UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Paper No. 26
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`QUALCOMM INC.,
`Petitioner
`
`BANDSPEED, INC.,
`
`Patent Owner
`
`Case IPR2015-00315‘
`
`U.S. Patent 7,477,624 B2
`
`PETITIONER’S REPLY TO PATENT OWNER’S OBJECTIONS TO
`
`EVIDENCE SUBMITTED WITH PETITIONER’S PETITION
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`1 Case IPR2015-01580 has been joined with this proceeding.
`
`
`
`Paper No. 26
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`QUALCOMM INC.,
`Petitioner
`
`BANDSPEED, INC.,
`
`Patent Owner
`
`Case IPR2015-00315‘
`
`U.S. Patent 7,477,624 B2
`
`PETITIONER’S REPLY TO PATENT OWNER’S OBJECTIONS TO
`
`EVIDENCE SUBMITTED WITH PETITIONER’S PETITION
`
`1 Case IPR2015-01580 has been joined with this proceeding.
`
`
`
`Petitioner respectfully submits this its reply to Patent Owner’s Objections to
`
`Evidence Submitted with Petitioner’sPetition entered on November 23, 2015
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`(Paper 25) (“Objections”).
`
`Petitioner understands that the Patent Trial and Appeal Board (“PTAB”)
`
`generally prefers evidentiary objections and responses not be filed with the PTAB.
`
`See, e.g., Sealed Air Corporation v. Pregis Innovative Packaging, Inc. IPR20l3-
`
`00554, Paper 16.
`
`It is unclear whether Patent Owner is seeking particular relief at
`
`this time beyond its stated objections. For example, given that Patent Owner’s
`
`objections are untimely, Patent Owner’s objections may seek to raise rule
`
`interpretation issues. Accordingly, Petitioner files this paper with the PTAB out of
`
`an abundance of caution.
`
`Petitioner will meet and confer with Patent Owner and seek to independently
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`resolve the issues discussed below with opposing counsel. Should those efforts be
`
`unsuccessful, Petitioner will seek a conference call with the PTAB regarding any
`
`remaining issues requiring the PTAB’s intervention.
`
`1.
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`PATENT OWNER’S OBJECTIONS ARE UNTIMELY
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`The original petition in this trial was the vehicle that submitted Exhibits
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`1008-1010 and 1012 into the record, which are the subject of Patent Owner’s
`
`objections. The present
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`trial was instituted on June 11, 2015.
`
`37 C.F.R. §
`
`42.64(b)(1) requires that objections to evidence submitted in an IPR petition must
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`-1-
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`
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`be made within 10 business days of the institution of the trial. Prior to November
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`23, 2015, however, Patent Owner failed to object to these Exhibits.
`
`The PTAB granted joinder on November 16, 2015, based on a petition that
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`relied solely on the evidence already of record and did not add any new exhibits to
`
`this proceeding.
`
`In such joinder circumstances, allowing objections to evidence
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`that has been of record for months in a proceeding without objection would
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`unfairly prejudice the parties to an original petition and provide a Patent Owner a
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`second, unwarranted opportunity to object
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`to evidence.
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`Similarly, allowing
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`untimely objections would prejudice a joining party and unnecessarily burden the
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`PTAB. Specifically, if a timely and proper objection was raised, a joining party
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`would have the opportunity to address such objections at the time of filing its
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`petition.
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`Accordingly, Petitioner submits that the rules cannot be construed to allow
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`objections to evidence that is already of record in a proceeding merely because a
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`joinder petition was instituted, and the PTAB should not recognize joinder as a
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`new opportunity to object to evidence of record. Accordingly, Patent Owner
`
`submits that the Patent Owner’s objections are untimely and waived.
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`11.
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`PATENT 0WNER’S OBJECTIONS DO NOT COMPLY WITH 37
`
`C.F.R § 42.64(B)(1)
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`Rule 42.54(b)(1)
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`requires
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`that objections be made with sufficient
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`particularity to allow for correction in the form of supplemental evidence. The
`
`n
`
`'2'
`
`
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`present objections fail to comply with this requirement and instead are made in
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`“laundry list” form without any specificity.
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`The evidence objected to includes one or more of: dictionary definitions
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`(where the dictionary cited includes copies of the front cover, publication
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`information, and page with the definition) and a Bluetooth Special Interest Group
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`published standards document. Patent Owner asserts a boilerplate objection that
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`g2_1_c_h of these documents are (i) not properly authenticated under Fed. R. Evid. 901,
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`(ii) hearsay under Fed. R. Evid. 801-802, (iii) irrelevant under Fed. R. Evid. 402,
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`and (iv-1) unduly prejudicial, (iv-2) confusing the issues, (iv-3) misleading, and
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`(iv-4) needlessly presenting cumulative evidence under Fed. R. Evid. 403.
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`The boiler plate objections are facially deficient and prevent Petitioner from
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`being able to determine the true substance of Patent Owner’s objections and, to the
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`extent necessary, any appropriate supplementation by Petitioner. For example, Pa-
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`tent Owner argues that certain exhibits are cumulative, without explaining as to
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`what, and that certain documents are hearsay despite falling within exceptions to
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`the Hearsay Rule. Further, Patent Owner indicates that the documents may need
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`further authentication without indicating any particular issues it has with the doc-
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`uments even though the exhibits provide sufficient authentication and include doc-
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`uments that have been cited to Patent Owner in related USPTO proceedings. Thus,
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`
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`Patent Owne1"s objections fail to provide the required sufficient particularity and
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`should be overruled for this reason.
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`To the extent Patent Owner’s objections are not waived and Patent Owner
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`presents meaningful paiticularly during the Parties’ meet and confer efforts, Peti~
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`tioner is prepared to make documents available for inspection, provide declaration
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`evidence stating that true and correct copies have been provided, and make other
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`reasonable efforts to resolve the objections without PTAB intervention.
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`III. CONCLUSION
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`For the foregoing reasons, Petitioner asserts that the present objections to
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`evidence are untimely and improper.
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`Therefore,
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`if the PTAB is eventually
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`required to address these objections, the objections should be overruled.
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`Dated: December3, 2015
`
`Respectfull
`
`bmitt
`
`.,
`
`5‘
`
`Nathan J. Rees (Reg. No. 63,820)
`NORTON ROSE FULBRIGI-IT US LLP
`
`2200 Ross Avenue, Suite 3600
`
`Dallas, Texas 75201-7932
`Tel: 214.855.7164
`
`Fax: 214.855.8200
`
`nate.rees@110rtonrosefulbright.com
`Attorney for Petitioner
`
`
`
`Certificate of Service
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`Pursuant to 37 C.F.R. § 42.6(e) and 37 C.F.R. § 42.l05(a), the undersigned
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`certifies that on December 3, 2015, a complete copy of Petitioner’s Reply to Patent
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`Owner’s Objections to Evidence Submitted with Petitioner’s Petition (“Reply”)
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`was electronically served on the Patent Owner.
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`LEAD COUNSEL
`
`BACK-UP COUNSEL
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`Gregory S. Donahue
`gdonal1ue@dpelaw.com
`
`David 0. Simmons
`dsimmons 1 @sbcgloba1.net
`
`Nathan Rees
`
`Attorney for Petitioner
`Registration No. 63,820
`NORTON ROSE F ULBRIGI-IT US LLP
`
`2200 Ross Avenue, Suite 3600
`
`Dallas, Texas 75201-7932
`
`(214) 855-7164
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