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`Paper No. 11
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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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`––––––––––––––––––
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`GOOGLE LLC,
`Petitioner,
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`v.
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`BLACKBERRY LTD.,
`Patent Owner.
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`––––––––––––––––––
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`Case No. IPR2017-01619
`U.S. Patent No. 8,489,868 B2
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`––––––––––––––––––
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`PATENT OWNER’S OBJECTIONS TO EVIDENCE
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`IPR2017-01619
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`Patent Owner’s Objections to Evidence
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`Pursuant to 37 C.F.R. § 42.64(b)(1), the undersigned, on behalf of and acting
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`in a representative capacity for Patent Owner BlackBerry Limited (“Patent
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`Owner”), hereby submits the following objections to Petitioner Google Inc.’s
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`(“Petitioner”) Exhibits 1002, 1008, 1009, 1016, 1024, 1028, and 1031-1037, and
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`any reference thereto/reliance thereon, without limitation. Patent Owner’s
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`objections below apply the Federal Rules of Evidence (“F.R.E”) as required by 37
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`C.F.R. § 42.62. These objections address evidentiary deficiencies in the materials
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`submitted by Petitioner with its Petition on June 16, 2017.
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`The following objections apply to Exhibits 1002, 1008, 1009, 1016, 1024,
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`1028, and 1031-1037 as they are actually presented by Petitioner, in the context of
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`Petitioner’s June 16, 2017 Petition (Paper 1) and not in the context of any other
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`substantive argument on the merits of the instituted grounds in this proceeding.
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`Patent Owner expressly objects to any other purported use of these Exhibits,
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`including as substantive evidence in this proceeding, which would be untimely and
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`improper under the applicable rules, and Patent Owner expressly asserts, reserves
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`and does not waive any other objections that would be applicable in such a context.
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`I.
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`Objections to Exhibit 1002, and Any Reference to/Reliance Thereon
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`Grounds for objection: F.R.E. 702 (“Testimony by Expert Witnesses”);
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`F.R.E. 403 (“Excluding Relevant Evidence for Prejudice, Confusion, Waste of
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`Time, or Other Reasons”); and 37 C.F.R. § 42.61 (“Admissibility”).
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`1
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`IPR2017-01619
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`Patent Owner’s Objections to Evidence
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`Patent Owner objects to the use of Exhibit 1002 under F.R.E. 702 and 37
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`C.F.R. § 42.61. Exhibit 1002 is the Declaration of Dr. Patrick D. McDaniel in
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`support of the Petition. Exhibit 1002 purports to provide expert testimony in this
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`matter, but fails—in many key respects—to establish the basis for Dr. McDaniel’s
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`opinions. For example, Dr. McDaniel offers only conclusory statements in support
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`of his opinions regarding technical features that were purportedly “well known” at
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`the time of the alleged invention. See, e.g., Ex. 1002, ¶¶21-47. Dr. McDaniel also
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`offers only conclusory statements in support of his opinions that it would have
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`been obvious for a POSITA to combine Garst and Gong so as to satisfy certain
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`claims. See, e.g., Ex. 1002, ¶¶112-209. Similarly, Dr. McDaniel offers only
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`conclusory statements in support of his opinions that it would have been obvious
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`for a POSITA to combine elements from Davis with Garst and Gong so as to
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`satisfy certain claims. See, e.g., Ex. 1002, ¶¶210-17. Likewise, Dr. McDaniel
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`offers only conclusory statements in support of his opinion that it would have been
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`obvious for a POSITA to combine elements from Chang with Garst and Gong so
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`as to satisfy certain claims. See, e.g., Ex. 1002, ¶¶218-27. Dr. McDaniel also
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`offers only conclusory statements in support of his opinion that it would have been
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`obvious for a POSITA to combine elements from Sibert with Garst and Gong so as
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`to satisfy certain claims. See, e.g., Ex. 1002, ¶¶228-35. Dr. McDaniel further
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`offers only conclusory statements in support of his opinion that it would have been
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`2
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`IPR2017-01619
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`obvious for a POSITA to combine elements from Wong-Insley with Garst and
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`Patent Owner’s Objections to Evidence
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`Gong so as to satisfy certain claims. See, e.g., Ex. 1002, ¶¶236-43. Dr. McDaniel
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`further offers only conclusory statements in support of his opinion that it would
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`have been obvious for a POSITA to combine elements from Haddock with Garst
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`and Gong so as to satisfy certain claims. See, e.g., Ex. 1002, ¶¶244-49.
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`Such conclusory statements without reference to the underlying basis for Dr.
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`McDaniel’s opinion is not proper testimony under F.R.E. 702 and should be
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`excluded. Accordingly, permitting reliance on this document in the Petition or
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`other submissions by Petitioner would be misleading and unfairly prejudicial to
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`Patent Owner (F.R.E. 403).
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`II. Objections to Exhibits 1008, 1009, 1016, 1024, 1028, and 1031-1037, and
`Any Reference to/Reliance Thereon
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`Grounds for objection: F.R.E. 901 (“Authenticating or Identifying
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`Evidence”); F.R.E. 1002 (“Requirement of the Original”); F.R.E. 1003
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`(“Admissibility of Duplicates”); F.R.E. 801, 802 (Impermissible Hearsay); F.R.E.
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`403 (“Excluding Relevant Evidence for Prejudice, Confusion, Waste of Time, or
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`Other Reasons”); and 37 C.F.R. § 42.61 (“Admissibility”).
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`Patent Owner objects to the use of Exhibits 1008, 1009, 1016, 1024, 1028,
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`and 1031-1037 under F.R.E. 901, 1002, 1003, and 37 C.F.R. § 42.61 because
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`Petitioner fails to provide the authentication required for these documents, and the
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`Exhibits are not self-authenticating under F.R.E. 902.
`3
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`IPR2017-01619
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`Patent Owner’s Objections to Evidence
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`Patent Owner further objects to Exhibits 1008, 1009, 1016, 1024, 1028, and
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`1031-1037 as including impermissible hearsay under F.R.E. 801 and 802 to the
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`extent to which the out of court statements therein are offered for the truth of the
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`matters asserted and constitute impermissible hearsay for which Petitioner has not
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`demonstrated any exception or exclusion to the rule against hearsay. For example,
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`Petitioner relies on the truth of out of court statements made in Exhibits 1016 and
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`1033-1037 to support its argument that the Gong reference was “published and
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`publicly available” prior to the priority date of the ’868 patent, but has not
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`demonstrated that any exception or exclusion to the rule against hearsay applies.
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`Pet. 4. Accordingly, permitting reliance on this document in the Petition or other
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`submissions by Petitioner would be misleading and unfairly prejudicial to Patent
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`Owner (F.R.E. 403).
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`
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`Dated: January 9, 2018
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`Respectfully Submitted,
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`/Ching-Lee Fukuda/
`Ching-Lee Fukuda
`Reg. No. 44,334
`SIDLEY AUSTIN LLP
`787 Seventh Avenue
`New York, NY 10019
`P: (212) 839-7364
`F: (212) 839-5599
`Attorney for Patent Owner
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`4
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`IPR2017-01619
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`Patent Owner’s Objections to Evidence
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I hereby certify that on this 9th day of
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`January, 2018, I caused to be served a true and correct copy of the foregoing by
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`electronic mail on the following counsel:
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`Naveen Modi
`Joseph E. Palys
`Phillip Citroën
`John Holley
`PH-Google-BB-IPR@paulhastings.com
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`Dated: January 9, 2018
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`Respectfully Submitted,
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`/Ching-Lee Fukuda/
`Ching-Lee Fukuda
`Reg. No. 44,334
`SIDLEY AUSTIN LLP
`787 Seventh Avenue
`New York, NY 10019
`P: (212) 839-7364
`F: (212) 839-5599
`Attorney for Patent Owner
`
`
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`i
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