UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`APPLE INC.,
`Petitioner,
`v.
`UNILOC LUXEMBOURG S.A.1,
`Patent Owner
`_____________
`IPR2018-00282
`Patent 7,092,671 B2
`____________
`
`PETITIONER’S RESPONSE TO PATENT OWNER’S MOTION FOR
`OBSERVATION ON THE CROSS-EXAMINATION DEPOSITION
`TESTIMONY OF MARC BREVERMAN
`
`
`
`
`
`1 According to Patent Owner’s Updated Mandatory Notice, Paper 9, the owner of
`this patent is Uniloc 2017 LLC.
`
`
`_____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`APPLE INC.,
`Petitioner,
`v.
`UNILOC LUXEMBOURG S.A.1,
`Patent Owner
`_____________
`IPR2018-00282
`Patent 7,092,671 B2
`____________
`
`PETITIONER’S RESPONSE TO PATENT OWNER’S MOTION FOR
`OBSERVATION ON THE CROSS-EXAMINATION DEPOSITION
`TESTIMONY OF MARC BREVERMAN
`
`
`
`
`
`1 According to Patent Owner’s Updated Mandatory Notice, Paper 9, the owner of
`this patent is Uniloc 2017 LLC.
`
`
`
`Petitioner’s Motion for Observations
`
`This response is submitted in view of the Scheduling Order entered June 8,
`
`
`
`IPR2018-00282
`Patent 7,092,671 B2
`
`2018 (Paper 8) and the parties’ Joint Stipulation to Modify Due Dates filed February
`
`1, 2019 (Paper 20). This paper responds to Patent Owner’s Motion for Observation
`
`on Cross Examination of Marc Breverman (Paper 25) (“Patent Owner’s
`
`Observations”) filed on February 12, 2019, in the present inter partes review.
`
`I. Petitioner’s Objections
`
`Patent Owner’s Observations disregard the Office Patent Trial Practice
`
`Guide’s requirements, and instead, Patent Owner uses the Observations to further
`
`brief Patent Owner’s arguments, such as “the striking similarities between the expert
`
`reports in this IPR (the ‘Apple IPR’) and the Unified IPR (IPR2018-2018-00199),”
`
`and “coordination between the two experts….” Patent Owner’s Observations, pp. 2
`
`and 4. As such, Patent Owner’s Observations are improper and should be expunged.
`
`See Xilinx, Inc. v. Papst Licensing GMBH & CO., KG, IPR2016-00104, Paper 22,
`
`pp. 9-10 (P.T.A.B. May 3, 2017) (expunging Patent Owner’s Motion for
`
`Observation because “Patent Owner did not provide the substantive information
`
`required by the Guidelines” and “Patent Owner’s Motion for Observation is non-
`
`compliant, constitutes additional unauthorized briefing, and is not entitled to
`
`consideration.”).
`
`
`
`
`
`
`
`
`Petitioner’s Motion for Observations
`II. Petitioner’s Responsive Observations
`
`IPR2018-00282
`Patent 7,092,671 B2
`
`To the extent the Board considers the substance of Patent Owner’s
`
`observations, Petitioner directs the Board’s attention to the following testimony
`
`rebutting Patent Owner’s allegations:
`
`a. Observation #1
`
`In Exhibit 2003, on pages 12 to 13, lines 24 to 4, Mr. Breverman testified:
`
`Q. Were you personally involved in coordinating Apple's defense of
`that lawsuit?
`MR. McDOLE: I'm going to object as calling for privilege
`information. I'll let the witness answer that "Yes" or "No."
`THE WITNESS: Yes.
`This testimony is relevant to the issue regarding Mr. Breverman’s personal
`
`knowledge, as argued on pages 2 through 4 of Patent Owner’s Observations. The
`
`testimony is relevant because it shows that Mr. Breverman does have personal
`
`knowledge to support his declaration that Apple did not collaborate with Unified
`
`Patents, Inc. (“Unified”) with respect to the present inter partes review and
`
`IPR2018-00199.
`
`b. Observation #2
`
`In Exhibit 2003, on pages 58 to 59, lines 25 to 6, Mr. Breverman testified:
`
`Q. Who selected the prior art asserted in the Apple IPR?
`A. Apple.
`
`
`
`IPR2018-00282
`Patent 7,092,671 B2
`
`Petitioner’s Motion for Observations
`Q. Okay. What individual within Apple selected the prior art asserted
`in the Apple IPR?
`A. I control the selection of the prior art asserted in this Apple IPR.
`This testimony is relevant to the issue regarding Mr. Breverman’s personal
`
`knowledge, as argued on pages 2 through 4 of Patent Owner’s Observations. The
`
`testimony is relevant because it shows that Mr. Breverman does have personal
`
`knowledge to support his declaration that Apple did not collaborate with Unified
`
`with respect to the present inter partes review and IPR2018-00199.
`
`c. Observation #3
`
`In Exhibit 2003, on page 13, lines 16 to 19, Mr. Breverman testified:
`
`Q. During -- during the time that you oversaw defense of the Uniloc-
`Apple litigation on the '671 patent, did you have any communication
`with Unified?
`A. No.
`This testimony is relevant to the issue regarding Mr. Breverman’s personal
`
`knowledge, as argued on pages 2 through 4 of Patent Owner’s Observations. The
`
`testimony is relevant because it shows that Mr. Breverman does have personal
`
`knowledge to support his declaration that Apple did not collaborate with Unified
`
`with respect to the present inter partes review and IPR2018-00199.
`
`d. Observation #4
`
`In Exhibit 2003, on page 13, lines 23 to 25, Mr. Breverman testified:
`
`
`
`IPR2018-00282
`Patent 7,092,671 B2
`
`Petitioner’s Motion for Observations
`Q. During -- during that period did you have any communication with
`Unified Patents?
`A. No.
`This testimony is relevant to the issue regarding Mr. Breverman’s personal
`
`knowledge, as argued on pages 2 through 4 of Patent Owner’s Observations. The
`
`testimony is relevant because it shows that Mr. Breverman does have personal
`
`knowledge to support his declaration that Apple did not collaborate with Unified
`
`with respect to the present inter partes review and IPR2018-00199.
`
`e. Observation #5
`
`In Exhibit 2003, on page 43, lines 5 to 25, Mr. Breverman testified:
`
`Q. Do you have personal knowledge of all of Apple's communications
`with Unified Patents?
`A. With respect to all communications about the Apple IPR, Unified
`IPR, and the '671 patent, yes.
`Q. Have you personally communicated with Unified concerning
`Apple's membership with Unified Patents?
`A. No.
`Q. Have you personally communicated with Unified Patents
`concerning any Apple IPRs?
`A. No.
`Q. Have you personally communicated with Unified Patents
`concerning any Apple patents?
`A. No.
`
`
`
`IPR2018-00282
`Patent 7,092,671 B2
`
`Petitioner’s Motion for Observations
`Q. Have you personally communicated with Unified Patents
`concerning the '671 patent?
`A. No.
`Q. Have you personally communicated with Unified Patents
`concerning this IPR?
`A. No.
`This testimony is relevant to the issue regarding Mr. Breverman’s personal
`
`knowledge, as argued on pages 2 through 4 of Patent Owner’s Observations. The
`
`testimony is relevant because it shows that Mr. Breverman does have personal
`
`knowledge to support his declaration that Apple did not collaborate with Unified
`
`with respect to the present inter partes review and IPR2018-00199.
`
`f. Observation #6
`
`In Exhibit 2003, on pages 46 to 47, lines 17 to 2, Mr. Breverman testified:
`
`Q. So to your knowledge there's been no communication between
`Apple's counsel in this IPR and Unified's counsel in the Unified IPR
`concerning the '671 patent?
`A. Predating the parties' respective filing of IPR petitions, that's
`correct, there have been no such communications.
`Q. Have there been communications postdating the filing?
`A. The only that I'm aware of are ones in which Uniloc's counsel has
`been copied on.
`This testimony is relevant to the issue regarding Mr. Breverman’s personal
`
`knowledge, as argued on pages 2 through 4 of Patent Owner’s Observations. The
`
`testimony is relevant because it shows that Mr. Breverman does have personal
`
`
`
`IPR2018-00282
`Patent 7,092,671 B2
`
`Petitioner’s Motion for Observations
`knowledge to support his declaration that Apple did not collaborate with Unified
`
`with respect to the present inter partes review and IPR2018-00199.
`
`g. Observation #7
`
`In Exhibit 2003, on pages 21 to 22, lines 9 to 20, Mr. Breverman testified:
`
`Q. When did Unified first become aware of Apple's intention to file
`IPR2018-00282?
`MR. McDOLE: Objection. Form. Outside the scope.
`THE WITNESS: Sometime after our petition was publicly filed with
`the Patent Trial and Appeal Board.
`BY MR. RICHINS:
`Q. How do you know that?
`A. Because Apple did not inform Unified Patents of Apple's interest
`or work on an IPR petition for the '671 patent.
`Q. How do you know that?
`A. A number of reasons I know that, including that I am the member
`of the Apple in-house legal team responsible for supervising the
`preparation and filing of the Apple IPR.
`Q. Okay. You said, "A number of reasons." What are the others?
`A. I conducted an investigation, which I think frankly was
`unnecessary, but I wanted to cast a wide net to ensure my knowledge
`was complete. And I spoke with a number of individuals, as well as
`law firms, to ensure I had complete knowledge that there were no
`such communications with Unified Patents before the filing of the
`Apple IPR concerning the '671 patent.
`Q. Who did you speak with?
`
`
`
`IPR2018-00282
`Patent 7,092,671 B2
`
`Petitioner’s Motion for Observations
`A. Within Apple I spoke with all people that had any responsibility
`that included a touch point with Unified Patents as well as all people
`that had any relationship to the Uniloc litigation as a whole; and that
`included David Melaugh, Noreen Krall, Tanya de la Fuente, Cyndi
`Wheeler, Kim Moore, Jeff Lasker, Jayna Whitt, as well as individuals
`at the Haynes and Boone law firm as well as the Goldman Ismail law
`firm.
`This testimony is relevant to the issue regarding Mr. Breverman’s personal
`
`knowledge, as argued on pages 2 through 4 of Patent Owner’s Observations. The
`
`testimony is relevant because it shows that Mr. Breverman does have personal
`
`knowledge to support his declaration that Apple did not collaborate with Unified
`
`with respect to the present inter partes review and IPR2018-00199.
`
`h. Observation #8
`
`In Exhibit 2003, on pages 56 to 57, lines 4 to 23, Mr. Breverman testified:
`
`Q. Okay. So you do not know if Apple's expert in IPR 2018-00199
`and Unified -- I'm sorry. Strike that. I'll rephrase the question. You do
`not know if Apple's expert in IPR2018-00282 had any communication
`with Unified Patents' expert in IPR2018-00199 concerning '671
`patent; correct?
`MR. McDOLE: Objection. Form. Lacks foundation.
`THE WITNESS: I'm aware of no such communications, and I believe
`it would be contrary to obligations of the expert.
`[. . .]
`BY MR. RICHINS:
`
`
`
`IPR2018-00282
`Patent 7,092,671 B2
`
`Petitioner’s Motion for Observations
`Q. So if they had any communications regarding the '671 patent, you
`wouldn't know; right?
`A. I disagree in part.
`Q. How would you know?
`A. It would contradict, as I understand, the obligations of the expert
`hired by Apple for this petition.
`Q. Okay. But you don't have personal knowledge of whether any such
`communication occurred, do you?
`A. I have no knowledge that such communications occurred, and I
`have reason to believe that no such communications occurred.
`Q. And what is that reason? Is it the obligation you previously stated?
`A. Yes.
`Q. Okay. But you have not asked Dr. Medvidovic if any such
`communications occurred?
`A. Well, like I said, I have no evidence that there was such
`communications. I did not ask. I did not investigate the answer to your
`question. But it would -- I have no reason to believe that there would
`be such communications, and I do have a reason to believe that there
`was no such communications.
`This testimony is relevant to the issue regarding Mr. Breverman’s personal
`
`knowledge, as argued on pages 2 through 4 of Patent Owner’s Observations. The
`
`testimony is relevant because it shows that Mr. Breverman does have personal
`
`knowledge to support his declaration that Apple did not collaborate with Unified
`
`with respect to the present inter partes review and IPR2018-00199.
`
`
`
`
`
`Petitioner’s Motion for Observations
`Dated: February 18, 2019
`
`
`
`HAYNES AND BOONE, LLP
`2323 Victory Avenue, Suite 700
`Dallas, Texas 75219
`Telephone: 214-651-5116
`Facsimile: 214-200-0853
`
`
`
`
`IPR2018-00282
`Patent 7,092,671 B2
`
`
`
`
`
`
`Respectfully Submitted,
`
`/Andrew S. Ehmke/
`Andrew S. Ehmke
`Registration No. 50,271
`Lead Counsel for Petitioner
`
`
`
`
`
`
`Petitioner’s Motion for Observations
`CERTIFICATE OF SERVICE
`
`The undersigned certifies, in accordance with 37 C.F.R. § 42.6(e), that
`
`IPR2018-00282
`Patent 7,092,671 B2
`
`service was made on the Patent Owner as detailed below.
`
`
`
`Date of service February 18, 2019
`
`Manner of service Electronic Mail
`
`Persons served
`
`
`
`
`
`Documents served PETITIONER’S RESPONSE TO PATENT OWNER’S
`MOTION FOR OBSERVATION ON THE CROSS-
`EXAMINATION DEPOSITION TESTIMONY OF MARC
`BREVERMAN
`
`Ryan Loveless (ryan@etheridgelaw.com)
`Brett Mangrum (brett@etheridgelaw.com)
`James Etheridge (jim@etheridgelaw.com)
`Jeffrey Huang (jeff@etheridgelaw.com)
`Travis Richins (travis@etheridgelaw.com)
`
`Etheridge Law Group
`2600 E. Southlake Blvd.
`Ste. 120-324
`Southlake, TX 76092
`
`
`
`
`
`
`
`/Andrew S. Ehmke/
`Andrew S. Ehmke
`Lead Counsel for Petitioner
`Registration No. 50,271
`
`
`
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