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., AVAYA INC.,
`Petitioner,
`v.
`
`STRAIGHT PATH IP GROUP, INC.
`Patent Owner.
`
`____________
`
`Case IPR2015-001981
`Patent No. 6,009,469 C1
`____________
`
`
`PETITIONER’S REPLY FOR MOTION TO EXCLUDE EVIDENCE
`
`FOR INTER PARTES REVIEW OF U.S. PATENT 6,009,469
`
`
`
`
`1 IPR2015-01400 has been joined with this proceeding.
`
`1022172
`
`
`
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`LG ELECTRONICS, INC., TOSHIBA CORP.,
`VIZIO, INC., HULU, LLC,
`CISCO SYSTEMS, INC., AVAYA INC.,
`Petitioner,
`v.
`
`STRAIGHT PATH IP GROUP, INC.
`Patent Owner.
`
`____________
`
`Case IPR2015-001981
`Patent No. 6,009,469 C1
`____________
`
`
`PETITIONER’S REPLY FOR MOTION TO EXCLUDE EVIDENCE
`
`FOR INTER PARTES REVIEW OF U.S. PATENT 6,009,469
`
`
`
`
`1 IPR2015-01400 has been joined with this proceeding.
`
`1022172
`
`
`
`Pursuant to 37 C.F.R. 42.24(c) and the Scheduling Order (Paper No. 25),
`
`
`
`Petitioner respectfully submits the following reply in support of its motion to
`
`exclude evidence (Paper No. 48).
`
`I.
`
`“MODIFYING WINS SERVER DEFAULTS” DOCUMENTS
`
`Patent Owner attempts to marshal Exhibits 2028 and 2033, two documents
`
`titled, “Modifying WINS server defaults,” as evidence of how the WINS prior art
`
`functioned (Paper No. 34 at 21). See also Exhibit 2038. But those exhibits—with
`
`dates ranging from 2005 to 2015—are irrelevant on their face to the functionality
`
`of the prior art (or to the knowledge of one of ordinary skill about that art).
`
`Remarkably, Patent Owner makes no argument in support of their alleged
`
`relevance, and instead contends that its expert’s mere citation to one exhibit is a
`
`back door into evidence for both of them.
`
`“[W]hen an expert reasonably relies on inadmissible information to form an
`
`opinion or inference, the underlying information is not admissible simply because
`
`the opinion or inference is admitted.” Fed. R. Evid. 703 advisory committee’s
`
`2000 Notes. “[A] party cannot call an expert simply as a conduit for introducing
`
`hearsay under the guise that the testifying expert used the hearsay as the basis of
`
`his testimony.” Marvel Characters, Inc. v. Kirby, 726 F.3d 119, 136 (2d Cir.
`
`2013) (internal citation marks and quotations omitted).
`
`1022172
`
`1
`
`
`
`Here, Patent Owner’s hearsay documents were never authenticated by its
`
`
`
`expert. While he cited Exhibit 2028 in his declaration, he did not authenticate it.
`
`And the expert made no mention of Exhibit 2033. See Exhibit 2038. Importantly,
`
`neither Patent Owner nor its expert explains how an internet printout that post-
`
`dates the publication of the WINS manual by at least ten years has any relevance to
`
`the legacy functionality of WINS, or what one of ordinary skill in the art as of the
`
`priority date would have believed was its functionality. See Brookhill-Wilk 1, LLC.
`
`v. Intuitive Surgical, Inc., 334 F.3d 1294, 1299 (Fed. Cir. 2003). Exhibits 2028
`
`and 2033 are thus irrelevant and inadmissible hearsay.
`
`Because Patent Owner’s own expert failed to establish the relevance of these
`
`exhibits, Patent Owner seeks to introduce Exhibits 2028 and 2033 through
`
`Petitioner’s expert. Dr. Bruce Maggs did not rely on either of the internet printouts
`
`in forming his opinions. Rule 703 thus does not apply. See Exhibit 1002 at 8–10;
`
`Exhibit 1041 at 1. Patent Owner was careful to avoid asking Dr. Maggs to
`
`authenticate the documents, understanding that he lacked the personal knowledge
`
`necessary to do so. But when asked about Exhibit 2028’s listed default, maximum,
`
`and minimum renewal intervals, Dr. Maggs testified: “I have reason to believe
`
`that’s not correct.” Exhibit 2037 at 150:11–17; see also at 150:19–152:3. And of
`
`Exhibit 2033’s reliability, he testified the “concern I have is that the document [is]
`
`1022172
`
`2
`
`
`
`
`
`ten years later” than the publication of the WINS manual. Id. at 182:6–14;
`
`184:11–12 (referencing concerns “about the date of this document and the fact that
`
`it . . . doesn’t list Windows NT 3.5 under the system it applies to.”).
`
`Lacking any basis to introduce Exhibits 2028 and 2033, Patent Owner cites
`
`without elaboration to Federal Rule of Evidence 807. But that cite fails for the
`
`same reason these exhibits are inadmissible in the first place—being dated at least
`
`ten years after the WINS manual was published, the documents lack
`
`“circumstantial guarantees of trustworthiness.” Fed. R. Evid. 807(a)(1).
`
`II.
`
`DR. HOUH’S DEPOSITION TESTIMONY
`
`Patent Owner claims that Dr. Houh’s deposition testimony—Exhibit 2039—
`
`is admissible, claiming that Petitioner had notice and an opportunity to examine
`
`him (Paper No. 52 at 2, 6–7). But Cisco Systems, Inc. and Avaya Inc. did not join
`
`the separate Samsung proceedings until after Dr. Houh was offered as Petitioner’s
`
`expert and deposed on May 26, 2015 in those proceedings. See Exhibit 2039;
`
`Samsung et al. v. Straight Path IP Group, Inc., IPR2014-01366, IPR 2014-01367,
`
`IPR2014-01368. Indeed, Patent Owner did not serve the deposition notice on any
`
`Petitioner in the present proceeding. See Samsung et al. v. Straight Path IP Group,
`
`Inc., IPR2014-01366, Paper No. 21 (PTAB May 18, 2015). And while Cisco and
`
`Avaya’s counsel attended Dr. Houh’s deposition, they noted on the record that
`
`their motion to join was “pending” and thus they could not ask any questions. See
`
`1022172
`
`3
`
`
`
`
`
`Exhibit 2039 at 5:18–22. Indeed, the Board granted Cisco and Avaya’s motion to
`
`join the Samsung proceedings on June 5, 2015—ten days after Dr. Houh’s
`
`deposition. Remaining Petitioners here never joined the Samsung proceedings.
`
`III. DICTIONARY EXCERPTS
`
`Patent Owner does not dispute that the dictionary excerpts—Exhibits 2021,
`
`2031, 2034, 2035, and 2036—were published after the ’469 patent’s claimed
`
`priority date (Paper No. 52 at 4–6). Accordingly, they are irrelevant to
`
`construction of that patent. See Brookhill-Wilk 1, LLC., 334 F.3d at 1299 (ruling
`
`that the ordinary and customary meaning of disputed terms must be determined
`
`from contemporaneous authorities).
`
`Patent Owner does not cite a single authority that contradicts Brookhill-Wilk
`
`1. Instead, it cites Vitronics Corporation v. Conceptronic, Inc. to argue that judges
`
`are free to consult dictionaries regardless of when they were published (Paper No.
`
`52 at 5) (citing 90 F.3d 1576, 1585 n.6 (Fed. Cir. 1996)). But in reality, Vitronics
`
`discusses how intrinsic evidence is more important than extrinsic evidence for
`
`claim construction—not how dictionary excerpts published at any point after a
`
`patent’s priority date somehow remain relevant. In fact, Patent Owner has not
`
`cited a single authority—Federal Circuit or otherwise—that holds post-priority
`
`dictionaries are relevant. See Google, IPR 2014-01031, Paper No. 41 at 10 (citing
`
`Vitronics); Sipnet EU S.R.O. v. Straight Path IP Group, Inc., IPR2013-00246,
`
`1022172
`
`4
`
`
`
`
`
`Paper No. 62 at 9 n.3, n.4 (PTAB October 9, 2014) (citing definitions that were not
`
`subject to a motion to exclude).
`
`IV.
`
`THE FEDERAL RULES OF EVIDENCE
`
`Finally, Patent Owner argues that the Federal Rules of Evidence do not
`
`apply here (Paper No. 52 at 1, 3–4). That argument contradicts the Board’s own
`
`regulations, which mandate that the Federal Rules of Evidence do apply. See 37
`
`C.F.R. 42.62(a); see also 77 Fed. Reg. at 48758, 48762. Even Patent Owner’s
`
`cited authority—such as Google Inc. v. Intellectual Ventures II LLC, IPR2014-
`
`01031, Paper No. 41 at 7–14 (PTAB Dec. 7, 2015)—acknowledges that the
`
`Federal Rules of Evidence govern proceedings before the Board (Paper No. 52 at
`
`5). Patent Owner’s remaining authorities did not even consider, much less decide,
`
`whether the Federal Rules of Evidence apply to the Board’s proceedings.
`
`Respectfully submitted,
`
`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
`
`5
`
`Dated: January 26, 2016
`
`
`
`
`
`1022172
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`
`I hereby certify that on January 26, 2016, I caused a true and correct
`copy of this PETITIONER’S REPLY FOR 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
`
`
`
`1022533.01
`
`
`
`
`
`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
`
`
`
`
`1022533.01
`
`
`
`
`
`Dated: January 26, 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
`
`
`
`
`1022533.01
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
