UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`PARUS HOLDINGS, INC.,
`Patent Owner.
`
`Case No. IPR2020-00686
`U.S. Patent No. 7,076,431
`
`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
`PURSUANT TO 37 C.F.R. § 42.64
`
`

`

`Case No. IPR2020-00686
`Patent No. 7,076,431
`
`2.
`
`3.
`
`4.
`
`B.
`
`TABLE OF CONTENTS
`STATEMENT OF RELIEF REQUESTED .................................................... 1
`I.
`II. ARGUMENT ................................................................................................... 1
`A.
`37 C.F.R § 42.23(b) – Identified Sections of Exhibit 1040 do
`not Respond to Arguments Raised in the POR and Should Be
`Excluded ................................................................................................ 2
`1.
`Section II.A of Exhibit 1040 should be excluded because
`it does not respond to arguments raised in the POR ................... 2
`Section II.B of Exhibit 1040 should be excluded because
`it does not respond to arguments raised in the POR ................... 3
`Section II.C of Exhibit 1040 should be excluded because
`it does not respond to arguments raised in the POR ................... 3
`Section II.D of Exhibit 1040 should be excluded because
`it does not respond to arguments raised in the POR ................... 4
`37 C.F.R § 42.123(b) – Identified Sections Are Unauthorized
`Late Submissions of Supplemental Information and Should be
`Excluded ................................................................................................ 6
`1.
`Section II.A of Exhibit 1040 should be excluded as an
`unauthorized late submission of supplemental
`information .................................................................................. 6
`Section II.B of Exhibit 1040 should be excluded as an
`unauthorized late submission of supplemental
`information .................................................................................. 7
`Section II.C of Exhibit 1040 should be excluded as an
`unauthorized late submission of supplemental
`information .................................................................................. 8
`Section II.D of Exhibit 1040 should be excluded as an
`unauthorized late submission of supplemental
`information .................................................................................. 8
`37 C.F.R. § 42.6(a)(3) ........................................................................... 9
`C.
`III. CONCLUSION ................................................................................................ 9
`
`2.
`
`3.
`
`4.
`
`i
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`

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`Case No. IPR2020-00686
`Patent No. 7,076,431
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Federal Cases
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge, Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) .................................................................... 7, 8, 9
`Legend3D, Inc. v. Prime Focus Creative Servs. Can. Inc.,
`IPR2016-00806, Paper 73 (PTAB Sept. 18, 2017)........................................... 1, 2
`Regulations
`37 C.F.R. § 42.6(a)(3) ............................................................................................ 1, 9
`37 C.F.R § 42.23(b) ................................................................................................... 2
`37 C.F.R. § 42.62 ....................................................................................................... 1
`37 C.F.R. § 42.64 ....................................................................................................... 1
`37 C.F.R § 42.123(b) ............................................................................................. 1, 6
`77 Fed. Reg. 48,756 (Aug. 14, 2012)......................................................................... 1
`77 Fed. Reg. at 48,758 ............................................................................................... 2
`
`ii
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`

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`Case No. IPR2020-00686
`Patent No. 7,076,431
`
`I.
`
`STATEMENT OF RELIEF REQUESTED
`Pursuant to 37 C.F.R. § 42.64, the Board’s Scheduling Order (Paper No. 10),
`
`and the Federal Rules of Evidence, Patent Owner Parus Holdings, Inc. (“Patent
`
`Owner”) hereby moves to exclude the Supplemental Declaration of Dr. Loren
`
`Terveen (Ex. 1040), which was submitted with Petitioner’s Reply to Patent Owner’s
`
`Response filed on March 24, 2021 (Paper No. 19.), in its entirety. In the alternative,
`
`Patent Owner moves to exclude §§ II.A-D of Exhibit 1040. Patent Owner moves to
`
`exclude this exhibit on the grounds articulated by C.F.R § 42.23(b); 37 C.F.R §
`
`42.123(b); and 37 C.F.R. § 42.6(a)(3).
`
`Patent Owner timely objected to Dr. Loren Terveen’s supplemental
`
`declaration within five business days of service of Ex. 1040 on March 31, 2021
`
`(Paper No. 20). Petitioner never responded to Patent Owner’s objections. Parus
`
`asks the Board to exclude it as evidence in this evidentiary hearing on the grounds
`
`articulated by C.F.R § 42.23(b); 37 C.F.R § 42.123(b); and 37 C.F.R. § 42.6(a)(3).
`
`II.
`
`ARGUMENT
`A motion to exclude relates to the admissibility of evidence as governed by
`
`the Federal Rules of Evidence. Legend3D, Inc. v. Prime Focus Creative Servs. Can.
`
`Inc., IPR2016-00806, Paper 73 at 8–9 (PTAB Sept. 18, 2017); see also 37 C.F.R. §
`
`42.62 (applying the Federal Rules of Evidence to inter partes reviews); 37 C.F.R. §
`
`42.64; Office Patent Trial Practice Guide (“Guide”), 77 Fed. Reg. 48,756 (Aug. 14,
`
`1
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`

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`Case No. IPR2020-00686
`Patent No. 7,076,431
`2012). As stated in the Guide, parties may submit motions to exclude regarding
`
`evidence “believed to be inadmissible.” Guide, 77 Fed. Reg. at 48,758. A motion to
`
`exclude “must explain why the evidence is not admissible (e.g., relevance or
`
`hearsay).” Id., at 48,767.
`
`A.
`
`37 C.F.R § 42.23(b) – Identified Sections of Exhibit 1040 do not
`Respond to Arguments Raised in the POR and Should Be
`Excluded
`Patent Owner moves to exclude §§ II.A-D of the Supplemental Declaration of
`
`Dr. Loren Terveen (Exhibit 1040) on the ground that “[t]his exhibit contains
`
`information and testimony which does not respond to arguments raised in the Patent
`
`Owner’s response.” Sections II.A-D of Exhibit 1040 do not respond to or provide
`
`any link to any arguments from the POR. As such, Parus requests that §§ II.A-D of
`
`Exhibit 1040 be excluded under 37 C.F.R § 42.23(b). Parus timely objected to these
`
`unresponsive arguments. Petitioner failed to respond.
`
`1.
`
`Section II.A of Exhibit 1040 should be excluded because it
`does not respond to arguments raised in the POR
`Neither Dr. Terveen nor Apple provide any link between § II.A of Dr.
`
`Terveen’s supplemental declaration and the POR. Section II.A of Exhibit 1040
`
`describes a “two-step speech recognition process” that is purportedly described in
`
`both the ’431 and Ladd. (Ex. 1040, ¶¶ 2-9). In this section, which is comprised of
`
`eight paragraphs, Dr. Terveen does not cite to or respond to any arguments Parus
`
`raised in its POR. (Ex. 1040, ¶¶ 2-9). In using this section of Dr. Terveen’s
`
`2
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`Case No. IPR2020-00686
`Patent No. 7,076,431
`declaration, Apple did not cite to or respond to any arguments Parus raised in its
`
`POR. (Paper 19, 5-7). This argument is completely new. For this reason, Parus
`
`asks the Board to exclude it as evidence in this evidentiary hearing.
`
`2.
`
`Section II.B of Exhibit 1040 should be excluded because it
`does not respond to arguments raised in the POR
`Neither Dr. Terveen nor Apple provide any link between § II.B of Dr.
`
`Terveen’s supplemental declaration and the POR. In § II.B of Exhibit 1040, Dr.
`
`Terveen argues that Ladd equates “grammar” with a “vocabulary.” (Ex. 1040, ¶ 10).
`
`In this section, which is comprised of one paragraph, Dr. Terveen does not cite to or
`
`respond to any arguments Parus raised in its POR. (Ex. 1040, ¶¶ 2-9). In using this
`
`section of Dr. Terveen’s declaration, Apple did not cite to or respond to any
`
`arguments Parus raised in its POR. (Paper 19, 9-10). As with the previous section,
`
`this argument is completely new. For this reason, Parus asks the Board to exclude
`
`it as evidence in this evidentiary hearing.
`
`3.
`
`Section II.C of Exhibit 1040 should be excluded because it
`does not respond to arguments raised in the POR
`Neither Dr. Terveen nor Apple provide any link between § II.C of Dr.
`
`Terveen’s supplemental declaration and the POR. In § II.C of Exhibit 1040, Dr.
`
`Terveen argues that Ladd defines a speech/voice pattern as a key word or key phrase.
`
`(Ex. 1040, ¶ 11-22). In this section, which is comprised of twelve paragraphs, Dr.
`
`Terveen does not cite to or respond to any arguments Parus raised in its POR. (Ex.
`
`3
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`Case No. IPR2020-00686
`Patent No. 7,076,431
`1040, ¶¶ 11-22). In using this section of Dr. Terveen’s declaration, Apple did not
`
`cite to or respond to any arguments Parus raised in its POR. (Paper 19, 9-12). As
`
`with the previous section, this argument is completely new. For this reason, Parus
`
`asks the Board to exclude it as evidence in this evidentiary hearing.
`
`4.
`
`Section II.D of Exhibit 1040 should be excluded because it
`does not respond to arguments raised in the POR
`Neither Dr. Terveen nor Apple provide any link between § II.D of Dr.
`
`Terveen’s supplemental declaration and the POR. In § II.D of Exhibit 1040, Dr.
`
`Terveen argues that Ladd does not include any disclosure indicating the disclosed
`
`speech/voice patterns are a spectral energy as a function of time. (Ex. 1040, ¶ 23-
`
`25). In this section, which is comprised of three paragraphs, Dr. Terveen does not
`
`respond to any arguments Parus raised in its POR. (Ex. 1040, ¶¶ 23-25). In contrast
`
`to §§ II.A-C, Dr. Terveen does include a blanket citation from the POR, but does not
`
`respond to anything in that section of the POR or provide any analysis of the POR.
`
`(Ex. 1040, ¶ 23). In using this section of Dr. Terveen’s declaration, Apple did not
`
`cite to or respond to any arguments Parus raised in its POR. (Paper 19, 5-12). As
`
`with the other sections, this argument is completely new and untethered to the POR.
`
`Dr. Terveen’s citation to an out of context statement from Mr. Occhiogrosso’s
`
`deposition does not save this section of Dr. Terveen’s supplemental declaration. Dr.
`
`Terveen quotes Mr. Occhiogrosso’s deposition to support his definition of a
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`Case No. IPR2020-00686
`Patent No. 7,076,431
`“predefined voice pattern.” (Ex. 1040 ¶ 23). However, when the entire answer in
`
`the deposition is taken in context, Mr. Occhiogrosso is describing the definition of
`
`“voice pattern” to one of ordinary skill in the art, not a particularized definition of
`
`“predefined voice pattern” in the context of the ’431 Patent. (Ex. 1039 at 25:12-17
`
`(“Q. What is a voice pattern? … THE WITNESS: For one skilled in the art, a voice
`
`pattern is a word or utterance, and its spectral energy -- typically -- spectral energy
`
`as a function of time.”)). This use of out of context answers is even more egregious
`
`when Dr. Terveen cites to Mr. Occhiogrosso’s testimony as providing “Parus’s
`
`position” on the definition of “predefined voice pattern” of the ’431 Patent where
`
`Mr. Occhiogrosso’s statement immediately before the quoted language states “So
`
`this is not with respect to the ’431 Patent? Q. That’s correct.” (Ex. 1040 ¶ 23; Ex.
`
`1039 at 30:4-16). Dr. Terveen takes these quotes out of context from Mr.
`
`Occhiogrosso’s deposition, mischaracterizes Mr. Occhiogrosso’s testimony as
`
`Parus’s position, and then argues that Ladd does not disclose any support for this
`
`position. (Ex. 1040, ¶¶ 23-25). When put in context, Mr. Occhiogrosso’s testimony
`
`does not support Dr. Terveen’s argument. Putting aside the mischaracterizations,
`
`this straw man argument does not respond to any argument in the POR. For this
`
`reason, Parus asks the Board to exclude it as evidence in this evidentiary hearing.
`
`5
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`B.
`
`Case No. IPR2020-00686
`Patent No. 7,076,431
`37 C.F.R § 42.123(b) – Identified Sections Are Unauthorized Late
`Submissions of Supplemental Information and Should be
`Excluded
`Patent Owner moves to exclude §§ II.A-D of the Supplemental Declaration of
`
`Dr. Loren Terveen (Exhibit 1040) on the ground that “[t]his exhibit is a late
`
`submission of supplemental information filed without authorization to file a motion
`
`to submit the information.” Sections II.A-D of Exhibit 1040 are late submissions of
`
`supplemental information that are unauthorized and should have been included in
`
`the Petition. Parus timely objected to this late submission of supplemental
`
`information. Petitioner failed to respond. As such, Parus requests that §§ II.A-D of
`
`Exhibit 1040 be excluded under 37 C.F.R § 42.123(b).
`
`1.
`
`Section II.A of Exhibit 1040 should be excluded as an
`unauthorized late submission of supplemental information
`In § II.A of Exhibit 1040, Dr. Terveen now argues that both the ’431 Patent
`
`and Ladd describe a “two-step speech recognition process.” (Ex. 1040, ¶¶ 2-9).
`
`Petitioner failed to argue that speech recognition is a two-step process in its Petition
`
`and the declaration in support of the Petition. Instead, Petitioner used two isolated
`
`paragraphs to attempt to demonstrate that the speaker-independent speech
`
`recognition device limitation is disclosed by Ladd. (Paper 1, 22-23). Similarly, Dr.
`
`Terveen used three paragraphs in an attempt to demonstrate that the speaker-
`
`independent speech recognition device limitation is disclosed by Ladd. (Ex. 1003,
`
`¶¶ 90-91). Both Petitioner and Dr. Terveen had ample opportunities to demonstrate
`
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`Case No. IPR2020-00686
`Patent No. 7,076,431
`how the speech recognition in the ’431 relates to the speech recognition disclosed in
`
`Ladd, but chose not to. The appropriate time to include this information is in the
`
`Petition, not a Reply to the POR. See Intelligent Bio-Systems, Inc. v. Illumina
`
`Cambridge, Ltd., 821 F.3d 1359, 1362 (Fed. Cir. 2016) (“[i]t is of the utmost
`
`importance that petitioners in inter partes review proceedings adhere to the
`
`requirement that the initial petition identify with particularity the evidence that
`
`supports the grounds for the challenge to each claim.”). At least for this reason,
`
`Parus asks the Board to exclude it as evidence in this evidentiary hearing.
`
`2.
`
`Section II.B of Exhibit 1040 should be excluded as an
`unauthorized late submission of supplemental information
`In § II.B of Exhibit 1040, Dr. Terveen now argues that Ladd equates
`
`“grammar” with a “vocabulary.” (Ex. 1040, ¶ 10). (Ex. 1040, ¶¶ 2-9). Neither
`
`Petitioner nor Dr. Terveen argued that Ladd equates “grammar” with a “vocabulary”
`
`in the Petition or the declaration in support of the Petition, and both had ample
`
`opportunities to advance this argument at the Petition stage of the proceeding. The
`
`appropriate time to include this information is in the Petition, not a Reply to the
`
`POR. See Intelligent Bio-Systems. For this reason, Parus asks the Board to exclude
`
`it as evidence in this evidentiary hearing.
`
`7
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`Case No. IPR2020-00686
`Patent No. 7,076,431
`Section II.C of Exhibit 1040 should be excluded as an
`unauthorized late submission of supplemental information
`In § II.C of Exhibit 1040, Dr. Terveen argues that Ladd defines a speech/voice
`
`3.
`
`pattern as a key word or key phrase. (Ex. 1040, ¶ 11-22). Neither Petitioner nor Dr.
`
`Terveen argued that Ladd equates “grammar” with a “vocabulary” in the Petition or
`
`the declaration in support of the Petition, and both had ample opportunities to
`
`advance this argument at the Petition stage of the proceeding. The appropriate time
`
`to include this information is in the Petition, not a Reply to the POR. See Intelligent
`
`Bio-Systems. For this reason, Parus asks the Board to exclude it as evidence in this
`
`evidentiary hearing.
`
`4.
`
`Section II.D of Exhibit 1040 should be excluded as an
`unauthorized late submission of supplemental information
`In § II.D of Exhibit 1040, Dr. Terveen argues that Ladd does not include any
`
`disclosure indicating the disclosed speech/voice patterns are a spectral energy as a
`
`function of time. (Ex. 1040, ¶ 23-25). Dr. Terveen frames this argument under the
`
`guise of a requirement for Parus’s construction of “speaker-independent speech
`
`recognition device.” (Ex. 1040, ¶ 23). For the reasons discussed above, this
`
`argument is not responsive to the POR. Supra.
`
`Further, the specification of the ’431 makes clear that the speaker-independent
`
`speech recognition does not use predefined voice patterns. (Ex. 1001, 4:42-43).
`
`Neither Petitioner nor Dr. Terveen argued that Ladd’s speaker-independent speech
`
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`Case No. IPR2020-00686
`Patent No. 7,076,431
`recognition does not use predefined voice patterns, and both had ample opportunities
`
`to advance this argument at the Petition stage of the proceeding. The appropriate
`
`time to differentiate Ladd from this disavowal was when the Petition was filed, not
`
`at the Reply stage of the proceedings. See Intelligent Bio-Systems. For this reason,
`
`Parus asks the Board to exclude it as evidence in this evidentiary hearing.
`
`37 C.F.R. § 42.6(a)(3)
`C.
`Patent Owner moves to exclude §§ II.A-D of the Supplemental Declaration of
`
`Dr. Loren Terveen (Exhibit 1040) on the ground that “[t]his exhibit contains portions
`
`that were improperly incorporated by reference into another document.” As
`
`explained above, § II.A-D of Exhibit 1040 contains new arguments that are not
`
`responsive to the POR and is supplemental information that should have been
`
`included at the Petition stage of the proceeding. Supra. Petitioners have improperly
`
`incorporated these new arguments into their Reply. (Paper 19, 4, 5, 7-11). For this
`
`reason, Parus asks the Board to exclude it as evidence in this evidentiary hearing.
`
`III. CONCLUSION
`For each and every of the foregoing reasons, Patent Owner respectfully
`
`requests that this motion be granted and that §§ II.A-D of the Supplemental
`
`Declaration of Dr. Loren Terveen (Petitioner’s Exhibit 1040) be excluded.
`
`9
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`

`

`Date: June 2, 2021
`
`Case No. IPR2020-00686
`Patent No. 7,076,431
`
`/Michael J. McNamara/
`Michael J. McNamara (Reg. No. 52,017)
`Michael T, Renaud (Reg. No. 44,299)
`William A. Meunier (Reg. No. 41,193)
`Andrew H. DeVoogd (pro hac vice to be filed)
`MINTZ, LEVIN, COHN, FERRIS, GLOVSKY
`AND POPEO, P.C.
`One Financial Center
`Boston, MA 02111
`Telephone: 617-348-1884
`Facsimile: 617-542-2241
`E-mails: mmcnamara@mintz.com
`mtrenaud@mintz.com
`wameunier@mintz.com
`ahdevoogd@mintz.com
`
`10
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`Case No. IPR2020-00686
`Patent No. 7,076,431
`
`CERTIFICATE OF SERVICE
`
`I certify that copies of Patent Owner’s Motion to Exclude Evidence Pursuant
`
`to 37 C.F.R. § 42.64 is being served by electronic mail on the following counsel of
`
`record:
`
`Lead Counsel
`Jennifer C. Bailey (Reg. No. 52,583)
`ERISE IP, P.A.
`7015 College Blvd., Ste. 700
`Overland Park, Kansas 66211
`Telephone: (913) 777-5600
`Facsimile: (913) 777-5601
`Jennifer.Bailey@eriseip.com
`
`Backup Counsel
`Adam P. Seitz (Reg. No. 52,206)
`ERISE IP, P.A.
`7015 College Blvd., Ste. 700
`Overland Park, Kansas 66211
`Telephone: (913) 777-5600
`Facsimile: (913) 777-5601
`Adam.Seitz@eriseip.com
`
`Dated: June 2, 2021
`
`/Michael J. McNamara/
`Michael J. McNamara (Reg. No. 52,017)
`
`11
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`