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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
`Petitioner
`v.
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`WI-FI ONE, LLC
`Patent Owner
`____________________
`
`Case IPR2013-00601
`Patent No. 6,772,215
`___________________
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`
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`PATENT OWNER’S REPLY TO PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
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`
`Case IPR2013-00601
`Patent 6,772,215
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`I.
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`Exhibit 1010 is not contemporaneous evidence of Seo
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`The patent application that issued as Seo was filed on December 31, 1998
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`and claimed priority to a Korean application filed on August 20, 1998. (Exhibit
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`1002.) Exhibit 1010 has an alleged date of April 1999. Broadcom assumes that
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`Seo (a) created an improvement upon IS707.2 and (b) only the improvement of
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`Seo was incorporated into Exhibit 1010. But Broadcom has not shown that Seo
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`was incorporated – let alone considered – during the drafting of Exhibit 1010. At
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`best, the significant changes between Exhibit 1010 and Seo highlight deficiencies
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`of Seo. Thus, Exhibit 1010 does not evidence the disclosure of Seo. Because
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`Broadcom has not shown that Exhibit 1010 is a manifestation of Seo, Exhibit 1010
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`is not contemporaneous evidence of Seo, and therefore must be excluded.
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`Dr. Akl’s testimony is consistent with Patent Owner’s position. Dr. Akl
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`never testified that he relied on the disclosure of Exhibit 1010 to determine the
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`meaning of any terms. Nor did he identify any terms or sections of Exhibit 1002 –
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`including Figure 4 – whose understanding was premised on Exhibit 1010. Indeed,
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`Dr. Akl did not rely on Exhibit 1010 for his opinions in his declaration, and in fact,
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`he testified that Exhibit 1010 could not be used to interpret Seo. (Exhibit 1012,
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`Akl Dep. at 197:4-23.) Furthermore, that Dr. Akl may have read Exhibit 1010
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`before drafting his declaration does not justify Broadcom’s intentional withholding
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`of this reference from its petition.
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`1
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`Case IPR2013-00601
`Patent 6,772,215
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`II.
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`Petitioner waived its invalidity position with respect to Exhibit 1010.
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`Broadcom did not include Exhibit 1010 in its petition because it contends
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`that “Seo anticipates the challenged claims on its own.” (Paper No. 58 at 4.) But
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`that contention is incorrect. Broadcom has admitted that Exhibit 1010 – which
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`postdates the ’215 patent – cannot be invalidating prior art. (Paper No. 49 at 9 n3.)
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`Broadcom also argues that it is using Exhibit 1010 to define the term “exist.”
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`(Paper No. 58 at 4.) But the ’215 patent is clear that the fields FIRST and LAST
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`either include a sequence number or are “00.” (Seo at 2:10-16.) Broadcom’s use
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`of Exhibit 1010 to attempt to show that the values of the FIRST and LAST fields
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`in Seo are not limited to zero and non-zero values belies the clear disclosure of Seo
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`and should be rejected.
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`III. Exhibit 1010’s probative value is substantially outweighed by unfair
`prejudice and confusing the issues, and thus should be excluded.
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`Broadcom assumes that the differences between the disclosures of Exhibit
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`1010 and Seo illustrate solely the disclosure of Seo. Therein lies the highly
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`prejudicial value of Exhibit 1010. Broadcom has not shown that Exhibit 1010 is
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`based, in any part, on Seo. Nor has Broadcom shown the committee members and
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`entities responsible for Exhibit 1010 considered Seo when drafting Exhibit 1010.
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`In short, Broadcom erroneously infers that the complete disclosure of Exhibit 1010
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`reflects the disclosure of Seo, when, Exhibit 1010 may show the deficiencies in
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`2
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`Case IPR2013-00601
`Patent 6,772,215
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`Seo. Under these circumstances, Exhibit 1010 should be excluded. FED. R. CIV. P.
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`403.
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`IV. Exhibit 1010 should be excluded as inadmissible hearsay and should be
`excluded.
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`Broadcom contends that Exhibit 1010 is contemporaneous evidence showing
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`how a person of ordinary skill in the art would interpret the Seo disclosure. And to
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`do so, Broadcom is attempting to use the alleged April 1999 date of Exhibit 1010
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`as evidence that Exhibit 1010 is contemporaneous with Seo. In other words,
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`Broadcom is attempting to prove that Exhibit 1010 was published in April 1999,
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`which is impermissible hearsay. Because Broadcom puts forth no independent
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`evidence relating to the alleged April 1999 publication date of Exhibit 1010,
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`Exhibit 1010 should be excluded as impermissible hearsay.
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`For these reasons, Patent Owner’s Motion to exclude Exhibit 1010 should be
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`granted, and ¶ 7 of Dr. Bims’ declaration (Ex. 1013), which relies on Exhibit 1010,
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`should be excluded and stricken from the record.
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`3
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`Respectfully submitted,
`
`LEE & HAYES PLLC
`
`
` /Peter J. Ayers/
`Peter J. Ayers, Reg. No. 38,374
`John Shumaker, Reg. No. 52,223
`LEE & HAYES, PLLC
`13809 Research Blvd., Suite 405
`Austin, TX 78750
`Phone: (512) 605-8162
`Fax: (509) 944-4693
`peter@leehayes.com
`jshumaker@leehayes.com
`
`J. Christopher Lynch, Reg. No. 34,216
`LEE & HAYES, PLLC
`601 W. Riverside Ave., Suite 1400
`Spokane, WA 99201
`Telephone: 509.324.9256
`Fax: 509.323.8979
`chris@leehayes.com
`
`Counsel for Patent Owner
`
`Case IPR2013-00601
`Patent 6,772,215
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`4
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`Case IPR2013-00601
`Patent 6,772,215
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that on November 24, 2014 the foregoing
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`PATENT OWNER’S REPLY TO PETITIONER’S OPPOSITION TO PATENT
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`OWNER’S MOTION TO EXCLUDE EVIDENCE was served on Lead and Back-
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`up Counsel for Broadcom Corporation by sending the same via electronic mail to
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`the address provided by Broadcom:
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`Dominic E. Massa, Lead Counsel
`Michael A. Diener, Back-up Counsel
`Wilmer Cutler Pickering Hale and Dorr, LLP
`60 State Street
`Boston, MA 02109
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`LEE & HAYES PLLC
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` /Peter J. Ayers/
`Peter J. Ayers
`Reg. No. 38,374
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`5
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