Trials@uspto.gov
`571.272.7822
`
`Paper No. 68
`Filed: December 9, 2015
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ERICSSON INC. and
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner.
`____________
`
`
`
`Case IPR2014-01149
`Patent 6,023,783
`__________
`
`
`
`Before JOSIAH C. COCKS, WILLIAM A. CAPP, and
`DAVID C. McKONE, Administrative Patent Judges.
`
`CAPP, Administrative Patent Judge.
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`571.272.7822
`
`Paper No. 68
`Filed: December 9, 2015
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ERICSSON INC. and
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner.
`____________
`
`
`
`Case IPR2014-01149
`Patent 6,023,783
`__________
`
`
`
`Before JOSIAH C. COCKS, WILLIAM A. CAPP, and
`DAVID C. McKONE, Administrative Patent Judges.
`
`CAPP, Administrative Patent Judge.
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`IPR2014-01149
`Patent 6,023,783
`Ericsson Inc. and Telefonaktiebolaget LM Ericsson, (collectively
`“Ericsson”) filed a Petition (Paper 1, “Pet.”) requesting inter partes review
`of claims 6–12, 18–22, 25, 26, 43–49, 55–59, 62, and 63 of U.S. Patent
`No. 6,023,783 (Ex. 1001, the “’783 patent”). We issued a Decision to
`Institute an inter partes review of claims 18–22, 25, 26, 43, 44, 46–49, 55–
`59, 62, and 63 of the ’783 patent. Paper 8 (“DI”). After institution of trial,
`Patent Owner Intellectual Ventures I LLC (“Intellectual Ventures”) filed a
`Patent Owner’s Response (Paper 33, “PO Resp.”) and Ericsson filed a
`Petitioner’s Reply (Paper 38, “Reply”). We have jurisdiction under 35
`U.S.C. § 318(a).
`The instant case came before the Board for a regularly scheduled oral
`hearing on the merits on August 26, 2015, the transcript of which is entered
`as Paper 65 (“Tr.”). Also before the Board are the following matters:
`Petitioner’s Objection to Patent Owner’s Evidence (Paper 37);
`Patent Owner’s Objection to Petitioner’s Evidence (Paper 42);
`Petitioner’s Motion to Exclude Evidence (Paper 44, 49, 60);
`Patent Owner’s Motion to Exclude Evidence (Papers 45, 51, 58);
`Patent Owner’s Motion to Withdraw Challenged Claims (Paper 52,
`62, 64, and 66).
`After considering the evidence and arguments of counsel and for the
`reasons set forth below, we determine that Ericsson has met its burden of
`showing, by a preponderance of the evidence, that claims 18–22, 43, 44, and
`46–49 of the ’783 patent are unpatentable. Ericsson has not met its burden
`of showing that claims 25, 26, 55–59, 62 and 63 are unpatentable.
`
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`2
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`IPR2014-01149
`Patent 6,023,783
`
`Related Proceedings
`The ’783 patent is the subject of two IPR proceedings. The first such
`proceeding is the instant proceeding in which Petitioner Ericsson initially
`challenged claims 18–22, 25, 26, 43, 44, 46–49, 55–59, 62, and 63 of the
`’783 Patent. The second such IPR Proceeding is Ericsson Inc. v. Intellectual
`Ventures II LLC, IPR2014-00921 (PTAB) in which the Petitioner Ericsson
`challenges claims 1–5, 23–24, 38–42, and 60–61 of the ’783 Patent.
`The ’783 patent is a patent-in-suit in one or more of the following
`United States District Court patent infringement actions:
`Intellectual Ventures I LLC v. AT&T Mobility LLC, 1-13-cv-01668
`(D. Del. 2013).
`Intellectual Ventures I LLC v. Leap Wireless Int’l, 1-13-cv-01669
`(D. Del. 2013).
`Intellectual Ventures I LLC v. Nextel Operations, 1-13-cv-01670
`(D. Del. 2013).
`Intellectual Ventures I LLC v. T-Mobile USA Inc., 1-13-cv-01671
`(D. Del. 2013).
`Intellectual Ventures I LLC v. United States Cellular, 1-13-cv-01672
`(D. Del. 2013).
`
`I. BACKGROUND
`A. The ’783 Patent (Ex. 1001)
`The ’783 patent, entitled Hybrid Concatenated Codes and Iterative
`Decoding, relates to error correcting codes. Ex. 1001, 1:12. The ’783 patent
`describes “Related Art” as being concerned with “[t]urbo codes,” which are
`“binary error-correcting codes built from the parallel concatenation of two
`recursive systematic convolutional codes and using a feedback decoder.”
`Id. at 1:14–17. The ’783 patent characterizes its disclosed invention as
`
`
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`3
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`IPR2014-01149
`Patent 6,023,783
`“encompass[ing] several improved turbo code apparatuses and methods.”
`Id. at 1:66–67.
`By way of explanation, the ’783 patent presents Figure 1, depicted
`below, which is represented as “Prior Art”:
`
`
`
`As shown in the above-noted figure:
`Each source data element d to be coded is coupled to a first
`systematic coding module 11 and,
`through a
`temporal
`interleaving module 12,
`to a second systematic coding
`module 13. The coding modules 11 and 13 may be of any
`known systematic type, such as convolutional coders, that take
`into account at least one of the preceding source data elements
`in order to code the source data element d.
`Id. at 1:27–34. The ’783 patent further explains that “an important aspect of
`prior art turbo code encoders is that they transmit a data element X equal to
`input source data element d.” Id. at 1:53–55.
`Figure 5 of the ’783 patent is reproduced below and depicts an
`embodiment according to the invention of that patent:
`
`
`
`
`
`4
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`IPR2014-01149
`Patent 6,023,783
`Figure 5 illustrates a diagram of a turbo encoder that includes similar
`features to those of the prior art, and describes that “encoded parity elements
`Xn,” i.e., encoded data, are transmitted from coding modules C, with at least
`one interleaver πn. Id. at 13:63–66. According to the ’783 patent, the
`invention disclosed therein is distinguished from the prior art because the
`turbo encoder structure of the patent “outputs only encoded parity elements
`Xn from the coding modules C—the original data source elements d are not
`transmitted or stored.” Id. (emphasis added.)
`
`B. The Challenged Claims
`
`Ericsson challenges claims 18–22, 25, 26, 43, 44, 46–49, 55–59, 62,
`and 63. Claims 18, 25, 43, 55, and 62 are independent claims. Claim 18 is
`illustrative of the subject matter of the challenged claims and is reproduced
`below:
`
`18. A system for error-correction coding of a source of original
`digital data elements, comprising:
`(a) a first encoder, coupled to the source of original digital data
`elements, for generating a plurality of coded intermediate
`output elements derived from the original digital data elements;
`(b) at least one interleaver, each coupled to at least one of the
`plurality of coded intermediate output elements, for modifying
`the order of the coded intermediate output elements to generate
`respective interleaved output elements; and
`(c) at least one systematic recursive convolutional encoder,
`each coupled to at least one interleaver, for generating a set of
`coded output elements derived from the interleaved output
`elements from each coupled interleaver.
`
`
`
`5
`
`
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`IPR2014-01149
`Patent 6,023,783
`C. The Asserted Grounds of Unpatentability
`
`We instituted a trial on Ericsson’s challenges to claims 18–22, 25, 26,
`43, 44, 46–49, 55–59, 62, and 63 of the ’783 patent as obvious under
`35 U.S.C. § 103 over various combinations of references listed below and as
`further supported by the Declaration of Mark R. Lanning (Ex. 1003a).
`
`References
`Berrou1 and Forney2
`Berrou, Forney, and Ungerboeck3
`Berrou, Forney, Ungerboeck, and Massey4
`Deutsch5 and Berrou
`Deutsch, Berrou, and Ungerboeck
`Deutsch, Berrou, Ungerboeck, and Massey
`Divsalar,6 Berrou, Forney, and Ungerboeck
`
`Claims challenged
`43–46
`47 and 48
`49
`18, 19, 55 and 56
`20, 21, 57 and 58
`22 and 59
`25, 26, 62, and 63
`
`
`1 US Patent 5,446,747 to Berrou, issued August 29, 1995. (Ex. 1004).
`2 G. David Forney, Jr., Convolutional Codes I: Algebraic Structure, IT-16
`IEEE TRANSACTIONS ON INFORMATION THEORY 720 (Nov. 1970)
`(Ex. 1005).
`3 Gottfried Ungerboeck, Trellis-Coded Modulation with Redundant Signal
`Sets Part 1: Introduction, 25 IEEE COMMUNICATIONS MAGAZINE 5–11
`(Feb. 1987) (Ex. 1007).
`4 James L. Massey, Coding and Modulation in Digital Communications,
`ZÜRICH SEMINAR (1974) (Ex. 1010).
`5US Patent No. 4,907,233 to Deutsch, et al., issued March 6, 1990
`(Ex. 1006).
`6 D. Divsalar & F. Pollara, Turbo Codes for Deep-Space Communications,
`TDA PROGRESS REPORT 42-120, 29–39 (Feb. 15, 1995) (Ex. 1009).
`6
`
`
`
`
`
`IPR2014-01149
`Patent 6,023,783
`II. MOTIONS TO EXCLUDE EVIDENCE
`Ericsson and Intellectual Ventures each move to exclude evidence
`proffered by their respective opponents.
`
`A. Ericsson’s Motion to Exclude (Paper 44)
`Ericsson moves to exclude paragraphs 60–65, 79, 80, and 93 from the
`declaration of Intellectual Ventures’s expert, Dr. Cimini (Ex. 2009).
`Paper 44, 1. The underlying controversy deals with Dr. Cimini’s declaration
`and deposition testimony concerning a printed publication referred to as
`Robertson CMS (Ex. 1027).7
`Ericsson filed its Petition on August 4, 2014. Paper 1. We
`subsequently entered our Decision to Institute on January 28, 2015.
`Ericsson did not file Robertson CMS as an exhibit in support of its original
`Petition. On March 2, 2015, Ericsson contacted the Board to request
`authorization to file a motion for supplemental information. We held a
`conference call on March 5, 2015, and authorized Ericsson to file such a
`motion. Paper 13. On March 11, 2015, Ericsson moved the Board to submit
`supplemental information. Paper 14. The Robertson CMS reference was
`identified as one of the objects of Ericsson’s motion. Id. 1, n.1. Intellectual
`Ventures opposed the motion. Paper 18. We denied Ericsson’s motion to
`file Robertson CMS as supplemental information without prejudice to
`Ericsson’s right to file it in another context, such as rebuttal evidence in
`support its Petitioner’s Reply. Paper 19, 5.
`Ericsson represents that it served Intellectual Ventures with a copy of
`Robertson CMS almost three months before Intellectual Ventures filed its
`
`
`7 P. Robertson and T. Wörz, Coded Modulation Scheme Employing Turbo
`Codes, 31 ELECTRONICS LETTERS 1546–47 (Aug. 31, 1995).
`
`
`
`7
`
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`IPR2014-01149
`Patent 6,023,783
`Patent Owner’s Response. Paper 44, 1. Intellectual Ventures filed its Patent
`Owner’s Response on May 29, 2015. Paper 33. Contemporaneous
`therewith, Intellectual Ventures filed a declaration of its expert, Dr. Cimini.
`Ex. 2009. Dr. Cimini’s declaration makes no mention of the Robertson
`CMS reference. Id. Dr. Cimini gave cross-examination deposition
`testimony in this case on July 1, 2015. Ex. 1033. He gave cross-
`examination in a related case on June 30, 2015.8 Dr. Cimini testifies that he
`did not consider Robertson CMS in forming his opinion in either case.9
`Ericsson contends that Dr. Cimini’s declaration testimony should be
`excluded because Dr. Cimini’s failure to consider Robertson CMS renders
`his declaration testimony unreliable. Paper 44, 9. Essentially, Ericsson
`contends that, in the absence of considering Robertson CMS, Dr. Cimini’s
`analysis of whether a person of ordinary skill in the art would have
`combined Berrou, Forney, and Ungerboeck to achieve the invention of
`claims 10, 11, 47, and 48 of the ’783 patent is incomplete and, therefore,
`deficient. Id.
`Ericsson further contends that it was deprived of a full and fair
`opportunity to cross-examine Dr. Cimini regarding the Robertson CMS
`reference at his deposition. Paper 44, 10.10 Ericsson accuses Intellectual
`Ventures’s counsel of obstructing a fair cross-examination of Dr. Cimini by
`repeatedly interjecting speaking objections, thereby coaching Dr. Cimini not
`
`8 IPR2014-00921, Exhibit 1031, Cimini Deposition, 196:13–197:12.
`IPR2014-00921 is a related proceeding to the instant IPR and involves the
`same parties and the same ’783 patent.
`9 Id.
`10 “Patent Owner’s counsel’s deliberate decision to withhold Robertson
`CMS from Dr. Cimini.” Id.
`
`
`
`8
`
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`IPR2014-01149
`Patent 6,023,783
`to answer questions about Robertson CMS at his deposition. Id. In addition,
`Ericsson essentially accuses Intellectual Ventures’s counsel of deliberately
`withholding knowledge of Robertson CMS from Dr. Cimini so that
`Dr. Cimini would be unprepared to answer questions regarding Robertson
`CMS at his deposition. Id.
`Intellectual Ventures counters that Ericsson’s motion is procedurally
`improper because Ericsson did not timely serve an objection to Dr. Cimini’s
`declaration. Ordinarily, a party is required to timely serve objections to an
`opposing party’s evidence in order to preserve the right to file a motion to
`exclude. See 37 C.F.R. § 42.64. However, our governing rules allow the
`Board to waive such requirement. See 37 C.F.R. § 42.5.
`Intellectual Ventures argues that “Dr. Cimini did not address
`Robertson CMS [in his declaration] because he had no obligation to opine
`on a document not discussed in the Petition—thus, not in the record.”
`Paper 49, 2. Intellectual Ventures points out that, despite counsel’s
`awareness of Robertson CMS prior to Dr. Cimini’s deposition and
`declaration testimony, it was not actually evidence of record in this
`proceeding until it was filed with Petitioner’s Reply. Id. at 3. Intellectual
`Ventures also argues that Dr. Cimini “answered every question posed to
`him” and that Ericsson “had ample opportunity to cross-examine
`Dr. Cimini.” Id. at 5, 7.
`The complete exclusion of Dr. Cimini’s testimony is not warranted or
`necessary here. Intellectual Ventures argues that the instant dispute
`concerning Dr. Cimini’s testimony should not affect the admissibility of his
`opinion, but merely the weight the Board accords his opinion. Paper 49, 12.
`This is the path we choose to follow. By shielding Dr. Cimini from the
`
`
`
`9
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`IPR2014-01149
`Patent 6,023,783
`Robertson CMS reference so that he did not address it in his declaration and
`was unprepared to testify about it at this deposition, Intellectual Ventures
`deprived itself of an opportunity to respond to Ericsson’s case.
`Accordingly, we DENY Ericsson’s motion to exclude 60–65, 79, 80,
`and 93 of Dr. Cimini’s declaration testimony (Ex. 2009), but discount the
`weight to be given such testimony in light of the foregoing discussion.
`
`B. Intellectual Ventures’s Motion to Exclude (Paper 45)
`Intellectual Ventures moves to exclude Exhibit 1036 and
`Exhibit 1037. Paper 45, 1. Intellectual Ventures also moves to exclude the
`declaration testimony of Scott Bennett (Exhibit 1038) that attempts to lay a
`foundation for the admission of Exhibits 1036 and 1037. Paper 45. Ericsson
`opposes the motion. Paper 51.
`Exhibit 1036 is entitled “High Gain Coding Schemes for Space
`Communications” and appears, on its face, to have been published by Signal
`Processing Research Institute of the University of South Australia in 1995.
`Ex. 1036.11 Authorship of the document is attributed to Jean Yves
`Couleaud. Id. The document is 192 pages long and contains extensive page
`sequences of mathematical formulas. Id. at 15–18. The document has the
`appearance of having been professionally published as evidenced by its
`formatting, typesetting, chapter and subchapter divisions. It has an overall
`consistent appearance throughout its 192 page length. It cites at least 17
`different references with dates ranging from 1974 to September of 1995.
`Ex. 1036, 77–78.
`
`
`11 Ericsson has filed two exhibits in this proceeding marked and labeled as
`Exhibit 1036. For purposes of this decision, we will distinguish between the
`two exhibits based on their content.
`
`
`
`10
`
`
`
`IPR2014-01149
`Patent 6,023,783
`Exhibit 1037 is entitled “Serial Concatenated Systematic Convolution
`Codes for Space Communications” and appears, on its face, to be a letter
`submitted to the IEEE Transactions on Communications. Ex. 1037.12 It
`bears the date of 6 October 1995 on the face page of the document. Id.
`Authorship of the document is attributed to Jean Yves Couleaud and Steven
`S. Pietrobon. Id. Apart from the title page, Exhibit 1037 contains two and
`one-half pages of text, a half page of end-note reference citations, and two
`pages of figures. It cites to four references, dated from 1974 to September
`of 1995.
`Scott Bennett declares that he is a retired academic librarian with 30
`years of experience with various university libraries including the University
`of Illinois, Northwestern University, Johns Hopkins University, and Yale.
`Ex. 1038. Mr. Bennett declares that Exhibits 1036 and 1037 are documents
`that are readily available online. Ex. 1038. He declares that Exhibits 1036
`and 1037 are complete and accurate copies downloaded from the Turbo
`Coding Home Page of the Institute for Telecommunication Research at the
`University of South Australia. Id. Attached to Mr. Bennett’s declaration is
`an email purportedly from Steven Pietrobon containing a statement that the
`website from which Exhibits 1036 and 1037 were obtained was a personal
`website managed by Mr. Pietrobon. Ex. 1038, Attachment 5.
`Mr. Bennett observes and opines that Exhibits 1036 and 1037 are in a
`condition that creates no suspicion about their authenticity and that they are
`in a place where, if authentic, they would likely be. Ex. 1038, 3.
`
`
`12 Ericsson has filed two exhibits in this proceeding marked and labeled as
`Exhibit 1037. For purposes of this decision, we will distinguish between the
`two exhibits based on their content.
`
`
`
`11
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`IPR2014-01149
`Patent 6,023,783
` Intellectual Ventures argues that Exhibits 1036 and 1037 should be
`excluded because Ericsson has failed to establish that they are authentic and,
`secondly, because they contain hearsay. Paper 45, 7. Essentially,
`Intellectual Ventures argues that Mr. Bennett is not competent to testify
`concerning whether Exhibits 1036 and 1037 are authentic. Paper 45, 4.
`Intellectual Ventures argues that Bennett is not a custodian of Exhibits 1036
`and 1037. Id. Intellectual Ventures also argues that Mr. Bennett lacks
`sufficient personal knowledge to authenticate the exhibits. Id. at 1.
`With respect to the authenticity question, Ericsson posits that
`Mr. Bennett is an expert and, therefore, qualified to give expert opinion
`testimony as to the authenticity of Exhibits 1036 and 1037. Paper 51, 3–4.
`Ericsson argues that, under Federal Rule of Evidence 703, Mr. Bennett may
`base his opinion on facts or data that need not otherwise be admissible. Id.
`Ericsson also urges us to consider that the documents were almost 20 years
`old at the time that they were tendered into evidence and, therefore, almost
`qualify for authenticity treatment under the “ancient documents” provision
`of Federal Rule of Evidence 901(b)(8).
`Rule 901 of the Federal Rules of Evidence provides that the
`requirement of admissibility is satisfied by evidence sufficient to support a
`finding that the material in question is what its proponent claims. The
`burden of proof for authentication is “slight.” Lexington Ins. Co. v. Western
`Pennsylvania Hosp, 423 F.3d 318, 329 (3d Cir. 2005). Rule 901(b) lists
`nine non-exclusive examples of authentication techniques. See United
`States v. Simpson, 152 F.3d 1241, 1249–50 (10th Cir. 1998). Rule 901(a)
`merely prescribes that a proponent produce sufficient evidence of
`authenticity to support a prima facie case that the item is genuine.
`
`
`
`12
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`IPR2014-01149
`Patent 6,023,783
`See Rickets v. City of Hartford, 74 F.3d 1397, 1409–11 (2d Cir. 1996).
`Conflicting evidence of authenticity goes to weight, not admissibility, as
`long as some reasonable person could believe that the item is what it is
`claimed to be. Id. at 1411.
`In the instant case, Exhibit 1036 is a 192 page document that appears
`to be internally consistent with no obvious indication of having been
`fabricated or altered. A professional librarian testifies that the exhibit was
`obtained from a place where such a document is expected to be found.
`Intellectual Ventures presents no affirmative evidence that casts doubt
`on the authenticity of the exhibit. Given the foundation laid by Ericsson,
`which is essentially unrebutted by Intellectual Ventures, we think that a
`reasonable person could believe that Exhibit 1036 is what it is claimed to be.
`Exhibit 1037 is a closer case, because it is much shorter than
`Exhibit 1036 and, therefore, lacks some of the indicia of authenticity that
`can be discerned from its internal structure and consistency. Nevertheless,
`given the foundation laid by Ericsson and the lack of opposing evidence
`from Intellectual Ventures, we think that a reasonable person could believe
`that Exhibit 1037 is what it is claimed to be.
`Next, Intellectual Ventures attacks the document exhibits (1036 and
`1037) under the hearsay rule. Paper 45, 1. Intellectual Ventures contends
`that the dates that appear on the face of the exhibits constitute inadmissible
`hearsay when offered for the truth of the matter asserted. Id. at 7.
`Intellectual Ventures similarly contends that Mr. Bennett’s testimony
`concerning the date of preparation of the exhibits is hearsay. Id. at 3.
`The dates on the face of Exhibits 1036 and 1037 are during 1995. The
`filing date of the ’783 patent is May 15, 1997. Ex. 1001. Mr. Bennett relays
`
`
`
`13
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`IPR2014-01149
`Patent 6,023,783
`that Mr. Pietrobon, the author and custodian of Exhibit 1037, states that he
`loaded the exhibit onto IT’s Turbo Coding Home Page in October 1995.
`Ex. 1038, 3, Attachment 6. As corroborating evidence, Mr. Bennett attaches
`a computer printout that indicates that the underlying computer file for
`Exhibit 1037 was last modified on September 4, 1996. Ex. 1038, 3,
`Attachment 7.
`With respect to Exhibit 1036, Mr. Bennett, testifies that he made
`inquiry of Mr. Pietrobon, the custodian of the ITR Turbo Coding Home
`Page, who relayed to him that Exhibit 1036 was uploaded onto the internet
`site in September 1995. Ex. 1038, 3. Mr. Bennett obtained the statement
`from Mr. Pietrobon in writing in the form of an email message.
`Id. Attachment 6.
`Intellectual Ventures is technically correct that Mr. Bennett lacks
`personal knowledge of the origin and initial publication dates of
`Exhibits 1036 and 1037. Intellectual Ventures is also technically correct that
`the statements of Mr. Pietrobon, both oral and written, relayed by
`Mr. Bennett in his declaration, are hearsay because they are out of court
`statements of a declarant (Pietrobon) offered for the truth of the matter
`asserted, at least so far as the date indicated on the face of the two exhibits.
` Nevertheless, we will allow Exhibits 1036 and 1037 into evidence in
`this proceeding under the residual exception provision of Federal Rule of
`Evidence 807.13 Trial courts are accorded wide discretion in applying the
`
`
`13 The hearsay exception need only apply to evidence of the date of
`publication of the exhibits. The hearsay rule does not apply to the content of
`Exhibits 1036 and 1037 as they are not offered for the truth of the matter
`asserted, but merely as verbal acts of what is stated therein, whether or not
`true.
`
`
`
`14
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`IPR2014-01149
`Patent 6,023,783
`residual exception. Doe v. United States, 976 F.2d 1071, 1076–77 (7th Cir.
`1992), cert. denied 510 U.S. 812 (1993); United States v. North, 910 F.2d
`843, 909 (D.C. Cir. 1990) cert. denied 500 U.S. 941 (1991). In admitting the
`exhibits, we take into account the following considerations. Given the
`timing of its introduction, Intellectual Ventures had a fair opportunity to
`prepare to contest the use of the evidence. Secondly, there are
`circumstantial guarantees of trustworthiness, including that dating of the
`documents is corroborated by machine generated data. See United States v.
`Lamons, 532 F.3d 1251, 1264 (11th Cir. 2008) cert denied 129 S.Ct. 524
`(2008) (raw data generated by machines are not “statements” subject to the
`hearsay rule). Furthermore, at the time of issuing this decision, the
`documents qualify as ancient documents under Federal Rule of Evidence
`803(16) as they are now more than 20 years old. Additionally, the purported
`dates of authorship are internally consistent with the dates of the references
`cited therein and are particularly proximate in time to the most recent
`references cited therein. There is no evidence that the authors of Exhibits
`1036 and 1037 have any interest in this litigation and, therefore, they have
`no motive to falsify the dates of the documents. The investigation into the
`authenticity of Exhibits 1036 and 1037 by Mr. Bennett, a professional
`librarian, provides an additional circumstantial guarantee of trustworthiness.
`Mr. Bennett’s statements are offered as evidence of a material fact,
`namely whether the teachings of Exhibits 1036 and 1037 would have been
`known by a person of ordinary skill in the art at the time of the invention.
`Mr. Bennett’s statements are more probative on the point for which it is
`offered than any other evidence that Ericsson could have procured through
`reasonable efforts, as the authors of Exhibits 1036 and 1037 are located in
`
`
`
`15
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`IPR2014-01149
`Patent 6,023,783
`Australia and, therefore, it would have been difficult to procure superior
`evidence, such as compelled testimony, through reasonable efforts. See Fed.
`R. Evid. 807. Finally, we determine that the general purposes of the Federal
`Rules and interests of justice will be served by admission of Mr. Bennett’s
`testimony into evidence.14
`Thus, based, in part, on the foundation laid by Mr. Bennett’s
`testimony and accompanying exhibits to his declaration, we will admit
`Exhibits 1036 and 1037 under Federal Rule of Evidence 807, not as applied
`prior art per se, but for the limited purpose of showing the background
`knowledge of a person of ordinary skill in the art at the time of the
`invention. See Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013);
`Ariosa Diagnostics v. Verinata Health, Inc,. Case 2015-1215, slip op. 11–12
`(Fed. Cir. Nov. 16, 2015).
`In view of the foregoing, we DENY Intellectual Ventures’s motion to
`exclude Exhibits 1036, 1037, and 1038.
`
`III. DISPOSITION OF CLAIMS 55–59
`A. Ericsson’s Motion To Withdraw Challenge to Claims 55–59
`
`The parties’ dispute over the procedural aspects relative to the
`disposition of claims 55 through 59 has a long and well-documented history
`in this proceeding. See Papers 27, 29, 31, 32, 34, 36, 52, and 62.
`After we instituted trial, Ericsson brought a motion to correct its
`Petition with respect to its challenge to claim 55–59. Paper 27. Ericsson
`
`
`14 We do not reach the question of whether Mr. Bennett’s testimony is
`admissible as an expert opinion under Rules 702 and 703. See United States
`v. Cormier, 468 F.3d 63, 73 (1st Cir. 2006) (an expert must do more than
`merely serve as a conduit for hearsay).
`
`
`
`16
`
`
`
`IPR2014-01149
`Patent 6,023,783
`alleged that it desired to correct a “clerical mistake.” Id. at 1. Ericsson
`represented that it first became aware of the situation requiring correction of
`this so called “clerical mistake” during preparation for Mr. Lanning’s
`deposition. Id.
`We denied Ericsson’s motion, among other things, based on our
`determination that Ericsson’s desired correction was more substantive than
`clerical in nature. Paper 31, 12–13. We also expressed concerns regarding
`the timeliness of Ericsson’s request. Id. at 13.
`Subsequently, Ericsson unilaterally filed a notice to withdraw its
`challenge to claims 55–59. Paper 32. We noted that Ericsson failed to
`obtain prior authorization from the Board to file such a notice and directed
`that the notice be expunged. Paper 34.
`Ericsson then requested a teleconference with the Board and sought
`authorization to file a motion to withdraw its challenge to claims 55–59.
`Paper 36. We authorized Ericsson to file such a motion and directed
`Ericsson to explain whether its request implicated our statutory mandate to
`enter a final written decision. Id.; 35 U.S.C. § 318(a). At the time, we were
`lead to believe, by affirmative representations of Intellectual Ventures’s
`counsel, that Ericsson’s proposed motion would be unopposed. Paper 36.15
`Ericsson filed its motion to withdraw on August 20, 2015. Paper 52.
`The challenged claims involved in the motion to withdraw are the same as
`
`
`15 Intellectual Ventures’s position on this issue has vacillated from initialing
`demanding that Ericsson withdraw claims 55–59 from this IPR (Ex. 1036),
`to requesting the Board that the Petition be terminated as to claims 55–59
`(Ex. 1037), to representing that it would not oppose Ericsson’s motion to
`withdraw (Paper 36), to now opposing the withdrawal of Ericsson’s
`challenge to these claims (Paper 64).
`
`
`
`17
`
`
`
`IPR2014-01149
`Patent 6,023,783
`the claims in Ericsson’s motion to correct its petition that we previously
`denied.16 Ericsson indicated that the motion was unopposed. Id.
`Subsequently, we were informed by Intellectual Ventures that the scope of
`relief requested in Ericsson’s motion exceeded the scope of relief that
`Intellectual Ventures had agreed to. The pending motion remained
`unresolved at the time the parties appeared for oral hearing on August 26,
`2015. Tr. 82:12–89:12. At the hearing, counsel for Intellectual Ventures
`requested permission to submit a brief in opposition to the motion.
`Tr. 89:1–8. We then entered an order authorizing Intellectual Ventures to
`file a brief in opposition to the motion. Paper 62, 3. We also authorized
`Ericsson to file a reply to such opposition. Id.
`Ericsson contends that the Board has authority to allow the
`withdrawal of challenged claims following institution of a trial. Paper 52, 3.
`For this, Ericsson primarily relies on the Board’s decision in GTNX, Inc. v.
`INTTRA, Inc., Case CBM2014-00072, slip op. at 4–5 (PTAB Dec. 10, 2014)
`(Paper 20). The Board’s decision in GTNX has no bearing on the instant
`matter. In GTNX, it was undisputed that the Petitioner had filed a
`declaratory judgment action seeking a declaration of invalidity of the subject
`patent prior to filing a petition under the Covered Business Method
`provisions of the America Invents Act. Id. at 3. GTNX went to an issue of
`whether the Board had statutory authority to hear the case in the first
`instance in view of 35 U.S.C. § 325(a)(1). The Board decided that the
`statutory prohibition of filing a CBM after first filing declaratory judgment
`
`16 “Petitioners request permission to withdraw claims 55–59 to address the
`error described previously in Petitioners’ Motion to Correct Petition filed on
`April 30, 2015 (Paper 27), which was denied by the Board on May 19, 2015
`(Paper 31).” Paper 52, 1.
`
`
`
`18
`
`
`
`IPR2014-01149
`Patent 6,023,783
`action could not be waived and, thus, required termination of the proceeding.
`Id. at 4 (citing SecureBuy, LLC v. CardinalCommerce Corp., Case
`CBM2014-00035 (PTAB Apr. 25, 2014) (Paper 12) (Precedential)).
`In the instant case, we instituted a trial based on our determination
`that Ericsson had made the requisite showing of a reasonable likelihood of
`prevailing on its challenge that claims 55–59 are unpatentable. DI 21–23.
`The prospect that some of the evidence that Ericsson presented, and that we
`relied on in finding such reasonable likelihood, turned out to be incorrect
`after being exposed to cross-examination, does not serve to revoke
`retroactively our statutory authority to institute a trial. Instead, we will
`proceed to hear all of the evidence presented by both parties and then issue a
`final written decision with respect to the patentability of any claim
`challenged by the petitioner. See 35 U.S.C. § 318(a). Thus, we reject
`Ericsson’s argument that we must terminate this IPR proceeding, without
`prejudice and only in part, just because Ericsson now admits that its
`evidentiary presentation is deficient.
` Next, Ericsson argues that we are compelled to permit Ericsson to
`withdraw its challenge to claims 55–59, because 35 U.S.C. § 318(a) only
`directs us to issue a final written decision if an inter partes review is “not
`dismissed” under this Chapter 31. However, claims 55–59 are not currently
`dismissed and Ericsson cites no applicable provision under Chapter 31
`compelling or even authorizing “dismissal” under the fact situation
`presented here.
`Under 35 U.S.C. § 317, an IPR can be terminated upon the joint
`request of the petitioner and patent owner in the event of settlement.
`However, in the instant case, there has been no settlement, there has been no
`
`
`
`19
`
`
`
`IPR2014-01149
`Patent 6,023,783
`joint request, and there has been no submission of a written agreement in
`accordance with 35 U.S.C. §
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