`By: Peter J. McAndrews
`McAndrews, Held & Malloy, Ltd.
`500 W. Madison St., 34th Floor
`Chicago, IL 60661
`Tel: 312-775-8000
`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. IPR2016-010211
`Patent No. 8,718,158
`_____________
`PATENT OWNER’S MOTION TO EXCLUDE EXHIBITS 1022, 1023, 1024,
`1025, and 1028, PORTIONS OF THE TELLADO TESTIMONY (EX. 2013),
`AND PORTIONS OF THE 2nd TELLADO DECLARATION (EX. 1026)
`PURSUANT TO 37 C.F.R. § 42.64(c)
`
`
`1 DISH Network, L.L.C., who filed a Petition in IPR2017-00255, 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 IPR2017-00417, have been joined in this proceeding.
`
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`Patent Owner Motion to Exclude
`IPR2016-01021
`
`Patent Owner TQ Delta, LLC submits the following motion to exclude. The
`
`exhibits in question should be excluded for Petitioner’s failure to cite documents
`
`that constitute prior art, its untimely introduction of exhibits on Reply that are
`
`irrelevant to the substantive issues and not cited in the Reply, rendering them
`
`irrelevant, and its expert’s failure to retain copies of testing he performed on which
`
`he relies.
`
`II. EXHIBITS 1022, 1023, 1024, 1025, AND 1028, PORTIONS OF THE
`TELLADO TESTIMONY (EX. 2013) AND PORTIONS OF THE
`SECOND TELLADO DECLARATION (EX. 1026) SHOULD BE
`EXCLUDED
`A. EXHIBIT 1022 SHOULD BE EXCLUDED UNDER AT LEAST
`FED. R. EVID. 402
`
`Exhibit 1022 is a chapter and some additional pages from a book titled
`
`WiMedia UWB. Patent Owner timely objected to Exhibit 1025. See Paper 25 at 1.
`
`Exhibit 1022 was not included with the Petition and it is not cited or
`
`explained in the Reply. It is also not cited in the Second Tellado Declaration
`
`(submitted with the Petitioner Reply). Exhibit 1022 should be excluded for this
`
`reason alone as irrelevant and untimely under Fed. R. Evid. 402, Fed. R. Evid.
`
`403, 37 C.F.R. § 42.23, and/or 37 C.F.R. § 42.61.
`
`
`
`2
`
`
`
`Moreover, Exhibit 1022 should be excluded as irrelevant because it is not
`
`Patent Owner Motion to Exclude
`IPR2016-01021
`
`
`
`prior art and therefore irrelevant to the knowledge of one of ordinary skill in the art
`
`as of 1999. Both the book itself and the chapter in question (Ch. 3) bear copyright
`
`dates of 2008. See Ex. 1022 at 3, 11. Patent Owner timely objected to Exhibit
`
`1025. See Paper 25 at 2. There is no evidence that the book or the chapter cited
`
`were publicly-available or otherwise constituted prior art as of 1999, the filing date
`
`of the ’158 patent. See Ex. 1001 at cover. In other words, Exhibit 1022 is nine
`
`years too late. Exhibit 1022 is irrelevant to show or evidence the knowledge of
`
`one of ordinary skill as of the date the invention was made.
`
`The relevant time-frame for patentability is the time of the invention, and no
`
`later than the effective filing date. See Synthon IP, Inc. v. Pfizer, Inc., C.A. No.
`
`1:05cv1267, 2007 U.S. Dist. LEXIS 26115, at *15-17 (E.D. Va. Apr. 6, 2007)
`
`(“[T]he obviousness inquiry asks whether the subject matter ‘would have been
`
`obvious [to one of ordinary skill in the art] at the time the invention was made.’”),
`
`quoting Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1289 (Fed. Cir. 2006)
`
`(emphasis added in Synthon); Walt Disney Prods. v. Fred A. Niles Communs. Ctr.,
`
`Inc., 369 F.2d 230, 234 (7th Cir. 1966) (“The difference between the subject matter
`
`sought to be patented and the prior art must be such that the subject matter as a
`
`whole would have been obvious to a person having ordinary skill in the art to
`
`
`
`3
`
`
`
`
`which said subject matter pertains, as of the date of the invention.”; explaining that
`
`Patent Owner Motion to Exclude
`IPR2016-01021
`
`the use of knowledge from a later date constituted impermissible hindsight).
`
`Because Exhibit 1022 was nine years too late, it is irrelevant under Fed. R.
`
`Evid. 402, and should be excluded.2
`
`B.
`
`EXHIBIT 1025 SHOULD BE EXCLUDED AS IRRELEVANT
`UNDER AT LEAST FED. R. EVID. 402
`
`Exhibit 1025 is a thesis from Petitioner’s Expert. It should be excluded for
`
`multiple reasons. Patent Owner timely objected to Exhibit 1025. See Paper 25 at
`
`2.
`
`Petitioner submitted Exhibit 1025 (Tellado thesis) for the first time on
`
`Reply. Like Exhibit 1022, the thesis was not cited in either the Petition or the
`
`Reply. Exhibit 1025 should be excluded for this reason alone as irrelevant and
`
`untimely under F.R.E. 402, F.R.E 403, 37 C.F.R. § 42.23, and/or 37 C.F.R. §
`
`42.61.
`
`Moreover, Exhibit 1025 should be excluded as irrelevant because it is not
`
`prior art and therefore irrelevant to the knowledge of one of ordinary skill in the art
`
`as of 1999. The only expert testimony offered by Petitioner in this case is offered
`
`to show the viewpoint of a person of ordinary skill in the art as of the filing date of
`
`
`2 Exhibit 1022 should also be excluded because it is not cited in either the Reply or
`
`the Second Tellado Declaration.
`
`
`
`4
`
`
`
`
`November 9, 1999. See Ex. 1009 ¶ 7. But, like Exhibit 1022, there is no evidence
`
`Patent Owner Motion to Exclude
`IPR2016-01021
`
`that the Tellado thesis was publicly accessible as of this filing date. The Tellado
`
`thesis itself lists two dates, without explanation—(1) a copyright date of 2000 (Ex.
`
`1025 at 2); and (2) the statement “September 1999” under the author’s name. Id. at
`
`1. After Patent Owner’s objection to Ex. 1025, Petitioner submitted supplemental
`
`evidence to allege only that the thesis was “catalogued by the Stanford University
`
`Libraries on May 9, 2000 (field 916) and was publicly available from the Stanford
`
`University Libraries since this date.” Ex. 1035 ¶ 2, at 2.
`
`The proponent of the publication, here Petitioner, bears the burden of
`
`producing sufficient proof of dissemination or sufficient proof that the publication
`
`was otherwise available and accessible. See SRI Int’l, Inc. v. Internet Sec. Sys.,
`
`Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008); see also Carella v. Starlight Archery &
`
`Pro Line Co., 804 F.2d 135, 139 (Fed. Cir. 1986) (“[O]ne who wishes to
`
`characterize the information, in whatever form it may be, as a ‘printed publication’
`
`should produce sufficient proof of its dissemination or that it has otherwise been
`
`available and accessible to persons concerned with the art to which the document
`
`relates . . . .”).
`
`To be relevant, a publication must have been publicly accessible as of the
`
`effective filing date. In this case, Petitioner has admitted that the relevant date, and
`
`indeed the only date on which its expert offers his opinions regarding the
`
`
`
`5
`
`
`
`
`knowledge of a person of ordinary skill is November 9, 1999. See Ex. 1009 ¶ 7.
`
`Patent Owner Motion to Exclude
`IPR2016-01021
`
`The supplemental evidence submitted by Petitioner shows, at best, a date of public
`
`accessibility (“catalog[ing]”) of May 9, 2000, which falls after date of knowledge
`
`of a person of ordinary skill (November 9, 1999) proffered by Petitioner’s expert
`
`(see Ex. 1009 ¶ 7). That date, not surprisingly, matches the earliest claimed filing
`
`date for the ’158 patent. See Ex. 1001 at cover; Ex. 1008. Therefore, the Tellado
`
`thesis (Ex. 1025) is too late in time and is irrelevant to the testimony of Tellado,
`
`and irrelevant to this review under Fed. R. Evid. 402.
`
`C. ALL OR PORTIONS OF PARAGRAPHS 16, 29, 42
`(INCLUDING HEADER), 43, AND 52 OF THE SECOND
`TELLADO DECLARATION (EX. 1026) AND PAGES 46:19-
`47:16, 49:1-50:13, 51:5-56:23, 57:6-12, AND 61:19-23 OF THE
`TELLADO TRANSCRIPT
`(EX.
`2013)
`SHOULD BE
`EXCLUDED
`
`During cross-examination, Petitioners’ expert (Dr. Tellado) testified that he
`
`relied on at least two “MatLab” computer simulations to support his opinions, but
`
`materials relating to only one simulation were provided to Patent Owner. The
`
`materials related to the second simulation were apparently written over, discarded,
`
`and/or withheld from Patent Owner. See Ex. 2013 at 47:9-48:6, 57:6-17, 58:10-14,
`
`59:6-12, 60:3-8, 60:9-20. Patent Owner timely objected to the failure to disclose
`
`or retain evidence and the possible discarding of evidence. See 6/22/17 A. Karp e-
`
`
`
`6
`
`
`
`
`mail to counsel; 6/22/17 A. Karp e-mail to Board; Ex. 2013 at 57:25-58:2, 62:13-
`
`Patent Owner Motion to Exclude
`IPR2016-01021
`
`63:4.
`
`In addition to the testing of the 12,000 foot loop that Dr. Tellado performed
`
`and disclosed in connection with his second declaration, Dr. Tellado also
`
`performed an undisclosed simulation using a MatLab script for an “AWG26 loop
`
`of 18,000 feet.” Ex. 2013 at 46:10-18. But, Dr. Tellado testified on cross-
`
`examination that the MatLab script and simulation results for an 18,000 foot loop
`
`formed the basis of his opinion that Dr. Short’s (Patent Owner’s expert) Gaussian
`
`approximation was “poor.” See, e.g., Ex. 2013 at 46:19-47:8, 51:5-20, 52:25-
`
`53:12. When asked about whether he has or had an electronic or hard copy of the
`
`MatLab script or simulation results, whether he communicated the same to anyone
`
`else, or whether he discarded or deleted the same, Dr. Tellado could only say that
`
`did not recall. See, e.g., id. at 47:9-48:6, 57:6-17, 58:10-14, 59:6-12, 60:3-8, 60:9-
`
`20.
`
`Without providing Patent Owner with access to the MatLab simulation
`
`result, Dr. Tellado has not disclosed the facts and data underlying his opinion, in
`
`violation of 37 C.F.R. § 42.65(b). Under Rule 65(b), when Petitioner’s expert
`
`relied on a technical test or data from it, he was required to “provide an affidavit
`
`explaining” the test and its underlying data. See 37 C.F.R. § 42.65(b) (setting forth
`
`the requirements of the affidavit); 3D-Matrix, Ltd., v. Menicon Co., Ltd., IPR2014-
`
`
`
`7
`
`
`
`
`00398, Paper 11, August 1, 2014. Moreover, it remains impossible to cross-
`
`Patent Owner Motion to Exclude
`IPR2016-01021
`
`examine Dr. Tellado regarding his opinions regarding simulations and his
`
`criticisms of Dr. Short, as reflected in at least (1) Exhibit 1026, Second Tellado
`
`Declaration, ¶ 16 (last 2 sentences), ¶ 29, ¶ 42 (including preceding header), ¶ 43
`
`(first sentence), ¶ 52, and (2) Exhibit 2013, Tellado transcript at 46:19-47:16, 49:1-
`
`50:13, 51:5-56:23, 57:6-12, and 61:19-23. See Altaire Pharma., Inc. v. Paragon
`
`Biotek, Inc., PGR2015-00011, Paper 122, November 14, 2016 (“Without the
`
`necessary information prescribed in § 42.65(b), we cannot determine whether the
`
`evidence Petitioner relies on is credible.”).
`
`Moreover, the unavailable MatLab simulation information was required to
`
`be disclosed as routine discovery at least because (1) it was relied on or cited by
`
`Dr. Tellado during his testimony under 37 C.F.R. §§ 41.51(b)(1)(i); see Lumentum
`
`Holdings, Inc. v. Capella Photonics, Inc., IPR2015-00731, Paper 32, February 5,
`
`2016 (information relied on was required to be disclosed regardless of whether it
`
`was actually called an exhibit in a paper); MaxLinear, Inc., v. Cresta Tech. Corp.,
`
`IPR2015-00594, Paper 35, January 27, 2016 (testimony referencing an exhibit,
`
`although not formally; and (2) it is inconsistent, at least, with Petitioners’ (and
`
`Petitioners’ expert’s) positions regarding the accuracy of Dr. Short’s analysis. 37
`
`C.F.R. §§ 42.51(b)(1)(i), (b)(1)(iii); see also MaxLinear, IPR2015-00594, Paper
`
`35. Therefore, this information should already have been produced.
`
`
`
`8
`
`
`
`As a result of the improper withholding, the following paragraphs of the
`
`Patent Owner Motion to Exclude
`IPR2016-01021
`
`
`
`Second Tellado Declaration (Ex. 1026) should be excluded under Fed. R. Evid.
`
`702 as being based on insufficient facts or data: ¶ 16 (last 2 sentences), ¶ 29, ¶ 42
`
`(including preceding header), ¶ 43 (first sentence), and ¶ 52. For the same reasons,
`
`the following pages of the Tellado transcript (Ex. 2013) should be excluded under
`
`Fed. R. Evid. 702: 46:19-47:16, 49:1-50:13, 51:5-56:23, 57:6-12, and 61:19-23.
`
`As a result of Dr. Tellado’s refusal to disclose the underlying facts and data
`
`on cross-examination, the same portions of the Second Tellado Declaration (Ex.
`
`1026) and the Tellado transcript (Ex. 2013) should also be excluded under Fed. R.
`
`Evid. 705.
`
`For at least these reasons, and due to Dr. Tellado’s withholding of the
`
`simulation data, the above-referenced portions of the Second Tellado Declaration
`
`(Ex. 1026) and Tellado transcript (Ex. 2013) should be excluded under Fed. R.
`
`Evid. 702, 705, 37 C.F.R. §§ 41.51(b)(1)(i) & 41.51(b)(1)(iii), and 37 C.F.R. §
`
`42.65(b).
`
`D. EXHIBITS 1023, 1024, AND 1028, AND PORTIONS OF DR.
`TELLADO’S REDIRECT ADDRESSING THE SAME (EX.
`2013) SHOULD BE EXCLUDED UNDER F.R.E. 402, F.R.E 403,
`37 C.F.R. § 42.23, AND/OR 37 C.F.R. § 42.61
`
`Exhibits 1023, 1024, and 1028, each of which was cited in the Reply for the
`
`first time, should be excluded under F.R.E. 402, F.R.E 403, 37 C.F.R. § 42.23,
`
`
`
`9
`
`
`
`
`and/or 37 C.F.R. § 42.61. Patent Owner timely objected to these exhibits. See
`
`Patent Owner Motion to Exclude
`IPR2016-01021
`
`Paper 25 at 1-2. Similarly, the portions of Dr. Tellado’s redirect regarding the
`
`same (Ex. 2013 at 146:20-149:7 (Ex. 1023), 149:8-152:25 (Ex. 1024)) should also
`
`be excluded under F.R.E. 402, F.R.E 403, 37 C.F.R. § 42.23, and/or 37 C.F.R. §
`
`42.61. Patent Owner also timely objected to this redirect testimony. See Ex. 2013
`
`at 146:20-149:7, 149:8-152:25
`
`These exhibits purportedly attempt to fill in a major shortcoming in the
`
`evidentiary record—namely, there is no evidence in the Petition (besides an
`
`unsupported, conclusory allegation by Petitioners’ expert) that a person having
`
`ordinary skill in the art would have recognized that randomizing the phases of
`
`subcarriers in a multicarrier signal would result in a lower peak-to-average power
`
`ratio (“PAR”) in Shively’s system. Both the Petition and Petitioners’ expert’s first
`
`declaration baselessly state: “A POSITA would have recognized that by
`
`randomizing the phase of each subcarrier, Stopler provides a technique that allows
`
`two subcarriers in Shively’s system to transmit the same [one or more] bits, but
`
`without those two subcarriers having the same phase.” Petition at p. 14; Ex. 1009
`
`(Dr. Tellado’s First Declaration) at ¶ 67. No supporting evidence was provided.
`
`Now, when Patent Owner has no chance to respond, Petitioners seek to
`
`remedy this deficiency in the Petition (and first expert declaration) through
`
`attorney argument regarding these exhibits. Exhibit 1023, Petitioners allege,
`
`
`
`10
`
`
`
`
`discloses “random phasor transformation” (Paper 20 at 13)—although they never
`
`Patent Owner Motion to Exclude
`IPR2016-01021
`
`explain how such a “phasor” transformation equates to randomizing phases on
`
`each subcarrier to reduce PAR. With respect to Exhibit 1024, Petitioners purport
`
`that it discloses “phase rotated signal parts,” Paper 20 at 13, again with no further
`
`explanation as to how this shows phase scrambling. And regarding Exhibit 1028,
`
`Petitioners merely claim it demonstrates having a “phase rotation applied to each
`
`[DMT] tone.” Paper 20 at 13. Again, no explanation is provided as to how this
`
`equates to phase scrambling to lower PAR.
`
`Thus, Exhibits 1023, 1024, and 1028 are too late and not relevant to the
`
`timely opinions and art actually raised in this review, and thus inadmissible under
`
`F.R.E. 402, 37 C.F.R. § 42.23, and/or 37 C.F.R. § 42.61. Petitioners should not be
`
`allowed to supplant the record by filling in the gaps left by their Petition and
`
`supporting declaration. Moreover, because Patent Owner has no opportunity to
`
`respond to the new exhibits at this late stage, the danger of unfair prejudice
`
`substantially outweighs any minimal probative value they may have, rendering
`
`them inadmissible under Fed. R. 403.
`
`Recognizing the shortcoming in its citations, Petitioner took up these topics
`
`on deposition redirect of its own expert also, in an untimely attempt to fill in the
`
`gaps. See Ex. 2013 at 146:20-149:7 (Ex. 1023), 149:8-152:25 (Ex. 1024). Having
`
`failed to address these exhibits in its Petition, first Tellado Declaration, and Second
`
`
`
`11
`
`
`
`
`Tellado Declaration, these exhibits are too late and not relevant to the timely
`
`Patent Owner Motion to Exclude
`IPR2016-01021
`
`opinions and art actually raised in this review, and thus inadmissible for the same
`
`reasons under Fed. R. Evid. 402, 403, 37 C.F.R. § 42.23, and/or 37 C.F.R. § 42.61.
`
`III. CONCLUSION
`For all the foregoing reasons, TQ Delta respectfully requests that the Board
`
`exclude Exhibits:
`
` Exhibit 1022, WiMedia UWB (including Chapter 3);
`
` Exhibit 1025, the Tellado thesis;
`
` Exhibit 1026, the Second Tellado Declaration, ¶ 16 (last 2 sentences),
`
`¶ 29, ¶ 42, ¶ 43 (first sentence), ¶ 52;
`
` Exhibit 2013, the Tellado Transcript, at 46:19-47:16, 49:1-50:13,
`
`51:5-56:23, 57:6-12, and 61:19-23;
`
` Exhibit 1023, 1024, and 1028, newly-cited art; and
`
` Exhibit 2013, The Tellado Transcript, at 146:20-149:7 and 149:8-
`
`
`
`152:25.
`
`Dated: June 30, 2017
`
`
`
`CUSTOMER NUMBER: 23446
`
`
`
`12
`
`
`
`
`
`/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
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that the Patent Owner Motion to Exclude in connection with
`Inter Partes Review Case IPR2016-01021 was served on this 30th day of June,
`2017 by electronic mail to 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
`
`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
`
`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
`Fax 202-776-7801
`CJTyson@duanemorris.com
`
`
`1
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`
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`
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`Dated: June 30, 2017
`
`
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`
`
`
`CUSTOMER NUMBER: 23446
`
`Patent Owner Motion to Exclude
`IPR2016-01021
`
`
`
`
`
`/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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