UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`THE BOEING COMPANY
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`Petitioner
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`V.
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`SEYMOUR LEVINE
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`Patent Owner
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`Case No. IPR2015-01341
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`U.S. Patent No. RE39,618
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`PETITIONER’S MOTION TO EXCLUDE
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`9206756S.1
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`THE BOEING COMPANY
`
`Petitioner
`
`V.
`
`SEYMOUR LEVINE
`
`Patent Owner
`
`Case No. IPR2015-01341
`
`U.S. Patent No. RE39,618
`
`PETITIONER’S MOTION TO EXCLUDE
`
`9206756S.1
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`
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`Case No. IPR20l5-01341
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`U.S. Patent No. RE39,6l8
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`I.
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`Introduction and Legal Standard
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`Pursuant to 37 C.F.R. §§ 42.62 and 42.64, Petitioner hereby moves to
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`exclude certain evidence propounded by the Patent Owner. Because Petitioner has
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`timely objected to Patent Owner’s evidence. that does not comport with the Federal
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`Rules of Evidence (“FRE”) and/or was untimely produced, the Board should grant
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`this Motion and exclude the evidence identified below from consideration.
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`II.
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`Exhibits 2002-2004 Should Be Excluded Because They Have Not Been
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`Independently Authenticated
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`Patent Owner submitted Exhibits 2002-2004 with his Preliminary Response,
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`and argued in his Response that the documents establish a priority date prior to the
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`filing date of the application that led to the ’6l8 patent. Paper 28 at 13-21. Patent
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`Owner described Exhibits 2002-2004 as follows.
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`Exhibit
`2002
`2003
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`2004
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`Paper 7 at v.
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`_
`Description
`Handwritten notes of inventor Seymour Levine
`Draft invention disclosures prepared by Seymour Levine, dated
`October 9, 1996.
`Draft invention disclosures prepared by Seymour Levine, dated
`October 23, 1996.
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`Petitioner timely objected to each of these documents based on, inter alia,
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`inadequate authentication under FRE 901, which requires that “the proponent must
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`produce evidence sufficient to support a finding that the item is what the proponent
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`claims it is.” Paper 12. Each of Exhibits 2002-2004 fails this requirement because
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`92067565.]
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`Case No. IPR20l5-01341
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`U.S. Patent No. RE39,6l8
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`each lacks the independent corroboration that is required to authenticate evidence
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`of prior conception. See Procter & Gamble Co. v. Teva Pharms. USA, Inc., 566
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`F.3d 989, 999 (Fed. Cir. 2009) (inventor “must provide independent corroborating
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`evidence in addition to his own statements and documents”) (emphasis added);
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`Microsoft Corp. v. Surfcast, Inc., IPR20l3-00292, Paper 93, 17 (excluding
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`purported evidence of conception lacking independent corroboration); Neste Oil
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`Oyj v. Reg Synthetic Fuels, LLC, IPR20l3-00578, Paper 52, 4 (same).
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`Levine submitted a declaration with his Response in which he testifies that
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`Exhibits 2002-2004 are “true and correct copies” of notes and “invention
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`disclosures” that he created at various times in 1996. Ex. 2009 at 1.1 Mr. Levine’s
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`testimony, however, is insufficient as a matter of law to authenticate his own
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`unwitnessed notes and papers. “It is well established that in order for a
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`1 Levine submitted Exhibit 2009 together with his Response on March 28, 2016.
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`That is far more than the 10 days permitted to submit supplemental evidence in
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`response to Petitioner’s evidentiary objections of January 6, 2016. 37 C.F.R.
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`§ 42.64(b). The untimeliness of Levine’s purported authentication evidence is a
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`further reason to grant Petitioner’s motion to exclude the documents under FRE
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`901. See, e.g., Toshiba Corp. v. Optical Devices, LLC, IPR20l4—01446, Paper 31,
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`at 30-34 (excluding untimely evidence).
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`92067565.]
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`Case No. IPR20l 5-01341
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`U.S. Patent No. RE39,6l 8
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`contemporaneous document to be accorded any corroborative value[,] the
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`testimony of a witness other than the inventor, who is shown to have understood
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`the recorded information, is generally necessary to authenticate the document ’s
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`contents as well as to explain the witness’ relationship to the document in
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`question.” Horton v. Stevens, 7 U.S.P.Q.2d 1245, 1988 WL 252359 at *4 (BPAI
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`Mar, 8, 1988) (emphasis added). That is, a patent owner’s testimony not only
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`needs to be corroborated with independent evidence, but that evidence, to be
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`admissible, must be authenticated by someone than the inventor. Neste, IPR20l3—
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`005 78, Paper 52, 3 (“While normally, the testimony of [the alleged inventor]—as a
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`witness having personal knowledge of the documents—cou1d be sufficient to
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`‘support a finding that the item is what the proponent claims is it,’ the context in
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`which these exhibits are offered requires more. . .. [I]ndependent evidence of
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`authenticity is required” to satisfy FRE 901). Lacking independent evidence of
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`authenticity, Levine’s purported conception evidence fails this threshold test for
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`admissibility.
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`Exhibit 2002: Levine’s declaration states that Exhibit 2002 is a copy of his
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`notes from May 1996, but there is no independent evidence to corroborate that the
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`document is what Levine says it is or that it was created on the date claimed by
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`Levine. Levine cannot use this type of “circular” evidence where he seeks to rely
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`on documents to corroborate his testimony, but then turns around and offers only
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`92067565 1
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`3
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`Case No. IPR20l 5-01341
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`his testimony “to provide the date or other authentication of that document.”
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`Neste, IPR20l3-00578, Paper 52, 4 (citing In re NTP, Inc., 654 F.3d 1279, 1291
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`(Fed. Cir. 2011)). Thus, the document must be excluded. See id.
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`Exhibit 2003: Similarly, Levine describes Exhibit 2003 as an “invention
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`disclosure” but he does not claim to have disclosed it to anyone. Ex. 2002, 1] 4.
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`Instead, Levine asserts that it is a “version” of a different document that he
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`purportedly provided to Mr. Townsley, his lawyer, on a different date. Id. Mr.
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`Townsley, for his part, testifies only that he received something “similar in format
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`and content” to Exhibit 2003, thus confirming that he never actually saw Exhibit
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`2003. See Ex. 2010 (Townsley Decl.) 1] 2. Once again, the only testimony
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`establishing the authenticity of Exhibit 2003 is that of Mr. Levine, and it must be
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`excluded for the same reason as Exhibit 2002.2
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`2 Even if the testimony of Mr. Townsley were sufficient to establish Exhibit 2003
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`as a version of a document created by Mr. Levine, it is plainly inadequate to
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`establish that Mr. Levine created Exhibit 2003 on October 9, 1996. See Microsoft
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`Corp. v. Surfcast, Ina, IPR20l3-00292, Paper 93, 17 (“The principle that
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`corroboration is not required when a party seeks to prove conception through the
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`use of physical exhibits is directed to the technical content of a document, not to
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`the date or origin of the document. The law requires sufficient proof for the date
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`92067565 I
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`Case No. IPR2015-01341
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`Exhibit 2004: Finally, Mr. Levine describes Exhibit 2004 as an “invention
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`disclosure,” but as with Exhibit 2003, he does not claim to have disclosed it to
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`anyone. Ex. 2009 1] 6. Mr. Townsley makes no mention of the document. See Ex.
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`2010. As with the previous two exhibits, Exhibit 2004 must be excluded. Neste,
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`IPR2013-00578, Paper 52, 4.
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`III. Exhibit 2013, Introduced During Redirect Examination of Patent
`Owner but Never Filed in the Record, Should Be Excluded As Untimely
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`Petitioner cross-examined Levine regarding the subject matter of his
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`declaration on May 19, 2016. See Ex. 1043, 1. After that cross-examination was
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`concluded, during the redirect examination of Mr. Levine by his own counsel,
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`Levine provided a new document he had omitted from all previous filings and
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`declarations and purported to introduce it as Exhibit 2013. See id., 125: 14-126: 13.
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`This attempt to introduce new evidence was plainly untimely, and it deprived
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`Petitioner of the ability to investigate the document and appropriately cross-
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`examine Mr. Levine about it. See 37 CFR § 42.53(d)(2) (“Cross-examination
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`should ordinarily take place after any supplemental evidence relating to the direct
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`testimony has been filed”). Petitioner timely objected. Paper 32.
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`and identity of a physical exhibit offered to show conception.”) (citing Price v.
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`Symsek, 988 F.2d 1187, 1194-95 (Fed. Cir. 1993).
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`92067565.1
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`Case No. IPR2015-01341
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`Patent Owner then took no steps whatsoever to introduce Exhibit 2013 into
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`the record or seek leave to rely on it. Exhibit 2013 has never been filed. It has
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`never been the subject of a motion to supplement pursuant to 37 C.F.R.
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`§ 42.123(b) or otherwise. Patent Owner has been silent regarding its absence from
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`the record, and accordingly, Petitioner does not understand Patent Owner to be
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`relying on the document. Nonetheless, out of an excess of caution, Petitioner now
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`moves to exclude Exhibit 2013 as untimely. See, e.g., Toshiba Corp. v. Optical
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`Devices, LLC, IPR2014—O1446, Paper 31, at 30-34 (excluding untimely evidence).
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`Dated: August 22, 2016
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`Respectfully submitted,
`
`/Ryan J. McB1'aye1'/
`Ryan J. McBrayer (Reg. No. 54,299)
`Perkins Coie LLP
`
`1201 Third Avenue, Suite 4900
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`Seattle, WA 98101
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`Attorneys for The Boeing Company
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`92067565.1
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`Case No. IPR2015-01341
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`U.S. Patent No. RE39,6l8
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that the foregoing MOTION TO
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`EXCLUDE was served in its entirety on August 22, 2016, upon the following
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`counsel for Patent Owner via e-mail, pursuant to the parties’ agreement concerning
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`service:
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`Bruce R. Zisser
`
`Amar L. Thakur
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`Quinn Emanuel Urquhart & Sullivan, LLP
`865 South Figueroa Street, 10th Floor
`Los Angeles, CA 90017
`brucezisser@quinnemanue1.com
`amarthakur@quinnemanue1.com
`Attorneys for Patent Owner Seymour Levine
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`Dated: August 22, 2016
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`/Ryan J. McBrayer/
`Ryan J. McBrayer (Reg. No. 54,299)
`Perkins Coie LLP
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`1201 Third Avenue, Suite 4900
`
`Seattle, WA 98101
`
`Attorneys for The Boeing Company
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`92067565.1
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