Paper No. ___
`Filed: January 11, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_____________________________
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`
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`HUGHES NETWORK SYSTEMS, LLC and
`HUGHES COMMUNICATIONS, INC.,
`Petitioner,
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`v.
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`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`_____________________________
`
`Case IPR2015-00059
`Patent 7,916,781
`
`_____________________________
`
`
`
`PATENT OWNER’S REPLY IN SUPPORT OF COMBINED MOTION
`TO STRIKE AND MOTION TO EXCLUDE
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`Filed: January 11, 2016
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________
`
`
`
`HUGHES NETWORK SYSTEMS, LLC and
`HUGHES COMMUNICATIONS, INC.,
`Petitioner,
`
`v.
`
`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`_____________________________
`
`Case IPR2015-00059
`Patent 7,916,781
`
`_____________________________
`
`
`
`PATENT OWNER’S REPLY IN SUPPORT OF COMBINED MOTION
`TO STRIKE AND MOTION TO EXCLUDE
`
`
`
`Case IPR2015-00059
`Patent 7,916,781
`
`TABLE OF CONTENTS
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`Page
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`I.
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`MOTION TO STRIKE ................................................................................ 1
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`A.
`B.
`C.
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`Exhibit 1064 (Fradenburgh Declaration) ............................................ 1
`Petitioner’s New § 102(a) Theory ...................................................... 3
`Exhibit 1076 (Jezek Declaration) ....................................................... 4
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`II. MOTION TO EXCLUDE ............................................................................ 4
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`III. CONCLUSION ........................................................................................... 5
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`-i-
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`Case IPR2015-00059
`Patent 7,916,781
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`Patent Owner (“Caltech”) hereby replies to Petitioner’s Opposition to Patent
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`Owner’s Combined Motion to Strike and Motion to Exclude (“Opp.,” Paper 35)
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`and respectfully requests the Board grant its Combined Motion to Strike and
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`Motion to Exclude (“Motion,” Paper 32).1
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`I. MOTION TO STRIKE
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`A. Exhibit 1064 (Fradenburgh Declaration)
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`Regarding the Fradenburgh declaration, Petitioner makes two arguments: (1)
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`that Caltech waived its motion by not formally serving notices of objection to
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`evidence; and (2) that the burden was on Caltech to request a subpoena to compel
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`Ms. Fradenburgh’s deposition. Both arguments fail.
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`Petitioner’s waiver theory is based on a misapprehension of the nature of the
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`request. Petitioner argues that Caltech never served or filed a “formal objection”
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`to Ex. 1064 as an evidentiary matter (Opp. pp. 1, 3-4) but the rules only require
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`objections for a motion to exclude. § 42.64. The motion to strike Ex. 1064 is not
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`advanced under the Federal Rules of Evidence; instead it relies on the requirements
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`of 35 U.S.C. § 311(b) and on Petitioner’s violation of well-established
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`requirements for declarants. § 42.12(a)-(b).
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`Caltech’s criticisms of the Fradenburgh declaration have been clear from the
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`beginning. Caltech discussed the declaration’s deficiencies in its preliminary
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`1 Petitioner includes extensive argument at pp. 15-17 of its brief regarding the
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`statement of material facts in circumvention of the page limit restrictions.
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`-1-
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`Case IPR2015-00059
`Patent 7,916,781
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`response, timely requested a deposition for cross-examination, formally requested
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`Petitioner withdraw the testimony when cross-examination was refused, discussed
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`Petitioner’s failure to provide its declarant for cross-examination in the Patent
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`Owner response, and raised the issue again when Petitioner sought additional
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`discovery to remedy the deficiencies in its evidence. Motion pp. 2-4; see also, e.g.,
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`PO Response (Paper 24) p. 29. Caltech also timely requested authorization for its
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`motion to strike five weeks before the deadline for the motion to exclude. Ex.
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`2031. Petitioner’s failure to provide Ms. Fradenburgh for deposition was a clear
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`violation of the rules and the declaration should be stricken.
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`Regarding Petitioner’s argument that Caltech must seek a subpoena, the
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`plain language of the Trial Practice Guide as well as numerous Board decisions
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`make clear that the proponent of declaration testimony must make the declarant
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`available for cross. Petitioner relies on a heading in the Trial Practice Guide rather
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`than its substantive text, which plainly states that it relates to “[t]he burden and
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`expense of producing a witness.” 77 Fed. Reg. 48761; cf. Intel Corp. v. Advanced
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`Micro Devices, Inc., 542 U.S. 241, 256 (2004) (a caption does not limit the plain
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`meaning of an authority’s text).
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`The numerous cases cited in Caltech’s motion confirm that the burden and
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`responsibility is on the party relying on the direct testimony. Indeed, the Board has
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`already explained that “it was not Petitioner’s burden to ... compel cross-
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`examination testimony of a witness that Patent Owner asks us to consider.” FLIR
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`Sys., Inc. v. Leak Surveys, Inc., IPR2014-00411, Paper 113 pp. 15-16 (2015).
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`-2-
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`Case IPR2015-00059
`Patent 7,916,781
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`The sole case cited by Petitioner, Marvell, does not compel a different
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`conclusion. There, the patent owner elected to seek a subpoena compelling
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`testimony of a witness it desired to cross-examine, and the petitioner did not
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`oppose. Marvell Semiconductor, Inc. v. Intellectual Ventures I LLC, IPR2014-
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`00553, Paper 28 (2015). Nothing in Marvell contradicts the overwhelming
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`precedent requiring the proponent to produce the witness for cross-examination.
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`B.
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`Petitioner’s New § 102(a) Theory
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`The rules require Petitioner to identify the “specific statutory grounds under
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`35 U.S.C. 102 or 103 on which the challenge to the claim is based.”
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`§ 42.104(b)(2). The theory specifically identified and relied upon in the petition
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`was 35 U.S.C. § 102(b).
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`Petitioner argues that § 102(b) prior art must necessarily satisfy § 102(a) as
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`well. Opp. p. 9. But Petitioner presupposes that it has established Divsalar
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`qualifies as § 102(b) prior art, which it has not. The only reason Petitioner raised
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`its new § 102(a) theory in its reply is to present an alternative to the
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` 102(b)
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`assertion in the petition, should the § 102(b) theory properly be rejected. Petitioner
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`failed to show Divsalar qualifies as § 102(b) prior art, and untimely and belatedly
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`attempts to shift its theory at this late stage to § 102(a)—without even identifying a
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`specific alleged publication date.
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`Petitioner cannot point to a single statement or citation in the petition
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`providing notice of a § 102(a) ground. Opp. pp. 9-10. The expert testimony cited
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`on page 7 of the petition addresses the purported content of Divsalar, not its
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`-3-
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`Case IPR2015-00059
`Patent 7,916,781
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`publication date. Pet. p. 7 (citing Ex. 1010 ¶ 32). The alleged September 1998
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`publication date is consistent with the § 102(b) theory explicitly stated in the
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`petition. Similarly, the petition’s statement that Divsalar was cited in the
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`prosecution of the ’781 patent fails to show the reference qualifies as any type of
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`prior art, much less shift the prior art theory from the explicitly stated § 102(b) to
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`§ 102(a). See, e.g., L-3 Commc’n Holdings, Inc. v. Power Survey, LLC, IPR2014-
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`00832, Paper 9 at 16-17 (2014) (finding date listed in an IDS “does not establish,
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`by itself ... that this was the date that the document was ‘publicly accessible’”).
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`C. Exhibit 1076 (Jezek Declaration)
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`The Jezek declaration should be stricken or expunged because, as explained
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`in the motion, its inclusion with Petitioner’s reply subverts the Board’s previous
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`ruling expunging it and converts that earlier sanction into an attempt to prejudice
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`Caltech. Motion pp. 9-11. Petitioner’s opposition argument with respect to Ex.
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`1076 contradicts its position on the Fradenburgh declaration. Here, it argues
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`Caltech has chosen not to avail itself of the remedies available under Board rules
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`(i.e., cross-examination or sur-reply). Opp. pp. 11-12. Petitioner does not explain
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`why it did not avail itself of Bd.Rule 123 for introducing the Jezek declaration. As
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`for the Fradenburgh declaration, Petitioner readily admitted it could have obtained
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`a subpoena but chose not avail itself to that option.
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`II. MOTION TO EXCLUDE
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`As discussed in Caltech’s motion, forty-four of Petitioner’s seventy-eight
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`exhibits as well as sixty-six paragraphs of the MacKay declaration (Ex. 1060) are
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`Case IPR2015-00059
`Patent 7,916,781
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`uncited in the petition or any of Petitioner’s motions or briefs. None of these
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`exhibits can be “plainly relevant to the issues in this proceeding” (Opp. p. 13) if
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`Petitioner never cited them in making its arguments. An additional four exhibits
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`and four paragraphs of Ex. 1060 were uncited in the petition and only first relied
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`upon in Petitioner’s reply in support of the improper § 102(a) argument.
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`Petitioner’s argument that all of the objected-to exhibits are discussed in the
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`petition, reply, and/or supporting declarations is unavailing. The only exhibits
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`Petitioner argues were cited in the petition—related patents, prosecution histories,
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`and Ex. 1038—were not. Page 5 of the petition cites only to the ’781 patent itself
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`(Ex. 1005), while the citation to Ex. 1038 on page 23 of the petition is plainly a
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`typo, as Ex. 1038 does not have 38 pages or relate to the Ping reference.
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`Moreover, Petitioner’s reliance on citations found in its reply does not help its
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`cause, as they relate only to the improper § 102(a) theory. Similarly, reliance on
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`citations found in supporting declarations is improper because most of those
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`declaration paragraphs were themselves not cited in the petition. Neither Caltech
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`nor the Board should be forced to sift through the record to discern Petitioner’s
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`underlying support when it is not cited in the petition itself.
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`III. CONCLUSION
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`For the reasons discussed above, Caltech’s motion should be granted.
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`Respectfully submitted,
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`Date: January 11, 2016
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`
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`/ Michael T. Rosato /
`Michael T. Rosato, Lead Counsel
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`Case IPR2015-00059
`Patent 7,916,781
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`CERTIFICATE OF SERVICE
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`I certify that the foregoing Patent Owner’s Reply in Support of Combined
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`Motion to Strike and Motion to Exclude was served on this 11th day of January,
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`2016, on Petitioner at the correspondence address of Petitioner as follows:
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`Eliot D. Williams
`G. Hopkins Guy
`BAKER BOTTS LLP
`1001 Page Mill Road
`Palo Alto, CA 94304
`eliot.williams@bakerbotts.com
`hop.guy@bakerbotts.com
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`Respectfully submitted,
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`/ Michael T. Rosato /
`Michael T. Rosato, Lead Counsel
`Reg. No. 52,182
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`Date: January 11, 2016
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`-6-
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