Takeaway: To preserve the ability to move to exclude evidence, objections to evidence must be filed within the prescribed time limits: 10 days after institution for preliminary evidence; 5 days after submissions of evidence after institution, and immediate objections for deposition testimony.

In its Final Written Decision, the Board found that Petitioner has shown by a preponderance of the evidence that all of the challenged claims in U.S. Patent No. 6,173,403 (the ’403 Patent) are unpatentable. The ’403 Patent discloses methods of distributing one or more information products together, while reserving to the publisher the ability to control which products are actually installed on an end-user’s computer.

Patent Owner argued that Petitioner was timed barred under 35 U.S.C. § 315(b). Specifically, Patent Owner contended that one of Petitioner’s co-defendants in the related litigation was served with a complaint alleging infringement more than one year before the filing date of the Petition in this proceeding. Whether a non-party is a “privy” for purposes of an inter partes review proceeding is a highly fact-dependent question on whether the party and its alleged privy are sufficiently close such that both should be bound by the trial outcome and related estoppels. A number of factors may be relevant, including whether the non-party exercised or could have exercised control over a party’s participation in a proceeding, or whether the non-party is responsible for funding and directing the proceeding.

The Board was not persuaded there was “privity” in this case where the co-defendant allegedly had a pre-existing substantive legal relationship based on Patent Owner’s submission of a publicly available software development kit that the co-defendant may have signed. The publicly available software development kit required that the co-defendant to indemnify Petitioner for third party patent infringement claims, and that the co-defendant not enter any settlement or like agreement with a third party without the prior written consent of Petitioner. The Board stated that even if the specific indemnification provision of the publicly available software development kit was present in the agreement between Petitioner and the co-defendant, the Board was persuaded that the provision is indicative of co-defendant being a privy of Petitioner because the indemnification provision does not give the developer the right to intervene or control Petitioner’s defense to any charge of patent infringement.

Patent Owner questioned the credibility of Petitioner’s expert on the basis (1) that the expert did not spending sufficient time to read and analyze the references cited in his declaration at the level of diligence required; and (2) that the expert has hostility towards the patent system as a member of the Electronic Frontier Foundation (EFF). The Board did not find either basis sufficient to changes its opinion on the credibility of the expert, because, for both bases, Patent Owner only addressed general facts without contradicting any specific elements of the expert’s testimony or showing any specific bias for or against the particular parties or patent in question.

The Board had instituted trial based on six grounds of proposed rejections including three anticipation rejections, and three obviousness rejections. Patent Owner was able to persuade the Board that there was not a preponderance of evidence to support one of the anticipation rejections and one of the obviousness rejections based on the same primary reference. The remaining proposed rejections were maintained, and covered all of the claims challenged in the proceeding.

Petitioner filed a motion for observation on email communications between Patent Owner’s two declarants. Patent Owner moved to seal the email communications and Petitioner’s motion for observation. The Board considered the observations and denied the Motion to Seal the email communications and Petitioner’s motion. The emails contained the declarants’ opinions on the prior art at issue in the proceeding, and not any trade secrets, research information, or in information that would be commercially sensitive, and thus the information was not found to be confidential.

Patent Owner also filed a Motion to Exclude the declaration of Petitioner’s expert, part of the cross-examination of Patent Owner’s declarant, and certain exhibits submitted by Petitioner. When a party objects to evidence that was submitted during a preliminary proceeding, such an objection must be served within ten business days of the institution of trial. 37 C.F.R. § 42.64(b)(1). This process allows the party relying on the evidence to which an objection is served timely the opportunity to correct by serving supplemental evidence within ten business days of the service of the objection. If, upon receiving the supplemental evidence the opposing party is still of the opinion that the evidence is inadmissible, the opposing party may file a motion to exclude such evidence. 37 C.F.R. § 42.64(c). Because the declaration that Patent Owner requests to be excluded was filed with the Petition, and no objections were made within ten days of institution of trial, the Board was not persuaded that the declaration should be excluded. Similarly, an objection to deposition evidence must be made during the deposition. 37 C.F.R. § 42.64(a). Patent Owner made no such objections, and thus the Board was not persuaded that the deposition testimony should be excluded.

Finally, after trial has been instituted, any objection must be served within five business days of service of evidence to which the objection is directed. 37 C.F.R. § 42.64(b)(1). The objection must “identify the grounds for the objection with sufficient particularity to allow correction in the form of supplemental evidence. Id. Patent Owner did provide an objection within five business days, but the Board was not persuaded that the exhibits should be excluded. First, the Board was not persuaded by Patent Owner’s argument that the exhibits were not prior art, because the mere fact that documents are not prior art does not merit their exclusion. Second, Patent Owner’s allegation that the documents were not authenticated was found to be not timely and not preserved by objection, because no such objection was originally submitted.

Apple Inc. v. Achates Reference Publishing, Inc., IPR2013-00080
Paper 90: Final Written Decision
Dated: June 2, 2014
Patents 6,173,403
Before: Howard B. Blakenship, Justin T. Arbes, and Gregg I. Anderson
Written by: Arbes
Related Proceedings: Achates Reerence Publishing, Inc. v. Symantec Corp., Case No. 2:11-cv-00294-JRG-RSP (E.D. Tex.)