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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_____________________
`
`
`APPLE INC. and FITBIT, INC.
`Petitioner
`
`v.
`
`VALENCELL, INC.
`Patent Owner
`____________
`
`Case IPR2017-003181
`U.S. Patent No. 8,886,269
`__________________
`
`
`PETITIONER APPLE INC.’S MOTION TO EXCLUDE EVIDENCE
`UNDER 37 C.F.R. § 42.64(c)
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`1 Case IPR2017-01554 has been joined with this proceeding.
`
`
`
`Case IPR2017-00318
`U.S. Patent No. 8,886,269
`
`I.
`
`Relief Requested
`
`Pursuant to 37 C.F.R. §§ 42.62 and 42.64(c), Petitioner Apple Inc. (“Apple”)
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`moves to exclude from the record inadmissible evidence submitted by Patent
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`Owner Valencell, Inc. (“Valencell”). More specifically, the Board should exclude
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`Exhibits 2152 and 2153. It is not enough for the Board to find that this Motion is
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`moot if the Board does not rely on the inadmissible evidence in reaching its Final
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`Written Decision. If Exhibits 2152 and 2153 remain in the record, Valencell could
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`continue to rely on them on appeal to the Federal Circuit, and Apple would be
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`unfairly forced to address them again.
`
`Summary of the Inadmissible Evidence and Late Supplemental
`II.
`Evidence
`A. Apple’s Timely Objections to Exhibits 2152 and 2153
`On December 29, 2017, Valencell submitted with its Patent Owner’s Reply
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`in Support of its Conditional Motion to Amend (Paper 37) Exhibit 2152 (Analog
`
`Devices Datasheet for ADXL311 Rev A) (“Rev A Datasheet”) and Exhibit 2153
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`(Analog Devices Datasheet for ADXL311 Rev B) (“Rev B Datasheet”). On
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`January 8, 2018, Apple timely filed and served objections to Exhibits 2152 and
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`2153 under 37 C.F.R. § 42.64(b)(1) within the allowed five business days from
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`service of the evidence.2 Apple objected to Exhibits 2152 and 2153 as inadmissible
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`hearsay under FRE 801 and 802 and for lack of authentication under FRE 901.
`
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`2 Monday, January 1, 2018 was a Federal holiday.
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`Case IPR2017-00318
`U.S. Patent No. 8,886,269
`Apple also objected to Exhibit 2153 as prejudicial, confusing, and potentially
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`misleading under FRE 403.
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`B. Valencell’s Late Service of Supplemental Evidence
`Under 37 C.F.R. § 42.64(b)(2), Valencell’s deadline to serve Apple with any
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`Supplemental Evidence was January 23, 2018–ten (10) business days after Apple’s
`
`objections.3 On January 24, 2018, one day after the deadline, Valencell served
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`Apple via email with Supplemental Evidence related to Exhibits 2152 and 2153.
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`Because this Supplemental Evidence was untimely, Valencell is precluded from
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`submitting it in response to this Motion to Exclude. See e.g., Nuvasive, Inc. v.
`
`Warsaw Orthopedic, Inc., IPR2013-00206, Paper 23, p. 3 (“…a party need not
`
`serve supplemental evidence, but if it will rely on such supplemental evidence, it
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`need serve the evidence within the required deadline.” (emphasis added)).
`
`III. The Board should exclude Exhibit 2152 (Rev A Datasheet)
`A. Exhibit 2152 is inadmissible hearsay under FRE 801 and 802.
`Hearsay is an out-of-court statement offered to prove the truth of the matter
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`asserted. FRE 801. And hearsay is inadmissible unless subject to an exception.
`
`FRE 802. Exhibit 2152 is inadmissible hearsay because it is offered to prove the
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`truth of the matter asserted and no exception applies.
`
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`3 January 15, 2018 was the Martin Luther King, Jr. Federal Holiday.
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`Case IPR2017-00318
`U.S. Patent No. 8,886,269
`The entirety of Exhibit 2152 constitutes an out-of-court statement. Valencell
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`provides a quote from Exhibit 2152, asserting that “The Rev A Datasheet provides
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`that ‘[t]he ADXL311 is built using the same proven iMEMS process used in over
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`100 million Analog Devices accelerometers shipped to date…’ Ex. 2152 at p.
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`1….” (Paper 37, p. 8.) Valencell then asserts “From this, it is clear that both the
`
`Rev A and Rev B of the ADXL311 accelerometer are in fact MEMS
`
`(MicroElectroMechanical Systems) devices.” (Id. (emphasis added).) Thus, it could
`
`not be any clearer that Valencell is impermissibly offering an out-of-court
`
`statement to prove the truth of the matter asserted. This is classic hearsay and no
`
`exception applies to Exhibit 2152. Therefore, the Board should exclude Exhibit
`
`2152.
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`Exhibit 2152 is not properly authenticated under FRE 901.
`
`B.
`To authenticate an item of evidence, Valencell, as the proponent, must
`
`produce evidence sufficient to support a finding that the item is what Valencell
`
`claims it is. FRE 901. Valencell has not met this burden, nor is Exhibit 2152 self-
`
`authenticating under FRE 902. Therefore, the Board should exclude Exhibit 2152.
`
`FRE 901 “requires authentication of evidence as a condition precedent to
`
`admissibility.” Xactware Solutions, Inc. v. Pictometry Int’l Corp., No. IPR2016-
`
`00594, Paper 46, p. 11 (P.T.A.B. Aug. 24, 2017) (internal quotations omitted).
`
`“This requirement is satisfied by evidence sufficient to support a finding that the
`
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`Case IPR2017-00318
`U.S. Patent No. 8,886,269
`item is what its proponent claims.” Id. (internal quotations omitted). Valencell has
`
`not provided any evidence regarding where Exhibit 2152 was obtained or by whom
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`it was produced.
`
`Thus, Valencell has not met its burden under FRE 901. And Exhibit 2151 is
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`not self-authenticating under FRE 902. Therefore, the Board should exclude
`
`Exhibit 2152.
`
`IV. The Board should exclude Exhibit 2153 (Rev B Datasheet)
`A. Exhibit 2153 is prejudicial, confusing, and potentially misleading
`under FRE 403.
`
`Every page of Exhibit 2153 includes a large, inconspicuous watermark that
`
`reads “OBSOLETE.” This casts doubt on the veracity and relevance of the entire
`
`document. Thus, Exhibit 2153 is prejudicial, confusing, and potentially misleading.
`
`Therefore, the Board should exclude Exhibit 2153.
`
`Exhibit 2153 is inadmissible hearsay under FRE 801 and 802.
`
`B.
`Hearsay is an out-of-court statement offered to prove the truth of the matter
`
`asserted. FRE 801. And hearsay is inadmissible unless subject to an exception.
`
`FRE 802. Exhibit 2153 is inadmissible hearsay because it is offered to prove the
`
`truth of the matter asserted and no exception applies.
`
`The entirety of Exhibit 2153 constitutes an out-of-court statement. Valencell
`
`provides a quote from Exhibit 2153, asserting that “While the Rev B Datasheet
`
`provides that ‘[t]he ADXL311 is built using the same proven iMEMS process used
`
`
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`- 4 -
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`Case IPR2017-00318
`U.S. Patent No. 8,886,269
`in over 180 million Analog Devices accelerometers shipped to date…’, only
`
`updating the number of devices shipped. Ex. 2153 at p. 1….” (Paper 37, p. 8.)
`
`Valencell then asserts “From this, it is clear that both the Rev A and Rev B of the
`
`ADXL311 accelerometer are in fact MEMS (MicroElectroMechanical Systems)
`
`devices.” (Id. (emphasis added).) Thus, it could not be any clearer that Valencell is
`
`impermissibly offering an out-of-court statement to prove the truth of the matter
`
`asserted. This is classic hearsay and no exception applies to Exhibit 2153.
`
`Therefore, the Board should exclude Exhibit 2153.
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`C. Exhibit 2153 is not properly authenticated under FRE 901.
`To authenticate an item of evidence, Valencell, as the proponent, must
`
`produce evidence sufficient to support finding that the item is what Valencell
`
`claims it is. FRE 901. Valencell has not met this burden, nor is Exhibit 2153 self-
`
`authenticating under FRE 902. Therefore, the Board should exclude Exhibit 2153.
`
`FRE 901 “requires authentication of evidence as a condition precedent to
`
`admissibility.” Xactware Solutions, Inc. v. Pictometry Int’l Corp., No. IPR2016-
`
`00594, Paper 46, p. 11 (P.T.A.B. Aug. 24, 2017) (internal quotations omitted).
`
`“This requirement is satisfied by evidence sufficient to support a finding that the
`
`item is what its proponent claims.” Id. (internal quotations omitted). Valencell has
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`not provided any evidence regarding where Exhibit 2153 was obtained or by whom
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`it was produced.
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`Case IPR2017-00318
`U.S. Patent No. 8,886,269
`Thus, Valencell has not met its burden under FRE 901. And Exhibit 2153 is
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`not self-authenticating under FRE 902. Therefore, the Board should exclude
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`Exhibit 2153.
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`
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`
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`Respectfully submitted,
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Michelle K. Holoubek, Reg. # 54,179/
`
`Michelle K. Holoubek
`Registration No. 54,179
`Attorney for Petitioner Apple Inc.
`
`Date: February 9, 2018
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`
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`Case IPR2017-00318
`U.S. Patent No. 8,886,269
`CERTIFICATION OF SERVICE (37 C.F.R. §§42.6(e))
`
`The undersigned hereby certifies that a true and correct copy of the above-
`
`captioned PETITIONER APPLE
`
`INC.’S MOTION TO EXCLUDE
`
`EVIDENCE UNDER 37 C.F.R. § 42.64(c) was served electronically via email in
`
`its entirety on February 9, 2018 on the following:
`
`Justin B. Kimble (Lead Counsel)
`Jeffrey R. Bragalone (Back-up Counsel)
`Nicholas C. Kliewer (Back-up Counsel)
`T. William Kennedy (Back-up Counsel)
`Jonathan H. Rastegar (Back-up Counsel)
`Brian P. Herrmann (Back-up Counsel)
`Marcus Benavides (Back-up Counsel)
`R. Scott Rhoades (Back-up Counsel)
`Sanford E. Warren, Jr. (Back-up Counsel)
`
`Harper Batts (Counsel for Fitbit, Inc.)
`Jeremy Taylor (Counsel for Fitbit, Inc.)
`
`
`
`JKimble-IPR@bcpc-law.com
`jbragalone@bcpc-law.com
`nkliewer@bcpc-law.com
`bkennedy@bcpc-law.com
`jrastegar@bcpc-law.com
`bherrmann@bcpc-law.com
`mbenavides@bcpc-law.com
`srhoades@wriplaw.com
`swarren@wriplaw.com
`
`harper.batts@bakerbotts.com
`jeremy.taylor@bakerbotts.com
`dlfitbit-valencell@bakerbotts.com
`
`
`Respectfully submitted,
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Michelle K. Holoubek, Reg. # 54,179/
`
`Michelle K. Holoubek
`Registration No. 54,179
`Attorney for Petitioner Apple Inc.
`
`
`
`
`
`
`
`
`Date: February 9, 2018
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`
`
`
`
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