UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`GOOGLE LLC
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`Petitioner v.
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`DDC TECHNOLOGY, LLC,
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`Patent Owner
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`U.S. Patent No. 11,093,001
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` Case No.: IPR2023-00711
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`PETITIONER’S MOTION TO EXCLUDE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`GOOGLE LLC
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`Petitioner v.
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`DDC TECHNOLOGY, LLC,
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`Patent Owner
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`U.S. Patent No. 11,093,001
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` Case No.: IPR2023-00711
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`PETITIONER’S MOTION TO EXCLUDE
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`TABLE OF CONTENTS
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`I.
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`Introduction………………………………………………………………...1
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`II. Exhibits 2017 and 2020 Should Be Excluded for Violating a
`Mediation Agreement and for Violating F.R.E. 408 ..……………….2
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`III. Portions of Exhibit 2023 Should Be Excluded as Hearsay Under F.R.E.
`801 and F.R.E. 802 and as Protected Information Under F.R.E. 408 …3
`A.
`Patrick Buckley’s Declaration Paragraphs 10, 15, and 16 Contain
`Hearsay.……………………………………………………………...3
`Patrick Buckley’s Declaration Contains Protected Information.
`………………………………………………………………………..4
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`B.
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`IV. Exhibit 2035 Contains Protected Information and Should Be
`Excluded Under F.R.E. 408 .……………………………………… ........... 4
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`V. Conclusion ….……………………...…………………………………… ........ 5
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`I.
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`Introduction
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`Pursuant to 37 C.F.R. § 42.64(c), Petitioner moves to exclude three of
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`Patent Owner’s exhibits in total, portions of another exhibit, and the sections of
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`Patent Owner’s briefing that cites to, discusses, or relies upon these exhibits.
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`The following table identifies the exhibits Petitioner is moving to exclude.
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`Exhibit
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`Description
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`Reasons to Exclude
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`Exhibit 2017
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`Declaration of Timothy
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`Violation of Mediation
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`J. Haller
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`Agreement and F.R.E. 408
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`Exhibit 2020
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`Email Chain Between
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`Violation of F.R.E. 408
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`DDC and OPS
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`Exhibit 2023
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`Declaration of Patrick
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`Hearsay under F.R.E. 801
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`(¶¶ 10, 12, 13,
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`Buckley
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`and 802 and violation of
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`15, 16)
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`F.R.E. 408
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`Exhibit 2035
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`Email Chain Between
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`Violation of F.R.E. 408
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`Google and DODOcase
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`Patent Owner relies on these exhibits in its Preliminary Response (Paper 13)
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`(“POPR”) and sur-reply in support of its POPR (Paper 20), and thus, Petitioner also
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`moves to exclude those portions of the POPR and sur-reply. Petitioner timely
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`objected to each of these exhibits on the grounds identified above on Nov. 8, 2023.
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`See Paper 35.
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`1
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`II. Exhibits 2017 and 2020 Should Be Excluded for Violating a Mediation
`Agreement and for Violating F.R.E. 408.
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`Exhibits 2017 and 2020 violate a mediation agreement signed by both parties
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`because the exhibits include prohibited verbal and written communications made
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`during the dispute resolution process. See Ex. 1019. Exhibit 2017 is a declaration
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`that recounts verbal communications and Exhibit 2020 contains written
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`communications. Both parties agreed “to the confidentiality of all verbal and written
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`communications with the dispute resolution process, as provided by the Texas
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`Alternative Dispute Procedures Act.” Ex. 1019. Under that Act, Section 154.053
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`states that “all matters, including the conduct and demeanor of the parties and their
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`counsel during the settlement process, are confidential and may never be disclosed to
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`anyone, including the appointing court.” In addition, Section 154.073 states that “a
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`communication … is confidential, is not subject to disclosure, and may not be used
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`as evidence against the participant in any judicial or administrative proceeding.”
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`Exhibits 2017 and 2020 violate these provisions and thus should be excluded.
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`Exhibits 2017 and 2020 also violate F.R.E. 408, which excludes evidence of
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`conduct or statements made during the course of compromise negotiations either to
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`prove or disprove the validity or amount of a disputed claim. DDC relies on these
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`exhibits to assert OPS is a real-party-in-interest (RPI) or privy of Google, thus
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`affecting the validity of this proceeding. See e.g., POPR, pp. 10-13.
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`Communications made during compromise negotiations that were made in
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`2
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`connection with a disputed claim can be excluded. See Natl. Presto Industries, Inc.
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`v. W. Bend Co., 76 F.3d 1185, 1197 (Fed. Cir. 1996) (upholding district court’s
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`decision to exclude negotiation communications made in connection with a disputed
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`claim). Therefore, Exs. 2017 and 2020 should be excluded both for violating F.R.E.
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`408 and for violating the mediation agreement.
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`The following portions of DDC’s POPR and sur-reply should be excluded for
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`the same reasons:
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` POPR: p. 11, l. 6 (“Despite….”) – p. 12, l. 5 (entire line).
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` POPR: fn 3.
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` Sur-reply: p. 4, ll. 5 – 8 (end of sentence).
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`III. Portions of Exhibit 2023 Should Be Excluded as Hearsay Under F.R.E.
`801 and F.R.E. 802 and as Protected Information Under F.R.E. 408.
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`A.
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`Patrick Buckley’s Declaration Paragraphs 10, 15, and 16 Contain
`Hearsay.
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`Exhibit 2023, ¶¶ 10 and 15-16 contain out-of-court statements offered for the
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`truth of the matter asserted and are thus inadmissible hearsay under F.R.E. 801 and
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`802. These paragraphs contain statements about conversations with MerchSource, a
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`third party, who is not part of this proceeding. See IPR2023-00707, Institution
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`Decision, paper 27, at fn 24 (The Board identifying ¶¶ 15-16 as “inadmissible
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`hearsay.”). Paragraphs 10, 15, and 16 are inadmissible because MerchSource has not
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`testified in this proceeding, and those statements were made out-of-court. Super.
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`3
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`Fireplace Co. v. Majestic Products Co., 270 F.3d 1358, 1366 (Fed. Cir. 2001)
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`(finding out-of-court declaration of patent attorney that was offered to prove the truth
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`of the matter was inadmissible hearsay). Paragraphs 10, 15, and 16 do not fall within
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`any hearsay exception, and thus, they should be excluded as hearsay.
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`B.
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`Patrick Buckley’s Declaration Paragraphs 12 and 13 Contain
`Protected Information Under F.R.E. 408.
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`Ex. 2023, ¶¶ 12 and 13 should be excluded because they are protected
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`statements describing a potential licensing agreement between Google and DDC’s
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`predecessor, constituting a “compromise negotiation” under F.R.E. 408. Because
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`these statements were made in compromise negotiations between Google and Patent
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`Owner’s predecessor, they are protected under Rule 408 and should be excluded.
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`IV. Exhibit 2035 Contains Protected Information and Should Be Excluded
`Under F.R.E. 408.
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`Ex. 2035 contains an email chain reflecting licensing discussions and
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`negotiations between Google and Patent Owner’s predecessor and thus should be
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`excluded under F.R.E. 408. Similar to the email chain addressed in Section II, these
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`statements were made during compromise negotiations and should be excluded under
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`Rule 408.
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`The following POPR and sur-reply sections should be excluded for the same
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`reason.
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` POPR: p. 20, l. 15 – p. 21, l. 4 (end of sentence).
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`4
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` Sur-reply: p. 5, entire 1st full paragraph.
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`V. Conclusion
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`For the foregoing reasons, Petitioner respectfully requests that the Board grant
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`this motion.
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`Dated: July 17, 2024
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`Respectfully submitted,
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`Michael L. Kiklis______
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`Michael L. Kiklis
`Reg. No. 38,939
`Attorney for Petitioner
`Google LLC
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`5
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`CERTIFICATE OF SERVICE
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`The undersigned certifies service pursuant to 37 C.F.R. §§ 42.6(e) of
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`PETITIONER’S MOTION TO EXCLUDE by filing this document through the
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`USPTO Patent Trial and Appeal Case Tracking System and by emailing a copy to the
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`following email addresses:
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`cortneyalexander@kentrisley.com
`haller@haller-iplaw.com
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`Dated: July 17, 2024
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`Michael L. Kiklis______
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`Respectfully Submitted,
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`Michael L. Kiklis
`Reg. No. 38,939
`Attorney for Petitioner
`Google LLC
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`6
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