Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 65
`Date Entered: July 26, 2017
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION,
`Petitioner,
`v.
`
`BRADIUM TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00449
`Patent 8,924,506 B2
`____________
`
`
`
`BRYAN F. MOORE, BRIAN J. McNAMARA, and MINN CHUNG,
`Administrative Patent Judges.
`
`
`CHUNG, Administrative Patent Judge.
`
`
`
`DECISION ON PETITIONER’S MOTION TO EXCLUDE
`37 C.F.R. § 42.64
`
`
`
`571-272-7822
`
`
`
`
`Paper 65
`Date Entered: July 26, 2017
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION,
`Petitioner,
`v.
`
`BRADIUM TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00449
`Patent 8,924,506 B2
`____________
`
`
`
`BRYAN F. MOORE, BRIAN J. McNAMARA, and MINN CHUNG,
`Administrative Patent Judges.
`
`
`CHUNG, Administrative Patent Judge.
`
`
`
`DECISION ON PETITIONER’S MOTION TO EXCLUDE
`37 C.F.R. § 42.64
`
`
`
`
`IPR2016-00449
`Patent 8,924,506 B2
`
`
`Microsoft Corporation (“Petitioner”) moves to exclude the following
`evidence in this proceeding on the basis that the exhibits are inadmissible as
`hearsay under Fed. R. Evid. 802: Exhibits 2016–2018, 2021, 2030, 2032, 2035–
`2036, 2039, 2044–2049, 2051–2053, 2059, and 2063. Paper 42, Petitioner’s
`Motion to Exclude (“Pet. Mot. to Exclude”) 1. Petitioner also moves to exclude
`Exhibits 2016–2018 and 2051–2053 under Fed. R. Evid. 106 and 403 as
`incomplete and misleading. Id. at 6. Bradium Technologies LLC. (“Patent
`Owner”) filed and a confidential version and a public version of its opposition.
`Papers 49 (“PO Opp. to Pet. Mot. to Exclude”) (confidential), 50 (public).
`Petitioner filed a Reply to Patent Owner’s Opposition. Paper 52, Petitioner’s
`Reply to Patent Owner’s Opposition to Petitioner’s Motion to Exclude (“Pet. Reply
`to Opp.”).
`Exhibits 2016–2018 are screen shots of third party websites that purport to
`provide information concerning Petitioner’s research and development
`expenditures. Exs. 2016–2018. Although Patent Owner contends Exhibits 2016
`and 2017 are not hearsay because they are based on Petitioner’s own reported data
`(PO Opp. to Pet. Mot. to Exclude 13), Patent Owner provides no evidence of any
`kind to support this position. The content of Exhibits 2016 and 2107 are out of
`court statements offered for the truth of the matter asserted and, therefore, are
`excluded.
`Exhibit 2018 purports to be a screenshot of a two line bullet type statement
`by research firm Frost & Sullivan about convergence of the North American
`Automotive Industry concerning 3D imagery and a 3D engine supplied by inventor
`Levanon’s company, 3DVU. Ex. 2018. Patent Owner contends that the evidence
`is not offered for its truth but to demonstrate the verbal act, i.e., that Frost &
`Sullivan made the statement about the activities of Google, Microsoft, and 3DVU
`
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`IPR2016-00449
`Patent 8,924,506 B2
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`in 3D imaging. PO Opp. to Pet. Mot. to Exclude 13–14. This statement by Frost
`& Sullivan would be irrelevant to this proceeding unless it were offered for the
`truth of the matter asserted, i.e., that Petitioner and the inventor’s company are
`active in this area and that the inventor’s company supplied a 3D engine to Nissan.
`Indeed, Patent Owner acknowledges that this is exactly what it relies upon the
`evidence to demonstrate, stating “Bradium relies on this exhibit to show that Frost
`& Sullivan, an international consulting firm that concentrates on uncovering future
`technologies and mega trends, made a statement about 3DVU, listing it among
`Google and Microsoft, as companies that push for 3D imagery.” Id. Thus, Patent
`Owner acknowledges that Exhibit 2018 is an out of court statement offered for the
`truth of the matter asserted. In addition, because Patent Owner lays no foundation
`for its assertion that Frost & Sullivan has any basis for the statement, the statement
`is inherently unreliable. For these reasons, Exhibit 2018 is excluded.
`Exhibits 2035 and 2036 are valuation summaries prepared for 3DVU by a
`third party, C.E. Unterberg, Towbin. Exs. 2035, 2036. Patent Owner states that
`Exhibits 2035 and 2036 show the occurrence and timing of acquisition discussion
`between Petitioner and 3DVU. PO Opp. to Pet. Mot. to Exclude 10–11. Patent
`Owner further argues that the documents are not offered for the truth of what they
`say, i.e., that technology has any particular worth, but as verbal acts to show what a
`reputable company said the technology was worth. Id. Patent Owner argues a
`distinction without a difference—a reputable company would not have stated a
`valuation unless it had been engaged to do so and believed its valuation to be
`accurate. Thus, Exhibits 2035 and 2036 are out of court statements offered to
`prove the truth of the matter asserted, i.e., the valuation of 3DVU. Exhibits 2035
`and 2036 are excluded.
`
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`IPR2016-00449
`Patent 8,924,506 B2
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`
`Exhibits 2021, 2030, 2032, 2039, 2046–2048, and 2063 all appear to be
`3DVU’s own press releases or screen shots of web pages and articles based on
`3DVU’s press releases. See generally, Ex. 1019, Deposition Testimony of Isaac
`Levanon (“Levanon Dep. Tr.”) 59:12–67:24; 72:9–74:25. Patent Owner contends
`that Exhibit 2021 is not offered for the truth of what it reports, but to show that the
`statement made in 2008 is offered to show the timing of an award 3DVU received
`from Frost & Sullivan in 2007. PO Opp. to Mot. to Exclude 6. Mr. Levanon
`testified concerning the 2007 award. Ex. 2072, Declaration of Isaac Levanon
`(“Levanon Decl.”) ¶ 37.1 Patent Owner argues that “Mr. Levanon testifies that,
`based on his conversation with Frost & Sullivan and his understanding of their
`practices and the award, Frost & Sullivan chose 3DVU for the award among
`numerous other navigation solutions that were available at the time.” PO Opp. to
`Pet Mot. to Exclude 6. Patent Owner does not provide any evidence corroborating
`receipt of the alleged award. On cross examination, Mr. Levanon testified that he
`and possibly others wrote this press release. Ex. 1019, Levanon Dep. Tr. 61:22–
`62:11. As the document is not relied on for its truth, and there is no corroboration
`of the alleged award from Frost & Sullivan, no other inference can be made
`concerning the date of the statement. In view of the above, Exhibit 2021 is
`excluded.
`Exhibits 2030 and 2032 are press releases concerning the use of 3DVU
`technology in Kenwood (DENSO) automobile navigation systems. Patent Owner
`references Mr. Levanon’s testimony about the use of 3DVU technology in the
`Kenwood system and contends that the exhibits are not offered for the truth of their
`
`
`1 Patent Owner filed a confidential version and a public version of the Declaration
`of Isaac Levanon as Exhibits 2004 and 2072, respectively. We only references the
`public version in this Order.
`
`
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`IPR2016-00449
`Patent 8,924,506 B2
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`contents, but only to show that the statements were made and the timing of these
`statements. PO Opp. to Pet. Mot. to Exclude. 7 (citing Levanon Decl. ¶¶ 32–33,
`43–61). There is no purpose to showing 3DVU made the statement or when the
`statements were made, except for the truth of the matters asserted. Patent Owner
`effectively acknowledges that it relies upon the exhibits to show when the
`statements were made, i.e., that it announced the FlyOver Visual Map Technology
`for the Kenwood HDD car navigation system as early as October 6, 2002.
`Ex. 2030, 1. Thus, Exhibits 2030 and 2032 are out of court statements for the truth
`of the matter asserted and are excluded.
`Exhibit 2039 is a 2006 press release concerning the demonstration of 3DVU
`technology at the Busan International Motor Show. Mr. Levanon, who was CEO
`of 3DVU and had personal knowledge of the circumstances, appeared for
`deposition, was subject to cross examination, and testified that 3DVU cooperated
`with Daewoo to develop the car navigation system demonstrated at the Busan
`show. PO Opp. to Pet. Mot. to Exclude 7–8 (citing Levanon Decl. ¶¶ 80–81).
`Nevertheless, Patent Owner contends that the press release is not relied upon for
`the truth of what it asserts but to show the statements were made and the dates of
`the statements. In view of Mr. Levanon’s testimony, Exhibit 2039 is admitted for
`this limited purpose and may not be relied upon for any other purpose.
`Exhibits 2046 and 2047 are press releases concerning 3DVU’s Navi2Go
`application. Mr. Levanon testified that he reviewed these documents when they
`were created and believed them to be correct. Ex. 1019, Levanon Dep. Tr. 71:5–
`72:11. Patent Owner argues that Mr. Levanon, who was CEO of 3DVU and had
`personal knowledge, independently confirmed the timeline of the relevant events.
`PO Opp. to Pet. Mot to Exclude 8 (citing Ex. 1019, Levanon Dep. Tr. 70:19–
`73:11). Nevertheless, Patent Owner states that it does not rely upon the documents
`
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`IPR2016-00449
`Patent 8,924,506 B2
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`for their truth, but only to demonstrate the statements were made and the timing of
`the statements relating to the release of the 3DVU applications. Exhibits 2046 and
`2047 are admitted for that limited purpose only.
`Exhibit 2063 is a press release concerning a memorandum of understanding
`between Infoterra and 3DVU. Mr. Levanon testified that Infoterra wrote it and
`was responsible for the content, although 3DVU went through it with Infoterra and
`Mr. Levanon has no reason to believe it was inaccurate at its release date. Ex.
`1019, Levanon Dep. Tr. 73:12–74:25. The document also refers to 3DVU having
`been selected for Red Herring’s list of most promising European companies in
`2005, consistent with Mr. Levanon’s declaration testimony. Levanon Decl. ¶ 36.
`Patent Owner relies on the document to show the date of a statement made
`regarding 3DVU’s selection for Red Herring’s list and not for the truth of the
`statements therein. Other than Mr. Levanon’s testimony concerning 3DVU’s
`selection by Red Herring, there is no corroboration of that selection. Thus, Exhibit
`2063 is an out of court statement offered to prove the truth of the matter asserted,
`i.e., that 3DVU was selected for recognition by Red Herring. Exhibit 2063 is
`excluded.
`Exhibit 2044 is an article by Sho Tabata published at technode.com. Patent
`Owner does not rely on the document to demonstrate that Navi2Go sold well, but
`that a particular author stated it sold well. PO Opp. to Pet. Mot. to Exclude 10.
`Thus, Patent Owner does not rely upon the document to show that Navi2Go
`demonstrates any objective consideration that would render the claims not obvious,
`such as addressing a long felt need. The out of court statement of one author that
`Navi2Go sold well has no basis of support and in the context of this proceeding has
`no purpose other than to show the truth of the matter, i.e., that Navi2Go sold well.
`Exhibit 2044 is excluded.
`
`
`
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`IPR2016-00449
`Patent 8,924,506 B2
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`
`Exhibit 2045 is an article by CNET stating the 3DVU announced the
`Way2Go service in early 2009. Ex. 2045, 1. Patent Owner states that it does not
`rely on Exhibit 2045 for the truth of the statements, but to show the statements
`were made and their timing. PO Opp. to Pet. Mot. to Exclude 8. The statement in
`the article is an out of court statement asserting the truth of the date 3DVU
`introduced Way2Go. Exhibit 2045 is excluded.
`Exhibit 2048 is a press release in Directions Magazine stating that 3DVU’s
`Mobile Navigation is a best seller on Sprint’s Shop. Mr. Levanon testified that he
`approved the document at the time of its creation and does not see anything
`inaccurate. Levanon Dep. Tr. 72:18–73:11. Mr. Levanon, who was CEO of
`3DVU, also testified that thousands of consumers used Navi2Go within months of
`its launch. Ex. 2004 ¶ 90. Nevertheless, Patent Owner relies on Exhibit 2048 not
`for the truth of its content but only to show that 3DVU published the press release.
`Exhibit 2048 is admitted for this limited purpose.
`Exhibit 2049 is an article in VC Cafe by Eze Vidra titled “Navi2Go: The
`Ultimate Killer Navigation Application?” Ex. 2049, 1. Patent Owner cites this
`exhibit as representing the opinion of the writer. PO Opp. to Pet. Mot. to Exclude
`12. Although the article states VC Cafe’s take as it “would really be” a killer
`navigation app “[i]f they could only make it free by combining it with an in-GPS
`monetization platform,” Exhibit 2049 is best characterized as reporting on 3DVU
`and interviewing the company representative. The questions and answers that
`constitute almost the entirety of the article are offered for their truth and no other
`purpose. Therefore, Exhibit 2049 is excluded.
`Exhibits 2051–2053 are brochures concerning the Kenwood car navigation
`system developed by DENSO. Each exhibit includes a translation by Patent
`Owner’s counsel of a small portion of the brochure referring to the FlyOver
`
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`IPR2016-00449
`Patent 8,924,506 B2
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`trademark and product. Ex. 2051, 39–41; Ex. 2052, 63–64; Ex. 2053, 43–45.
`Petitioner states that the relevant portions of the documents were translated. PO
`Opp. to Pet. to Exclude 5. Patent Owner argues that Mr. Levanon testified in his
`declaration and on cross examination that the Kenwood product included the
`FlyOver product. Id. at 4. However, during cross examination Mr. Levanon was
`unable to read the documents because they are in Japanese, was unable to identify
`what technologies were incorporated into the Kenwood system and was unable to
`state whether the map data in the systems represented by Exhibits 2051–2053 was
`stored locally on a hard drive or disk. Ex. 1019, Levanon Dep. Tr. 56:24–58:16.
`Patent Owner presents five pages of argument discussing development of the
`Kenwood system, industry praise, and other testimony by Mr. Levanon. However,
`the issue before us is not the Kenwood system itself or Mr. Levanon’s testimony,
`but the admissibility of the exhibits. We agree with Petitioner that Patent Owner
`uses its opposition to the motion to exclude improperly to advance additional
`arguments concerning non-obviousness issues that should be addressed in the
`substantive papers. Patent Owner also has not laid sufficient foundation to support
`its assertion that the documents are business records kept in the ordinary course of
`business. As the documents are in Japanese and no translations have been
`provided, we are unable to assess them for any purpose. They are, therefore,
`excluded.
`Petitioner does not explain why Exhibit 2059 should be excluded as
`inadmissible hearsay. According to Patent Owner, Exhibit 2059 is a Microsoft
`web document entitled “Bing Maps Tile System” from a Microsoft website. PO
`Opp. to Pet. Mot. to Exclude 12. Patent Owner asserts that Exhibit 2059 is not
`hearsay under Fed. R. Evid. 801(d)(2) as Microsoft’s own statement offered
`against Microsoft. Petitioner does not dispute Patent Owner’s contention. We
`
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`IPR2016-00449
`Patent 8,924,506 B2
`
`agree with Patent Owner that Exhibit 2059 is an opposing party’s statement offered
`against it, and, therefore, is not hearsay under Fed. R. Evid. 801(d)(2).
`Accordingly, Petitioner’s Motion to Exclude is denied with respect to Exhibit
`2059.
`
`
`
`In consideration of the above it is
`ORDERED that Petitioner’s Motion to Exclude is GRANTED-IN PART;
`FURTHER ORDERED that Exhibits 2016–2018, 2021, 2030, 2032, 2035,
`2036, 2044, 2045, 2049, 2051–2053, and 2063 are excluded;
`FURTHER ORDERED that Exhibit 2039 is admitted for the limited purpose
`of showing the statements were made and the dates of the statements, but not the
`truth of the statements;
`FURTHER ORDERED that Exhibits 2046 and 2047 are admitted for the
`limited purpose of demonstrating the statements therein were made and the timing
`of the statements relating to the release of the 3DVU Navi2Go application, but not
`the truth of the statements;
`FURTHER ORDERED that Exhibit 2048 is admitted for the limited purpose
`of showing that 3DVU published the press release, but not the truth of the
`statements therein; and
`FURTHER ORDERED that Exhibit 2059 is admitted.
`
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`9
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`IPR2016-00449
`Patent 8,924,506 B2
`
`
`PETITIONER:
`Chun M. Ng
`Patrick J. McKeever
`Matthew C. Bernstein
`Vinay Sathe
`Evan S. Day
`PERKINS COIE LLP
`CNg@perkinscoie.comBing
`PMcKeever@perkinscoie.com
`MBernstein@perkinscoie.com
`VSathe@perkinscoie.com
`EDay@perkinscoie.com
`
`PATENT OWNER:
`
`Chris Coulson
`Clifford Ulrich
`ANDREWS KURTH KENYON LLP
`ccoulson@kenyon.com
`culrich@kenyon.com
`
`
`
`
`
`
`10
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`
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