`By: Peter J. McAndrews
`McAndrews, Held & Malloy, Ltd.
`500 W. Madison St., 34th Floor
`Chicago, IL 60661
`Tel: 312-775-8000
`Fax: 312-775-8100
`E-mail:
`pmcandrews@mcandrews-ip.com
`
`
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`CISCO SYSTEMS, INC. and ARRIS GROUP, INC.,
`Petitioner,
`
`v.
`
`TQ DELTA, LLC,
`Patent Owner.
`_____________
`Case IPR2016-010071
`Patent No. 8,432,956 B2
`_____________
`
`
`
`PATENT OWNER’S MOTION TO EXCLUDE INADMISSIBLE
`EVIDENCE PURSUANT TO 37 C.F.R. § 42.64(c)
`
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`
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`1 ARRIS Group, Inc., who filed a Petition in IPR2017-00422, has been joined in
`this proceeding.
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`
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`Patent Owner’s Motion to Exclude
`IPR2016-01007
`Patent No. 8,432,956
`
`
`Pursuant to 37 C.F.R. § 42.64, Patent Owner TQ Delta, LLC (“Patent
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`Owner”) hereby moves to exclude certain of Petitioner’s exhibits for lack of
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`admissibility under the Federal Rules of Evidence (“FRE”).2 In particular, Patent
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`Owner moves to exclude the following:
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`Exhibit 1103, Short Declaration in IPR2016-01020: The exhibit is
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`hearsay under FRE 801-802. It does not fall within any of the exceptions of FRE
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`803. The declaration is not from an expert to this proceeding, and Petitioners have
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`not shown that Mr. Short was unavailable for deposition in connection with this
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`proceeding. If Petitioners had wished to introduce testimony from Mr. Short in
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`this proceeding, they were required to seek his deposition in this proceeding.
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`Expert reports, affidavits, declarations, and deposition transcripts from other
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`proceedings are not admissible. See, e.g., Kirk v. Raymark Indus., Inc., 61 F.3d
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`147 (3d Cir. 1995) (an expert’s deposition in a prior, unrelated case could not be
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`used against party in pending case); Estate of Miller v. Ford Motor Co., No. 2:01-
`
`cv-545-FtM-29DNF, 2004 U.S. Dist. LEXIS 29846, at *28 (M.D. Fla. July 22,
`
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`2 Patent Owner does not waive its objections to Petitioner’s improper new evidence
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`submitted for the first time on Reply; pursuant to Board guidance this motion only
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`addresses inadmissibility under the Rules of Evidence.
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`2
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`
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`Patent Owner’s Motion to Exclude
`IPR2016-01007
`Patent No. 8,432,956
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`2004) (deposition testimony from employees of a party in a separate lawsuit is not
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`admissible absent a showing of unavailability).
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`Ex. 1109 (FCC filing by Alcatel) and Ex. 1112: Exhibit 1109 is also
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`hearsay under FRE 801-802. It is being relied upon for the truth of the matter
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`asserted, i.e., that “Alcatel measures PSD based on Reverb” and that it measures
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`“PSD based on Reverb for each upstream individual subchannel—not a single
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`channel.” (Ex. 1100, Kiaei Reply Decl. at ¶ 39; Pet. Reply at 28.) It does not fall
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`within any of the exceptions of FRE 803; for example, it is not a public record or
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`report of a public office or agency, but rather a statement by an unrelated non-party
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`to a public office or agency. It is well established that third-party pleadings in
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`unrelated proceedings are inadmissible hearsay. See, e.g., Transunion Risk & Al.
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`Data Sols., Inc. v. MacLachlan, 2016 U.S. Dist. LEXIS 24569 at *16 n. 6 (S.D.
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`Fla. Feb. 29, 2016) (with respect to “statements in a nonparty’s proxy statement
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`filed with the SEC,” defendant “correctly notes that the proxy statement is hearsay
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`and [Plaintiff] fails to cite any hearsay exception rendering it admissible.”); Rivera
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`v. Metro Transit Auth., 750 F. Supp. 2d 456, 2010 U.S. Dist. LEXIS 120289, *6-7
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`(S.D.N.Y. 2010) (“An unsworn statement by a non-party in a complaint in another
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`lawsuit is hearsay when offered to prove the truth of that statement. It is not
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`admissible”).
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`3
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`
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`Patent Owner’s Motion to Exclude
`IPR2016-01007
`Patent No. 8,432,956
`
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`Mr. Bader’s declaration and the Appendix B submitted therewith (Exhibit
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`1112) do not cure the hearsay nature of Exhibit 1109. Patent Owner is aware of no
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`legal authority that a third-party’s pleadings to an unrelated government agency
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`become non-hearsay simply because they were cited by the agency in that third
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`party’s proceeding (e.g., the third-party’s hearsay statements do not becomes
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`records “of” the agency). Moreover, the statement in Exhibit 1109 upon which
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`Petitioners rely was not separately made or recognized in the agency order attached
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`to Mr. Bader’s declaration. Petitioners do not cite to Appendix B of Exhibit 1112
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`for any substantive purpose. Accordingly, Appendix B to Exhibit 1112 is not
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`relevant to any issue in this proceeding under FRE 401-402.
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`Finally, with respect to each of these exhibits, they are not admissible as
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`exhibits on the record merely because they were cited by or relied upon by
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`Petitioners’ exhibit. See FRE 703. Citing an exhibit in an expert declaration is not
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`a loop-hole for independently admitting an inadmissible exhibit. See, e.g.,
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`Finchum v. Ford Motor Co., 57 F.3d 526, 532 (7th Cir. 1995) (fact that expert
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`relied on exhibit “does not automatically mean that the information itself is
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`independently admissible in evidence . . . [Plaintiff] could not have introduced the
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`exhibit into evidence because of the hearsay rule”).
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`4
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`
`
`/Peter J. McAndrews/
`Peter J. McAndrews
`Registration No. 38,547
`McANDREWS, HELD & MALLOY,
`LTD.
`500 West Madison St., Suite 3400
`Chicago, IL 60661
`Telephone: (312) 775-8000
`
`
`
`Patent Owner’s Motion to Exclude
`IPR2016-01007
`Patent No. 8,432,956
`
`
`
`Dated: July 5, 2017
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`
`
`
`
`
`
`Patent Owner’s Motion to Exclude
`IPR2016-01007
`Patent No. 8,432,956
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing Patent
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`Owner’s Motion to Exclude was served on July 5, 2017, via email to counsel for
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`Petitioners at the following:
`
`Lead Counsel
`David L. McCombs
`HAYNES & BOONE, LLP
`2323 Victory Ave., Suite 700
`Dallas, TX 75219
`Tel. 214-651-5533
`Fax 214-200-0853
`david.mccombs.ipr@haynesboone.com
`
`John M. Baird
`Duane Morris LLP
`505 9th St. NW, Ste 1000
`Washington, DC 20004
`Tel. 202-776-7819
`Fax 202-776-7801
`JMBaird@duanemorris.com
`
`
`
`MCANDREWS, HELD & MALLOY
`
`
`
`
`
`
`
`Telephone: 312-775-8000
`
`
`Facsimile: 312-775-8100
`
`
`
`CUSTOMER NUMBER: 23446
`Date: June 15, 2017
`
`Back-up Counsel
`Theodore M. Foster
`Tel. 972-739-8649
`Gregory P. Huh
`Tel. 972-739-6939
`Russell Emerson
`Tel. 214-651-5328
`HAYNES & BOONE, LLP
`2323 Victory Ave., Suite 700
`Dallas, TX 75219
`Fax 972-692-9156
`ipr.theo.foster@haynesboone.com
`gregory.huh.ipr@haynesboone.com
`russell.emerson.ipr@haynesboone.com
`Christopher Tyson
`Duane Morris LLP
`505 9th St. NW, Ste 1000
`Washington, DC 20004
`Tel. 202-776-7819
`Fax 202-776-7801
`CJTyson@duanemorris.com
`
`
`
`
`
`
`
`
`
`/Peter J. McAndrews/
`Peter J. McAndrews
`Registration No. 38,547
`
`
`
`
`
`
`