UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`LG ELECTRONICS, INC., TOSHIBA CORP.,
`VIZIO, INC., HULU, LLC,
`CISCO SYSTEMS, INC., and AVAYA INC.,
`Petitioner,
`v.
`
`STRAIGHT PATH IP GROUP, INC.
`Patent Owner.
`
`____________
`
`Case IPR2015-001981
`Patent No. 6,009,469 C1
`____________
`
`
`
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
`FOR INTER PARTES REVIEW OF U.S. PATENT 6,009,469
`
`
`1 IPR2015-01400 has been joined with this proceeding.
`
`1017064.01
`
`
`
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`LG ELECTRONICS, INC., TOSHIBA CORP.,
`VIZIO, INC., HULU, LLC,
`CISCO SYSTEMS, INC., and AVAYA INC.,
`Petitioner,
`v.
`
`STRAIGHT PATH IP GROUP, INC.
`Patent Owner.
`
`____________
`
`Case IPR2015-001981
`Patent No. 6,009,469 C1
`____________
`
`
`
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
`FOR INTER PARTES REVIEW OF U.S. PATENT 6,009,469
`
`
`1 IPR2015-01400 has been joined with this proceeding.
`
`1017064.01
`
`
`
`
`
`Pursuant to 37 C.F.R. 42.64(c), the Federal Rules of Evidence, and the
`Scheduling Order entered on May 15, 2015 (Paper No. 25), Petitioner moves to
`exclude the following exhibits submitted by Patent Owner. These exhibits are
`inadmissible because they are irrelevant and/or contain unauthenticated evidence
`or inadmissible hearsay:2
`
`
`Objection
`Irrelevance under Federal Rule of Evidence 401
`Irrelevance under Federal Rule of Evidence 401
`Authentication under Federal Rule of Evidence 901
`Hearsay under Federal Rule of Evidence 802
`Irrelevance under Federal Rule of Evidence 401
`Irrelevance under Federal Rule of Evidence 401
`Authentication under Federal Rule of Evidence 901
`Hearsay under Federal Rule of Evidence 802
`Irrelevance under Federal Rule of Evidence 401
`Irrelevance under Federal Rule of Evidence 401
`Irrelevance under Federal Rule of Evidence 401
`Hearsay under Federal Rule of Evidence 802
`
`Patent Owner’s Exhibit
`Exhibit 2021
`Exhibit 2028
`
`Exhibit 2031
`Exhibit 2033
`
`Exhibit 2034
`Exhibit 2035
`Exhibit 2036
`Exhibit 2039
`
`
`
`
`
`
`
`
`
`
`
`
`2 In the remainder of this motion, the arguments for these objections have been
`consolidated where those objections are identical across certain exhibits.
`
`1017064.01
`
`1
`
`
`
`
`
`Exhibit 2028 and Exhibit 2033 are documents titled “Modifying WINS
`server defaults.” While both exhibits appear to have been updated on January 21,
`2005, Exhibit 2028 appears to have been printed from the internet on July 29,
`2015, and Exhibit 2033 was apparently printed from the internet on May 25, 2015.
`Patent Owner contends in its Response (Paper No. 34) that these exhibits
`demonstrate the functionality of the prior art WINS system. However, Exhibit
`2028 and Exhibit 2033 must be excluded for three independent reasons.
`First, Exhibit 2028 and Exhibit 2033 are irrelevant under Federal Rule of
`Evidence 401. That is because their apparent publication dates of January 21, 2005
`and their apparent printout dates of July 29, 2015 and May 25, 2015 all post-date
`the September 1994 publication date of the WINS prior art (as well as the ’469
`patent’s claimed priority date of September 25, 1995). See Brookhill-Wilk 1, LLC.
`v. Intuitive Surgical, Inc., 334 F.3d 1294, 1299 (Fed. Cir. 2003) (ignoring several
`references for claim-construction purposes because the references post-dated the
`patent at issue and therefore did not reflect the meanings that would have been
`attributed to the disputed words as of the patent’s grant); Phillips v. AWH Corp.,
`415 F.3d 1303, 1313 (Fed Cir. 2005) (ordinary and customary meaning of a claim
`term is construed as of the effective filing date of the patent application).
`Second, Patent Owner has not authenticated Exhibit 2028 or Exhibit 2033, as
`no fact witness has testified that either exhibit “is what it is claimed to be.” See
`Fed. R. Evid. 901(b)(1). See Standard Innovation Corporation v. Lelo, Inc., Case
`IPR2014-00148, slip op. at 19–21 (PTAB Apr. 23, 2015) (Paper 41) (web print-
`outs were improperly authenticated and therefore excluded in part because there
`was no witness who testified about the print-outs’ accuracy); Haines v. Home
`Depot U.S.A., Inc., No. 1:10-CV-01763-SKO, 2012 WL 1143648, at *7 (E.D. Cal.
`
`1017064.01
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`2
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`
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`Apr. 4, 2012) (web print-out was improperly authenticated because there was no
`person to attest to the accuracy of the print-out). Indeed, Professor Bruce Maggs
`casted serious doubt on the authenticity of Exhibit 2028 and testified that Exhibit
`2028 is inaccurate. See Exhibit 2037 (Maggs Depo. Tr. 150:10–152:3).
`Third, Exhibit 2028 and Exhibit 2033 contain inadmissible hearsay barred
`by Federal Rule of Evidence 802, because these exhibits are being admitted for the
`truth of the matter asserted. See Driver v. Alexander, No. 3:13-CV-364, 2013 WL
`4719024, at *5 (M.D. Tenn. Sept. 3, 2013) (web print-outs were excluded as
`inadmissible hearsay). Petitioner has therefore made all of the above objections in
`the record (Paper No. 35) and hereby moves to exclude Exhibit 2028 and Exhibit
`2033 now.
`Exhibit 2039 was also submitted in support of Patent Owner’s Response
`(Paper No. 34), but that exhibit is inadmissible hearsay barred by Federal Rule of
`Evidence 802. As Patent Owner noted in its Response (Paper No. 34), Exhibit
`2039 is a transcript of Dr. Henry Houh’s deposition testimony from a separate inter
`partes review. Accordingly, to admit Dr. Houh’s deposition testimony against
`Petitioner in the present investigation, Patent Owner carries the burden to show
`that (1) Dr. Houh is “unavailable” as a witness; and (2) Petitioner had “an
`opportunity and similar motive” to cross-examine Dr. Houh at his deposition. See
`Fed. R. Evid. 804(b)(1); see also Rivera-Davila v. Asset Conservation, Inc., 230
`F.3d 1378 n.5 (Fed. Cir. 2000); and Rodriguez v. Pacificare of Texas, Inc., 980
`F.2d 1014, 1020 (5th Cir. 1993). Patent Owner has made no attempt to meet either
`requirement here. Patent Owner has not shown any evidence to satisfy Federal
`Rule of Evidence 804(b)(1) or any other rule that provides an exception for
`inadmissible hearsay. Petitioner accordingly objected to Exhibit 2039 in the record
`
`1017064.01
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`3
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`
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`(Paper No. 35) and hereby moves to exclude that exhibit under Federal Rule of
`Evidence 802.
`In addition, Patent Owner has submitted the following five exhibits, all of
`which contain irrelevant dictionary excerpts that were published after the ’469
`patent’s claimed priority date and therefore fail to inform the proper construction
`of the challenged claims. See Brookhill-Wilk 1, LLC., 334 F.3d at 1299; Phillips,
`415 F.3d at 1313.
` Exhibit 2021 appears to be excerpts from the Fourth Edition of the
`Microsoft Computer Dictionary, published in 1999. Patent Owner cited
`Exhibit 2021 in support of its Preliminary Response (Paper No. 19) and
`Response (Paper No. 34). However, Exhibit 2021 is irrelevant to the
`proper claim construction here because its publication date of 1999 post-
`dates the ’469 patent’s claimed priority date of September 25, 1995.
`Accordingly, Petitioner objected to (Paper No. 29) and hereby moves to
`exclude Exhibit 2021 under Federal Rule of Evidence 401.
` Exhibit 2031 appears to be excerpts from the Fifth Edition of Barron’s
`Dictionary of Computer and Internet Terms. Patent Owner cites to that
`exhibit in its Response (Paper No. 34). But Exhibit 2031 is likewise
`irrelevant because its publication date of 1996 post-dates the ’469
`patent’s claimed priority date of September 25, 1995. Petitioner thus
`objected to Exhibit 2031 (Paper No. 35) and hereby moves to exclude
`that exhibit under Federal Rule of Evidence 401.
` Exhibit 2034 appears to be a dictionary definition of the word “status,”
`printed from the internet on June 8, 2015. Patent Owner cited Exhibit
`2034 in support of its Response (Paper No. 34), but that exhibit is
`
`1017064.01
`
`4
`
`
`
`
`
`irrelevant because its apparent publication date of June 8, 2015 post-dates
`the ’469 patent’s claimed priority date of September 25, 1995. As such,
`Petitioner objected to (Paper Nos. 29, 35) and hereby moves to exclude
`Exhibit 2034 as irrelevant under Federal Rules of Evidence 401.
` Exhibit 2035 appears to be excerpts from Microsoft Press’ Computer
`Dictionary. Patent Owner submitted that exhibit in support of its
`Response (Paper No. 34). Yet Exhibit 2035’s publication date of 1997
`post-dates the ’469 patent’s claimed priority date of September 25, 1995.
`Petitioner therefore objected to Exhibit 2035 (Paper No. 35) and hereby
`moves to exclude Exhibit 2035 as irrelevant under Federal Rule of
`Evidence 401.
` Exhibit 2036 appears to be excerpts from the Oxford Dictionary of
`Current English, which Patent Owner cited in its Response (Paper No.
`34). However, Exhibit 2036’s publication date of 1999 post-dates the
`’469 patent’s claimed priority date of September 25, 1995. Petitioner
`thus objected to Exhibit 2036 (Paper No. 35) and hereby moves to
`exclude that exhibit as irrelevant under Federal Rule of Evidence 401.
`
`
`
`
`
`1017064.01
`
`5
`
`
`
`
`
`KEKER & VAN NEST LLP
`
`By:
`
`
`/s/ Sharif E. Jacob
`SHARIF E. JACOB
`633 Battery Street
`San Francisco, CA 94111-1809
`Telephone: 415 391 5400
`Facsimile: 415 397 7188
`
`Attorneys for Petitioner HULU, LLC
`
`Respectfully submitted,
`
`Dated: January 5, 2016.
`
`
`
`
`
`1017064.01
`
`6
`
`
`
`CERTIFICATE OF SERVICE
`
`
`I hereby certify that on January 5, 2016, I caused a true and correct
`copy of this PETITIONER’S MOTION TO EXCLUDE EVIDENCE FOR
`INTER PARTES REVIEW OF U.S. PATENT 6,009,469 to be served upon the
`Patent Owner by filing this document through the Patent Review Processing
`System as well as by delivering a copy via email to the following attorneys of
`record for the Patent Owner:
`Counsel for Straight Path IP Group, Inc.
`William A. Meunier (Lead Counsel) (Registration No. 41,193)
`Matthew D. Durell (Backup Counsel) (Registration No. 55, 136)
`Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
`One Financial Center
`Boston, Massachusetts 02111
`Email:
`StraightPathIPRs@mintz.com
`
`Counsel for Hulu, LLC
`Leo Lam (Registration No. 38,528)
`Matthias Kamber
`Keker & Van Nest LLP
`633 Battery Street
`San Francisco, California 94111
`Email:
`llam@kvn.com
`
`mkamber@kvn.com
`
`Counsel for Toshiba
`Clint Conner (Registration No. 52,764)
`Paul Meiklejohn (Registration No. 26,569)
`Jennifer Spaith (Registration No. 51,916)
`Dorsey & Whitney
`50 South Sixth Street, Suite 1500
`Minneapolis, Minnesota 55402
`Email:
`conner.clint@dorsey.com
`
`meiklejohn.paul@dorsey.com
`
`spaith.jennifer@dorsey.com
`
`
`
`
`
`Counsel for VIZIO
`Kevin O’Brien (Registration No. 30,578)
`Richard V. Wells (Registration No. 53,757)
`Baker & McKenzie LLP
`815 Connecticut Avenue, N.W.
`Washington, D.C. 20006
`Email:
`kevin.obrien@bakermckenzie.com
`
`
`richard.wells@bakermckenzie.com
`
`Counsel for Avaya Inc.
`Dorothy P. Whelan (Registration No. 33,814)
`Fish & Richardson
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, Minnesota 55402
`Email:
`whelan@fr.com
`
`Christopher O. Green (Registration No. 52,964)
`Fish & Richardson
`1180 Peachtree Street NE, 21st Floor
`Atlanta, Georgia 30309
`Email:
`cgreen@fr.com
`
`Counsel for CISCO Systems
`David L. Cavanaugh (Registration No. 36,476)
`Wilmer Cutler Pickering Hale and Dorr LLP
`1875 Pennsylvania Avenue, NW
`Washington, DC 20006
`Email:
`david.cavanaugh@wilmerhale.com
`
`Jason D. Kipnis (Registration No. 40,680)
`Wilmer Cutler Pickering Hale and Dorr LLP
`950 Page Mill Road
`Palo Alto, California 94304
`Email:
`jason.kipnis@wilmerhale.com
`
`
`
`
`
`
`Dated: January 5, 2016
`
`Respectfully submitted,
`
`/Rajeev Gupta/
`Darren M. Jiron, Registration No. 45,777
`Rajeev Gupta, Registration No. 55,873
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, L.L.P.
`901 New York Avenue, N.W.
`Washington, D.C. 20001-4413
`Telephone: 202-408-4000
`Facsimile: 202-408-4400
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