`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`
`CISCO SYSTEMS, INC., DISH NETWORK, LLC,
`COMCAST CABLE COMMUNICATIONS, LLC,
`COX COMMUNICATIONS, INC.,
`TIME WARNER CABLE ENTERPRISES LLC,
`VERIZON SERVICES CORP., and ARRIS GROUP, INC.,
`Petitioner
`
`v.
`
`TQ DELTA, LLC,
`Patent Owner
`
`_____________________
`
`Case IPR2016-010061
`Patent 7,835,430 B2
`_____________________
`
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION TO EXCLUDE
`
`
`
`
`
`
`
`
`1 DISH Network, LLC, who filed a Petition in IPR2017-00251, and Comcast Cable
`Communications, LLC, Cox Communications, Inc., Time Warner Cable
`Enterprises LLC, Verizon Services Corp., and ARRIS Group, Inc., who filed a
`Petition in IPR2017-00420, have been joined in this proceeding.
`
`
`
`
`
`
` Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`
`IPR2016-01006
`
`
`Introduction
`
`I.
`Patent Owner’s (“TQ Delta”) request to exclude admissible evidence should
`
`be denied. Exhibits 1103 and 1109 are not hearsay and should be admitted. But
`
`even if these exhibits were considered hearsay (and they are not), they should be
`
`admitted under the residual exception; and nevertheless the rules permit an expert
`
`to rely on the contents of these exhibits in formulating his or her opinions.
`
`Accordingly, Exhibits 1103 and 1109 should not be excluded.
`
`II. TQ Delta’s Motion to Exclude Exhibits 1103 and 1109 Should be
`Denied
`
`a. These exhibits are not relied on for the truth of the matter
`asserted
`
`TQ Delta’s position that Exhibits 1103 and 1109 are hearsay is flawed. It is
`
`well established that documents offered for what they describe, and not prove the
`
`truth of the matter asserted, are not hearsay. See, e.g., Joy Techs., Inc. v. Manbeck,
`
`751 F. Supp. 225, 233 n. 2 (D.D.C. 1990), judgement aff’d, 959 F.2d 226 (Fed. Cir.
`
`1992); EMC Corp. v. PersonalWeb Techs, LLC et al., IPR2013-00087, Paper 69 at
`
`42-43 (PTAB May 15, 2014); see also, REG Synthetic Fuels, LLC v. Neste Oil Oyj
`
`, 841 F.3d 954, 964 (Fed. Cir. 2016) (noting that a statement is not hearsay if “the
`
`communication (as opposed to the truth) ha[d] legal significance”).
`
`Patent Owner fails to identify any statement in Exhibit 1103 that Petitioner
`
`relies on for the truth of the matter asserted. This exhibit is simply cited by
`
`2
`
`
`
` Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`
`
`IPR2016-01006
`
`Petitioner for what it describes. That is, Exhibit 1103 is cited by Dr. Kiaei, in his
`
`declaration, as describing the fact that even TQ Delta’s expert testified that “the
`
`terms ‘carrier,’ ‘subcarrier,’ ‘band,’ ‘sub-band,’ ‘bin,’ ‘channel,’ and ‘tone’ are
`
`often used interchangeably,” which shows that TQ Delta is taking inconsistent
`
`positions, and this exhibit is not relied on for the truth of the statement.
`
`Similarly, Exhibit 1109 is cited by Dr. Kiaei, in his declaration, as
`
`descriptive support of figures used to demonstrate compliance with ANSI T1.413
`
`in connection with FCC filings and for the fact that it disclosed Reverb PSD across
`
`the frequency spectrum, regardless of whether it was true or not. Also, Exhibit
`
`1109 is relied upon to show that an ordinary artisan would have known that to
`
`demonstrate compliance with ANSI T1.413, the modem’s Reverb PSD across the
`
`frequency spectrum must be shown in FCC filings. It is not hearsay when offered
`
`for that purpose.
`
`Thus, these exhibits, which are not used to prove the truth of the matter
`
`asserted, cannot be excluded as inadmissible hearsay.
`
`b. The residual exception to hearsay applies to these exhibits
`
`Even if considered hearsay, these exhibits qualify for the residual exception
`
`to hearsay under FRE 807. Under FRE 807, a “statement is not excluded by the
`
`rule against hearsay” if: “(1) the statement has equivalent circumstantial guarantees
`
`of trustworthiness; (2) it is offered as evidence of a material fact; (3) it is more
`
`3
`
`
`
` Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`
`
`IPR2016-01006
`
`probative on the point for which it is offered than any other evidence that the
`
`proponent can obtain through reasonable efforts; and (4) admitting it will best
`
`serve the purposes of these rules and the interests of justice.” FRE 807(a). Also (5)
`
`“before the trial or hearing, the proponent gives an adverse party reasonable notice
`
`of the intent to offer the statement.” FRE 807(b). Courts are accorded wide
`
`discretion in applying the residual hearsay exception under FRE 807. Doe v.
`
`United States, 976 F.2d 1071, 1076– 77 (7th Cir. 1992), cert. denied 510 U.S. 812
`
`(1993); United States v. North, 910 F.2d 843, 909 (D.C. Cir. 1990), cert. denied
`
`500 U.S. 941 (1991).
`
`(1) “the statement has equivalent circumstantial guarantees of trustworthiness”
`Regarding Exhibit 1103, the statement cited by Petitioner has circumstantial
`
`guarantees of trustworthiness—at least in so far as it pertains to considerations of
`
`hearsay—because it is the testimony of TQ Delta’s own retained expert, Dr. Short.
`
`If his testimony is not truthful, TQ Delta is free to discuss its concerns with Dr.
`
`Short and then bring forward any necessary corrections to his testimony. See 37
`
`CFR 11.303(a)(3). Moreover, the Board has found that “whether or not testimony
`
`is specifically created for a specific IPR or is created for another proceeding, if the
`
`declaration is sworn testimony and the witness is available for cross-examination,
`
`the testimony bears the same guarantees of trustworthiness.” Apple Inc., v. Virnetx
`
`Inc.., IPR2016-00332, Paper 29 at 82 (PTAB June 22, 2017). Here, Dr. Short
`
`4
`
`
`
` Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`
`
`IPR2016-01006
`
`provided sworn testimony as TQ Delta’s witness and he was available for cross-
`
`examination; therefore, the cited testimony in Exhibit 1103 has circumstantial
`
`guarantees of trustworthiness as it pertains to hearsay.
`
`Exhibit 1109 has circumstantial guarantees of trustworthiness since it is a
`
`document filed with the FCC, whose rules require those practicing before to submit
`
`factually correct information. See 47 C.F.R. § 1.17(a) (“In any investigatory or
`
`adjudicatory matter within the Commission's jurisdiction…, no person subject to
`
`this rule shall … In any written or oral statement of fact, intentionally provide
`
`material factual information that is incorrect….”).
`
`(2) “it is offered as evidence of a material fact”
`The testimony in Exhibit 1103 is offered as evidence of the material fact that
`
`even TQ Delta’s expert made statements consistent with the opinions of
`
`Petitioner’s expert and that TQ Delta’s attorney argument to the contrary is
`
`inconsistent with both experts’ statements. Exhibit 1109 is offered as evidence of
`
`the material fact that parties testing their ADSL equipment—for example, to show
`
`compliance with the ANSI T1.413 standard to the FCC—provided descriptive
`
`figures of the devices’ Reverb PSD across the frequency spectrum to the FCC.
`
`(3) “it is more probative on the point for which it is offered than any other
`evidence that the proponent can obtain through reasonable efforts”
`
`The testimony in Exhibit 1103 includes the statement of TQ Delta’s own
`
`expert and is more probative on the positions taken by TQ Delta regarding same
`
`5
`
`
`
` Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`
`
`IPR2016-01006
`
`issues. Exhibit 1109 is more probative on filings with the FCC to demonstrate
`
`compliance with ANSI T1.413 than any other evidence.
`
`(4) “admitting it will best serve the purposes of these rules and the interests of
`justice”
`Hearsay rules exist because “the many possible sources of inaccuracy and
`
`untrustworthiness which may lie underneath the bare untested assertion of a
`
`witness can best be brought to light and exposed, if they exist, by the test of cross-
`
`examination.” In re Epstein, 32 F.3d 1559, 1565 (Fed. Cir. 1994) (quoting 5 John
`
`H. Wigmore, Evidence in Trials at Common Law § 1420, at 251 (James H.
`
`Chadbourn rev. 1974)). Allowing Exhibit 1103 in the record best serves the
`
`purposes of these rules and the interests of justice since it is the testimony of TQ
`
`Delta’s own expert and therefore if there are any inaccuracies in the testimony, TQ
`
`Delta itself is in the best position to identify them and bring them to light.
`
`Allowing Exhibit 1109 in the record best serves the purposes of these rules and the
`
`interests of justice since it is a public document filed with the FCC that shows the
`
`type of information provided to demonstrate compliance with the ANSI T1.413
`
`standard power requirements. Moreover, allowing the exhibits into the record
`
`furthers “a strong public policy for making all information filed in a non-jury,
`
`quasi-judicial administrative proceeding available to the public, especially in an
`
`inter partes review which determines the patentability of claims in an issued
`
`patent. It is better to have a complete record of the evidence submitted by the
`
`6
`
`
`
` Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`
`
`IPR2016-01006
`
`parties than to exclude particular pieces.” Nichia Corp. v. Emcore Corp., IPR2012-
`
`00005, Paper No. 68 at 59 (PTAB Feb. 11, 2014).
`
`(5) “before the trial or hearing, the proponent gives an adverse party
`reasonable notice of the intent to offer the statement”
`
`Petitioner gave reasonable notice regarding Exhibits 1103 and 1109 as
`
`evidenced by the discussion and reliance on the exhibits in the Reply (filed on June
`
`8, 2017), which was filed before the hearing (scheduled for August 3, 2017).
`
`Therefore, Exhibits 1103 and 1109 are admissible under the residual
`
`exception rule.
`
`c. Petitioner’s expert can rely on these exhibits
`
`Moreover, the rules permit Petitioner’s expert, Dr. Kiaei, to rely on Exhibits
`
`1103 and 1109. See, e.g., SK Innovation Co., LTD. v. Celgard, LLC, IPR2014-
`
`00679, Paper No. 58 at 50 (PTAB Sept. 25, 2015) (refusing to exclude exhibits on
`
`the basis of hearsay because FRE 703 permits experts to rely on otherwise
`
`inadmissible evidence if the probative value substantially outweighs its prejudicial
`
`effect, noting “because the Board is not a lay jury, and has significant experience
`
`in evaluating expert testimony, the danger of prejudice in this proceeding is
`
`considerably lower than in a conventional district court trial”); see also FRE 703.
`
`III. Conclusion
`For the above noted reasons, Petitioner respectfully requests that the Board
`
`deny TQ Delta’s Motion to Exclude.
`
`7
`
`
`
`
`
`
` Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`
`IPR2016-01006
`
`July 17, 2017
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/David L. McCombs/
`David L. McCombs
`Counsel for Petitioner
`Registration No. 32,271
`
`
`
`
`
`8
`
`
`
`
`
`
` Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`
`IPR2016-01006
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies, in accordance with 37 C.F.R. § 42.205, that
`service was made on the TQ Delta as detailed below.
`
`Date of service
`
`July 17, 2017
`
`
`
`
`
`
`
`Persons served
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Manner of service
`Email: pmcandrews@mcandrews-ip.com;
`twimbiscus@mcandrews-ip.com; smcbride@mcandrews-ip.com;
`cscharff@mcandrews-ip.com; rchiplunkar@mcandrews-ip.com;
`TQD-CISCO@mcandrews-ip.com
`
`Documents served
`
`Petitioner’s Opposition to Patent Owner’s Motion
`to Exclude
`
`Peter J. McAndrews
`Thomas J. Wimbiscus
`Scott P. McBride
`Christopher M. Scharff
`Rajendra A. Chiplunkar (admitted PHV)
`MCANDREWS, HELD & MALLOY, LTD
`500 West Madison Street, 34th Floor
`Chicago, IL 60661
`
`
`
`/David L. McCombs/
`David L. McCombs
`Counsel for Petitioner
`Registration No. 32,271
`
`9
`
`