UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`THE BOEING COMPANY
`Petitioner
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`v.
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`SEYMOUR LEVINE
`Patent Owner
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`Case No. IPR2015-01341
`U.S. Patent No. RE39,618
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`REPLY IN SUPPORT OF PETITIONER'S MOTION TO EXCLUDE
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`92069493.1
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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
`
`
`
`
`
`
`
`
`
`REPLY IN SUPPORT OF PETITIONER'S MOTION TO EXCLUDE
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`
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`92069493.1
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`I.
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`Introduction
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`Case No. IPR2015-01341
`U.S. Patent No. RE39,618
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`PO testified that “[o]n or before May 18, 1996,” he “conceived… of the
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`inventions” of the ‘618 patent. Ex. 2009 ¶ 2. In his Response, PO argued “Mr.
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`Levine testifies here that he conceived of the claimed invention at least as early as
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`May, 1996,” and that “Levine’s testimony is corroborated by” his
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`contemporaneous documents. PO Resp. 14-15. After Boeing sought to exclude
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`Levine’s documents because they are not independent evidence of conception, PO
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`made a hasty retreat. PO now argues that “Levine offers no testimony to be
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`corroborated,” and purports to rely exclusively on his documents. Id. at 5.
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`Illogically, PO argues that, because he now relies on less evidence of conception
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`than before, the corroboration requirement no longer applies.
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`That is not the law. Independent evidence is always required to prove
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`conception. See, e.g., Procter & Gamble Co. v. Teva Pharm. USA, Inc., 566 F.3d
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`989, 999 (Fed. Cir. 2009) (inventor must provide corroborating evidence “in
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`addition to his own statements and documents") (citation and internal quotation
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`marks omitted). PO cites no case in which an inventor’s own private and
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`uncorroborated documents establish conception.
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`Corroboration is required “to prevent fraud.” Medichem, S.A. v. Rolabo, S.L.,
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`437 F.3d 1157, 1170 (Fed. Cir. 2006). It is a bright-line rule that applies regardless
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`of the credibility of the inventor. Id. at 1171-72. If PO’s position were correct,
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`92069493.1
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`1
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`however, inventors could end-run the rule by simply submitting their own
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`Case No. IPR2015-01341
`U.S. Patent No. RE39,618
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`unwitnessed, backdated documents, and declining to testify about what they
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`conceived. The risk of after-the-fact fabrication would be present to the same
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`degree as where the inventor relied on his own uncorroborated testimony.
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`Not only is this wholly inconsistent with the anti-fraud purpose of the rule, it
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`is in fact impossible for PO to avoid his own testimony. PO is the only witness
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`who can provide testimony purporting to establish the date and origin of the
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`disputed exhibits. Ex. 2009 ¶¶ 2, 4. PO fails to explain why this testimony should
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`be exempt from the rule that “when a party seeks to prove conception via the oral
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`testimony of a putative inventor, the party must proffer evidence corroborating that
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`testimony.” Chen v. Bouchard, 347 F.3d 1299, 1309 (Fed. Cir. 2003). The
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`documents themselves cannot be that corroborating evidence. See Neste Oil Oyj v.
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`Reg Synthetic Fuels, LLC, IPR2013-00578, Paper 52, 4 (corroboration must be
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`independent, not “circular”).
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`In sum, PO cannot avoid the corroboration requirement by recanting his
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`conception testimony. PO’s “rule of reason” argument also fails because it goes to
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`the credibility of PO’s testimony, not to the corroboration requirement for Exhibits
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`2002-04. Furthermore, even if the “rule of reason” applied, Levine’s proffered
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`evidence is insufficient. Boeing’s motion should be granted.
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`II. Argument
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`92069493.1
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`2
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`Physical Exhibits Must Be Independently Corroborated As To
`Date And Origin
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`Case No. IPR2015-01341
`U.S. Patent No. RE39,618
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`A.
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`“The principle that corroboration is not required when a party seeks to prove
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`conception through the use of physical exhibits is directed to the technical content
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`of a document, not to the date or origin of the document.” Microsoft Corp. v.
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`Surfcast, Inc., IPR2013-00292, Paper 93, 17. In other words, the patentee need not
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`introduce evidence from an independent witness as to what a document discloses,
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`since the Board can make that determination on its own. However, the date and
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`origin of documents used to establish conception must be independently
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`corroborated precisely to avoid the risk of after-the-fact fabrication. Id.
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`PO argues that Surfcast is distinguishable because one of the exhibits at
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`issue in that case, a notebook, was undated. Opp’n. 1, 6. But the Board in Surfcast
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`excluded multiple uncorroborated documents, including dated emails. See
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`Microsoft Corp., IPR2013-00292, Paper 93, pp. 16, 52. The Board’s reasoning
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`did not turn on the notebook being undated (a fact that is not recited in the
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`decision), but rather, on its finding that, for multiple exhibits, “the date of the
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`physical exhibits is not corroborated sufficiently…” Id. at 17.
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`Similarly, in Neste, the board excluded a dated spreadsheet because it was
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`not independently authenticated. Neste Oil Oyj, IPR2013-00578, Paper 52, 3-4.
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`PO’s attempt to distinguish Neste by disavowing his own testimony fails because,
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`92069493.1
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`3
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`as explained above, his disavowal does not remove the requirement that an
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`Case No. IPR2015-01341
`U.S. Patent No. RE39,618
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`inventor cannot rely solely on his “own statements and documents.” Procter &
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`Gamble, 566 F.3d at 999 (emphasis added).
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`PO advocates the same incorrect reading of Federal Circuit authority
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`regarding “physical exhibits” that was rejected in Surfcast. The Federal Circuit
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`authority supports Boeing’s position, not PO’s, because in every case independent
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`corroboration was required. In Price, the document at issue was independently
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`authenticated by a corporate secretary. Price v. Symsek, 988 F.2d 1187, 1195-96
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`(Fed. Cir. 1993). The Federal Circuit simply held that the secretary did not need to
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`understand the “content” or “significance” of the drawings in the document in
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`order to provide corroborating evidence. Id. In Mahurkar, the physical evidence
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`consisted of actual reductions to practice of prototypes of the invention which
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`were, in fact, independently corroborated. Mahurkar v. C.R. Bard, Inc., 79 F.3d
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`1572, 1578-79 (Fed. Cir. 1996). Brown underscored that “the physical evidence in
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`this case may not single-handedly corroborate [the inventor’s] testimony.” Brown
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`v. Barbacid, 276 F.3d 1327, 1335 (Fed. Cir. 2002). Brown rejected the proffered
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`date for reduction to practice due to insufficient corroboration, but remanded for a
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`determination of whether the applicant could establish conception based on
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`“independent testimony.” Id at 1336-37. These cases confirm that PO cannot
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`establish conception solely through his own unwitnessed documents.
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`92069493.1
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`4
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`The “Rule Of Reason” Does Not Avoid Exclusion
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`B.
`A “rule of reason” analysis is “applied to determine whether the inventor’s
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`Case No. IPR2015-01341
`U.S. Patent No. RE39,618
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`prior conception testimony has been corroborated.” Price, 988 F.2d at 1195. “In
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`order for the rule of reason requirement to even apply… the putative inventor must
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`first provide credible testimony that only then must be corroborated.” Gen. Elec.
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`Co. v. Wilkins, 750 F.3d 1324, 1330 (Fed. Cir. 2014). Since Levine is not offering
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`testimony, the rule does not apply.
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`Moreover, Mr. Townsley’s testimony that he received some document
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`“similar in format and content” to exhibit 2003 in September 1996, Ex. 2010 at ¶
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`2, fails to provide the required corroboration of Exhibits 2002-2004 even under a
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`“rule of reason” test. PO asks the Board to infer that this non-record document
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`made the same disclosure of the limitations of claims 8-10 as the challenged
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`exhibits. Opp’n 10-11. But Mr. Townsley did not so testify. Instead, to prove the
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`actual content of what was disclosed to Mr. Townsley, PO cites only Exhibits 2002
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`and 2003, which only he purportedly saw and which only he can therefore
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`authenticate. Id. at 10-13. Such circular proof cannot constitute adequate
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`corroboration. Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1170-71 (Fed. Cir.
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`2006) (“the ‘rule of reason’ has not altered the requirement that evidence of
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`corroboration must not depend solely on the inventor himself”).
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`92069493.1
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`5
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`Case No. IPR2015-01341
`U.S. Patent No. RE39,618
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`Respectfully submitted,
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`
`
` /s/ Ryan J. McBrayer
`Ryan J. McBrayer (Reg. No. 54,299)
`Perkins Coie LLP
`1201 Third Avenue, Suite 4900
`Seattle, WA 98101
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`Attorneys for The Boeing Company
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`Dated: September 12, 2016
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`92069493.1
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`6
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`Case No. IPR2015-01341
`U.S. Patent No. RE39,618
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that the foregoing REPLY IN SUPPORT
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`OF MOTION TO EXCLUDE was served in its entirety on September 12, 2016,
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`upon the following counsel for Patent Owner via e-mail, pursuant to the parties’
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`agreement concerning service:
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`Bruce R. Zisser
`Amar L. Thakur
`Quinn Emanuel Urquhart & Sullivan, LLP
`865 South Figueroa Street, 10th Floor
`Los Angeles, CA 90017
`brucezisser@quinnemanuel.com
`amarthakur@quinnemanuel.com
`Attorneys for Patent Owner Seymour Levine
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` /s/ Ryan J. McBrayer
`Ryan J. McBrayer (Reg. No. 54,299)
`Perkins Coie LLP
`1201 Third Avenue, Suite 4900
`Seattle, WA 98101
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`Attorneys for The Boeing Company
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`7
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`Dated: September 12, 2016
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`92069493.1
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