Filed: October 18, 2019
`
`
`By:
`
`Filed on behalf of:
`RED.COM, LLC
`Joseph R. Re
`Douglas G. Muehlhauser
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Tel: (949) 760-0404
`Fax: (949) 760-9502
`E-mail: BoxRedcom7C4LP@knobbe.com
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`RED.COM, LLC,
`Patent Owner.
`__________________________________
`
`Case No. IPR2019-01065
`Patent No. 9,245,314
`__________________________________
`
`PATENT OWNER RED’S SUR-REPLY TO PETITIONER’S REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`By:
`
`Filed on behalf of:
`RED.COM, LLC
`Joseph R. Re
`Douglas G. Muehlhauser
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Tel: (949) 760-0404
`Fax: (949) 760-9502
`E-mail: BoxRedcom7C4LP@knobbe.com
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`RED.COM, LLC,
`Patent Owner.
`__________________________________
`
`Case No. IPR2019-01065
`Patent No. 9,245,314
`__________________________________
`
`PATENT OWNER RED’S SUR-REPLY TO PETITIONER’S REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`Apple v. RED.COM
`U.S. Patent No. 9,245,314 - IPR2019-01065
`
`I.
`
`RED’S EVIDENCE OF PRIOR REDUCTION TO PRACTICE
`WARRANTS DENYING INSTITUTION
`A. Lack Of Cross Examination Does Not Warrant Institution
`
`Petitioner mischaracterizes the nature and breadth of RED’s reduction to
`
`practice evidence. RED provided comprehensive inventor declarations detailing
`
`how the Boris and Natasha motion-picture cameras met the limitations of the claims
`
`and worked for their intended purpose. Exs. 2001, 2011. RED corroborated its
`
`inventor testimony with additional testimony from non-inventor witnesses having
`
`independent knowledge (Exs. 2017, 2023), third-party Academy Award-winning
`
`directors (Ex. 1002 at 293-310, 317-28), and a former employee (Ex. 2022). RED
`
`also provided non-testimonial corroborating evidence in the form of (1) photographs
`
`memorializing the testing of Boris and the resolution and frame rate of its recorded
`
`video files (Exs. 2002-2009), (2) photographs showing Boris and Natasha on
`
`location during the shooting of Peter Jackson’s mini-movie “Crossing the Line”
`
`(Exs. 2013-16), and (3) a Release Note confirming the cameras’ performance and
`
`functionality (Ex. 2010).
`
`This type of testimonial and documentary corroboration was wholly proper,
`
`as “[i]ndependent corroboration may consist of testimony of a witness, other than
`
`the inventor, to the actual reduction to practice or it may consist of evidence of
`
`surrounding facts and circumstances independent of information received from the
`
`-1-
`
`
`
`Apple v. RED.COM
`U.S. Patent No. 9,245,314 - IPR2019-01065
`
`inventor.” See Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1169 (Fed. Cir. 2006)
`
`(internal quotation and citation omitted). Moreover, under a rule of reason analysis,
`
`such evidence is considered according to the totality of the evidence as a whole, not
`
`individually. See, e.g., Price v. Symsek, 988 F.2d 1187, 1196 (Fed. Cir. 1993).
`
`Eschewing a rule of reason analysis, Petitioner focuses only on RED’s
`
`testimonial evidence and argues that Petitioner’s inability to cross-examine RED’s
`
`witnesses creates a genuine issue of material fact. Reply at 1-2. Petitioner argues
`
`that the lack of cross-examination of RED’s witnesses leaves the Board unable “to
`
`assess the truth of these statements relied on by RED to antedate [Petitioner’s]
`
`primary reference.” Id. at 2. The Board has rejected this argument at the institution
`
`stage, recognizing that “[c]ross-examination ‘is not generally available to either
`
`party during the preliminary proceeding,’ and ‘the Board routinely makes institution
`
`decisions without the benefit of declarant cross-examination.’” See LG Elecs., Inc.
`
`v. Wi-LAN Inc., IPR2018-00704, 2018 WL 4224234, at *6 (quoting Freebit AS v.
`
`Bose Corp., IPR2017-01308, 2017 WL 5202106, at *11 (P.T.A.B. Nov. 8, 2017))
`
`(emphasis in original); see also id. (“[W]e are able to assess [the declarant’s]
`
`credibility and his testimony because the [ ] testimony is corroborated sufficiently
`
`by independent evidence in the record. . . . [and] we can properly weigh the
`
`corroborating evidence as a whole under a rule of reason.”).
`
`-2-
`
`
`
`Apple v. RED.COM
`U.S. Patent No. 9,245,314 - IPR2019-01065
`
`
`Further, if Petitioner were correct, then “[i]n essence, Petitioner suggests that
`
`[the Board] should ignore all testimonial evidence, including Petitioner’s own
`
`declarant’s testimony when deciding whether to institute a trial.” Id. at *5. The
`
`Board has not adopted such a rule, and should not apply such a rule here. Id.
`
`Petitioner also implores the Board to view the supposed “genuine issue”
`
`created by Petitioner’s inability to cross examine RED’s declarants in a light most
`
`favorable to Petitioner. Reply at 2. However, Petitioner overlooks that the “light
`
`most favorable” standard applies only to “a genuine issue of material fact.”
`
`37 C.F.R. § 42.208 (emphasis added).
`
` Importantly, Petitioner offers no
`
`contravening evidence or facts to challenge the veracity of RED’s reduction to
`
`practice evidence. Thus, Petitioner has not identified any genuine issues of material
`
`fact. Accordingly, the Board should reject Petitioner’s argument, weigh RED’s
`
`independent corroborating evidence as a whole under a rule of reason analysis, and
`
`deny institution on this record. See LG Elecs., at *5 (denying institution in part
`
`because “[p]etitioner does not articulate what specific fact is in dispute, much less
`
`how [p]atent [o]wner’s testimonial evidence creates a genuine issue of material
`
`fact.”).
`
`B. RED Has Provided Sufficient Evidence To Deny Institution
`
`Petitioner argues that RED failed to provide sufficient evidence of reduction
`
`to practice concerning three claim limitation groups. Reply at 3-4. Regarding the
`
`-3-
`
`
`
`Apple v. RED.COM
`U.S. Patent No. 9,245,314 - IPR2019-01065
`
`“image sensor” limitations ([1.3.0]-[1.3.4]), RED submitted non-inventor witness
`
`testimony corroborating that Boris and Natasha used a Bayer-pattern image sensor.
`
`POPR at 35-36. As mentioned above, independent corroboration may consist of
`
`non-inventor witness testimony. See Medichem, 437 F.3d at 1171. Moreover,
`
`Petitioner offers no contra-indicating facts, nor points to any inconsistencies in the
`
`record, that would refute or call this testimony into question. Petitioner also ignores
`
`its own admission that a Bayer-pattern image sensor satisfies limitations [1.3.0]-
`
`[1.3.4]. Pet. at 21-31.
`
`The same rule of reason analysis applies to RED’s evidence regarding the
`
`“memory device” ([1.2], [1.7]) and “modules” limitations ([1.4]-[1.5.2]). RED
`
`offered corroboration from non-inventor witnesses detailing how those components
`
`were arranged and operated within the cameras in accordance with the claim
`
`requirements, e.g., POPR at 34-41, and Petitioner offers no contra-indicating facts
`
`or inconsistencies in the record to cast the evidence of record into doubt or dispute.
`
`Moreover, on the “memory device” limitations, Petitioner ignores the evidence of
`
`record showing that the cameras worked with 320 or 500 GB memory devices and
`
`captured 4K video “to disk at 24 FPS.” POPR 35-36. Petitioner complains that there
`
`is “no explanation how” the memory device received and processed the image data.
`
`Reply at 4. However, such explanation has no basis in the claim language of [1.7],
`
`as Petitioner’s cropped quotation of that claim language evidences. Id.
`
`-4-
`
`
`
`Apple v. RED.COM
`U.S. Patent No. 9,245,314 - IPR2019-01065
`
`
`Finally, Petitioner argues that RED provides “no evidence” that Boris and
`
`Natasha would work for their intended purpose. Reply at 4-5. Petitioner overlooks
`
`the testimonial evidence that RED provided on this point, POPR 33-43, and again
`
`fails to recognize that testimonial evidence suffices to provide corroboration, see
`
`Medichem, 437 F.3d at 1171. Petitioner also ignores that RED provided
`
`contemporaneous photographic evidence showing the testing of Boris and its output
`
`footage, Exs. 2002-2009, and Peter Jackson’s use of the cameras to shoot a movie,
`
`Exs. 2013-2016, which corroborate the inventors’ understanding that the cameras
`
`worked for their intended purpose.
`
`Accordingly, the Board should consider RED’s testimonial and documentary
`
`evidence as a whole under a rule of reason, and deny institution on this record.
`
`
`
`
`
`Dated: October 18, 2019
`
`
`
`Respectfully submitted,
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`
`
`By: /Doug Muehlhauser/
`Joseph R. Re (Reg. No. 31,291)
`Douglas G. Muehlhauser (Reg. No. 42,018)
`Knobbe, Martens, Olson & Bear, LLP
`E-mail: BoxRedcom7C4LP@knobbe.com
`Customer No. 20,995
`(949) 760-0404
`Attorneys for Patent Owner
`RED.COM, LLC
`
`-5-
`
`
`
`Apple v. RED.COM
`U.S. Patent No. 9,245,314 - IPR2019-01065
`
`
`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that, pursuant to 37 C.F.R. § 42.6(e)(1) and agreement of the
`
`parties, a true and correct copy of the foregoing PATENT OWNER RED’S SUR-
`
`REPLY TO PETITIONER’S REPLY TO PATENT OWNER’S
`
`PRELIMINARY RESPONSE is being served via email on October 18, 2019 to
`
`counsel for Apple Inc. at the email addresses below:
`
`Michael S. Parsons
`michael.parsons.ipr@haynesboone.com
`Andrew S. Ehmke
`andy.ehmke.ipr@haynesboone.com
`Jordan Maucotel
`jordan.maucotel.ipr@haynesboone.com
`HAYNES AND BOONE, LLP
`2323 Victory Avenue, Suite 700
`Dallas, Texas 75219
`
`
`By: /Doug Muehlhauser/
`Joseph R. Re (Reg. No. 31,291)
`Douglas G. Muehlhauser (Reg. No. 42,018)
`Knobbe, Martens, Olson & Bear, LLP
`E-mail: BoxRedcom7C4LP@knobbe.com
`Attorneys for Patent Owner
`RED.COM, LLC
`
`
`
`Dated: October 18, 2019
`
`
`31468793
`
`
`
`-6-
`
`
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