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`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 48
`Entered: June 21, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ARRIS GROUP, INC., ARUBA NETWORKS, INC.,
`HEWLETT PACKARD ENTERPRISE COMPANY, and HP, INC.,
`Petitioner,
`
`v.
`
`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC,
`Patent Owner.
`
`
`Case IPR2016-00768
`Patent 5,659,8911
`
`
`Before MEREDITH C. PETRAVICK, SCOTT A. DANIELS, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`ORDER
`Expunging Demonstrative Exhibits
`37 C.F.R. § 42.7
`
`
`Pursuant to 37 C.F.R. § 42.70(b), Patent Owner filed demonstrative
`
`exhibits for the oral argument, held June 20, 2017. Ex. 2016. Petitioners
`timely filed objections to the demonstratives. Paper 45. In particular,
`
`
`1 Case IPR2016-00766 has been joined with the instant proceeding.
`
`
`
`
`IPR2016-00768
`Patent 5,659,891
`
`Petitioners “object to slides 14 and 23–25 on the basis that they contain new
`argument and evidence not presented or cited in Patent Owner’s Corrected
`Response (Paper 42).” Paper 45, 1. For example, Petitioners argues that
`slide 24 references “Dr. Min” and includes an annotated figure never
`discussed or cited in Patent Owner’s Corrected Response. Id. at 2.
`Petitioners state “Patent Owner contends that this material is
`supported by its Corrected Response (Paper 42) at 22; Ex. 2011 ¶¶ 49-51,
`130, Appendix F; and Ex. 2005.” Paper 45, 2. Patent Owner confirmed that
`this statement was correct during oral argument.
`Parties are not permitted to raise new arguments or evidence at oral
`hearing. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768
`(Aug. 14, 2012). Demonstrative exhibits are intended to be visual aids to
`assist a party in making its oral presentation. CBS Interactive Inc. v.
`Helferich Patent Licensing, LLC, Case No. IPR2013-00033, slip op. at 3,
`(PTAB Oct. 23, 2013) (Paper 118). Demonstrative exhibits are not
`evidence, and as such, the exhibits cannot add new evidence to the record of
`the proceeding. St. Jude Medical, Cardiology Division, Inc. v. The Board of
`Regents of the University of Michigan, Case No. IPR2013-00041, slip op. at
`2 (PTAB Jan. 27, 2014) (Paper 65). Demonstrative exhibits are not an
`opportunity for additional briefing. Id. at 3. Arguments that have not been
`made previously cannot be made at the trial hearing and, thus, cannot be in a
`demonstrative exhibit. Id. Similarly, the exhibits cannot rely on evidence
`that, although it is in the record, was not specifically discussed in any
`substantive paper before the Board. Id.
`
`Upon review of the record, we are persuaded by Petitioners that slides
`14 and 23–25 contain new argument and evidence not presented or cited in
`
`2
`
`
`
`IPR2016-00768
`Patent 5,659,891
`
`Patent Owner’s Corrected Response. See Paper 45, 2–3. For example, slide
`24 states “Dr. Min shows multiple band edges” and reproduces a figure that
`appears to be from paragraph 38 of a declaration of Dr. Paul. S. Min. The
`declaration of Dr. Min appears in the record as Exhibit 2005. Patent Owner,
`however, does not cite to Exhibit 2005 or otherwise mention Dr. Min’s
`testimony on page 22 of the Patent Owner’s Corrected Response (Paper 42).
`Exhibit 2011 is a declaration of Dr. Jay P. Kesan, which does refer to
`Dr. Min’s declaration, for example in paragraph 130. Dr. Min’s declaration
`also appears as Appendix F of Exhibit 2011. Ex. 2011, 164–193. Patent
`Owner, however, does not cite to paragraph 130 or Appendix F of Exhibit
`2011 on page 22 of the Patent Owner’s Corrected Response. See Paper 42,
`22. Further, even if the Patent Owner’s Corrected Response cited to
`paragraphs of Dr. Kesan’s declaration that rely upon Dr. Min’s declaration,
`such would amount to improper incorporation by reference. “Arguments
`must not be incorporated by reference from one document into another
`document.” 37 C.F.R. § 42.6(a)(3); Cisco Systems, Inc. v. C-Cation Techs.,
`LLC, IPR2014-00454, slip op. at 10 (PTAB, Aug. 29, 2014) (Paper 12)
`(informative).
`Given the above, we sustain Petitioners’ objection to Patent Owner’s
`demonstrative exhibits (Paper 45) and we expunge Patent Owner’s
`demonstrative exhibits (Ex. 2016) from the record. 37 C.F.R. § 42.7. Patent
`Owner may refile slides 1–13, 15–22, and 26–49 of Exhibit 2016 as another
`exhibit, no later than July 7, 2017.
`
`
`3
`
`
`
`IPR2016-00768
`Patent 5,659,891
`
`It is:
`
`ORDERED that Petitioner’s objection to Patent Owner’s
`
`demonstrative exhibits (Paper 45) is sustained;
`FURTHER ORDERED that Exhibit 2016 is expunged from the
`record; and
`
`FURTHER ORDERED that Patent Owner may refile slides 1–13, 15–
`22, and 26–49 of Exhibit 2016 as another exhibit, no later than July 7, 2017.
`
`PETITIONER:
`
`
`Gabrielle E. Higgins
`Kathryn N. Hong
`ROPES & GRAY LLP
`gabrielle.higgins@ropesgray.com
`kathryn.hong@ropesgray.com
`
`PATENT OWNER:
`
`John R. Kasha
`Kelly L. Kasha
`Kasha Law LLC
`john.kasha@kashalaw.com
`kelly.kasha@kashalaw.com
`
`4
`
`
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