UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
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`CISCO SYSTEMS, INC.,
`Petitioner
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`v.
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`TQ DELTA, LLC,
`Patent Owner
`
`_____________________
`
`Case IPR2016-01009
`Patent 8,238,412 B2
`_____________________
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`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION TO EXCLUDE
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`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
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`CISCO SYSTEMS, INC.,
`Petitioner
`
`v.
`
`TQ DELTA, LLC,
`Patent Owner
`
`_____________________
`
`Case IPR2016-01009
`Patent 8,238,412 B2
`_____________________
`
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION TO EXCLUDE
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` Petitioner’s Opposition to Patent Owner’s Motion to Exclude
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`IPR2016-01009
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`Introduction
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`I.
`Patent Owner’s (“TQ Delta”) request to exclude admissible evidence should
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`be denied. Exhibits 1103 and 1109 are not hearsay and should be admitted. But
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`even if these exhibits were considered hearsay (and they are not), they should be
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`admitted under the residual exception; and nevertheless the rules permit an expert
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`to rely on the contents of these exhibits in formulating his or her opinions.
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`Accordingly, Exhibits 1103 and 1109 should not be excluded.
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`II. TQ Delta’s Motion to Exclude Exhibits 1103 and 1109 Should be
`Denied
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`a. These exhibits are not relied on for the truth of the matter
`asserted
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`TQ Delta’s position that Exhibits 1103 and 1109 are hearsay is flawed. It is
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`well established that documents offered for what they describe, and not prove the
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`truth of the matter asserted, are not hearsay. See, e.g., Joy Techs., Inc. v. Manbeck,
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`751 F. Supp. 225, 233 n. 2 (D.D.C. 1990), judgement aff’d, 959 F.2d 226 (Fed. Cir.
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`1992); EMC Corp. v. PersonalWeb Techs, LLC et al., IPR2013-00087, Paper 69 at
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`42-43 (PTAB May 15, 2014); see also, REG Synthetic Fuels, LLC v. Neste Oil Oyj
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`, 841 F.3d 954, 964 (Fed. Cir. 2016) (noting that a statement is not hearsay if “the
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`communication (as opposed to the truth) ha[d] legal significance”).
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`TQ Delta fails to identify any statement in Exhibit 1103 that Petitioner relies
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`on for the truth of the matter asserted. This exhibit is simply cited by Petitioner for
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`2
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` Petitioner’s Opposition to Patent Owner’s Motion to Exclude
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`IPR2016-01009
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`what it describes. That is, Exhibit 1103 is cited by Dr. Kiaei, in his declaration, as
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`describing the fact that even TQ Delta’s expert testified that “the terms ‘carrier,’
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`‘subcarrier,’ ‘band,’ ‘sub-band,’ ‘bin,’ ‘channel,’ and ‘tone’ are often used
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`interchangeably,” which shows that TQ Delta is taking inconsistent positions, and
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`this exhibit is not relied on for the truth of the statement.
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`Similarly, Exhibit 1109 is cited by Dr. Kiaei, in his declaration, as
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`descriptive support of figures used to demonstrate compliance with ANSI T1.413
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`in connection with FCC filings and for the fact that it disclosed Reverb PSD across
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`the frequency spectrum, regardless of whether it was true or not. Also, Exhibit
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`1109 is relied upon to show that an ordinary artisan would have known that to
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`demonstrate compliance with ANSI T1.413, the modem’s Reverb PSD across the
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`frequency spectrum must be shown in FCC filings. It is not hearsay when offered
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`for that purpose.
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`Thus, these exhibits, which are not used to prove the truth of the matter
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`asserted, cannot be excluded as inadmissible hearsay.
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`b. The residual exception to hearsay applies to these exhibits
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`Even if considered hearsay, these exhibits qualify for the residual exception
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`to hearsay under FRE 807. Under FRE 807, a “statement is not excluded by the
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`rule against hearsay” if: “(1) the statement has equivalent circumstantial guarantees
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`of trustworthiness; (2) it is offered as evidence of a material fact; (3) it is more
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`3
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` Petitioner’s Opposition to Patent Owner’s Motion to Exclude
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`IPR2016-01009
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`probative on the point for which it is offered than any other evidence that the
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`proponent can obtain through reasonable efforts; and (4) admitting it will best
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`serve the purposes of these rules and the interests of justice.” FRE 807(a). Also (5)
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`“before the trial or hearing, the proponent gives an adverse party reasonable notice
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`of the intent to offer the statement.” FRE 807(b). Courts are accorded wide
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`discretion in applying the residual hearsay exception under FRE 807. Doe v.
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`United States, 976 F.2d 1071, 1076– 77 (7th Cir. 1992), cert. denied 510 U.S. 812
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`(1993); United States v. North, 910 F.2d 843, 909 (D.C. Cir. 1990), cert. denied
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`500 U.S. 941 (1991).
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`(1) “the statement has equivalent circumstantial guarantees of trustworthiness”
`Regarding Exhibit 1103, the statement cited by Petitioner has circumstantial
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`guarantees of trustworthiness—at least in so far as it pertains to considerations of
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`hearsay—because it is the testimony of TQ Delta’s own retained expert, Dr. Short.
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`If his testimony is not truthful, TQ Delta is free to discuss its concerns with Dr.
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`Short and then bring forward any necessary corrections to his testimony. See 37
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`CFR 11.303(a)(3). Moreover, the Board has found that “whether or not testimony
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`is specifically created for a specific IPR or is created for another proceeding, if the
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`declaration is sworn testimony and the witness is available for cross-examination,
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`the testimony bears the same guarantees of trustworthiness.” Apple Inc., v. Virnetx
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`Inc.., IPR2016-00332, Paper 29 at 82 (PTAB June 22, 2017). Here, Dr. Short
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`4
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` Petitioner’s Opposition to Patent Owner’s Motion to Exclude
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`IPR2016-01009
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`provided sworn testimony as TQ Delta’s witness and he was available for cross-
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`examination; therefore, the cited testimony in Exhibit 1103 has circumstantial
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`guarantees of trustworthiness as it pertains to hearsay.
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`Exhibit 1109 has circumstantial guarantees of trustworthiness since it is a
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`document filed with the FCC, whose rules require those practicing before to submit
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`factually correct information. See 47 C.F.R. § 1.17(a) (“In any investigatory or
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`adjudicatory matter within the Commission's jurisdiction…, no person subject to
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`this rule shall … In any written or oral statement of fact, intentionally provide
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`material factual information that is incorrect….”).
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`(2) “it is offered as evidence of a material fact”
`The testimony in Exhibit 1103 is offered as evidence of the material fact that
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`even TQ Delta’s expert made statements consistent with the opinions of
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`Petitioner’s expert and that TQ Delta’s attorney argument to the contrary is
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`inconsistent with both experts’ statements. Exhibit 1109 is offered as evidence of
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`the material fact that parties testing their ADSL equipment—for example, to show
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`compliance with the ANSI T1.413 standard to the FCC—provided descriptive
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`figures of the devices’ Reverb PSD across the frequency spectrum to the FCC.
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`(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”
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`The testimony in Exhibit 1103 includes the statement of TQ Delta’s own
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`expert and is more probative on the positions taken by TQ Delta regarding same
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`5
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` Petitioner’s Opposition to Patent Owner’s Motion to Exclude
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`IPR2016-01009
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`issues. Exhibit 1109 is more probative on filings with the FCC to demonstrate
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`compliance with ANSI T1.413 than any other evidence.
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`(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
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`untrustworthiness which may lie underneath the bare untested assertion of a
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`witness can best be brought to light and exposed, if they exist, by the test of cross-
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`examination.” In re Epstein, 32 F.3d 1559, 1565 (Fed. Cir. 1994) (quoting 5 John
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`H. Wigmore, Evidence in Trials at Common Law § 1420, at 251 (James H.
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`Chadbourn rev. 1974)). Allowing Exhibit 1103 in the record best serves the
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`purposes of these rules and the interests of justice since it is the testimony of TQ
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`Delta’s own expert and therefore if there are any inaccuracies in the testimony, TQ
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`Delta itself is in the best position to identify them and bring them to light.
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`Allowing Exhibit 1109 in the record best serves the purposes of these rules and the
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`interests of justice since it is a public document filed with the FCC that shows the
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`type of information provided to demonstrate compliance with the ANSI T1.413
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`standard power requirements. Moreover, allowing the exhibits into the record
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`furthers “a strong public policy for making all information filed in a non-jury,
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`quasi-judicial administrative proceeding available to the public, especially in an
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`inter partes review which determines the patentability of claims in an issued
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`patent. It is better to have a complete record of the evidence submitted by the
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`6
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` Petitioner’s Opposition to Patent Owner’s Motion to Exclude
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`IPR2016-01009
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`parties than to exclude particular pieces.” Nichia Corp. v. Emcore Corp., IPR2012-
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`00005, Paper No. 68 at 59 (PTAB Feb. 11, 2014).
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`(5) “before the trial or hearing, the proponent gives an adverse party
`reasonable notice of the intent to offer the statement”
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`Petitioner gave reasonable notice regarding Exhibits 1103 and 1109 as
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`evidenced by the discussion and reliance on the exhibits in the Reply (filed on June
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`8, 2017), which was filed before the hearing (scheduled for August 3, 2017).
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`Therefore, Exhibits 1103 and 1109 are admissible under the residual
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`exception rule.
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`c. Petitioner’s expert can rely on these exhibits
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`Moreover, the rules permit Petitioner’s expert, Dr. Kiaei, to rely on Exhibits
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`1103 and 1109. See, e.g., SK Innovation Co., LTD. v. Celgard, LLC, IPR2014-
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`00679, Paper No. 58 at 50 (PTAB Sept. 25, 2015) (refusing to exclude exhibits on
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`the basis of hearsay because FRE 703 permits experts to rely on otherwise
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`inadmissible evidence if the probative value substantially outweighs its prejudicial
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`effect, noting “because the Board is not a lay jury, and has significant experience
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`in evaluating expert testimony, the danger of prejudice in this proceeding is
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`considerably lower than in a conventional district court trial”); see also FRE 703.
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`III. Conclusion
`For the above noted reasons, Petitioner respectfully requests that the Board
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`deny TQ Delta’s Motion to Exclude.
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`7
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` Petitioner’s Opposition to Patent Owner’s Motion to Exclude
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`IPR2016-01009
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`July 17, 2017
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`Respectfully submitted,
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`/David L. McCombs/
`David L. McCombs
`Counsel for Petitioner
`Registration No. 32,271
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`8
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` Petitioner’s Opposition to Patent Owner’s Motion to Exclude
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`IPR2016-01009
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`CERTIFICATE OF SERVICE
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`The undersigned certifies, in accordance with 37 C.F.R. § 42.205, that
`service was made on the TQ Delta as detailed below.
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`Date of service
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`July 17, 2017
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`Persons served
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`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
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`Documents served
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`Petitioner’s Opposition to Patent Owner’s Motion
`to Exclude
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`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
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`
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`/David L. McCombs/
`David L. McCombs
`Counsel for Petitioner
`Registration No. 32,271
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`9
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