Filed on behalf of TQ Delta, LLC
`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
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`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 No. IPR2016-010201
`Patent No. 9,014,243
`_____________
`PATENT OWNER REPLY I/S/O MOTION TO EXCLUDE EXS. 1022, 1023,
`1024, 1025, AND 1028, PORTIONS OF EX. 2013, AND PORTIONS OF EX.
`1026 PURSUANT TO 37 C.F.R. § 42.64(c)
`
`
`1 DISH Network, L.L.C., who filed a Petition in IPR2017-00254, and Comcast
`Cable Communications, L.L.C., Cox Communications, Inc., Time Warner Cable
`Enterprises L.L.C., Verizon Services Corp., and ARRIS Group, Inc., who filed a
`Petition in IPR2017-00418, have been joined in this proceeding.
`
`
`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
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`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 No. IPR2016-010201
`Patent No. 9,014,243
`_____________
`PATENT OWNER REPLY I/S/O MOTION TO EXCLUDE EXS. 1022, 1023,
`1024, 1025, AND 1028, PORTIONS OF EX. 2013, AND PORTIONS OF EX.
`1026 PURSUANT TO 37 C.F.R. § 42.64(c)
`
`
`1 DISH Network, L.L.C., who filed a Petition in IPR2017-00254, and Comcast
`Cable Communications, L.L.C., Cox Communications, Inc., Time Warner Cable
`Enterprises L.L.C., Verizon Services Corp., and ARRIS Group, Inc., who filed a
`Petition in IPR2017-00418, have been joined in this proceeding.
`
`
`
`
`I.
`
`Patent Owner Reply I/S/O Motion to Exclude
`IPR2016-01020
`
`EXS. 1022, 1023, 1024, 1025, AND 1028, PORTIONS OF EX. 2013 AND
`PORTIONS OF EX. 1026 SHOULD BE EXCLUDED
`A. TQ DELTA’S OBJECTION TO EXCLUDE EX. 1022 WAS
`TIMELY UNDER RULE 42.64
`
`Ex. 1022 was timely objected to for two reasons. First, TQ Delta’s objection
`
`was subject to the timing requirements under Rule 42.64(b), not 42.64(a). Rule
`
`42.64(a) governs deposition testimony while Rule 42.64(b) governs all other
`
`evidence. See 77 Fed. Reg. 48612, 48624 (Aug. 14, 2012) (“Section 42.64(a)
`
`provides that objections to the admissibility of deposition evidence must be made
`
`during a deposition. Section 42.64(b) provides guidance as to objections and
`
`supplemental evidence for evidence other than deposition testimony.”) (emphasis
`
`added). Petitioners’ reliance on Rule 42.64(a) to argue untimeliness is misplaced.
`
`Thus, the timing for objecting to an exhibit is governed by Rule 42.64(b)(1),
`
`namely, that after trial has been instituted, a party has five business days after
`
`service of evidence to assert any objections.
`
`Second, Ex. 1022 cannot be considered deposition evidence under Rule
`
`42.64(a) because Ex. 1022 was not properly served until after the deposition. Rule
`
`42.63(e) requires that “[a] current exhibit list must be served whenever evidence is
`
`served.” Petitioners did not provide TQ Delta with a current exhibit list (Paper 17
`
`at 4) until after Dr. Short’s deposition, and thus Ex. 1022 cannot be deposition
`
`
`
`1
`
`
`
`
`evidence under Rule 42.64(a). Pursuant to Rule 42.64(b), TQ Delta timely
`
`Patent Owner Reply I/S/O Motion to Exclude
`IPR2016-01020
`
`objected. Paper 20 at 1.
`
`EX. 1022 SHOULD BE EXCLUDED
`
`B.
`Ex. 1022 was not cited in the Petition, Institution Decision, Reply, or either
`
`of Petitioners’ expert’s declarations. This alone is sufficient to exclude Ex. 1022
`
`as irrelevant under at least F.R.E. 402 and 403, Rule 42.23, and/or Rule 42.61. See
`
`Apple Inc. v. Smartflash LLC, CBM2015-00017, Paper 46 at 23 (PTAB March 30,
`
`2016) (excluding under F.R.E. 401 & 402); SK Innovation Co., LTD. v. Celgard,
`
`LLC, IPR2014-00679, Paper 58 at 49 (PTAB Sept. 25, 2015) (same).
`
`Moreover, because it bears a copyright date (2008) nine years after the filing
`
`date (1999), Ex. 1022 should be excluded as irrelevant under F.R.E. 402 as it
`
`cannot be considered prior art or informative to one of ordinary skill as of 1999.
`
`Petitioners’ argument
`
`that
`
`it nevertheless “provides context and relevant
`
`information…at the time the ’243 Patent was filed” is nonsensical. Paper 33 at 4.
`
`C. EX. 1025 SHOULD BE EXCLUDED
`Ex. 1025 is a thesis from Petitioners’ expert. It was not cited in the Petition,
`
`Institution Decision or Reply. Ex. 1025 should be excluded for this reason alone
`
`as irrelevant and untimely under at least under F.R.E. 402, and also F.R.E. 403,
`
`Rule 42.23, and/or Rule 42.61. See Apple, CBM2015-00017, Paper 46 at 23; SK
`
`Innovation, IPR2014-00679, Paper 58 at 49.
`
`
`
`2
`
`
`
`Patent Owner Reply I/S/O Motion to Exclude
`IPR2016-01020
`
`Ex. 1025 was cited only in the Tellado Reply Declaration, but even there, it
`
`
`
`was cited only to assert that it was a “true and accurate copy.” Ex. 1026 at ¶ 62.
`
`The Board should exclude Ex. 1025 because it was not cited in the Petition or
`
`Reply, but only in the Reply declaration. See Intri-Plex Tech., Inc. v. Saint-Gobain
`
`Performance Plastics Rencol Ltd., IPR2014-00309, Paper 83 at 13–14 (PTAB
`
`March 23, 2014).
`
`Petitioners do not allege that Ex. 1025 was prior art. It is therefore not
`
`relevant. Petitioners instead assert that “[w]hether phase scrambling was known to
`
`reduce PAR is an issue in this inter partes review.” Opposition at 5. But they do
`
`not, and cannot contend that Ex. 1025 was prior art to the ’243 patent. Nor does
`
`the Second Tellado Declaration assert that phase scrambling was known before the
`
`filing of the ’243 patent. Ex. 1025 is too late in time and is irrelevant to the
`
`testimony of Tellado, and to this review under F.R.E. 402.
`
`Petitioners assert that “Exhibit 1025 includes a list of references cited by Dr.
`
`Tellado that demonstrate that phase scrambling was known to reduce PAR before
`
`the ’243 Patent was filed.” Opposition at 5. This attorney argument raises new
`
`objections based on hearsay (or double-hearsay), as it requires assumptions
`
`regarding the truth of alleged matters asserted in the thesis and cited references.
`
`
`
`3
`
`
`
`
`
`Patent Owner Reply I/S/O Motion to Exclude
`IPR2016-01020
`
`D. ALL OR PORTIONS OF ¶¶ 16, 29, 42, 43, AND 52 OF EX. 1026
`AND PAGES 46:19–47:16, 49:1–50:13, 51:5–56:23, 57:6–12, AND
`61:19–23 OF EX. 2013 SHOULD BE EXCLUDED
`
`TQ Delta’s objections to the Second Tellado Declaration (Ex. 1026) based
`
`on F.R.E. 702 and 705 were timely. TQ Delta could not predict that Tellado had
`
`relied on undisclosed testing. TQ Delta could not have known before cross-
`
`examination that Tellado was hiding test results. It therefore timely objected to the
`
`testimony during cross-examination. Ex. 2013 at 57:25–58:2, 62:13–63:4.
`
`Moreover, contrary to Petitioners’ assertions, Tellado testified that the
`
`Matlab script and simulation results for an 18,000 foot loop did in fact form a basis
`
`for his opinion that Dr. Short’s (TQ Delta’s expert) Gaussian approximation was
`
`“poor.” See, e.g., Ex. 2013 at 46:19–47:8, 51:5–20, 52:25–53:12.
`
`Further, Petitioners’ assertions about what TQ Delta could have done with
`
`the test results that Petitioners withheld, should fall on deaf ears. TQ Delta had no
`
`way of knowing about the test results, because Petitioners failed to disclose that
`
`Tellado had conducted an additional, undisclosed experiment. Indeed, during
`
`cross-examination, Tellado suddenly had a lack of memory about the results of the
`
`undisclosed tests, including whether he had an electronic or hard copy of the script
`
`or simulation results, whether he communicated the same to anyone else, or
`
`whether he discarded or deleted the same. See, e.g., Ex. 2013 at 47:9–48:6, 57:6–
`
`17, 58:10–14, 59:6–12, 60:3–8, 60:9–20.
`
`
`
`4
`
`
`
`Patent Owner Reply I/S/O Motion to Exclude
`IPR2016-01020
`
`Because the underlying testing results were not disclosed, pages 46:19–
`
`
`
`47:16, 49:1–50:13, 51:5–56:23, 57:6–12, and 61:19–23 of Ex. 2013 should be
`
`excluded. See Zodiac Pool Systems, Inc. v. Aqua Products, Inc., IPR2013-00159,
`
`Paper 71 at 53–55 (PTAB Aug. 22, 2014) (excluding expert testimony that referred
`
`to engineering study and related documents that were not produced to the Board).
`
`E.
`
`EXS. 1023, 1024, AND 1028, AND PORTIONS OF EX. 2013
`SHOULD BE EXCLUDED UNDER F.R.E. 402, F.R.E 403, RULE
`42.23, AND/OR RULE 42.61
`
`Petitioners do not debate that it failed to cite Exs. 1023, 1024, and 1028 in
`
`the Petition or in either declaration. Moreover, the Opposition does not dispute
`
`that Exs. 1023, 1024 and 1028 were added in an attempt to remedy a deficiency in
`
`the Petition (and declarations) through attorney argument regarding these exhibits
`
`in the Reply. This is sufficient to exclude the exhibits. See Intri-Plex, IPR2014-
`
`00309, Paper 83 at 13–14 (refusing to countenance “sandbag” tactics of waiting to
`
`disclose evidence and until reply). Worse, Petitioners sandbagged further by
`
`asking its expert about these exhibits during redirect examination. See Ex. 2013 at
`
`146:20–149:7 (Ex. 1023), 149:8–152:25 (Ex. 1024). With no chance for TQ Delta
`
`to respond, the exhibits and citing testimony should be excluded.
`
`
`
`Dated: July 21, 2017
`
`
`
`/Peter J. McAndrews/
`Peter J. McAndrews
`Registration No. 38,547
`
`
`
`
`
`
`
`
`
`5
`
`
`
`
`
`CUSTOMER NUMBER: 23446
`
`Patent Owner Reply I/S/O Motion to Exclude
`IPR2016-01020
`
`McANDREWS, HELD & MALLOY,
`LTD.
`500 West Madison St., Suite 3400
`Chicago, IL 60661
`Telephone: (312) 775-8000
`
`
`
`
`6
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that the TQ Delta Reply In Support of Motion to Exclude in
`connection with Inter Partes Review Case IPR2016-01020 was served on this 21st
`day of July, 2017 by electronic mail to the following:
`
`
`Back-up Counsel
`Theodore M. Foster
`Tel. 972-739-8649
`Russell Emerson
`Tel. 214-651-5328
`Jamie H. McDole
`Tel. 972-651-5121
`HAYNES & BOONE, LLP
`2323 Victory Ave., Suite 700
`Dallas, TX 75219
`Fax 972-692-9156
`ipr.theo.foster@haynesboone.com
`russell.emerson.ipr@haynesboone.com
`jamie.mcdole@haynesboone.com
`Stephen McBride
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., Suite 700
`Washington, DC 20004
`Tel. 650-843-5001
`Fax 650-849-7400
`smcbride@cooley.com
`
`
`Christopher Tyson
`Duane Morris LLP
`505 9th St. NW, Ste 1000
`Washington, DC 20004
`Tel. 202-776-7819
`
`1
`
`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
`
`Heidi L. Keefe
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., Suite 700
`Washington, DC 20004
`Tel. 650-843-5001
`Fax 650-849-7400
`hkeefe@cooley.com
`Dish-TQDelta@cooley.com
`zpatdcdocketing@cooley.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
`
`Dated: July 21, 2017
`
`
`
`
`
`
`CUSTOMER NUMBER: 23446
`
`Patent Owner Reply I/S/O Motion to Exclude
`IPR2016-01020
`
`Fax 202-776-7801
`CJTyson@duanemorris.com
`
`
`
`
`
`
`
`/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
`
`
`
`2
`
`
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