Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`IPR2015-00698
`U.S. Patent No. 8,092,345
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`UNDER ARMOUR, INC.
`Petitioner,
`
`
`
`v.
`
`
`
`ADIDAS AG,
`Patent Owner.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case No. IPR2015-00698
`U.S. Patent No. 8,092,345
`
`PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE
`
`PUBLIC VERSION – CONTAINS REDACTIONS
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2015-00698
`U.S. Patent No. 8,092,345
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`UNDER ARMOUR, INC.
`Petitioner,
`
`
`
`v.
`
`
`
`ADIDAS AG,
`Patent Owner.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case No. IPR2015-00698
`U.S. Patent No. 8,092,345
`
`PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE
`
`PUBLIC VERSION – CONTAINS REDACTIONS
`
`
`
`
`
`
`
`
`
`
`
`
`
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`IPR2015-00698
`U.S. Patent No. 8,092,345
`
`TABLE OF CONTENTS
`
`
`
`INTRODUCTION ......................................................................................... 1
`I.
`II. THE DAVIS DECLARATION IS ADMISSIBLE ..................................... 3
`A. Ms. Davis’s Opinions Meet the Standards of FRE 702 and
`Daubert Because She Is Qualified as an Expert, Applied a
`Reliable Methodology, and Used Sufficient Facts and Data
`to Reach Her Conclusions ................................................................... 3
`1. Ms. Davis’s 37 years of experience as a CPA and
`hundreds of opinions on the commercial success of
`products—at least—qualify her as an expert. ........................ 3
`2. Ms. Davis used the same methodology she has used in
`hundreds of past cases—which has withstood
`previous Daubert motions—to measure commercial
`success by the sales and revenue of the product. ................... 4
`3. Ms. Davis’s review of MMF’s annual revenues,
`profits, and growth over six years, along with
`opinions from Dr. Winer, were sufficient facts and
`data to determine the lack of commercial success. ................ 7
`To the Extent Any Evidence of the Commercial Success of
`the MMF Apps Is Relevant in This Matter, Ms. Davis’s
`Opinion That MMF Was Not Commercially Successful Is
`Also Relevant ....................................................................................... 9
`III. NEITHER UA-1012 NOR TESTIMONY FROM DR.
`MICHALSON’S OCTOBER 21, 2015 DEPOSITION SHOULD
`BE EXCLUDED ........................................................................................... 11
`IV. UA-1008 IS RELEVANT AND ADMISSIBLE ........................................ 15
`V. CONCLUSION ............................................................................................ 15
`
`B.
`
`
`
`
`
`
`
`i
`
`
`
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`IPR2015-00698
`U.S. Patent No. 8,092,345
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Daubert v. Merrell Dow Pharms.,
`509 U.S. 579 (U.S. 1993) .............................................................................passim
`
`Gator Tail, LLC v. Mud Buddy LLC,
`618 F. App'x 992 (Fed. Cir. 2015) ...................................................................... 10
`
`Georgia-Pac. Corp. v. U.S. Plywood Corp.,
`318 F. Supp. 1116 (S.D.N.Y. 1970) ..................................................................... 4
`
`Gnosis S.P.A. et al. v. South Alabama Med. Sci. Foundation,
`Case No. IPR2013-00116 ................................................................................... 13
`
`i4i Ltd. P'ship v. Microsoft Corp.,
`598 F.3d 831 (Fed. Cir. 2010) .............................................................................. 7
`
`Int’l Business Machines v. Intellectual Ventures II, LLC,
`Case No. IPR2014-00180 ................................................................................... 14
`
`Kannankeril v. Terminix Int'l, Inc.,
`128 F. 3d 802 (3d Cir. 1997) ............................................................................ 1, 8
`
`Lg Chem, Ltd. v. Celgard. LLC,
`Case No. IPR2014-00692, 2015 WL 5896170 (Oct. 5, 2015) ....................... 5, 13
`
`MicroStrategy Inc. v. Business Objects, S.A.,
`429 F.3d 1344 (Fed. Cir. 2005) ........................................................................... 9
`
`PPC Broadband, Inc. v. Corning Optical Communs RF, LLC,
`815 F.3d 734 (Fed. Cir. 2016) ............................................................................ 10
`
`Santarus, Inc. v. Par Pharmaceutical, Inc.,
`No. 07-551 (GMS) ............................................................................................ 5, 6
`
`Westberry v. Gislaved Gummi AB,
`178 F.3d 257 ......................................................................................................... 8
`
`
`
`
`
`ii
`
`
`
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`IPR2015-00698
`U.S. Patent No. 8,092,345
`PETITIONER’S EXHIBIT LIST
`
`Exhibit
`Description
`Number
`1001 U.S. Patent No. 8,092,345 to Ellis et al.
`1002 Docket Report for Civil Action No. 1:14-cv-00130-GMS (excerpt)
`1003
`Expert Declaration of Dr. Joseph Paradiso
`1004 U.S. Patent No. 6,513,532 to Mault et al.
`1005 U.S. Patent No. 6,321,158 to DeLorme et al.
`Ari T. Adler, A Cost-Effective Portable Telemedicine Kit for Use in
`Developing Countries (May 2000) (M.S. thesis, Massachusetts Institute
`of Technology) (on file with MIT Libraries) (“Telemedicine Kit”)
`1007 U.S. Patent no. 6,790,178 to Mault et al.
`1008 NavTalk™ Cellular Phone/GPS Receiver, Owner’s Manual and
`Reference Guide (January 2000)
`1009
`Toshiba Satellite 2530CDS Product Specifications (February 2000)
`1010 U.S. Patent No. 5,864,870 to Guck et al.
`1011
`Reply Expert Declaration of Dr. Joseph Paradiso
`1012
`Transcript of February 5, 2016 deposition of Dr. William Michalson
`MapMyFitness, Inc.’s non-infringement contentions (Excerpt of
`Defendant MapMyFitness, Inc.’s Supplemental Objections and
`Responses to Plaintiffs’ First Set of Interrogatories (Nos. 3, 6-12))
`Expert Declaration of Julie Davis
`Biography of Zac Garthe
`Biography of Robert T. Vlasis
`Transcript of October 21-22, 2015 deposition of Dr. William Michalson
`(Part I)
`Transcript of October 21-22, 2015 deposition of Dr. William Michalson
`(Part II)
`Petitioner’s September 9, 2015 Responses to Patent Owner’s
`Objections to Admissibility of Evidence
`Santarus, Inc. v. Par Pharmaceutical, Inc., No. 07-551 (GMS),
`Document 163 (D. Del. June 26, 2009)
`
`
`1006
`
`1013
`
`1014
`1015
`1016
`1017
`
`1018
`
`1019
`
`1020
`
`
`
`
`
`
`
`iii
`
`
`
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`IPR2015-00698
`U.S. Patent No. 8,092,345
`
`INTRODUCTION
`
`In its motion, Patent Owner requests that the Board exclude the declaration
`
`I.
`
`
`of Ms. Julie Davis (UA-1014) under Federal Rules of Evidence (“FREs”) 702, 402,
`
`and 403, the February 5, 2016 deposition testimony of Dr. William Michalson
`
`(UA-1012) under FRE 901, the October 21, 2015 deposition testimony of Dr.
`
`Michalson under 37 C.F.R. § 42.53, and the NavTalk Cellular Phone/GPS
`
`Receiver Owner’s Manual and Reference Guide (UA-1008) under FRE 402 and
`
`403.
`
`
`
`The crux of Patent Owner’s argument that Ms. Davis’s declaration should be
`
`excluded under FRE 702 stems from a disagreement over her opinion about
`
`whether any commercial success of the MapMyFitness apps can be attributed to
`
`(1) the number of users and (2) the purchase price of the MapMyFitness company.
`
`This disagreement, however, does not render Ms. Davis’s opinion inadmissible.
`
`Daubert v. Merrell Dow Pharms., 509 U.S. 579, 595 (1993) (“The focus, of
`
`course, must be solely on principles and methodology, not on the conclusions that
`
`they generate.”); Kannankeril v. Terminix Int'l, Inc., 128 F. 3d 802, 807, 809 (3d
`
`Cir. 1997) (reversing exclusion of expert and cautioning that the “trial judge must
`
`be careful not to mistake credibility questions for admissibility questions”)
`
`Moreover, as detailed below, Ms. Davis is qualified as an expert, applies a reliable
`
`methodology (which has withstood the rigors of Daubert in past cases), and relies
`
`
`
`1
`
`
`
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`IPR2015-00698
`U.S. Patent No. 8,092,345
`on sufficient facts and data. Accordingly, Patent Owner’s challenge to her
`
`declaration under FRE 702 is meritless. Patent Owner’s relevancy objection to her
`
`declaration is similarly flawed, since, for example, it relies on an incorrect
`
`interpretation and application of the law.
`
`
`
`Patent Owner’s request to exclude Dr. Michalson’s testimony from two
`
`depositions is flawed and should be denied. First, Patent Owner challenges the
`
`authenticity of the February 5, 2016 deposition transcript of Dr. Michalson, despite
`
`the fact that it was signed and certified by the court reporter. Second, Patent
`
`Owner separately seeks to exclude October 21, 2015 deposition testimony under
`
`37 C.F.R. § 42.53, even though it did not properly preserve this objection. Finally,
`
`even if Patent Owner had preserved its objection, Patent Owner misapplies section
`
`42.53 in trying to exclude what is often admitted in IPR proceedings, and its
`
`articulation of alleged prejudice (undue or not) is questionable.
`
`
`
`Patent Owner also attempts to exclude the NavTalk Owner’s Manual as
`
`irrelevant, despite noting that its publication date precedes the earliest possible
`
`priority date of the 345 Patent. Further, its relevance for showing knowledge of
`
`route guidance is undisputed. Accordingly, Patent Owner’s request should be
`
`denied.
`
`
`
`2
`
`
`
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`IPR2015-00698
`U.S. Patent No. 8,092,345
`II. THE DAVIS DECLARATION IS ADMISSIBLE
`
`Patent Owner challenges the Davis Declaration’s admissibility under FREs
`
`702 and 402.1 Paper 42 at 1. Neither challenge should succeed.
`
`A. Ms. Davis’s Opinions Meet the Standards of FRE 702 and
`Daubert Because She Is Qualified as an Expert, Applied a Reliable
`Methodology, and Used Sufficient Facts and Data to Reach Her
`Conclusions
`1. Ms. Davis’s 37 years of experience as a CPA and hundreds of
`opinions on the commercial success of products—at least—
`qualify her as an expert.
`
`
`
`To Patent Owner, who claims Ms. Davis is not an expert on commercial
`
`success, the hallmark of expertise rests on her published articles and her
`
`knowledge of treatises. Paper 42 at 5-6. But the requirements of the Federal Rules
`
`are not so narrow. Experts may be qualified by their “knowledge, skill, experience,
`
`training, or education.” FRE 702. Under this standard, Ms. Davis is unquestionably
`
`an expert on commercial success. Ms. Davis has “been providing audit and
`
`1 Although Patent Owner also challenges UA-1014 under FRE 403, it offers only
`
`this: “[a]dditionally, the exhibit should be excluded because … its probative value
`
`to any ground upon which trial was instituted is substantially outweighed by the
`
`danger of confusing the issues.” Paper 42 at 1, 4. This unsupported, conclusory
`
`sentence cannot sustain Patent Owner’s challenge. Cf. 37 C.F.R. § 42.20(c) (“The
`
`moving party has the burden of proof to establish that it is entitled to the requested
`
`relief.”).
`
`
`
`3
`
`
`
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`IPR2015-00698
`U.S. Patent No. 8,092,345
`financial consulting services … for over thirty-seven years” and has “spent the last
`
`twenty-eight years consulting extensively with companies involved in …
`
`intellectual property disputes.” UA-1014.002. Although she has not published
`
`articles “address[ing] commercial success specifically,” she co-authored a book on
`
`valuing intellectual property, and has published eight articles addressing patent
`
`infringement damages relating to commercial success of accused products.2 See
`
`UA-1014.024, Ex. 2025 at 14:1-5. Patent Owner also protests that Ms. Davis has
`
`never testified before the Patent Office. Paper 42 at 5. But that complaint has little
`
`merit since she opined on commercial success in almost 350 district court cases.
`
`Ex. 2025 at 12:14-23, 17:3-19. Given her education and experience, Ms. Davis
`
`qualifies as an expert on commercial success.
`
`2. Ms. Davis used the same methodology she has used in hundreds
`of past cases—which has withstood previous Daubert
`motions—to measure commercial success by the sales and
`revenue of the product.
`
`Patent Owner complains that Ms. Davis did not use “any reliable principle or
`
`method to evaluate commercial success.” Paper 42 at 6. This is without merit. Her
`
`methodology is clear, and time-tested: “the measure of commercial success of a
`
`
`2 See generally Georgia-Pac. Corp. v. U.S. Plywood Corp., 318 F. Supp. 1116,
`
`1120 (S.D.N.Y. 1970) (identifying commercial success as a factor in the
`
`reasonable royalty analysis of patent infringement damages).
`
`
`
`4
`
`
`
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`IPR2015-00698
`U.S. Patent No. 8,092,345
`product is reliant on sales of the product ….” UA-1014.017 (emphasis in original).
`
`Lg Chem, Ltd. v. Celgard. LLC, Case No. IPR2014-00692, 2015 WL 5896170, at
`
`*29 (Oct. 5, 2015) (denying Patent Owner’s motion to exclude expert opinions on
`
`commercial success where the expert analyzed the factors used by economists—
`
`including sales, market share, advertising, and price—as applied to the facts in
`
`that case).
`
`
`
`
`
`
`
` Further, when Ms. Davis has used this same
`
`methodology in the past, courts admitted her testimony over Daubert challenges.
`
`See, e.g., Santarus, Inc. v. Par Pharmaceutical, Inc., No. 07-551 (GMS),
`
`3
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`5
`
`
`
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`IPR2015-00698
`U.S. Patent No. 8,092,345
`Document 163 (D. Del. June 26, 2009) (excerpt) (denying Daubert challenge to
`
`Ms. Davis’s testimony during pre-trial hearing) (attached hereto as UA-1020), Ex.
`
`2025 at 19:10-20:15 (testifying that she used revenues, sales, and market share to
`
`evaluate commercial success in Santarus, Inc. v. Par Pharmaceutical, Inc.).
`
`To bolster its position, Patent Owner relies on General Elec. Co. v. Joiner.
`
`Paper 42 at 6 (citing 522 U.S. 136, 146 (1997)). But once again, Patent Owner’s
`
`legal case is hollow. In Joiner, the expert reviewed studies of infant mice with one
`
`type of cancer that “were so dissimilar” to the adult humans with a different type of
`
`cancer in the case that the court excluded the opinion. 522 U.S. at 144-45. That is a
`
`far cry from our case, in which Ms. Davis
`
`
`
`
`
`Patent Owner’s factual representations are as flawed as its legal analyses.
`
`.
`
`
`
`
`
`
`
`
`
`For example, when Patent Owner asked Ms. Davis,
`
`
`
`
`
`6
`
`
`
`3. Ms. Davis’s
`
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`IPR2015-00698
`U.S. Patent No. 8,092,345
`
`along with opinions from Dr. Winer,
`were sufficient facts and data to determine the lack of
`commercial success.
`
`
`
`Patent Owner argues that Ms. Davis does not apply her method “to the
`
`relevant facts and data.” Paper 42 at 6-7. But admissibility does not turn on
`
`whether the expert considered “the relevant facts and data,” only “sufficient facts
`
`or data” as required by law. FRE 702 (b) (emphasis added); see also i4i Ltd. P'ship
`
`v. Microsoft Corp., 598 F.3d 831, 856 (Fed. Cir. 2010) (“Questions about what
`
`facts are most relevant or reliable to calculating a reasonable royalty are for the
`
`jury.”) (emphasis added). Patent Owner’s complaints about the facts examined by
`
`Ms. Davis are veiled attempts to shore-up its own expert’s methodology.
`
`Specifically, instead of focusing on the sufficiency of facts examined by Ms. Davis,
`
`Patent Owner highlights information supposedly relevant to Patent Owner’s theory
`
`of commercial success:
`
`
`
`
`
` This analysis is inappropriate.
`
`
`
`By arguing that Ms. Davis did not consider facts concerning the number of
`
`users and the mere purchase price of a company, Patent Owner is really just
`
`disagreeing with Ms. Davis’s opinion that
`
`
`
`7
`
`
`
`
`
`
`
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`IPR2015-00698
`U.S. Patent No. 8,092,345
`
`
`
`
`
`
` Just because Patent Owner disagrees with Ms. Davis’s opinion does
`
`not make her opinion inadmissible. Daubert v. Merrell Dow Pharms., 509 U.S.
`
`579, 595 (U.S. 1993) (“The focus, of course, must be solely on principles and
`
`methodology, not on the conclusions that they generate.”); Kannankeril v.
`
`Terminix Int'l, Inc., 128 F. 3d 802, 807, 809 (3d Cir. 1997) (reversing exclusion of
`
`expert and cautioning that the “trial judge must be careful not to mistake credibility
`
`questions for admissibility questions”). That simply is not the law.
`
`
`
`Ms. Davis’s opinion easily meets the requirement for sufficient facts and
`
`data. See Westberry v. Gislaved Gummi AB, 178 F.3d 257, 265 (holding that an
`
`expert's conclusions “should not be excluded because he or she has failed to rule
`
`out every possible alternative cause”). She considered
`
`
`
`
`4
`
`
`
`8
`
`
`
`
`
`
`
`
`
`
`
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`IPR2015-00698
`U.S. Patent No. 8,092,345
`Patent Owner’s reliance on MicroStrategy Inc. v. Business Objects, S.A., 429
`
`
`
`F.3d 1344 (Fed. Cir. 2005), is misplaced. The expert in MicroStrategy “did not link
`
`a single loss to a specific misconduct” and “ignored any significant factor … other
`
`than the torts,” but Ms. Davis reviewed a wealth of factors
`
`
`
`
`
` See MicroStrategy, 429 F.3d 1344, 1354-56 (Fed.
`
`Cir. 2005) (emphasis added); see also UA-1014.012-18, .020-022, Ex. 2025 at
`
`45:24-46:6. MicroStrategy made clear the “pre-admission determination [is]
`
`whether or not enough factors have been considered to make an expert report
`
`sufficiently reliable.” 429 F.3d at 1355 (Fed. Cir. 2005) (emphasis in original). Yet
`
`again, Patent Owner stands on an incorrect legal argument.
`
`B.
`
`To the Extent Any Evidence of the Commercial Success of the
`MMF Apps Is Relevant in This Matter, Ms. Davis’s Opinion
` Is Also Relevant
`
`
`
`Patent Owner objects that Ms. Davis’s opinion is inadmissible because it
`
`“addresses only the commercial success of the MMF apps
`
`” and is not
`
`tied to the features embodying the 345 Patent; thus, it cannot be relevant. Paper 42
`
`at 10. Patent Owner also claims that because the MMF apps “embody” some
`
`claims of the 345 Patent, Patent Owner is entitled to the presumption that any
`
`commercial success of the product stems from the patented claims. Paper 42 at 10
`
`(citing “PPC Broadband, Inc. v. Corning Optical Commc’ns, [sic] (Fed. Cir. Feb.
`
`
`
`9
`
`
`
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`IPR2015-00698
`U.S. Patent No. 8,092,345
`22, 2016) at 19.”). Essentially, Patent Owner’s relevance argument boils down to
`
`this: Patent Owner is entitled to rely on a presumption that the commercial success
`
`of the MMF apps is due to the patented claims, but Petitioner is not. This is
`
`incorrect.
`
`
`
`Patent Owner has (again) misquoted the law. It is not enough for the product
`
`to partly embody the claims; the product must be coextensive with the patented
`
`invention to warrant the presumption that commercial success is attributable to the
`
`claimed features. E.g., PPC Broadband, Inc. v. Corning Optical Communs RF,
`
`LLC, 815 F.3d 734, 747 (Fed. Cir. 2016) (“Because the [accused products] are the
`
`invention disclosed and claimed in the patent, we presume that any commercial
`
`success of these products is due to the patented invention.”) (emphasis added)
`
`(internal quotations omitted), Gator Tail, LLC v. Mud Buddy LLC, 618 F. App'x
`
`992, 999 (Fed. Cir. 2015) (“Where the marketed product is coextensive with the
`
`claimed features, then the court should presume that commercial success of the
`
`product is due to the patented invention.”). Petitioner disputes that the MMF apps
`
`embody—much less are coextensive with—the invention claimed in the 345
`
`Patent. Paper 27 at 19-20, 23,5 UA-1011 at ¶¶ 209-235. Therefore, no party is
`
`5 Petitioner maintains its position that the legal determination of commercial
`
`success is beyond the purview of the Board in this specific matter. See Paper 27 at
`
`19-20.
`
`
`
`10
`
`
`
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`IPR2015-00698
`U.S. Patent No. 8,092,345
`entitled to this presumption, and the relevance of both parties’ experts is equally
`
`impacted.6 Alternatively, if a presumption exists (which it does not because the
`
`MMF apps are not coextensive with the claims), then that presumption applies to
`
`Ms. Davis’s opinions as well, obviating the basis for Patent Owner’s relevance
`
`objection. Patent Owner may not have its cake and eat it too.
`
`III. NEITHER UA-1012 NOR TESTIMONY FROM DR. MICHALSON’S
`OCTOBER 21, 2015 DEPOSITION SHOULD BE EXCLUDED
`
`
`
`Patent Owner seeks to exclude evidence on the basis of what amounts to an
`
`inadvertent citation error. Petitioner intended UA-1012 to be the October 21, 2015
`
`deposition transcript of Dr. William Michalson from the co-pending litigation
`
`(“October Deposition”). Petitioner’s exhibit list in its Reply identifies UA-1012 as
`
`the October Deposition. See Paper 27 at 26. This intention is also clear from the
`
`fact that the citations following the quoted testimony do not match up with the
`
`testimony in UA-1012. Instead, the citations correspond with the testimony in the
`
`October Deposition, served contemporaneously herewith as UA-1017.7 Moreover,
`
`Patent Owner’s generic objection, which closely copies the language of FRE
`
`
`6 Indeed, Patent Owner cannot demonstrate that the purchase price of a company is
`
`attributable to specific features of the company’s products.
`
`7 UA-1018 is the second part of that deposition of Dr. Michalson, which occurred
`
`on October 22, 2015.
`
`
`
`11
`
`
`
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`IPR2015-00698
`U.S. Patent No. 8,092,345
`901(a) without more, did not put Petitioner on notice of this inadvertent error.
`
`Indeed, in its Response to Patent Owner’s objection, Petitioner complained that
`
`Patent Owner failed to comply with 37 C.F.R. § 42.64(b), which states that “[t]he
`
`objection must identify the grounds for the objection with sufficient particularly to
`
`allow correction in the form of supplemental evidence.” See UA-1019.002. Patent
`
`Owner did not file or serve more detailed objections regarding UA-1012.
`
`
`
`Further, Patent Owner has not met its burden of demonstrating that UA-1012
`
`as filed and served is inadmissible under FRE 901.8 Specifically, FRE 901(b)
`
`states that an example of evidence that satisfies the requirement of authenticity
`
`includes “[a]ny method of authentication or identification allowed by a federal
`
`statute or a rule prescribed by the Supreme Court.” FRE 901(b)(1) (emphasis
`
`added). As the advisory committee explains: “[This] example makes clear that
`
`methods of authentication provided … by the Rules of Civil and Criminal
`
`Procedure … are not intended to be superseded. Illustrative are the provisions …
`
`for authentication of depositions in Civil Procedure Rule 30(f).” FRE 901,
`
`advisory committee notes (2011). Patent Owner has not argued, and cannot show,
`
`that UA-1012 is not authentic under Federal Rule of Civil Procedure (“FRCP”)
`
`30(f). Indeed, the officer who transcribed the deposition, Suzanne Beasley,
`
`8 Note, Petitioner correctly identifies and relies upon UA-1012 in its motion to
`
`exclude. See Paper 38 at 10-11.
`
`
`
`12
`
`
`
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`IPR2015-00698
`U.S. Patent No. 8,092,345
`certified that Dr. Michalson was duly sworn and that the deposition accurately
`
`records the witness’s testimony. See UA-1012 at 4:3-5, 21:1-27:19.
`
`
`
`Patent Owner’s further requests to exclude the October Deposition testimony
`
`under 37 C.F.R. § 42.53 should be denied. As an initial matter, Patent Owner did
`
`not preserve this objection under 37 C.F.R. § 42.53. Instead, it lodged an objection
`
`under 37 C.F.R. § 42.65, which concerns expert testimony.
`
`
`
`Even if Patent Owner has not waived its objection under 37 C.F.R. § 42.53,
`
`its reliance on this section is misplaced. Section 42.53 governs “[t]aking
`
`testimony” in an IPR proceeding, but the evidence Patent Owner seeks to exclude
`
`covers testimony taken in a separate action. That section 42.53 does not forbid
`
`submission of deposition transcripts from a separate action is consistent with the
`
`Board’s allowance of this type of evidence in the past. See, e.g., Gnosis S.P.A. et
`
`al. v. South Alabama Med. Sci. Foundation, Case No. IPR2013-00116, Paper 51 at
`
`10 (Feb. 11, 2014) (motion to exclude an ITC deposition transcript), Gnosis S.P.A.
`
`et al. v. South Alabama Med. Sci. Foundation, Case No. IPR2013-00116, Paper 68
`
`at 43 (Jun. 20, 2014) (denying motion to exclude ITC deposition transcript), LG
`
`Chem, Ltd. v. Celgard, LLC, Case No. IPR2014-00692, Paper 64 at 15 (Jun. 5,
`
`2015) (motion to exclude a deposition transcript of an expert witness taken in a
`
`separate proceeding), LG Chem, Ltd. v. Celgard, LLC, Case No. IPR2014-00692,
`
`Paper 76 at 50 (Oct. 5, 2015) (denying motion to exclude deposition transcript of
`
`
`
`13
`
`
`
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`IPR2015-00698
`U.S. Patent No. 8,092,345
`an expert witness from a separate proceeding), Int’l Business Machines v.
`
`Intellectual Ventures II, LLC, Case No. IPR2014-00180, Paper 34 at 3-7 (Dec. 9,
`
`2014) (motion to exclude deposition transcript from co-pending litigation), Int’l
`
`Business Machines v. Intellectual Ventures II, LLC, Case No. IPR2014-00180,
`
`Paper 50 at 10 (Apr. 3, 2015) (denying motion to exclude deposition transcript
`
`from co-pending litigation).
`
`
`
`Nonetheless, Patent Owner cites two specific portions of section 42.53 in
`
`support of its argument that the October Deposition testimony should be excluded.
`
`First, Patent Owner’s reliance on section 42.53(a) fails (aside from the reasons
`
`given above), because Dr. Michalson’s transcript is not uncompelled direct
`
`testimony. Indeed, Dr. Michalson is Patent Owner’s, not Petitioner’s, witness.
`
`Second, Patent Owner relies on section 42.53(d)(5)(iii), which concerns the scope
`
`of content of deposition notices in an IPR proceeding. But as explained above, the
`
`testimony Patent Owner seeks to exclude is from a deposition in a separate
`
`proceeding. Patent Owner is simply taking a sentence from section 42.53 out of
`
`context and misapplying it to other evidence. Moreover, the prejudice Patent
`
`Owner claims to suffer from being unable to redirect Dr. Michalson is
`
`questionable. In fact, Patent Owner had the opportunity to redirect Dr. Michalson
`
`on the subject of selective availability in the October Deposition, but it did not.
`
`See UA-1018 at 401:7-19.
`
`
`
`14
`
`
`
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`IPR2015-00698
`U.S. Patent No. 8,092,345
`Accordingly, Patent Owner’s request to exclude UA-1012 under FRE 901
`
`
`
`and the October Deposition testimony under 37 C.F.R. § 42.53 should be denied.
`
`IV. UA-1008 IS RELEVANT AND ADMISSIBLE
`Patent Owner only seeks to exclude UA-1008 under FREs 402 and 403. See
`
`
`Paper 42 at 15. Specifically, Patent Owner argues that UA-1008 is irrelevant
`
`because Petitioner has not established that it was publicly accessible before the
`
`earliest priority date of the 345 Patent (i.e., February 20, 2001). Nonetheless,
`
`Patent Owner seemingly recognizes that the “January 2000” shown on the second
`
`page of UA-1008 is the “publication date.” See Paper 42 at 15. In view of this
`
`publication date, UA-1008 is indeed probative of the fact that GPS-enabled route
`
`guidance was well-known before February 20, 2001. Moreover, this probative
`
`value is not outweighed by any undue prejudice and confusion. Indeed, Patent
`
`Owner has not articulated any such prejudice and confusion. Accordingly, Patent
`
`Owner’s request to exclude UA-1008 should be denied.
`
`V. CONCLUSION
`
`For the reasons provided above, Petitioner respectfully requests that the
`
`Board deny Patent Owner’s motion to exclude.
`
`
`
`Respectfully submitted,
`
`/ Brian E. Ferguson /
`Brian E. Ferguson
`Lead Counsel for Petitioner
`Registration No. 36,801
`
`
`
`Dated: April 20, 2016
`
`
`
`
`
`
`
`
`
`15
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that on April 20, 2016, the foregoing
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION TO
`
`EXCLUDE was served via electronic mail, upon the following:
`
`Mitchell G. Stockwell
`Kilpatrick Townsend & Stockton LLP
`1100 Peachtree Street NE, Suite 2800
`Atlanta, GA 30309-4528
`mstockwell@kilpatricktownsend.com
`
`Wab P. Kadaba
`Kilpatrick Townsend & Stockton LLP
`1100 Peachtree Street NE, Suite 2800
`Atlanta, GA 30309-4528
`wkadaba@kilpatricktownsend.com
`
`Jonathan D. Olinger
`Kilpatrick Townsend & Stockton LLP
`1100 Peachtree Street NE, Suite 2800
`Atlanta, GA 30309-4528
`jolinger@kilpatricktownsend.com
`
`/ Timothy J. Andersen / c
`Timothy J. Andersen
`Case Manager
`Weil, Gotshal & Manges LLP
`1300 Eye Street NW, Suite 900
`Washington, DC 20005
`T: 202-682-7075
`timothy.andersen@weil.com
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
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.
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.
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
