From:
`To:
`Cc:
`
`Subject:
`Date:
`
`Kenneth Weatherwax
`Precedential_Opinion_Panel_Request
`Harper Batts; Chris Ponder; Jeffrey Liang; LegalTM-DivX-IPR; Bridget Smith; Kenneth Weatherwax; Patrick
`Maloney; Colette Woo; Nathan Lowenstein
`IPR2020-00511 (Netflix Inc. v. DivX, LLC) Patent Owner"s Request for Rehearing Of Decision Granting Institution
`Tuesday, September 1, 2020 11:31:26 PM
`
`Dear Honorable Board and Precedential Opinion Screening Committee:
`
`I write on behalf of DivX, LLC (“Patent Owner”) regarding U.S. Patent No.9,184,920 (the ’920 patent),
`which is the subject of a petition for inter partes review filed by Netflix Inc. (“Petitioner”). On August
`18, 2020, an assigned panel of the Board, acting on behalf of the Director, issued a Decision
`regarding Institution (“DI”) determining to institute review. (Paper 7.)
`
`Patent Owner has today submitted a request for rehearing of the decision instituting review, and
`respectfully asks that the matter be heard by a Precedential Opinion Panel pursuant to Standard
`Operating Procedure 2.
`
`Question Presented
`
`Based on my professional judgment, I believe that the assigned panel’s institution decision is
`contrary to General Electric Co. v. Joiner, 522 U.S. 136 (1997), and Harris v. Rivera, 454 U.S. 339
`(1981) (per curiam), and requires an answer to one or more precedent-setting questions of
`exceptional importance, including the following:
`
`1. Whether, for purposes of determining under § 314(a) whether to institute inter partes
`review, the Director, or Board panels on his behalf, should rely on inadmissible opinion
`testimony?
`
`2. Whether, for purposes of determining under § 314(a) whether to institute inter partes
`review, the Director, or Board panels on his behalf, should view genuine questions of
`material fact raised by testimonial evidence filed with the preliminary response in the light
`most favorable to the petitioner?
`
`“‘In bench trials, judges routinely hear inadmissible evidence that they are presumed to ignore when
`making decisions.’ There is a ‘well-established presumption’ that ‘the judge has adhered to basic
`rules of procedure’ when the judge is acting as a factfinder.” Williams v. Illinois, 567 U.S. 50, 69-70
`(2012) (quoting Harris v. Rivera, 454 U.S. 339, 346 (1981) (per curiam)). However, when judges’
`decisions turn basic rules of procedure upside down, and rely upon defective evidence as the very
`basis for the judgment itself, they commit the most harmful of errors: they allow the case to turn on
`“opinion evidence that is connected to existing data only by the ipse dixit of the expert.” General
`Elec. Co. v. Joiner, 522 U.S. 136, 146 (1997). That is, the expert asserts “it’s true because I say it is,”
`and the decision relies on that unproven assertion because the words have the imprimatur of
`expertise. Here, that happened: institution was granted in this case based on an opinion that is not
`connected to facts, an opinion given by a witness whose testimony has repeatedly been rejected or
`changed under oath, based on application of a rule that has been explicitly repudiated by the officer
`in whose name the decision was made. That error should be corrected.
`
`IPR2020-00511
`Ex. 3002 p. 1 of 2
`
`

`

`In instituting review, the assigned panel relied expressly on 37 C.F.R. §42.108(c)’s presumption
`viewing genuine issues of material fact created by the patent owner’s testimonial evidence filed with
`the preliminary response in the light most favorable to the petitioner for purposes of deciding
`whether to institute. Paper 7, 36-37. The panel’s reliance on this irrebuttable presumption in favor
`of the petitioner is improper. The Institution Decisio nfailed to note that the Director has
`determined that this recently promulgated rule should be eliminated to make the rules “consistent
`with the statutory framework” and reduce “confusion” concerning the institution standard. It is
`inequitable and unjust for the Decision on Institution to institute review here on behalf of the
`Director in reliance on a rule that the Director has determined should not even be on the books.
`Relying on this presumption to institute, the decision overlooked the patent owner’s showing that
`the testimony by the petitioner’s declarant on which the panel rests its finding of a “genuine issue of
`material fact” is facially unconnected to any underlying facts or data in the record, and therefore
`cannot furnish a basis to find a genuine question of material fact.
`
`For the reasons above and as described in more detail in the rehearing petition, Patent Owner
`respectfully requests that a Precedential Opinion Panel be convened to rehear and assess the
`question described in this email. Patent Owner is available to provide additional briefing on this
`question before the Precedential Opinion Panel should it desire additional briefing.
`
`Counsel of record for Petitioner are copied on this email.
`
`Respectfully,
`
`/Kenneth J Weatherwax/
`Counsel of record for Patent Owner DivX, LLC
`
`Kenneth Weatherwax | Lowenstein & Weatherwax LLP
`1880 Century Park East, Suite 815
`Los Angeles, California 90067
`Office: 310.307.4503
`
`IPR2020-00511
`Ex. 3002 p. 2 of 2
`
`