Paper No. __
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`BROADCOM CORPORATION
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`Petitioner
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`v.
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`WI-FI ONE, LLC
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`Patent Owner
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`
`
`Case IPR2013-00601
`U.S. Patent No. 6,772,215
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`
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`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION TO
`EXCLUDE EVIDENCE
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`ActiveUS 138212280v.1
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`BROADCOM CORPORATION
`
`Petitioner
`
`v.
`
`WI-FI ONE, LLC
`
`Patent Owner
`
`
`
`Case IPR2013-00601
`U.S. Patent No. 6,772,215
`
`
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION TO
`EXCLUDE EVIDENCE
`
`
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`
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`ActiveUS 138212280v.1
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`
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`Petitioner’s Opposition to Patent Owner’s Motion to Exclude Evidence
`Case No. IPR2013-00601/U.S. Pat. No. 6,772,215
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`Petitioner submits this Opposition in response to Patent Owner’s Motion to
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`Exclude Evidence Pursuant to 37 CFR § 42.64(b)(1), filed November 12, 2014
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`(Paper No. 53). Patent Owner moved to exclude Exhibit 1010, which is an excerpt
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`from an April, 1999 revision to the IS-707 communication standard entitled “Data
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`Service Options for Wideband Spread Spectrum Systems,” TIA/EIA/IS-707-A
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`(Revision of TIA/EIA/IS-707).
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`Instituted prior art reference Seo discloses an improvement on the then-
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`existing 1998 version of the IS-707 standard. Seo explains that for a CDMA
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`mobile radio communication system, the Radio Link Protocol (RLP) of IS-707.2 of
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`February 1998 prescribes “a relay layer corresponding to a radio section between a
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`terminal device and a base station.” (Seo at 1:14-19; Ex. 1002). Seo further
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`explains that “[i]n accordance with the present invention, the structure of an NAK
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`control frame prescribed in the existed standard, IS-707, is here compensated.”
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`(Seo at 5:28-30; Ex. 1002). Patent Owner’s expert Dr. Akl admitted that Seo was
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`proposing a change to the IS-707 standard. (Akl. Decl. at ¶ 47; Ex. 2020; see also
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`Akl Dep. at 191:7-10; Ex. 1012). Exhibit 1010 is therefore contemporaneous
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`evidence of how a person of ordinary skill in the art would understand Seo.
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`Patent Owner submits a number of reasons to exclude Ex. 1010, most of
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`which are nothing more than conclusory statements, and all of which are incorrect.
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`ActiveUS 138212280v.1
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`1
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`Petitioner’s Opposition to Patent Owner’s Motion to Exclude Evidence
`Case No. IPR2013-00601/U.S. Pat. No. 6,772,215
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`First, Patent Owner argues that Petitioner has not shown how Exhibit 1010
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`is contemporaneous evidence of how one of ordinary skill in the art would interpret
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`Seo. But Patent Owner acknowledges that Ex. 1010 was published after both the
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`December 31, 1998 filing date of Seo and the August 20, 1998 filing date of the
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`Korean priority application to Seo. (Paper No. 53 at p. 2). Because Seo is an
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`improvement to the 1998 IS-707 standard, it is reasonable that one of skill would
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`look to versions of the IS-707 standard published after Seo to understand any
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`improvements incorporated into the IS-707 standard that were disclosed in Seo.
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`Patent Owner’s argument also directly contradicts the testimony of its expert
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`Dr. Akl, who testified that he reviewed the IS-707 standard when drafting his
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`declaration because it was referenced in Seo, and admitted that IS-707 was relevant
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`to the meaning of Seo. (Akl Dep. at 191:14-21; Ex. 1012).1
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`Patent Owner’s argument that Broadcom “has lain behind the log” by
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`submitting Ex. 1010 in its reply is equally misplaced. Patent Owner’s own expert
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`1 Patent Owner also argues that Petitioner has not set forth any evidence linking
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`Exhibit 1010 to the February 1998 version of IS-707.2 referenced in Seo. But
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`Patent Owner misunderstands Petitioner’s use of Ex. 1010, which is to show
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`improvements to IS-707 incorporated into Ex. 1010 after Seo, not to link it to the
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`1998 version referenced by Seo.
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`ActiveUS 138212280v.1
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`Petitioner’s Opposition to Patent Owner’s Motion to Exclude Evidence
`Case No. IPR2013-00601/U.S. Pat. No. 6,772,215
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`admitted that he thought he had reviewed Ex. 1010 when drafting his declaration –
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`before Petitioner submitted Ex. 1010 in its reply (Akl Dep. at 191:14-17 and
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`192:2-4). Patent Owner’s expert further admitted that in IS-707 – consistent with
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`Petitioner’s understanding of the disclosure of Seo – different NAK_TYPE values
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`indicate whether fields are present (or not) in a feedback message. (Akl Dep. at
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`192:13-195:14; Ex. 1012). Because Patent Owner’s own expert reviewed and
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`understood IS-707 to be inconsistent with Patent Owner’s arguments over Seo (and
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`consistent with Petitioner’s arguments), Patent Owner can hardly be heard to
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`complain about Petitioner’s use of Ex. 1010.2
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`Second, Patent Owner’s argument that Petitioner waived its invalidity
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`position on Exhibit 1010 because Petitioner did not explain why it was not
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`included in its Petition is without merit.
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`2 Under § 42.51, Patent Owner “must serve relevant information that is inconsistent
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`with a position advanced by the party during the proceeding concurrent with the
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`filing of the documents or things that contains the inconsistency.” Given that Dr.
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`Akl was aware of – and indeed, does not dispute – the disclosure of IS-707, Patent
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`Owner itself should have disclosed such information, or at a minimum, should not
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`be allowed to foreclose Petitioner’s use of Ex. 1010.
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`ActiveUS 138212280v.1
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`3
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`Petitioner’s Opposition to Patent Owner’s Motion to Exclude Evidence
`Case No. IPR2013-00601/U.S. Pat. No. 6,772,215
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`Petitioner did not submit Ex. 1010 in its petition because Seo anticipates the
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`challenged claims on its own. Petitioner submitted IS-707 in response to an
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`argument that Patent Owner raised in its opposition. Specifically Wi-Fi One
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`argued that Seo does not anticipate the challenged claims because “Seo’s
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`NAK_TYPE field merely indicates which fields within the message field will
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`contain zero values and which fields will contain non-zero values.” (Patent
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`Owner’s Opposition at 38; Paper 41). This is an odd argument because Seo clearly
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`explains that certain fields “exist” depending on the value of the NAK_TYPE field
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`and nowhere states that these fields contain zero or non-zero values depending on
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`the NAK_TYPE field. (See Seo at 6:15-21 and claims 11 and 24; Ex. 1002).
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`Petitioner’s Reply uses Ex. 1010 to further confirm that a common sense reading
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`of the clear language of Seo is that the NAK_TYPE field is used to indicate
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`different types of messages with different fields, not one type of message with
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`some fields zeroed out depending on the value of NAK_TYPE as advanced by
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`Patent Owner. (Petitioner’s Reply at pp. 6, 8; Paper No. 49).
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`Third, Patent Owner argues Exhibit 1010 has not been authenticated. But
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`Patent Owner’s own expert Dr. Akl confirmed that Ex. 1010 is a copy of IS-707.
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`(Akl Dep. at 191:23-192:1 (“Q. I’m handing you what’s marked as Exhibit 1010 of
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`the ‘215 patent. This is a copy of IS-707, correct? A. Yes.”); Ex. 1012). Indeed,
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`ActiveUS 138212280v.1
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`4
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`Petitioner’s Opposition to Patent Owner’s Motion to Exclude Evidence
`Case No. IPR2013-00601/U.S. Pat. No. 6,772,215
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`Dr. Akl acknowledged the April, 1999 date and testified that Ex. 1010 appeared to
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`be a copy of the IS-707 standard that he reviewed when preparing his declaration.
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`(Akl. Dep. at 192:2-7; Ex. 1012). At no point during his deposition did Dr. Akl
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`question the authenticity of Ex. 1010. Petitioner also submitted testimony from its
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`own expert Dr. Bims authenticating Ex. 1010 as “the text of the IS-707
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`communication standard from April 1999.” (Bims Decl. at ¶ 7).
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`Lastly, Patent Owner argues that Ex. 1010 is inadmissible hearsay. Again,
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`this misunderstands Petitioner’s use of Ex. 1010. Petitioner is not using Ex. 1010
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`as a separate basis for invalidity – Petitioner is relying exclusively on Seo as its
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`invalidity reference. Petitioner is offering Ex. 1010 only as evidence of what Seo
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`describes and not for any hearsay purpose. (See EMC Corporation v.
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`PersonalWeb Technologies, IPR2013-00084, Final Written Decision, Paper No. 64
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`at 48).
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`For these reasons, Patent Owner’s Motion should be denied, and Ex. 1010
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`and ¶ 7 of Dr. Bims’ expert declaration (Ex. 1013) should not be excluded or
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`stricken from the record.
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`ActiveUS 138212280v.1
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`5
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`Petitioner’s Opposition to Patent Owner’s Motion to Exclude Evidence
`Case No. IPR2013-00601/U.S. Pat. No. 6,772,215
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`Dated: November 19, 2014
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`Respectfully submitted,
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`/Michael A. Diener/
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`Michael A. Diener, Reg. No. 37,122
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`WILMER CUTLER PICKERING HALE
`AND DORR LLP
`60 State St.
`Boston, MA 02109
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`ActiveUS 138212280v.1
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`6
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`Petitioner’s Opposition to Patent Owner’s Motion to Exclude Evidence
`Case No. IPR2013-00601/U.S. Pat. No. 6,772,215
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`CERTIFICATE OF SERVICE
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`I hereby certify that, on November 19, 2014, I caused a true and correct copy
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`of the foregoing PETITIONER’S OPPOSITION TO PATENT OWNER’S
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`MOTION TO EXCLUDE EVIDENCE to be served via email on the attorneys
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`identified in Wi-Fi One’s Updated Mandatory Notice and Notice of Appearance
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`for John Shumaker, whom consented to electronic service:
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`Lead Counsel:
`Back-up Counsel:
`Email Address:
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`Peter J. Ayers
`J. Christopher Lynch, John Shumaker
`EricssonIPR2013-601@leehayes.com
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`ActiveUS 138212280v.1
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`/Michael A. Diener/
`Michael A. Diener
`Registration No. 37,122
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`7
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