`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
`
`
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`1 Case IPR2014-00632 has been consolidated with the instant proceeding.
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`
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`Patent Owner Motion To Exclude Evidence
`IPR2014-00631
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`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
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`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
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`IV. CONCLUSION .............................................................................................. 15
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`i
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`Patent Owner Motion To Exclude Evidence
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`Cases
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`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
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`37 CFR § 42.53(d)(5)(ii) ............................................................................................ 2
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`Fed. R. Evid. 611(b) ................................................................................................... 2
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`ii
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`Patent Owner Motion To Exclude Evidence
`IPR2014-00631
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`I.
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`SUMMARY OF ARGUMENT
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`
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`The Board should exclude inadmissible evidence filed with Petitioner’s
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`Reply.
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`A question asked on cross-examination must not exceed the scope of direct
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`testimony. Petitioner examined Patent Owner’s expert, Dr. Alan Bovik, on subjects
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`that were far beyond the scope of Dr. Bovik’s direct testimony. Patent Owner’s
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`counsel timely objected, and the Board should exclude responses to the questions
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`on cross-examination that were beyond the scope of Dr. Bovik’s direct testimony.
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`New testimony not rebutting arguments made in the Patent Owner’s
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`Response is not permitted in a Rebuttal Declaration. Petitioner relies on new
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`arguments found in a so-called Rebuttal Declaration from its expert and on a new
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`exhibit of dictionary definitions. Patent Owner timely objected to this evidence
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`pursuant to 37 C.F.R. § 42.64. Therefore, the Board should exclude the new
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`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.
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`Petitioner used this improperly-elicited testimony in both its Reply and its Rebuttal
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`Declaration. The Board should exclude argument based on that testimony because
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`the rebuttal testimony is outside the scope of the direct testimony of Dr. Bovik’s
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`declaration. See Fed. R. Evid. 611(b) (“Cross-examination should not go beyond
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`the subject matter of the direct examination”); 37 CFR § 42.53(d)(5)(ii) (“For
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`cross-examination testimony, the scope of the examination is limited to the scope
`
`of the direct testimony.”).
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`In particular, the following cross-examination testimony (Ex. 1018) upon
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`which Petitioner relies in its Reply and Petitioner’s expert relies in the Rebuttal
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`Declaration should be excluded: 38:19 to 39:13, 54:6–18, 71:1 to 84:12, 86:10 to
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`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.
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`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.
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`Petitioner seeks to support this argument by relying on the following excerpts from
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`the Bovik transcript (Exhibit 1018): 71:9 to 73:3, 89:1 to 94:14, and 175:15 to
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`176:24. Id. at 3. The Rebuttal Declaration of Petitioner’s expert relies on pages 71–
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`73, 89–95, and 175–176 of the Bovik transcript as support for a similar argument.
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`See Ex. 1016 at 5–6, 26. For the reasons discussed below, the excerpts at 71:1 to
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`73:18, 90:1 to 95:25, and 175:15 to 176:24 of Dr. Bovik’s cross-examination
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`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
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`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
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`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
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`mentions a user entering a threshold for a trigger condition such as a face, animal,
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`or person’s voice, or discusses whether an animal or a voice could serve as a
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`trigger condition. In fact, Dr. Bovik responded to Petitioner’s counsel’s line of
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`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
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`timely and repeatedly objected to this line of questioning as being beyond the
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`scope of Dr. Bovik’s declaration. See id. at 71:2, 21; 72:20; 73:9–10; 90:11; 91:14;
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`92:12; 93:2; 94:5; 94:18; 95:4.
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`At pages 175:15 to 176:24 of Dr. Bovik’s transcript, Petitioner’s counsel
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`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
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`whether a soccer ball or smile constitutes a trigger condition, and Dr. Bovik
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`testified on cross-examination that “I haven’t studied it” in response to Petitioner’s
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`counsel’s questions on this topic. Id. at 176:5–6. Patent Owner’s counsel timely
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`objected to this line of questioning as being beyond the scope of direct testimony.
`
`See id. at 175:20; 176:4, 16.
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`Therefore, the Board should exclude the cross-examination testimony at
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`71:1 to 73:18, 90:1 to 95:25, and 175:15 to 176:24.
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`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
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`Petitioner’s Reply argues that Dr. Bovik “conclude[s] that the claims [of the
`
`914 patent] exclude embodiments requiring… ‘complex’ thresholds.” Paper 33 at
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`3. Petitioner relies very generally upon more than 25 pages (69:5 to 96:12) of the
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`Bovik transcript to support this argument. Id. at 3. The vast majority of that
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`testimony should be excluded because it is beyond the scope of Dr. Bovik’s direct
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`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
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`counsel repeatedly asked Dr. Bovik whether a certain person’s voice could be a
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`trigger condition and whether a threshold associated with such a trigger condition
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`would be too complex for a user to enter. See Ex. 1018 at 73:4 to 84:12; 87:20 to
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`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
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`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.
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`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;
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`81:23; 82:4, 21; 84:10; 87:23.
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`At 86:10 to 87:3 and 94:15 to 96:12 of the transcript, Petitioner’s counsel
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`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;
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`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
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`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.
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`Therefore, the testimony at 71:9 to 84:12, 86:10 to 87:3, 87:20 to 88:10, and
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`90:1 to 96:12 of the Bovik transcript should be excluded.
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`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
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`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
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`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.
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`Moreover, this question was beyond the scope of Dr. Bovik’s declaration, which
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`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.
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`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
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`counsel objected to the scope of this line of questioning. Id. at 213:1.
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`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
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`further argues that Dr. Bovik was evasive in answering questions about his
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`understanding of the threshold indicator. Paper 33 at 8. Petitioner asserts that these
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`unfair characterizations of Dr. Bovik’s testimony are supported by 214:22 to
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`229:18 and 213:4 to 225:20 of the Bovik transcript. Id. at 8. Not only do the cited
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`excerpts offer no support for those characterizations, but the testimony at 221:16 to
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`225:20 is inadmissible because it is beyond the scope of Dr. Bovik’s direct
`
`testimony.
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`At 221:16 to 225:20, Petitioner’s counsel repeatedly asked Dr. Bovik why
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`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
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`of questioning was beyond the scope of Dr. Bovik’s direct testimony about what
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`Halpern discloses. Specifically, he testified that Halpern does not disclose that the
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`threshold indicator is employed in the second embodiment. Ex. 2006 at 168.
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`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.
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`Bovik’s cross-examination testimony about how he did not “see any explanation
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`[in Halpern] as to how [the threshold indicator] would be used for embodiment 2”
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`and “I haven’t studied that question.” See id. at 222:13–16; 225:11.
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`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;
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`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.”
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`Paper 33 at 19–20. First, that book was edited by, not written by, Dr. Bovik, and
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`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.
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`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
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`IPR2014-00631
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`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.
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`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
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`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
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`filed. See Ex. 1016 at 26. The testimony at 54:6–18, however, should be excluded.
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`At 54:6–18, Petitioner’s counsel asked Dr. Bovik if “pose variation” is a problem
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`associated with facial recognition. See Ex. 1018 at 53:21 to 54:7. This question
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`was beyond the scope of Dr. Bovik’s declaration, because Dr. Bovik did not testify
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`in his declaration about pose variation or how it relates to facial recognition. Patent
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`Owner’s counsel timely objected to this question on that ground. See id. at 54:8.
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`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–
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`59, and 62–65 of Dr. Stevenson’s Rebuttal Declaration (Ex. 1016) because they
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`constitute new evidence that could have been presented in Dr. Stevenson’s first
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`declaration (Ex. 1002). Likewise, Exhibit 1019 should be excluded because it is
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`new evidence from a dictionary that could have been presented with the Petition.
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`“A reply may only respond to arguments raised in the… patent owner response.”
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`37 C.F.R. § 42.23(b). While “replies may rely upon appropriate evidence,” “[r]eply
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`evidence… must be responsive and not merely new evidence that could have been
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`presented earlier to support” the petition. See 77 Fed. Reg. 48612, 48620
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`(Comments regarding 37 C.F.R. § 42.23(b)).
`
`Paragraphs 9–28 of the Rebuttal Declaration and Ex. 1019
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`A.
`Paragraphs 9 to 28 of Dr. Stevenson’s Rebuttal Declaration (Ex. 1016)
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`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
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`(Ex. 1002), Dr. Stevenson evaluated claim 1 in view of each of the Mishima (Ex.
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`1005), Ono (Ex. 1003), and Halpern (Ex. 1013) references. See Ex. 1002 at ¶¶ 40–
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`64. Yet, in discussing the patent claim language in view of the prior art, Dr.
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`Stevenson did not provide a construction for any claim terms in his first
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`declaration. See Ex. 2007 at 17:6–14 (“I don’t believe I have what you might say is
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`a separate section on claim interpretation or claim construction….”); see also Ex.
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`2015 at 24:17 to 28:11, 34:6 to 35:17; 45:14–24. In fact, Dr. Stevenson did not
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`address the issue of claim construction at all in his first declaration, even though
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`“[t]he first step in any invalidity… analysis is claim construction.” Union Oil Co.
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`v. Atlantic Richfield Co., 208 F.3d 989, 995 (Fed. Cir. 2000).
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`On March 10, 2015, however, Petitioner submitted Dr. Stevenson’s Rebuttal
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`Declaration as support for its Reply. There, Dr. Stevenson testified for the first
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`time regarding his proposed construction of the following limitations of claim 1:
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`“entering a threshold level” and “automatically operating the image capture device
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`to capture at least one digital image upon the automatic detection of the automatic
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`image trigger condition meeting the threshold level.” See Ex. 1016 at ¶¶ 9–28.
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`More than eight pages of that Rebuttal Declaration consisted of Dr. Stevenson’s
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`brand new views on the proper construction of those limitations. The Rebuttal
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`Declaration does not once refer to the first Stevenson declaration (submitted with
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`the Petition) as support for Dr. Stevenson’s new claim construction views. See id.;
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`Ex. 2015 at 24:12–16, 34:6–21; 44:18–25. Furthermore, though Dr. Stevenson
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`relies on dictionary definitions (Ex. 1019) in his Rebuttal Declaration as support
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`for his new claim construction analysis, he neither cited to nor relied on those
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`definitions in his first declaration. See id. at 42:19–25.
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`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
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`[he] should make it clear what [his] definition [he] was using was” and “so that
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`people could more easily see what [his] opinion was.” See id. at 36:3 to 37:11,
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`40:17 to 41:5. Moreover, he acknowledged that he was “not sure it even occurred
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`to [him] to think about… laying out a definition” in his first declaration. See id. at
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`39:24 to 40:9. In other words, Dr. Stevenson waited until almost a year after the
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`Petition was filed before attempting to support the Petition with a “clear” and
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`express opinion on
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`the construction of
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`two crucial claim
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`limitations,
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`notwithstanding that he knew at the time he prepared his first declaration that those
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`very limitations were important. See id. at 39:15 to 41:5.
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`Petitioner’s Reply demonstrates that new testimony from Dr. Stevenson on
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`claim construction (found only at Paragraphs 9 to 28 of his Rebuttal Declaration) is
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`a key underpinning for Petitioner’s allegations of invalidity. See Paper 33 at 2–7.
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`That testimony is therefore new evidence that could have been presented by Dr.
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`Stevenson in his first declaration. 37 C.F.R. § 42.23(b); 77 Fed. Reg. 48612, 48620
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`(Comments regarding 37 C.F.R. 42.23(b)). Likewise, the dictionary definitions of
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`Exhibit 1019 were available to Dr. Stevenson when he prepared his first
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`declaration, and they therefore could have been submitted with his first declaration.
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`See Ex. 2015 at 42:15–25.
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`A Petitioner should not be allowed to provide expert opinion evidence on the
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`issue of claim construction for the first time with its Reply. Patent Owner timely
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`objected to the new testimony in Dr. Stevenson’s Rebuttal Declaration and to
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`IPR2014-00631
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`Exhibit 1019 on March 17, 2015 (see Ex. 2016). Therefore, Paragraphs 9 to 28 of
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`the Rebuttal Declaration and Exhibit 1019 should be excluded.
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`B.
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`Paragraphs 32–38, 42, 48–50, 54–55, 58–59, and 62–65 of the
`Rebuttal Declaration
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`Paragraphs 32–38, 42, 48–50, 54–55, 58–59, and 62–65 of the Rebuttal
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`Declaration (Ex. 1016) should also be excluded. In those paragraphs, Dr.
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`Stevenson offers new testimony about the teachings of Halpern, Mishima, and
`
`Ono, as well as testimony intended to provide reasons to combine those references
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`that was not (but could have been) presented in his first declaration and that
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`Petitioner relied heavily upon in its Reply. See Paper 33 at 9–20.
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`With respect to Paragraphs 32 to 38, Dr. Stevenson testifies for the first time
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`as to why he thinks Halpern discloses only a single embodiment of a camera, but
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`he does not cite to his first declaration as support for any of that testimony. See Ex.
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`2015 at 54:4–12. There is no reason Dr. Stevenson could not have provided this
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`testimony in his first declaration. Dr. Stevenson certainly knew that Halpern taught
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`two different ways for capturing an image at the time he prepared his first
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`declaration. See, e.g., Ex. 1002 at ¶ 60. Moreover, Petitioner knew that Halpern
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`discloses two distinct embodiments when it filed the Petition that relies on it. See
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`IPR2014-00632, Paper No. 1, at 37.
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`13
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`Patent Owner Motion To Exclude Evidence
`IPR2014-00631
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`With respect to Paragraphs 48–50 and 58–59 of the Rebuttal Declaration,
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`Dr. Stevenson provides new testimony as to why he contends that Mishima and
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`Ono teach the claimed step of “entering a threshold level.” See Ex. 2015 at 112:6–
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`24. Notably, this new testimony is not in response to Dr. Bovik’s construction of
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`that limitation, i.e., that a user must enter the threshold level. Rather, this new
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`testimony is based on a claim construction that would encompass a camera that
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`itself enters a threshold level. Therefore, the new testimony on that point should be
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`excluded because it is not “responsive.” See 37 C.F.R. § 42.23(b); 77 Fed. Reg.
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`48612, 48620 (Comments regarding 37 C.F.R. § 42.23(b)). Furthermore, there is
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`no reason Dr. Stevenson could not have offered this new testimony in his first
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`declaration, and he does not cite or refer to any testimony from his first declaration
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`in Paragraphs 48–50, and 58–59 of his Rebuttal Declaration.
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`Paragraphs 42, 54–55, and 62–65 of the Rebuttal Declaration provide new
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`testimony as to why Dr. Stevenson thinks a person of skill in the art would have
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`combined the prior art references to arrive at the inventions of claims 3–6 of the
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`’914 patent. There is no reason he could not have provided this new testimony in
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`his first declaration, and he does not cite or refer to any testimony from his first
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`declaration in support of his testimony at Paragraphs 42, 54–55, and 62–65 of his
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`Rebuttal Declaration.
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`14
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`Patent Owner Motion To Exclude Evidence
`IPR2014-00631
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`Patent Owner timely objected to the new testimony in the Rebuttal
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`Declaration on March 17, 2015. See Ex. 2016. Therefore, Paragraphs 32–38, 42,
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`48–50, 54–55, 58–59, and 62–65 of the Rebuttal Declaration should be excluded.
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`IV. CONCLUSION
`For the foregoing reasons, Patent Owner respectfully requests that the Board
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`exclude from the record the evidence discussed above.
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`Dated: April 10, 2015
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`Respectfully submitted,
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`/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
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`Lead Counsel for Patent Owner
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`15
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`Patent Owner Motion To Exclude Evidence
`IPR2014-00631
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and correct copy of the foregoing Patent Owner
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`
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`Motion To Exclude was served on April 10, 2015, via email to counsel for
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`Petitioner at the following:
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`Justin J. Oliver
`Daniel S. Glueck
`Canon914IPR@fchs.com
`Fitzpatrick, Cella, Harper & Scinto
`975 F Street, NW Fourth Floor
`Washington, D.C. 20004
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`Date: April 10, 2015
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`/Herbert D Hart III/
`Herbert D. Hart III
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