Trials@uspto.gov Paper 7
`571-272-7822
`
` Entered: November 3, 2014
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`T-MOBILE USA, INC. and T-MOBILE US, INC.,
`Petitioner,
`
`v.
`
`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Cases IPR2015-00015 (Patent 5,915,210)
`IPR2015-00017 (Patent 5,590,403)
`IPR2015-00018 (Patent 5,659,891)1
`____________
`
`
`
`Before JONI Y. CHANG, SCOTT A. DANIELS, and JASON J. CHUNG,
`Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`1 This Order addresses issues that are identical in all three above-identified
`proceedings. Therefore, we exercise our discretion to issue one Order to be
`filed in each of the proceedings. The parties, however, may not use this
`style heading in any subsequent papers without prior authorization.
`
`
`
`
`571-272-7822
`
` Entered: November 3, 2014
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`T-MOBILE USA, INC. and T-MOBILE US, INC.,
`Petitioner,
`
`v.
`
`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Cases IPR2015-00015 (Patent 5,915,210)
`IPR2015-00017 (Patent 5,590,403)
`IPR2015-00018 (Patent 5,659,891)1
`____________
`
`
`
`Before JONI Y. CHANG, SCOTT A. DANIELS, and JASON J. CHUNG,
`Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`1 This Order addresses issues that are identical in all three above-identified
`proceedings. Therefore, we exercise our discretion to issue one Order to be
`filed in each of the proceedings. The parties, however, may not use this
`style heading in any subsequent papers without prior authorization.
`
`
`
`
`
`IPR2015-00015 (Patent 5,915,210), IPR2015-00017 (Patent 5,590,403),
`IPR2015-00018 (Patent 5,659,891)
`
`On October 31, 2014, a conference call was held between respective
`counsel for the parties and Judges Chang, Daniels, and Chung. Petitioner,
`T-Mobile USA, Inc. and T-Mobile US, Inc. (collectively “T-Mobile”),
`requested the conference call to seek clarification on 37 C.F.R. § 42.6(a)(3),
`concerning incorporation by reference, and to request leave to file a
`corrected declaration in each of the above-identified proceedings. Patent
`Owner, Mobile Telecommunications Technologies, LLC (“M-Telecom”),
`opposed. We considered both parties’ arguments and the specific facts
`before us. In light of the circumstances, T-Mobile’s request is granted.
`
`Improper Incorporation by Reference and Combination of Documents
`
`On October 3, 2014, T-Mobile filed each of its Petitions with, inter
`
`alia, two Exhibits: (1) a Declaration of Dr. Behnaam Aazhang (Ex. 10172);
`and (2) a copy of the Declaration of Dr. Apostoloski Kakaes that was filed
`by Apple Inc. (“Apple”) in Apple Inc. v. Mobile Telecommunications
`Technologies, LLC, Case IPR2014-01032 (PTAB June 27, 2014) (Ex. 1003).
`
`Each of the T-Mobile Petitions cites to both Declarations for support.
`For instance, the Petition filed in IPR2015-00017 provides:
`Additional explanation and support for each ground is set forth
`in Dr. Behnaam Aazhang’s declaration, Ex. TMO1017, which
`adopts and incorporates by reference the relevant parts of the
`declaration of Dr. Kakaes, Ex. TMO1003 (“Kakaes”), from the
`Apple IPR.
`Paper 1, 4.
`
`2 For the purpose of clarity and expediency, we treat IPR2015-00017 as
`representative, and all citations are to IPR2015-00017 unless otherwise
`noted.
`
`
`
`2
`
`
`
`IPR2015-00015 (Patent 5,915,210), IPR2015-00017 (Patent 5,590,403),
`IPR2015-00018 (Patent 5,659,891)
`
`For example, as described by Dr. Kakaes and adopted by
`Dr. Behnaam Aazhang–both of whom are authorities in the
`field of wireless communication–Linquist describes a
`communications system that includes antenna towers for
`transmission of information in a simulcast manner. Linquist,
`Ex. TMO1004 at 3:51-60, 4:2-8; see also Kakaes at ¶ 27.
`Id. at 14–15.
`
`The Declaration of T-Mobile’s expert witness, Dr. Aazhang,
`incorporates by reference a large portion of the Declaration of Apple’s
`expert witness, Dr. Kakaes. Specifically, Dr. Aazhang testifies:
`I note that Dr. Kakaes’ Declaration performs essentially the
`same analysis and comes to the same conclusions that I come to
`myself. Therefore rather than preparing paragraphs of my own
`declaration that would contain essentially the same analysis as
`in Dr. Kakaes’ Declaration, I hereby adopt certain portions of
`the Dr. Kakaes’ Declaration as if they were my own, and
`incorporate them by reference into my declaration; specifically,
`¶¶ 17-65 of Dr. Kakaes’ Declaration, which include a brief
`overview of the ’403 patent and an analysis of certain subject
`matter in the three references.
`Ex. 1017 ¶ 20 (emphasis added).
`
`During the conference call, T-Mobile argued that the provisions of
`37 C.F.R. § 42.6(a)(3) do not apply to Dr. Aazhang’s Declaration, as the rule
`only prohibits incorporating arguments by reference, and Dr. Aazhang’s
`Declaration contains testimonial evidence and not arguments. We disagreed
`with T-Mobile’s narrow interpretation of the rule.
`As we explained during the conference call, 37 C.F.R. § 42.6(a)(3) in
`its entirety provides:
`Incorporation by reference; combined documents. Arguments
`must not be incorporated by reference from one document into
`
`
`
`3
`
`
`
`IPR2015-00015 (Patent 5,915,210), IPR2015-00017 (Patent 5,590,403),
`IPR2015-00018 (Patent 5,659,891)
`
`another document. Combined motions, oppositions, replies, or
`other combined documents are not permitted.
`T-Mobile’s argument narrowly focused only the first word of the first
`sentence of the rule, and failed to consider the rule as a whole. Notably, the
`second sentence provides “[c]ombined motions, oppositions, replies, or other
`combined documents are not permitted.” Here, the present record shows
`that T-Mobile essentially combined Dr. Aazhang’s Declaration with the
`Declaration of Apple’s expert witness. Such a combination of documents
`clearly is not permitted under 37 C.F.R. § 42.6(a)(3).
`
`
`Early Correction Would Provide for Clarity
`
`During the conference call, T-Mobile also requested leave to file a
`corrected Declaration of Dr. Aazhang. M-Telecom opposed, alleging that
`T-Mobile should have conducted its own legal research earlier and made the
`correction before filing of the Petitions. M-Telecom further argued that
`granting T-Mobile the authorization to correct Dr. Aazhang’s Declaration
`would prejudice M-Telecom because such correction is substantive.
`We are not persuaded, however, that correcting Dr. Aazhang’s
`Declaration to expressly include the materials that have been incorporated
`by reference would introduce substantive changes. As T-Mobile pointed out
`during the conference call, each Petition was filed with both Declarations,
`and it clearly cites to both Declarations for support. See, e.g., Paper 1, 4,
`14–15 (reproduced previously); Exs. 1003, 1017. More importantly, each
`Petition provides direct citations to the Declaration of Apple’s expert
`witness and to the prior art references. Id.
`
`
`
`4
`
`
`
`IPR2015-00015 (Patent 5,915,210), IPR2015-00017 (Patent 5,590,403),
`IPR2015-00018 (Patent 5,659,891)
`
`At this early stage of the proceedings, we also are not persuaded that
`correcting Dr. Aazhang’s Declaration, without introducing any substantive
`change, would prejudice M-Telecom. M-Telecom was served on October 3,
`2014, with a copy of each Petition and supporting evidence, including both
`Declarations. Paper 1. The Patent Owner Preliminary Response is due on
`January 15, 2015, in IPR2015-00018, and the Patent Owner Preliminary
`Responses are due on January 20, 2015, in IPR2015-00015 and
`IPR2015-00017. M-Telecom has adequate time to prepare its Patent Owner
`Preliminary Responses. M-Telecom did not articulate, nor can we discern, a
`sufficient reason as to why correcting the format of Dr. Aazhang’s
`Declaration would impact M-Telecom’s ability to timely file its Patent
`Owner Preliminary Responses. In fact, the corrected Declaration, most
`likely, would clarify the record and simplify discovery.
`
`
`Conclusion
`
`In consideration of the foregoing, it is hereby:
`ORDERED that T-Mobile is authorized to file in each of the above-
`identified proceedings, within five business days from the entry of this
`Order: (1) a corrected Declaration of Dr. Aazhang to expressly include the
`materials that have been incorporated by reference, without introducing any
`substantive change, and (2) a corrected Petition to change the citations
`correspondingly; and
`FURTHER ORDERED that, should T-Mobile file a corrected
`Declaration of Dr. Aazhang and a corrected Petition in accordance with this
`Order, T-Mobile must file redline versions, as exhibits, to show the changes:
`
`
`
`5
`
`
`
`IPR2015-00015 (Patent 5,915,210), IPR2015-00017 (Patent 5,590,403),
`IPR2015-00018 (Patent 5,659,891)
`
`(1) between Dr. Aazhang’s initial Declaration and corrected Declaration;
`and (2) between the initial Petition and the corrected Petition.
`
`
`
`For PETITION:
`Pierre J. Hubert
`Steven J. Pollinger
`MCKOOL SMITH, P.C.
`phubert@mckoolsmith.com
`spollinger@mckoolsmith.com
`01048-21IP403@McKoolSmith.com
`
`
`
`For PATENT OWNER:
`John R. Kasha
`Kelly R. Kasha
`KASHA LAW LLC
`John.Ksaha@KashaLaw.com
`Kelly.Ksaha@KashaLaw.com
`
`
`
`6
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