UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
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`Petitioner
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`v.
`PARUS HOLDINGS, INC.,
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`Patent Owner
`___________
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`
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`Case No. IPR2020-00686
`U.S. Patent No. 7,076,431
`____________
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`PETITIONER APPLE INC.’S OBJECTIONS TO EVIDENCE PURSUANT
`TO 37 C.F.R. § 42.64(b)(1)
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`
`
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`APPLE INC.,
`
`Petitioner
`
`v.
`PARUS HOLDINGS, INC.,
`
`Patent Owner
`___________
`
`
`
`Case No. IPR2020-00686
`U.S. Patent No. 7,076,431
`____________
`
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`PETITIONER APPLE INC.’S OBJECTIONS TO EVIDENCE PURSUANT
`TO 37 C.F.R. § 42.64(b)(1)
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`Pursuant to 37 C.F.R. § 42.64(b)(1), Petitioner Apple Inc. (“Petitioner”)
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`submits the following objections to evidence that Parus Holdings, Inc. (“Patent
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`Owner”) served in its Patent Owner Sur-Reply (Paper 21). These objections are
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`timely filed and served within five business days of Patent Owner’s May 5, 2021,
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`Patent Owner Sur-Reply.
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`Evidence
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`Objections
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`Exhibit 2026
`(Dragon Naturally
`Speaking v.12 User Guide)
`
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`FRE 401, 402, and 403: Petitioner
`objects to this evidence on the grounds
`that it is irrelevant and its probative
`value is substantially outweighed by a
`danger of unfair prejudice, confusing
`the issues, and wasting time.
`
`FRE 901 and 902: Petitioner objects to
`this evidence on the grounds that it is
`lacking authentication under Federal
`Rules of Evidence (“FRE”) 901 because
`sufficient evidence has not been
`provided to establish their authenticity
`or dates prior to the critical date of the
`’431 Patent. Patent Owner has not
`submitted evidence to authenticate these
`exhibits or to otherwise establish that
`they are what Patent Owner claims them
`to be.
`
`37 C.F.R. § 42.123(b): Petitioner
`objects to this evidence on the grounds
`that the evidence is a late submission of
`supplemental information filed without
`authorization.
`See Mallinckrodt
`Pharmaceuticals Ireland Limited v.
`Biovie, Inc., IPR2018-00974, Paper 34
`at 7–10.
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`
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`1
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`Exhibit 2027 (Declaration of Benedict
`Occhiogrosso in Support of Patent
`Owner’s Sur-Reply
`to Petitioner's
`Reply to Patent Owner’s Response)
`
`Paper 21, specifically portions of Paper
`21 that rely on Exs. 2026 and 2027 (e.g.,
`Section II.C.1)
`
`FRE 401, 402, and 403: Petitioner
`objects to this evidence on the grounds
`that it is irrelevant and its probative
`value is substantially outweighed by a
`danger of unfair prejudice, confusing
`the issues, and wasting time.
`
`37 C.F.R. § 42.123(b): Petitioner
`objects to this evidence on the grounds
`that the evidence is a late submission of
`supplemental information filed without
`authorization.
`See Mallinckrodt
`Pharmaceuticals Ireland Limited v.
`Biovie, Inc., IPR2018-00974, Paper 34
`at 7–10.
`37 C.F.R. § 42.123(b): Petitioner
`objects to this evidence on the grounds
`that the evidence is a late submission of
`supplemental information filed without
`authorization.
`See Mallinckrodt
`Pharmaceuticals Ireland Limited v.
`Biovie, Inc., IPR2018-00974, Paper 34
`at 7–10.
`
`Petitioner objects to Exhibits 2026 and 2027 and the related portions of Patent
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`
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`
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`Owner’s Sur-Reply. These exhibits constitute late submissions of supplemental
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`information under 37 C.F.R. § 42.123(b). Per the November 2019 Trial Practice
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`Guide, “The sur-reply may not be accompanied by new evidence other than
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`deposition transcripts of the cross-examination of any reply witness.” This Board
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`has previously expunged late-filed exhibits and stricken the related portions of the
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`Patent Owner’s Sur-Reply in this same scenario. See Mallinckrodt Pharmaceuticals
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`Ireland Limited v. Biovie, Inc., IPR2018-00974, Paper 34 at 7–10 (striking portions
`2
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`
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`of the Sur-Reply related to a late-filed exhibit); Lenovo Holding Company, Inc. v.
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`Dodots Licensing Solutions LLC, IPR2019-01279, Paper 37 at 34–34 (striking a
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`Supplemental Declaration filed with a Sur-Reply). This is consistent with the
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`Board’s obligation to “secure the just, speedy, and inexpensive resolution of every
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`proceeding,” as allowing a declaration in a sur-reply “would require the opportunity
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`for cross-examination and potentially
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`further substantive briefing
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`from
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`Petitioner….” Taiwan Semiconductor Manufacturing Company, LTD. v. Godo
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`Kaisha IP Bridge 1, IPR2016-01246, Paper 28 at 3.
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`Respectfully submitted,
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`
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`ERISE IP, P.A.
`
`
`
`
`BY: /s/ Jennifer C. Bailey
`Jennifer C. Bailey Reg. No. 52,583
`Adam P. Seitz, Reg. No. 52,206
`7015 College Blvd., Suite 700
`Overland Park, KS 66211
`P: (913) 777-5600
`F: (913) 777-5601
`jennifer.bailey@eriseip.com
`adam.seitz@eriseip.com
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`ATTORNEYS FOR PETITIONER
`APPLE INC.
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`CERTIFICATE OF SERVICE ON PATENT OWNER
`UNDER 37 C.F.R. § 42.6
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on May 7, 2021
`the foregoing Petitioner Apple Inc.’s Objections to Evidence Pursuant to 37 C.F.R.
`§ 42.64(b)(1) was served via electronic filing with the Board and via Electronic Mail
`on the following practitioners of record for Patent Owner:
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`Michael J. McNamara (mmcnamara@mintz.com)
`Michael T. Renaud (mtrenaud@mintz.com)
`William A. Meunier (wameunier@mintz.com)
`Andrew H. DeVoogd (ahdevoogd@mintz.com)
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`/s/ Jennifer C. Bailey
`Jennifer C. Bailey Reg. No. 52,583
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`ATTORNEY FOR PETITIONER
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`4
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