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.
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`PARUS HOLDINGS, INC.,
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`Patent Owner
`___________
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`Case No. IPR2020-00686
`U.S. Patent No. 7,076,431
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`PETITIONER APPLE INC.’S OPPOSITION TO PATENT OWNER’S
`MOTION TO EXCLUDE EVIDENCE
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`____________
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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.
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`PARUS HOLDINGS, INC.,
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`Patent Owner
`___________
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`
`
`Case No. IPR2020-00686
`U.S. Patent No. 7,076,431
`____________
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`PETITIONER APPLE INC.’S OPPOSITION TO PATENT OWNER’S
`MOTION TO EXCLUDE EVIDENCE
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`I.
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`Introduction
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`Apple requests Parus’s Motion to Exclude (Paper 29) be denied for failing to
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`identify a proper reason for excluding evidence and for failure to comply with the
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`Board’s rules regarding motions to exclude. Parus seeks to exclude Apple’s
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`Supplemental Declaration of Dr. Terveen (Ex. 1040) on the basis that the
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`Declaration is not responsive to the Patent Owner Response (Paper 15) and presents
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`evidence that “should have been included” in the Petition. (Paper 29, 6).
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`Apple’s Supplemental Declaration is proper because it responds to a new
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`claim construction presented by Parus in the Patent Owner Response and addresses
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`deposition testimony provided by Parus’s declarant, Mr. Occhiogrosso. A petitioner
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`is entitled to respond to a patent owner’s arguments, including addressing new claim
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`constructions presented by the patent owner. Parus’s Motion to Exclude should thus
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`be denied for failing to identify a proper basis for exclusion, which “is an exceptional
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`remedy that the Board expects will be granted rarely.” PTAB’s Consolidated Trial
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`Practice Guide (November 2019) (Nov. 2019 TPG) at 80.
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`Further, a motion to exclude is not the proper vehicle for Parus’s argument,
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`per the Board’s rules; instead, Parus should have sought leave to file a motion to
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`strike. Also for this reason, Parus’s Motion to Exclude should be denied.
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`1
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`
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`II. Apple’s Supplemental Expert Declaration Was Properly Responsive to
`Parus’s New Claim Construction
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`Parus asserts the Supplemental Declaration of Dr. Loren Terveen (Ex. 1040)
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`is non-responsive to the Patent Owner Response and that Dr. Terveen’s opinions
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`“should have been included in the Petition.” (Paper 29, 6). Parus’s argument fails to
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`note that Parus presented a patentability argument based on a claim construction that
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`was newly-presented in the Patent Owner Response. (Paper 15, 21). The
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`Supplemental Declaration responds to the new claim construction from Parus by
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`providing POSITA opinions and explanation as to how the prior art presented in the
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`original ground (specifically, Ladd, Ex. 1004) teaches certain claim limitations even
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`using Parus’s claim construction.
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`Parus construes limitations of the asserted claims (i.e., the “speaker-
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`independent speech recognition device”) as performing speech recognition by not
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`analyzing “voice patterns,” while arguing that Ladd does analyze “voice patterns.”
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`Patent Owner Response (Paper 15) at 23. Dr. Terveen’s testimony addresses this
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`new claim construction, which is exactly the kind of Reply testimony that is
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`permitted. Aisin Seiki Co., Ltd. et al v. Intellectual Ventures II LLC, IPR2017-01539,
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`Paper 43 at 69–70 (PTAB December 12, 2018) (denying Patent Owner’s motion to
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`strike as the evidence provided by Petitioner responded to Patent Owner’s
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`arguments, “as it was entitled to do”); Eli Lilly and Company v. Los Angeles
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`Biomedical Research Institute at Harbor-UCLA Medical Center, IPR2014-00752,
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`2
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`Paper 100 at 4 (PTAB September 3, 2019) (noting that evidence “to document the
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`knowledge that skilled artisans would bring to bear in reading the prior art identified
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`as producing obviousness” is entirely proper (internal citations omitted)).
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`Parus argues Apple’s arguments “should have been included in the Petition,”
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`but Parus does not explain why Apple should have known or could have known of
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`Parus’s claim construction. (Paper 29, 6). Parus’s claim construction is a new claim
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`construction first presented in the Patent Owner Response. (Paper 15, 21). Parus’s
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`new claim construction is a variant of the District Court’s claim construction, which
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`was issued almost six months after the Petition was filed. (Ex. 2012, 14-15; Ex. 1041,
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`2). At the time of filing the Petition, Apple did not know what the Court’s claim
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`construction would be or that Parus would argue patentability using a variant of the
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`Court’s construction. The Board’s rules and precedent do not require a petition to
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`anticipate every possible claim construction a patent owner may proffer, and indeed,
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`Parus provides no caselaw support stating otherwise.
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`Parus also contends “Petitioner failed to argue that speech recognition is a
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`two-step process” in the Petition and supporting declaration. (Paper 29, 6). Apple’s
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`discussion of the ’431 Patent describing a two-step process was born from Mr.
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`Occhiogrosso’s testimony during his deposition, as discussed repeatedly in the
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`Petitioner Reply and as further confirmed by Parus’s Sur-Reply. (Paper 21, 14)
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`(agreeing that Mr. Occhiogrosso discussed the ’431 Patent’s speech recognition
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`3
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`device having two phases). Regardless, the discussion of the two-step process was
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`merely a tool to show how the “predefined voice pattern” discussed in the ’431
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`Patent is not the same as the “speech patterns” disclosed in Ladd. Apple’s use of Mr.
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`Occhiogrosso’s testimony regarding speech recognition as described in the ’431
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`Patent to help explain Apple’s argument in the Petitioner Reply is a proper response.
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`Eli Lilly, IPR2014-00752, Paper 100 at 4.
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`Because Apple’s Supplemental Declaration presents evidence responding to
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`a new claim construction first presented in this IPR in the Patent Owner Response
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`and deposition testimony from Parus’s declarant, the Supplemental Declaration
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`properly responds to Parus’s arguments, which Apple is entitled to do. Aisin Seiki
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`Co., Ltd. et al, IPR2017-01539, Paper 43 at 70.
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`III. Parus’s Motion to Exclude Is Procedurally Improper and Is Not
`Authorized by the Board’s Rules
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`Parus’s Motion to Exclude should also be denied because it improperly seeks
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`to exclude Petitioner’s Supplemental Declaration (Ex. 1040) on the basis that it
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`exceeds the scope of the Patent Owner Response. (Paper 29, 2-4). A motion to
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`exclude is not the proper paper for addressing arguments a party believes are non-
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`responsive. Per the PTAB’s Trial Practice Guide, “[n]or should a motion to exclude
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`address arguments or evidence that a party believes exceeds the proper scope of reply
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`or sur-reply.” (Nov. 2019 TPG at 79). The proper procedure for addressing whether
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`a reply raises new issues is to request authorization to file a motion to strike, not
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`4
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`filing a motion to exclude. Puzhen Life USA, LLC, v. Esip Series 2, LLC, IPR2017-
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`02197, Paper 24 at 48 (PTAB February 27, 2019) (denying patent owner’s motion
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`to exclude and noting that the proper procedure would have been to request
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`authorization to file a motion to strike). To the extent Parus is asking the Board to
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`treat its Motion to Exclude as a motion to strike, the Board should decline to do so.
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`See id. at 49 (declining to treat a motion to exclude as a motion to strike because
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`patent owner did not request authorization).
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`Parus also debates the merits of Exhibit 1040, for example submitting that
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`quotes from Mr. Occhiogrosso were taken out of context. (Paper 29, 4-5). Parus’s
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`merits-based arguments are also improper, as “[a] motion to exclude is not a vehicle
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`for addressing the weight to be given evidence—arguments regarding weight should
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`appear only in the merits documents.” (Nov. 2019 TPG at 79). Additionally, Parus’s
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`Motion to Exclude appears to be the first time Parus raised the substantive issue of
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`whether Mr. Occhiogrosso’s quoted deposition testimony was taken out of context.
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`Parus is using its Motion to Exclude to present additional merits arguments that it
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`should have presented in its Sur-Reply. The full reading of Mr. Occhiogrosso’s
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`deposition testimony at Exhibit 1039, 25:12–30:25 confirms that Apple did not
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`misrepresent any deposition testimony.
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`Parus also contends that Exhibit 1040 is an unauthorized late submission
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`under 37 C.F.R § 42.123(b). (Paper 29, 6-9). This argument is just another way of
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`5
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`arguing that Exhibit 1040 is not responsive under 37 C.F.R § 42.23(b). The Board’s
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`rules allow for a petitioner to present a supplemental declaration, and Parus does not
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`cite any caselaw to the contrary. Parus’s timeliness arguments should be rejected.
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`Twitter, Inc. v. Vidstream, LLC, IPR2017-00829, Paper 68, 47-48 (PTAB January
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`28, 2019) (noting that “timeliness arguments are not properly the subject of a motion
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`to exclude, which should seek to exclude evidence as inadmissible, but rather should
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`have been filed as a motion to strike because they seek to exclude belatedly presented
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`evidence that Patent Owner contends exceeds the proper scope of reply.”).
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`Finally, Parus repeatedly notes that Apple did not respond to Parus’s
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`objections to Exhibit 1040. (Paper 29, 1, 2, 6). The Board’s rules do not require a
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`party to respond to objections. Parus’s complaint is meritless.
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`IV. Sections II.A-II.D of the Supplemental Declaration Provide Opinions
`Responsive to the New Claim Construction
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`Parus complains that Sections II.A and II.B of Exhibit 1040 do not “cite to or
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`respond to any arguments Parus raised in its POR.” (Paper 29, 2). These sections of
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`the Supplemental Declaration provide the background context for Dr. Terveen’s
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`rebuttal opinion. Section II.A explains how both the ’431 Patent and Ladd employ a
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`two-step speech recognition process. (Ex. 1040, ¶¶ 2-9). Section II.B explains how
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`Ladd uses the terms grammar and vocabulary interchangeably. (Ex. 1040, ¶ 10).
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`These sections provide the background for understanding Dr. Terveen’s rebuttal
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`opinion because they provide the knowledge of how a POSITA would have
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`6
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`understood Ladd’s disclosure of “speech patterns” as it relates to the ’431 Patent’s
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`disclosure of “predefined voice pattern.” Testimony regarding how a POSITA would
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`understand prior art is proper in a reply. Eli Lilly, IPR2014-00752, Paper 100 at 4.
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`Sections II.C and II.D of Exhibit 1040 directly rebut Parus’s claim
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`construction argument raised in the Patent Owner Response (Paper 15). Section II.C
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`explains how Ladd uses the term “voice pattern” to mean a key word or key phrase.
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`(Ex. 1040, ¶¶ 11-22). Section II.C further explains how Ladd’s “voice pattern” is
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`different from the “predefined voice pattern” Parus contends is excluded from the
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`’431 Patent. (Ex. 1040, ¶ 22). Section II.D further explains these differences,
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`including how Ladd does not describe the “spectral energy” that Parus alleges is the
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`“predefined voice patterns” being excluded. (Ex. 1040, ¶¶ 23-25).
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`Sections II.A-D collectively explain Dr. Terveen’s opinion about the
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`difference between the ’431 Patent’s “predefined voice patterns” and Ladd’s “speech
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`patterns.” Dr. Terveen opined “spectral energy as a function of time is one method
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`by which a system might transform audible sound into text (and is thus one method
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`of performing the first step of speech recognition), while Ladd’s ‘speech pattern’
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`merely refers to detection of key words to determine content (a method of
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`performing the second step of recognizing a command).” (Ex. 1040, ¶ 25). This
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`opinion is directly responsive to Parus’s argument regarding the claim construction
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`of “speaker-independent speech recognition device,” and is therefore proper.
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`7
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`V.
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`37 C.F.R. § 42.6(a)(3) Does Not Apply
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`Parus appears to misunderstand 37 C.F.R. § 42.6(a)(3), which applies when
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`arguments are improperly incorporated by reference from one document into
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`another. Cisco Systems, Inc. v. C-Cation Technologies, LLC, IPR2014-00454, Paper
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`12, at 9-10 (PTAB Aug. 29, 2014). The purpose of this rule is to prevent the
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`circumvention of page limits. Id. at 10. This rule would apply to exclude Exhibit
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`1040 if, for example, it incorporated by reference arguments from another source.
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`Exhibit 1040 does not incorporate by reference arguments from another source, nor
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`does Parus assert that it does. (Paper 29, 9). Rather, this argument appears to be yet
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`another way Parus is improperly arguing responsiveness in its Motion to Exclude.
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`Id. For the reasons discussed above, these arguments are both improper and
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`incorrect.
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`VI. Conclusion
`For the reasons discussed above, Parus’s Motion to Exclude should be denied.
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`Respectfully submitted,
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`ERISE IP, P.A.
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`BY: /s/ Jennifer C. Bailey
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`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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`9
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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 June 9, 2021
`the foregoing Petitioner Apple Inc.’s Opposition to Patent Owner’s Motion to
`Exclude 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
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`Jennifer C. Bailey Reg. No. 52,583
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`ATTORNEY FOR PETITIONER
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`10
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