`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`FACEBOOK, INC., INSTAGRAM LLC,
`Petitioners,
`
`v.
`
`SKKY, LLC,
`Patent Owner.
`
`
`
`Case IPR2017-00550
`Patent No. 9,037,502
`
`
`PETITIONERS’ MOTION TO EXCLUDE
`EVIDENCE UNDER 37 C.F.R. § 42.64(c)
`
`
`
`
`
`
`Case IPR2017-00550
`Patent 9,037,502
`
`I.
`
`INTRODUCTION
`Facebook, Inc. and Instagram LLC (“Petitioners”) file this motion pursuant to
`
`37 C.F.R. § 42.64(c) and in accordance with Due Date 4 of the Scheduling Order
`
`(Paper 12) to exclude Skky, LLC’s (“Patent Owner”) Exhibits 2003 and 2004.
`
`Petitioners timely objected to these exhibits on July 27, 2017 (Paper 13).
`
`II. ARGUMENT
`The Board should exclude Exhibits 2003 and 2004 because Patent Owner
`has failed to establish their authenticity
`Exhibits 2003 and 2004 should be excluded for two reasons:
`
`First, Patent Owner has failed to affirmatively authenticate Exhibits 2003 and
`
`2004 under Federal Rule of Evidence (FRE) 901. Rule 901 states that “the proponent
`
`must produce evidence sufficient to support a finding that the item is what the
`
`proponent claims it is.” FRE 901(a). Patent Owner has offered no evidence
`
`whatsoever to show that Exhibits 2003 and 2004 are authentic under Rule 901.
`
`Exhibit 2003 purports to be minutes of an alleged meeting that took place
`
`almost 20 years ago. The document lacks a typical cover page. The first page of the
`
`document is titled “(Part A) Executive Summary SMG#24bis,” which suggests, the
`
`presence of a “(Part B)” or “Annexes” notwithstanding, that the document could
`
`have been part of a larger document or collection of documents. Exhibit 2004
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`purports to be a memorandum entitled “Technical analysis and comparison of UTRA
`
`concepts,” with a date of December 15-19, 1997. Patent Owner cites these two
`
`
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`1
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`
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`Case IPR2017-00550
`Patent 9,037,502
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`exhibits to support its argument about the alleged actions and views of two groups
`
`of “persons of extraordinary skill in the art.” (See Paper 8 at 20-22, 29-30; Paper 14
`
`at 32-33, 40-43.) But no attempt has been made to provide any foundation for the
`
`exhibits themselves, and Patent Owner provides no expert or percipient witness
`
`testimony to explain or vouch for any aspect of their authenticity. These exhibits
`
`lack cover pages, copyright or publication notices, library cataloging information, or
`
`any other indicia of provenance that might suggest authenticity. There is no
`
`indication that these materials came from a book or other printed publication, and
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`Patent Owner has not explained where it obtained either of these documents.1
`
`Rule 901(b) provides an exemplary list of the types of evidence that may be
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`used to satisfy the authentication requirement, including testimony of a
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`knowledgeable witness, comparison with an authenticated specimen, distinctive
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`characteristics of the document, evidence about public records, evidence about how
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`the proffered exhibit was created or maintained, among other things. See FRE
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`901(b). The Patent Owner has offered no such evidence.
`
`
`1 In response to nearly identical motions to exclude in related proceedings, the Patent
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`Owner has likewise failed to lay foundation for or explain the provenance of Exhibits
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`2003 and 2004. See IPR2017-00088 (Paper 25); IPR2017-00089 (Paper 23);
`
`IPR2017-00092 (Paper 23); IPR2017-00097 (Paper 23).
`
`
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`2
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`Case IPR2017-00550
`Patent 9,037,502
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`Second, Exhibits 2003 and 2004 are not self-authenticating under Rule 902.
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`Rule 902 states that the following documents are self-authenticating: (1) sealed and
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`signed domestic public documents; (2) signed and certified domestic public
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`documents; (3) foreign public documents; (4) certified copies of public records; (5)
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`official publications by a public authority; (6) newspapers and periodicals; (7) trade
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`inscriptions; (8) acknowledged (e.g., notarized) documents; (9) signed commercial
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`paper and related documents; (10) documents presumed genuine or authentic under
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`a federal statute; (11) certified domestic records of regularly conducted activity; or
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`(12) certified foreign records of a regularly conducted activity. See FRE 902(1)-(12).
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`Exhibits 2003 and 2004 do not fall into any of those categories. Petitioners’ best
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`guess is that these exhibits are copies of electronic documents downloaded from
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`unknown sources on the Internet, but the Board has recognized that “[p]rintouts from
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`websites are not self-authenticating.” Xactware Sols., Inc. v. Pictometry Int’l Corp.,
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`IPR2016-00594, Paper 46 at 11 (P.T.A.B. Aug. 24, 2017).
`
`Patent Owner did nothing to cure the defects of Exhibits 2003 and 2004
`On July 27, 2017, Petitioners timely put Patent Owner on notice that Exhibits
`
`2003 and 2004 were objectionable and inadmissible under FRE 901 and 902. (Paper
`
`13 at 3-5.) Patent Owner submitted no supplemental evidence to authenticate
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`Exhibits 2003 or 2004 by the August 10, 2017 deadline. See 37 C.F.R. § 42.64(b)(2)
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`(providing 10 business days to cure). Nor did Patent Owner provide any evidence of
`
`
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`3
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`Case IPR2017-00550
`Patent 9,037,502
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`authenticity in its subsequent Patent Owner Response (Paper 14) filed on October
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`13, 2017. Petitioners are thus unaware of any attempt by Patent Owner to address
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`the authenticity of Exhibits 2003 or 2004 in this proceeding. Under these
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`circumstances, the Board should exclude the challenged exhibits.
`
`
`
`Dated: March 6, 2018
`
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
`
`
`
`
`
`By:
`
`
`
`
`Respectfully submitted,
`
`
`
`
` /Heidi L. Keefe/
`Heidi L. Keefe
`Reg. No. 40,673
`Counsel for Petitioner
`Facebook, Inc.
`
`
`
`
`
`4
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`Case IPR2017-00550
`Patent 9,037,502
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify, pursuant to 37 C.F.R. Section 42.6, that a complete copy of
`the attached PETITIONERS’ MOTION TO EXCLUDE EVIDENCE UNDER
`37 C.F.R. § 42.64(c) is being served via electronic mail on the 6th day of March,
`2018, upon counsel of record for the Patent Owner as follows:
`
`
`
`
`
`
`Ryan M. Schultz
`rschultz@robinskaplan.com
`Andrew J. Kabat
`akabat@robinskaplan.com
`ROBINS KAPLAN LLP
`
`
`
`DATED: March 6, 2018
`
`
`
`
`
`COOLEY LLP
`ATTN: Patent Docketing
`1299 Pennsylvania Ave. NW, Suite 700
`Washington, D.C. 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
`
`
`
`
`
`
`
`
`/ Heidi L. Keefe /
`Heidi L. Keefe
`Reg. No. 40,673
`
`1
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