id. at 75:9–13; 75:22 to 76:5; 76:10–15; 79:1–4; 79:11–12; 79:16–18; 82:5–15;
`
`82:22–24. Furthermore, Patent Owner’s counsel timely and repeatedly objected to
`
`this line of questioning as being beyond the scope of Dr. Bovik’s declaration. See
`
`id. at 73:9–10; 74:23; 75:8, 21; 76:9, 22; 77:5, 14; 78:25; 79:10; 79:15; 80:19;
`
`81:23; 82:4, 21; 84:10; 87:23.
`
`At 86:10 to 87:3 and 94:15 to 96:12 of the transcript, Petitioner’s counsel
`
`asked Dr. Bovik if a “preferred subject” (as that term is used in claim 13 of the 914
`
`patent), and, in particular, an animal, could be detected as a subject in the field of
`
`view of a camera by the process of image matching. See Ex. 1018 at 86:10 to 87:3;
`
`94:15 to 96:23. Again, these questions addressed subject matter outside the scope
`
`of Dr. Bovik’s direct testimony, which did not address whether the “preferred
`
`subject” of claim 13 or an animal could be detected in the field of view of a camera
`
`
`
`5
`
`

`

`Patent Owner Motion To Exclude Evidence
`IPR2014-00631
`
`
`by image matching. Patent Owner’s counsel timely objected to the questions as
`
`being beyond the scope of Dr. Bovik’s declaration. See id. at 86:14; 94:18; 95:4.
`
`Therefore, the testimony at 71:9 to 84:12, 86:10 to 87:3, 87:20 to 88:10, and
`
`90:1 to 96:12 of the Bovik transcript should be excluded.
`
`C. Dr. Bovik’s Cross-Examination Testimony at 212:20 to 213:3
`Petitioner’s Reply cites testimony at 211:15 to 213:3 of the Bovik transcript
`
`in support of its arguments that (1) Dr. Bovik “admits” that the way the Halpern
`
`reference is written “interweaves discussions of single-criterion and multiple
`
`criteria triggers without division” (see Paper 33 at 8), (2) Halpern does not suggest
`
`two separate embodiments (see id. at 10), and (3) Halpern does not discourage the
`
`use of a threshold indicator for single criterion triggers because Halpern’s
`
`discussion of the threshold indicator follows the discussion of the single criterion
`
`triggers (see id. at 11). The testimony at 212:20 to 213:12, however, should be
`
`excluded because it is beyond the scope of Dr. Bovik’s direct testimony.
`
`At 212:20 to 213:3, Petitioner’s counsel asked Dr. Bovik why discussion of
`
`the threshold indicator of a first embodiment in the Halpern prior art reference both
`
`precedes and follows discussion of a second embodiment. See Ex. 1018 at 212:20
`
`to 213:3. Or course, there is no foundation for asking Dr. Bovik why that prior art
`
`reference is written the way it is, and Dr. Bovik did not testify as to its preparation.
`
`Moreover, this question was beyond the scope of Dr. Bovik’s declaration, which
`
`
`
`6
`
`

`

`Patent Owner Motion To Exclude Evidence
`IPR2014-00631
`
`
`did not even mention the topic of why Halpern discusses a threshold indicator of a
`
`first embodiment before and after a discussion of the second embodiment.
`
`Furthermore, during his cross-examination, Dr. Bovik said that he did not know
`
`why Halpern was written the way it was, see id. at 213:2–3, and Patent Owner’s
`
`counsel objected to the scope of this line of questioning. Id. at 213:1.
`
`D. Dr. Bovik’s Cross-Examination Testimony at 221:16 to 225:20
`Petitioner argues in its Reply that Dr. Bovik could not explain why
`
`Halpern’s threshold indicator would be limited to use with multiple triggers and
`
`further argues that Dr. Bovik was evasive in answering questions about his
`
`understanding of the threshold indicator. Paper 33 at 8. Petitioner asserts that these
`
`unfair characterizations of Dr. Bovik’s testimony are supported by 214:22 to
`
`229:18 and 213:4 to 225:20 of the Bovik transcript. Id. at 8. Not only do the cited
`
`excerpts offer no support for those characterizations, but the testimony at 221:16 to
`
`225:20 is inadmissible because it is beyond the scope of Dr. Bovik’s direct
`
`testimony.
`
`At 221:16 to 225:20, Petitioner’s counsel repeatedly asked Dr. Bovik why
`
`the threshold indicator disclosed in Halpern could not be used with the second
`
`Halpern embodiment, which described the use of a single criterion (such as a
`
`couple kissing) as a trigger condition. See Ex. 1018 at 221:16 to 225:20. This line
`
`of questioning was beyond the scope of Dr. Bovik’s direct testimony about what
`
`
`
`7
`
`

`

`Patent Owner Motion To Exclude Evidence
`IPR2014-00631
`
`
`Halpern discloses. Specifically, he testified that Halpern does not disclose that the
`
`threshold indicator is employed in the second embodiment. Ex. 2006 at 168.
`
`Indeed, Dr. Bovik did not testify whether the threshold indicator of Halpern could
`
`be used with a single criterion of the second embodiment. This is clear from Dr.
`
`Bovik’s cross-examination testimony about how he did not “see any explanation
`
`[in Halpern] as to how [the threshold indicator] would be used for embodiment 2”
`
`and “I haven’t studied that question.” See id. at 222:13–16; 225:11.
`
`Patent Owner’s counsel timely and repeatedly objected to this line of
`
`questioning as being beyond the scope of direct. See id. at 221:19; 222:12; 222:23;
`
`223:6; 224:4; 225:3; 225:10. Therefore, the testimony at 221:16 to 225:20 should
`
`be excluded because it is beyond the scope of Dr. Bovik’s direct testimony.
`
`E. Dr. Bovik’s Cross-Examination Testimony at 38:19 to 39:13
`Petitioner’s Reply further argues that Dr. Bovik’s “own . . . book states that
`
`facial recognition relies on the same basic principle of all pattern recognition.”
`
`Paper 33 at 19–20. First, that book was edited by, not written by, Dr. Bovik, and
`
`Petitioner’s counsel acknowledged that the cited section of the book was not
`
`written by Dr. Bovik and did not reflect his opinions. See Ex. 1018 at 37:5–16.
`
`Second, as support for this statement, Petitioner cites 35:20 to 39:13 of the Bovik
`
`transcript. See Paper 33 at 20. Dr. Bovik’s testimony at 38:19 to 39:13, however,
`
`should be excluded as outside the scope of the direct testimony. At that point in the
`
`
`
`8
`
`

`

`Patent Owner Motion To Exclude Evidence
`IPR2014-00631
`
`
`cross-examination, Petitioner’s counsel asked Dr. Bovik whether vector
`
`representation would be used to match images. See Ex. 1018 at 38:19–21. Dr.
`
`Bovik did not testify in his declaration about vector representation being used to
`
`match images, and Patent Owner’s counsel timely objected to the question as being
`
`beyond the scope of Dr. Bovik’s declaration. See id. at 38:22. Accordingly, the
`
`testimony at 38:19 to 39:13 of the Bovik transcript should be excluded.
`
`F. Dr. Bovik’s Cross-Examination Testimony at 54:6–18
`The Rebuttal Declaration (Ex. 1016) cites pages 53 to 54 of the Bovik
`
`transcript as support for Dr. Stevenson’s testimony that Dr. Bovik opined that
`
`facial recognition could not have been achieved at the time the ’914 patent was
`
`filed. See Ex. 1016 at 26. The testimony at 54:6–18, however, should be excluded.
`
`At 54:6–18, Petitioner’s counsel asked Dr. Bovik if “pose variation” is a problem
`
`associated with facial recognition. See Ex. 1018 at 53:21 to 54:7. This question
`
`was beyond the scope of Dr. Bovik’s declaration, because Dr. Bovik did not testify
`
`in his declaration about pose variation or how it relates to facial recognition. Patent
`
`Owner’s counsel timely objected to this question on that ground. See id. at 54:8.
`
`III. PARAGRAPHS 9-28, 32-38, 42, 48-50, 54-55, 58-59, AND 62-65 OF DR.
`STEVENSON’S REBUTTAL DECLARATION AND EXHIBIT 1019
`SHOULD BE EXCLUDED
`
`The Board should exclude paragraphs 9–28, 32–38, 42, 48–50, 54–55, 58–
`
`59, and 62–65 of Dr. Stevenson’s Rebuttal Declaration (Ex. 1016) because they
`
`
`
`9
`
`

`

`Patent Owner Motion To Exclude Evidence
`IPR2014-00631
`
`
`constitute new evidence that could have been presented in Dr. Stevenson’s first
`
`declaration (Ex. 1002). Likewise, Exhibit 1019 should be excluded because it is
`
`new evidence from a dictionary that could have been presented with the Petition.
`
`“A reply may only respond to arguments raised in the… patent owner response.”
`
`37 C.F.R. § 42.23(b). While “replies may rely upon appropriate evidence,” “[r]eply
`
`evidence… must be responsive and not merely new evidence that could have been
`
`presented earlier to support” the petition. See 77 Fed. Reg. 48612, 48620
`
`(Comments regarding 37 C.F.R. § 42.23(b)).
`
`Paragraphs 9–28 of the Rebuttal Declaration and Ex. 1019
`
`A.
`Paragraphs 9 to 28 of Dr. Stevenson’s Rebuttal Declaration (Ex. 1016)
`
`should be excluded because they constitute new—and the only—testimony that Dr.
`
`Stevenson has provided on the issue of claim construction. In his first declaration
`
`(Ex. 1002), Dr. Stevenson evaluated claim 1 in view of each of the Mishima (Ex.
`
`1005), Ono (Ex. 1003), and Halpern (Ex. 1013) references. See Ex. 1002 at ¶¶ 40–
`
`64. Yet, in discussing the patent claim language in view of the prior art, Dr.
`
`Stevenson did not provide a construction for any claim terms in his first
`
`declaration. See Ex. 2007 at 17:6–14 (“I don’t believe I have what you might say is
`
`a separate section on claim interpretation or claim construction….”); see also Ex.
`
`2015 at 24:17 to 28:11, 34:6 to 35:17; 45:14–24. In fact, Dr. Stevenson did not
`
`address the issue of claim construction at all in his first declaration, even though
`
`
`
`10
`
`

`

`Patent Owner Motion To Exclude Evidence
`IPR2014-00631
`
`
`“[t]he first step in any invalidity… analysis is claim construction.” Union Oil Co.
`
`v. Atlantic Richfield Co., 208 F.3d 989, 995 (Fed. Cir. 2000).
`
`On March 10, 2015, however, Petitioner submitted Dr. Stevenson’s Rebuttal
`
`Declaration as support for its Reply. There, Dr. Stevenson testified for the first
`
`time regarding his proposed construction of the following limitations of claim 1:
`
`“entering a threshold level” and “automatically operating the image capture device
`
`to capture at least one digital image upon the automatic detection of the automatic
`
`image trigger condition meeting the threshold level.” See Ex. 1016 at ¶¶ 9–28.
`
`More than eight pages of that Rebuttal Declaration consisted of Dr. Stevenson’s
`
`brand new views on the proper construction of those limitations. The Rebuttal
`
`Declaration does not once refer to the first Stevenson declaration (submitted with
`
`the Petition) as support for Dr. Stevenson’s new claim construction views. See id.;
`
`Ex. 2015 at 24:12–16, 34:6–21; 44:18–25. Furthermore, though Dr. Stevenson
`
`relies on dictionary definitions (Ex. 1019) in his Rebuttal Declaration as support
`
`for his new claim construction analysis, he neither cited to nor relied on those
`
`definitions in his first declaration. See id. at 42:19–25.
`
`When asked why he waited to provide his proposed claim constructions for
`
`the first time in his Rebuttal Declaration, Dr. Stevenson explained that he “thought
`
`[he] should make it clear what [his] definition [he] was using was” and “so that
`
`people could more easily see what [his] opinion was.” See id. at 36:3 to 37:11,
`
`
`
`11
`
`

`

`Patent Owner Motion To Exclude Evidence
`IPR2014-00631
`
`
`40:17 to 41:5. Moreover, he acknowledged that he was “not sure it even occurred
`
`to [him] to think about… laying out a definition” in his first declaration. See id. at
`
`39:24 to 40:9. In other words, Dr. Stevenson waited until almost a year after the
`
`Petition was filed before attempting to support the Petition with a “clear” and
`
`express opinion on
`
`the construction of
`
`two crucial claim
`
`limitations,
`
`notwithstanding that he knew at the time he prepared his first declaration that those
`
`very limitations were important. See id. at 39:15 to 41:5.
`
`Petitioner’s Reply demonstrates that new testimony from Dr. Stevenson on
`
`claim construction (found only at Paragraphs 9 to 28 of his Rebuttal Declaration) is
`
`a key underpinning for Petitioner’s allegations of invalidity. See Paper 33 at 2–7.
`
`That testimony is therefore new evidence that could have been presented by Dr.
`
`Stevenson in his first declaration. 37 C.F.R. § 42.23(b); 77 Fed. Reg. 48612, 48620
`
`(Comments regarding 37 C.F.R. 42.23(b)). Likewise, the dictionary definitions of
`
`Exhibit 1019 were available to Dr. Stevenson when he prepared his first
`
`declaration, and they therefore could have been submitted with his first declaration.
`
`See Ex. 2015 at 42:15–25.
`
`A Petitioner should not be allowed to provide expert opinion evidence on the
`
`issue of claim construction for the first time with its Reply. Patent Owner timely
`
`objected to the new testimony in Dr. Stevenson’s Rebuttal Declaration and to
`
`
`
`12
`
`

`

`Patent Owner Motion To Exclude Evidence
`IPR2014-00631
`
`
`Exhibit 1019 on March 17, 2015 (see Ex. 2016). Therefore, Paragraphs 9 to 28 of
`
`the Rebuttal Declaration and Exhibit 1019 should be excluded.
`
`B.
`
`Paragraphs 32–38, 42, 48–50, 54–55, 58–59, and 62–65 of the
`Rebuttal Declaration
`
`Paragraphs 32–38, 42, 48–50, 54–55, 58–59, and 62–65 of the Rebuttal
`
`Declaration (Ex. 1016) should also be excluded. In those paragraphs, Dr.
`
`Stevenson offers new testimony about the teachings of Halpern, Mishima, and
`
`Ono, as well as testimony intended to provide reasons to combine those references
`
`that was not (but could have been) presented in his first declaration and that
`
`Petitioner relied heavily upon in its Reply. See Paper 33 at 9–20.
`
`With respect to Paragraphs 32 to 38, Dr. Stevenson testifies for the first time
`
`as to why he thinks Halpern discloses only a single embodiment of a camera, but
`
`he does not cite to his first declaration as support for any of that testimony. See Ex.
`
`2015 at 54:4–12. There is no reason Dr. Stevenson could not have provided this
`
`testimony in his first declaration. Dr. Stevenson certainly knew that Halpern taught
`
`two different ways for capturing an image at the time he prepared his first
`
`declaration. See, e.g., Ex. 1002 at ¶ 60. Moreover, Petitioner knew that Halpern
`
`discloses two distinct embodiments when it filed the Petition that relies on it. See
`
`IPR2014-00632, Paper No. 1, at 37.
`
`
`
`13
`
`

`

`Patent Owner Motion To Exclude Evidence
`IPR2014-00631
`
`
`With respect to Paragraphs 48–50 and 58–59 of the Rebuttal Declaration,
`
`Dr. Stevenson provides new testimony as to why he contends that Mishima and
`
`Ono teach the claimed step of “entering a threshold level.” See Ex. 2015 at 112:6–
`
`24. Notably, this new testimony is not in response to Dr. Bovik’s construction of
`
`that limitation, i.e., that a user must enter the threshold level. Rather, this new
`
`testimony is based on a claim construction that would encompass a camera that
`
`itself enters a threshold level. Therefore, the new testimony on that point should be
`
`excluded because it is not “responsive.” See 37 C.F.R. § 42.23(b); 77 Fed. Reg.
`
`48612, 48620 (Comments regarding 37 C.F.R. § 42.23(b)). Furthermore, there is
`
`no reason Dr. Stevenson could not have offered this new testimony in his first
`
`declaration, and he does not cite or refer to any testimony from his first declaration
`
`in Paragraphs 48–50, and 58–59 of his Rebuttal Declaration.
`
`Paragraphs 42, 54–55, and 62–65 of the Rebuttal Declaration provide new
`
`testimony as to why Dr. Stevenson thinks a person of skill in the art would have
`
`combined the prior art references to arrive at the inventions of claims 3–6 of the
`
`’914 patent. There is no reason he could not have provided this new testimony in
`
`his first declaration, and he does not cite or refer to any testimony from his first
`
`declaration in support of his testimony at Paragraphs 42, 54–55, and 62–65 of his
`
`Rebuttal Declaration.
`
`
`
`14
`
`

`

`Patent Owner Motion To Exclude Evidence
`IPR2014-00631
`
`
`Patent Owner timely objected to the new testimony in the Rebuttal
`
`Declaration on March 17, 2015. See Ex. 2016. Therefore, Paragraphs 32–38, 42,
`
`48–50, 54–55, 58–59, and 62–65 of the Rebuttal Declaration should be excluded.
`
`IV. CONCLUSION
`For the foregoing reasons, Patent Owner respectfully requests that the Board
`
`exclude from the record the evidence discussed above.
`
`
`
`Dated: April 10, 2015
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`/Herbert D. Hart III/
`Herbert D. Hart III
`Registration No. 30,063
`McAndrews, Held & Malloy, Ltd.
`500 West Madison Street, 34th Floor
`Chicago, Illinois 60661
`Office: (312) 775-8000
`Fax: (312) 775-8100
`Email: hhart@mcandrews-ip.com
`
`Lead Counsel for Patent Owner
`
`
`
`15
`
`

`

`Patent Owner Motion To Exclude Evidence
`IPR2014-00631
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing Patent Owner
`
`
`
`Motion To Exclude was served on April 10, 2015, via email to counsel for
`
`Petitioner at the following:
`
`
`
`Justin J. Oliver
`Daniel S. Glueck
`Canon914IPR@fchs.com
`Fitzpatrick, Cella, Harper & Scinto
`975 F Street, NW Fourth Floor
`Washington, D.C. 20004
`
`Date: April 10, 2015
`
`
`
`
`
`
`
`
`
`/Herbert D Hart III/
`Herbert D. Hart III
`
`
`
`
`
`
`
`

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket